`Trials@uspto.gov
`571-272-7822 Entered: November 1, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BAKER HUGHES, a GE COMPANY, LLC,
`Petitioner,
`
`v.
`
`LIQUIDPOWER SPECIALTY PRODUCTS INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01901 (Patent 8,450,249 B2)
`Case IPR2016-01903 (Patent 8,426,498 B2)
` Case IPR2016-01905 (Patent 8,450,250 B2)1
`____________
`
`
`
`Before KRISTINA M. KALAN, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in all three
`cases. The parties are not authorized to use this style heading for subsequent
`papers without Board preapproval.
`
`
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`
`Petitioner and Patent Owner each have requested an oral hearing
`pursuant to 37 C.F.R. § 42.70. Papers 41, 42.2 The requests are granted to
`the extent set forth below and subject to the following conditions.
`Oral arguments for a consolidated hearing on IPR2016-01901,
`IPR2016-01903, and IPR2016-01905 will commence at 1:00 PM Eastern
`Time on December 4, 2017, on the ninth floor of Madison Building East,
`600 Dulany Street, Alexandria, Virginia. The Board will provide a court
`reporter, and the transcript shall constitute the official record of the hearing.
`Each side will have sixty (60) minutes in total to present arguments.
`The hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. In that regard, Petitioner
`and Patent Owner request that the hearing room be closed to the public for a
`portion of the hearing to allow for presentation of confidential information.
`Paper 41, 2; Paper 42, 2–3. As set forth below, thirty (30) minutes of the
`total time allotted for the oral hearing shall be closed to the public to provide
`an opportunity for presentation of argument and evidence relating to
`confidential information.
`Petitioner bears the ultimate burden of proof that the challenged patent
`claims are unpatentable. Petitioner, therefore, will proceed first, presenting
`up to forty-five (45) minutes of argument regarding the pending grounds of
`unpatentability. Before commencing that opening presentation, Petitioner
`may reserve some of its forty-five minutes of argument time for rebuttal.
`Thereafter, Patent Owner will have the opportunity to respond to Petitioner’s
`
`
`2 We refer herein to the papers filed in IPR2016-01901. The parties filed
`substantially identical papers in IPR2016-01903 and IPR2016-01905.
`
`
`
`2
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`case, with forty-five (45) minutes of its allotted time for responsive
`arguments. Petitioner’s rebuttal argument, if presented, will be limited to
`addressing issues raised during Patent Owner’s responsive argument.
`At the conclusion of any rebuttal presentation, the courtroom will be
`closed to persons not authorized to access confidential information. The
`court reporter will be directed to mark as confidential the remaining portion
`of the transcript. At that time, Patent Owner shall have fifteen (15) minutes
`to present arguments relating to confidential information in a session closed
`to the public. Before commencing that portion of the presentation, Patent
`Owner may reserve some of its fifteen minutes of argument time for rebuttal.
`Petitioner shall have fifteen (15) minutes to respond to Patent Owner’s
`arguments relating to confidential information. Patent Owner’s rebuttal
`argument, if presented, will be limited to addressing issues raised during
`Petitioner’s responsive argument.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days before the hearing. The parties also shall
`provide the demonstrative exhibits to the Board at least two (2) business
`days prior to the hearing by emailing them to Trials@uspto.gov. Despite the
`requirement in § 42.70(b) for parties to file demonstratives, the parties shall
`not file any demonstrative exhibits in this case without prior authorization
`from the Board. A hard copy of the demonstratives should be provided to
`the court reporter at the hearing. The parties are directed to refrain from
`including confidential information in any demonstrative exhibit. During the
`portion of the hearing that is closed to the public, either party may identify
`confidential information by referring to the record in this proceeding. For
`
`
`
`3
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`example, either party may direct the panel to specific confidential
`information in the record by exhibit, page, and line number.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), regarding the appropriate content of
`demonstrative exhibits. The Board expects that the parties will meet and
`confer in good faith to resolve any objections to demonstrative exhibits, but
`if such objections cannot be resolved, the parties may file any objections to
`demonstratives with the Board at least two (2) business days before the
`hearing. The objections should identify with particularity which portions of
`the demonstrative exhibits are subject to objection, include a copy of the
`objected-to portions, and include a one-sentence statement of the reason for
`each objection. No argument or further explanation is permitted. The Board
`will consider any objections and schedule a conference call if deemed
`necessary. Otherwise, the Board will reserve ruling on the objections. Any
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`The parties also should note that at least one member of the panel will
`be attending the hearing electronically from a remote location, and that if a
`demonstrative is not made fully available or visible to the judge(s)
`participating in the hearing remotely, that demonstrative will not be
`considered. The parties are also reminded that the presenter must identify
`clearly and specifically each demonstrative exhibit (e.g., by slide or screen
`number) referenced during the hearing to ensure the clarity and accuracy of
`
`
`
`4
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`the reporter’s transcript and the ability of the judge(s) participating in the
`hearing remotely to closely follow the presenter’s arguments.
`The Board expects lead counsel for each party to be present at
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If either party expects that its lead counsel will not be
`attending the hearing, the Board should be notified via a joint telephone
`conference call no later than two (2) business days prior to the hearing to
`discuss the matter.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment are to be made five (5) days in advance of the hearing date. The
`request is to be sent to Trials@uspto.gov, any requests not sent specifically
`to that email address will not be considered timely. If the request is not
`received timely, the equipment may not be available on the day of the
`hearing.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2016-01901 (Patent 8,450,249 B2)
`IPR2016-01903 (Patent 8,426,498 B2)
`IPR2016-01905 (Patent 8,450,250 B2)
`
`
`FOR PETITIONER:
`
`Herbert Hart
`George Wheeler
`Peter Lish
`Aaron Barkoff
`McANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`gwheeler@mcandrews-ip.com
`plish@mcandrews-ip.com
`abarkoff@mcandrews-ip.com
`
`
`FOR PATENT OWNER:
`
`Doug McClellan
`Elizabeth Weiswasser
`Melissa Hotze
`WEIL, GOTSHAL & MANGES LLP
`doug.mcclellan@weil.com
`elizabeth.weiswasser@weil.com
`melissa.hotze@weil.com
`
`
`
`
`
`
`
`6
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