`571-272-7822
`
`
`Paper 20
`Entered: December 20, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PANDUIT CORP.,
`Petitioner,
`
`v.
`
`CORNING OPTICAL COMMUNICATIONS LLC,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00009 (Patent 9,020,320 B2)
`IPR2017-00029 (Patent 8,538,226 B2)
`____________
`
`
`Before BEVERLY M. BUNTING, JENNIFER MEYER CHAGNON, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`
`ORDER
`ORAL ARGUMENT
`37 C.F.R. § 42.70
`
`
`
`
`1 This Order addresses issues that are the same in each case. Therefore, we
`exercise our discretion to issue one paper to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2017-00009 (Patent 9,020,320 B2)
`IPR2017-00029 (Patent 8,538,226 B2)
`
`
`We instituted the above-identified inter partes reviews. IPR2017-
`00009, Paper 7; IPR2017-00029, Paper 7. Both parties request oral
`argument pursuant to 37 C.F.R. § 42.70 in each of the proceedings.
`IPR2017-00009, Papers 31, 32; IPR2017-00029, Papers 18, 19. The
`requests are granted.
`The oral argument will commence at 1:00 PM Eastern Time, on
`January 9, 2018, and will be conducted at the Midwest Regional USPTO
`Office, 300 River Place South, Suite 2900, Detroit, Michigan.2 The oral
`argument will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-serve basis. To expedite entry into the
`hearing room, each party is asked to send an email message to
`Trials@uspto.gov five days prior to the oral argument, indicating the names
`of those planning to attend the oral argument for its side (attorneys and
`others). If the parties have any concern about disclosing confidential
`information, they are requested to contact the Board at least 7 days in
`advance of the oral argument to discuss the matter.
`The parties will first present arguments for IPR2017-00009. Each
`party will have 30 minutes to present its arguments, for a total of 60 minutes.
`Because Petitioner bears the ultimate burden of proof that the challenged
`claims are unpatentable, Petitioner will proceed first to present its case as to
`the challenged claims and grounds on which the Board instituted trial.
`Thereafter, Patent Owner will respond to Petitioner’s case. Petitioner may
`reserve some of its argument time for use in further presentation after Patent
`Owner has responded to Petitioner’s initial presentation. No live testimony
`
`
`2 See https://www.uspto.gov/about-us/uspto-locations/detroit-michigan for
`additional information.
`
`
`
`2
`
`
`
`IPR2017-00009 (Patent 9,020,320 B2)
`IPR2017-00029 (Patent 8,538,226 B2)
`
`from any witness will be taken at the oral argument. After a brief recess, the
`parties will have 30 minutes each to present arguments for IPR2017-00029,
`using this same format.
`The Board expects lead counsel for each party to be present at oral
`argument, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party will not be in attendance at
`oral argument, the Board should be notified via a joint telephone conference
`call no later than two business days prior to the oral argument to discuss the
`matter.
`The Board will provide a court reporter for the oral argument, and the
`reporter’s transcript will constitute the official record of the oral argument.
`The oral argument transcript will be entered in the record of this proceeding.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been so
`filed.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days before the oral argument date. The parties also
`shall provide a courtesy copy of any demonstrative exhibits to the Board at
`least five business days prior to the oral argument by emailing them to
`Trials@uspto.gov. At least three business days before the oral argument,
`each of the parties shall file in the proceedings any demonstrative exhibits
`by filing as a single exhibit its set of demonstrative exhibits for oral
`argument.3
`
`
`3 The demonstrative exhibits are not evidence and will not considered as
`evidence unless otherwise ordered.
`
`
`
`3
`
`
`
`IPR2017-00009 (Patent 9,020,320 B2)
`IPR2017-00029 (Patent 8,538,226 B2)
`
`
`The parties must file any objections to the demonstratives with the
`Board at least two business days before the oral argument. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived. The objections should identify with particularity which
`demonstratives are subject to objection, and include a short (one sentence or
`less) statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until after the oral argument. 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), for guidance regarding the appropriate content of
`demonstrative exhibits. See also CBS Interactive Inc. v. Helferich Patent
`Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118)
`(The Board has the discretion to limit the parties’ demonstratives to pages in
`the record should there be no easy resolution to objections over
`demonstratives.).
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`referenced during the oral argument to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that two panel members
`will be attending the oral argument electronically and will only have access
`to the demonstratives provided in advance, as referenced above.
`Requests for audio-visual equipment are to be made 5 days in advance
`of the oral argument date. The request is to be sent to Trials@uspto.gov. If
`
`
`
`4
`
`
`
`IPR2017-00009 (Patent 9,020,320 B2)
`IPR2017-00029 (Patent 8,538,226 B2)
`
`the request is not received timely, the equipment may not be available on the
`day of the oral argument.
`
`
`PETITIONER:
`Kelly J. Eberspecher
`David L. Hecht
`Daniel S. Stringfield
`Katherine Cappaert
`STEPTOE & JOHNSON LLP
`keberspecher@steptoe.com
`dhecht@steptoe.com
`dstringfield@steptoe.com
`kcappaert@steptoe.com
`
`PATENT OWNER:
`Eric D. Hayes
`Eugene Goryunov
`G. William Foster
`KIRKLAND & ELLIS LLP
`eric.hayes@kirkland.com
`eugene.goryunov@kirkland.com
`billy.foster@kirkland.com
`
`
`
`
`5
`
`