Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper 19
`
` Entered: January 8, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00177 (Patent 8,537,279 B2)
`IPR2017-00178 (Patent 9,179,019 B2)
`____________
`
`
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 This Decision applies to each of the listed cases. The parties are not
`authorized to use a multiple case caption.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper 19
`
` Entered: January 8, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DIGITAL CHECK CORP. d/b/a ST IMAGING,
`Petitioner,
`
`v.
`
`E-IMAGEDATA CORP.,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00177 (Patent 8,537,279 B2)
`IPR2017-00178 (Patent 9,179,019 B2)
`____________
`
`
`
`Before KEN B. BARRETT, JENNIFER MEYER CHAGNON, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 This Decision applies to each of the listed cases. The parties are not
`authorized to use a multiple case caption.
`
`
`
`
`
`IPR2017-00177; Patent 8,537,279 B2
`IPR2017-00178; Patent 9,179,019 B2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`The date set for oral hearing for these proceedings is February 7,
`
`2018, if hearing is requested by either party and granted by the Board. Paper
`7.2 Petitioner requests oral hearing and does not express a preference for the
`hearing location. Paper 16. The request for oral hearing for these
`proceedings is granted.
`
`A combined hearing will be held for the above-captioned cases. The
`hearing will commence at 2 PM Eastern Time on February 7, 2018, on the
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia.
`
`Each side will have 45 minutes, total, to present its arguments for
`both cases. Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue in this review are unpatentable. Accordingly, Petitioner will
`open the hearing by presenting its case regarding the challenged claims for
`which the Board instituted trial. After Petitioner’s presentation, Patent
`Owner will respond to Petitioner’s argument. Petitioner may reserve time to
`respond to Patent Owner’s arguments. Patent Owner may not reserve time.
`
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the hearing. At
`least one member of the panel may attend the oral argument remotely by use
`of two-way audio-visual communication equipment. The hearing will be
`open to the public for in-person attendance that will be accommodated on a
`first-come, first-served basis. If the parties have any concern about
`disclosing confidential information, they are requested to contact the Board
`at least 10 days in advance of the hearing to discuss the matter.
`
`
`2 Our decision refer to the papers entered in IPR2017-00177. Similar papers
`were entered in IPR2017-00178.
`
`2
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`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.
`The parties are further reminded that, under 37 C.F.R. § 42.70(b),
`demonstrative exhibits must be served at least seven (7) business days before
`the hearing date. The parties also shall provide a courtesy copy of any
`demonstrative exhibits to the Board at least five business days prior to the
`hearing by emailing them to Trials@uspto.gov. Notwithstanding 37 C.F.R.
`§ 42.70(b), the parties shall not file any demonstrative exhibits in this
`proceeding without prior authorization from the Board. See 37 C.F.R.
`§ 42.5(b).
`The parties must meet and confer to discuss and resolve any
`objections to demonstrative exhibits. Any party with unresolved objections
`must file such objections with the Board at least two (2) business days
`before the hearing. The objections should identify with particularity which
`demonstrative exhibits 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. Any objection
`to demonstrative exhibits that is not timely presented will be considered
`waived.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`(PTAB January 27, 2015) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. Demonstrative exhibits are not evidence
`
`IPR2017-00177; Patent 8,537,279 B2
`IPR2017-00178; Patent 9,179,019 B2
`
`3
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`
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`IPR2017-00177; Patent 8,537,279 B2
`IPR2017-00178; Patent 9,179,019 B2
`
`
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`and may not introduce new evidence or arguments. Instead, demonstrative
`exhibits should cite to evidence in the record. 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 hearing to
`ensure the clarity and accuracy of the reporter’s transcript.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument. If either party expects that its lead counsel will not be attending
`the oral argument, the parties should initiate a joint telephone conference
`with the Board no later than two (2) business days prior to the oral hearing to
`discuss the matter.
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. Requests for special equipment will not be honored
`unless presented in a separate communication not less than five (5) days
`before the hearing directed to the above email address.
`
`
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`4
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`IPR2017-00177; Patent 8,537,279 B2
`IPR2017-00178; Patent 9,179,019 B2
`
`PETITIONER:
`
`Jason A. Engel
`Robert J. Barz K&L
`GATES LLP
`jason.engel@klgates.com
`robert.barz@klgates.com
`
`
`PATENT OWNER:
`
`Johanna M. Wilbert
`Joel Austin
`Michael Piery
`QUARLES & BRADY LLP
`johanna.wilbert@quarles.com
`joel.austin@quarles.com
`michael.piery@quarles.com
`
`5
`
`
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