Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 46
`Entered: February 16, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`v.
`VALENCELL, INC.
`Patent Owner.
`____________
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00317 Patent 8,989,830 B2
`Case IPR2017-00318 Patent 8,886,269 B2
`Case IPR2017-00319 Patent 8,923,941 B2
` Case IPR2017-00321 Patent 8,923,941 B21,2
`____________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`1 This Order applies to each of the listed cases. We exercise our discretion to
`issue one Order to be docketed in each case. The parties are not authorized
`to use a multiple case caption.
`2 Fitbit, Inc. v. Valencell, Inc. cases have been joined to the instant cases.
`Specifically, Case IPR2017-01552 has been joined with Case IPR2017-
`00315; Case IPR2017-01553 has been joined with Case IPR2017-00317;
`Case IPR2017-01554 has been joined with Case IPR2017-00318; Case
`IPR2017-01555 has been joined with Case IPR2017-00319; and Case
`IPR2017-01556 has been joined with Case IPR2017-00321.
`
`
`571-272-7822
`
`
`
`
`Paper 46
`Entered: February 16, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner,
`v.
`VALENCELL, INC.
`Patent Owner.
`____________
`
`Case IPR2017-00315 Patent 8,929,965 B2
`Case IPR2017-00317 Patent 8,989,830 B2
`Case IPR2017-00318 Patent 8,886,269 B2
`Case IPR2017-00319 Patent 8,923,941 B2
` Case IPR2017-00321 Patent 8,923,941 B21,2
`____________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`1 This Order applies to each of the listed cases. We exercise our discretion to
`issue one Order to be docketed in each case. The parties are not authorized
`to use a multiple case caption.
`2 Fitbit, Inc. v. Valencell, Inc. cases have been joined to the instant cases.
`Specifically, Case IPR2017-01552 has been joined with Case IPR2017-
`00315; Case IPR2017-01553 has been joined with Case IPR2017-00317;
`Case IPR2017-01554 has been joined with Case IPR2017-00318; Case
`IPR2017-01555 has been joined with Case IPR2017-00319; and Case
`IPR2017-01556 has been joined with Case IPR2017-00321.
`
`
`
`IPR2017-00315 (Patent 8,929,965 B2)
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,886,269 B2)
`IPR2017-00319 (Patent 8,923,941 B2)
`IPR2017-00321 (Patent 8,923,941 B2)
`
`
`DISCUSSION
`An inter partes review was instituted in each of the above-captioned
`proceedings. Paper 9.3 Petitioner and Patent Owner requested an oral
`hearing in each of the proceedings pursuant to 37 C.F.R. § 42.70(a). Papers
`34, 35. Petitioner requested twenty (20) minutes for oral argument per side
`per proceeding. Paper 35, 2. Petitioner also requested that the parties
`address Cases IPR2017-00317/-00318 and Cases IPR2017-00319/-00321,
`respectively, in consolidated hearings in light of similarities in the patents,
`asserted prior art, and commonality of arguments and that the court reporter
`produce a single transcript for each consolidated hearing. Id. at 1–2.
`Patent Owner requested a call to discuss the oral hearings, which was
`conducted on February 15, 2017, during which Patent Owner agreed with
`addressing Cases IPR2017-00317/-00318 and Cases IPR2017-00319/-00321
`in consolidated hearings. However, Patent Owner requested additional time
`for the hearings. Patent Owner requested thirty (30) minutes per side per
`proceeding, arguing that Cases IPR2017-00317/-00318, in particular,
`required additional hearing time because these cases involve some differing
`prior art and have pending motions to amend. Petitioner opposed the request
`for additional time, arguing that each of the cases has significant issue
`overlap, and the Board has the discretion to extend oral hearing time if it
`becomes necessary at the time of the hearings.
`
`
`3 We refer to the papers and exhibits filed in Case IPR2017-00315 as
`representative.
`
`
`2
`
`
`
`IPR2017-00315 (Patent 8,929,965 B2)
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,886,269 B2)
`IPR2017-00319 (Patent 8,923,941 B2)
`IPR2017-00321 (Patent 8,923,941 B2)
`
`
`We have reviewed the issues that the parties have addressed in the
`papers for each proceeding, and agree with the parties that it is more
`efficient to address Cases IPR2017-00317/-00318 and Cases IPR2017-
`00319/-00321 in consolidated hearings. Each party will be permitted twenty
`(20) minutes of oral argument per side per proceeding in Cases IPR2017-
`00315, IPR2017-00319, and IPR2017-00321, and thirty (30) minutes of oral
`argument per side per proceeding will be permitted in the Cases IPR2017-
`00317 and IPR2017-00318 cases. The hearings will commence at 11:00
`AM Eastern Time, on Tuesday, February 27, 2018, and will proceed in this
`order:
`IPR2017-00315
`11:00 AM-11:40 AM
`IPR2017-00319/-00321
`11:45 AM-1:05 PM
`Lunch
`1:05 PM-2:00 PM
`IPR2017-00317/-00318
`2:00 PM-4:00 PM
`For each hearing, Petitioner will first present its case(s) as to the
`challenged claims and grounds with respect to which we instituted trials and
`may also address the motion(s) to amend. Petitioner may reserve rebuttal
`time. Petitioner may address the patentability of substitute claims, presented
`in a motion to amend (if applicable) in their initial presentation, and not only
`in rebuttal after Patent Owner raises its motion to amend in its presentation.
`Thereafter, Patent Owners will argue its opposition to Petitioner’s case(s)
`and its motion(s) to amend. Petitioner then may use any time it reserved to
`rebut Patent Owner’s opposition.
`
`3
`
`
`
`IPR2017-00315 (Patent 8,929,965 B2)
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,886,269 B2)
`IPR2017-00319 (Patent 8,923,941 B2)
`IPR2017-00321 (Patent 8,923,941 B2)
`
`
`The oral hearing will be open to the public for in-person attendance,
`on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia. Currently, the hearing is scheduled to be held in Hearing Room A.
`Space in the hearing room is limited, and any attendees beyond three per
`party (including any attorneys who may be appearing) will be
`accommodated on a first-come, first-served basis.
`At least four (4) business days prior to the oral arguments, each party
`shall serve on the other party any demonstrative exhibit(s) it intends to use
`during the oral arguments and file the demonstrative exhibit(s) before the
`time of the oral arguments. See 37 C.F.R. § 42.70(b). The parties also shall
`provide the demonstrative exhibits to the Board at least four (4) business
`days prior to the oral arguments by e-mailing them to Trials@uspto.gov.
`Demonstrative exhibits are not evidence, but merely a visual aid at the
`oral arguments. Demonstrative exhibits may not introduce new
`evidence or raise new arguments, but instead should cite to evidence in
`the record. 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) and CBS Interactive Inc.
`v. Helferich Patent Licensing, LLC, IPR2013-00033, (PTAB Oct. 23, 2013)
`(Paper 118), for guidance regarding the appropriate content of demonstrative
`exhibits.
`The parties shall confer and attempt to resolve any objections to
`demonstratives prior to involving the Board.
`
`4
`
`
`
`IPR2017-00315 (Patent 8,929,965 B2)
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,886,269 B2)
`IPR2017-00319 (Patent 8,923,941 B2)
`IPR2017-00321 (Patent 8,923,941 B2)
`
`
`For any issue regarding the proposed demonstrative exhibits that
`cannot be resolved after conferring with the opposing party, the parties may
`file jointly a one-page list of objections at least two (2) business days prior
`to the date of the hearing. Any such list should identify with particularity
`which demonstrative exhibit(s) is (are) subject to objection and include a
`short statement (no more than one concise sentence) of the reason for each
`objection. No argument or further explanation is permitted.
`We will consider the objections and schedule a conference call, if
`necessary, to discuss them. Otherwise, we may strike demonstrative exhibits
`that we find objectionable or reserve ruling on the objections until the
`hearing or after the hearing. Any objection to a demonstrative exhibit that is
`not presented in a timely-filed list will be considered waived. Regardless of
`any objections raised by the parties, the Board may expunge any
`demonstrative exhibits that it finds excessive in number or content.
`To aid in the preparation of an accurate transcript, each party shall
`provide paper copies of its demonstratives to the court reporter on the day of
`the oral arguments. Such paper copies shall not become part of the record of
`this proceeding. The parties are reminded that each presenter must identify
`clearly and specifically each demonstrative exhibit (e.g., by slide or screen
`number), paper, or exhibit referenced during the oral arguments to ensure the
`clarity and accuracy of the reporter’s transcript.
`Judge James Arpin (Denver) will be attending each hearing
`electronically and will only have access to the demonstratives exhibits
`provided in advance in the manner described above. If a demonstrative
`
`5
`
`
`
`IPR2017-00315 (Patent 8,929,965 B2)
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,886,269 B2)
`IPR2017-00319 (Patent 8,923,941 B2)
`IPR2017-00321 (Patent 8,923,941 B2)
`
`exhibit is not made available to the Board in the manner described above,
`that demonstrative exhibit may not be available to each of the judges during
`the hearing and may not be considered. Further, images projected, using
`audio visual equipment in Alexandria, will not be visible to Judge Arpin.
`Therefore, each presenter must identify with specificity the location of any
`projected image in the record. Because of limitations on the audio
`transmission systems in our hearing rooms, presenters may speak only when
`standing at the hearing room podium.
`We expect lead counsel for each party to be present at oral hearing,
`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 the oral
`hearing, we should be notified via email communications no later than two
`(2) business days prior to the oral hearing.
`Lead counsel and back-up counsel may use portable computers in the
`hearing room at the counsel tables and at the hearing room lectern, but such
`computers may not be used to record or transmit audio or video from the
`hearing. Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment should be sent to Trials@uspto.gov. Requests for special
`equipment or special accommodations at the hearing may not be honored
`unless presented in a separate communication directed to the above e-mail
`address not less than five (5) days before the oral arguments. If the request
`is not received timely, the equipment or accommodations may not be
`available on the day of the oral arguments.
`
`6
`
`
`
`IPR2017-00315 (Patent 8,929,965 B2)
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,886,269 B2)
`IPR2017-00319 (Patent 8,923,941 B2)
`IPR2017-00321 (Patent 8,923,941 B2)
`
`
`ORDER
`It is ORDERED that oral arguments for these proceedings will
`commence at 11:00 AM Eastern Time, on Tuesday, February 27, 2018, at
`the Madison Building East, 600 Dulany Street, ninth floor, Alexandria,
`Virginia.
`
`7
`
`
`
`IPR2017-00315 (Patent 8,929,965 B2)
`IPR2017-00317 (Patent 8,989,830 B2)
`IPR2017-00318 (Patent 8,886,269 B2)
`IPR2017-00319 (Patent 8,923,941 B2)
`IPR2017-00321 (Patent 8,923,941 B2)
`
`
`PETITIONER
`
`Michael D. Specht
`Michelle K. Holoubek
`Jason Fitzsimmons
`STERNE, KESSLER, GOLDSTEIN & FOX
`mspecht-PTAB@skgf.com
`holoubek@skgf.com
`jfitzsimmons-ptab@skgf.com
`PTAB@skgf.com
`
`PATENT OWNER
`
`Justin B. Kimble
`Nicholas C Kliewer
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`
`8
`
`
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