Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 31
`Date: March 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SK HYNIX INC., SK HYNIX AMERICA INC., and
`SK HYNIX MEMORY SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`NETLIST, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00561,
`Patent 8,001,434 B1,
`Case IPR2017-005621
`Patent 8,359,501 B1
`____________
`
`
`
`Before BRYAN F. MOORE, MATTHEW R. CLEMENTS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`ORDER
`Request for Oral Argument
`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, however, are
`not authorized to use this caption for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 31
`Date: March 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SK HYNIX INC., SK HYNIX AMERICA INC., and
`SK HYNIX MEMORY SOLUTIONS INC.,
`Petitioner,
`
`v.
`
`NETLIST, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00561,
`Patent 8,001,434 B1,
`Case IPR2017-005621
`Patent 8,359,501 B1
`____________
`
`
`
`Before BRYAN F. MOORE, MATTHEW R. CLEMENTS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`ORDER
`Request for Oral Argument
`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, however, are
`not authorized to use this caption for any subsequent papers.
`
`
`
`IPR2017-00561 (Patent 8,001,434 B1)
`IPR2017-00562 (Patent 8,359,501 B1)
`
`
`The parties have each requested an oral hearing for inter partes
`review proceedings IPR2017-00561, -00562 pursuant to 37 C.F.R. § 42.70.
`Papers 20, 22.2 Upon consideration by the panel, the parties’ requests are
`granted.
`Each party will have one hour of total time to present arguments in
`both cases. Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue in this review are unpatentable. Petitioner will, therefore,
`begin by presenting its case regarding the challenged claims and grounds for
`which the Board instituted trial in the proceeding. Patent Owner will then
`respond to Petitioner’s arguments. Petitioner may reserve time to respond to
`arguments presented by Patent Owner. There is no motion to amend
`pending in the subject proceeding.
`There is a strong public policy interest in making all information
`presented in these proceedings public, as the review determines the
`patentability of claims in an issued patent and, thus, affects the rights of the
`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
`and 35 U.S.C. § 326(a)(1), which provide that the file of any inter partes
`review or post grant review be made available to the public, except that any
`petition or document filed with the intent that it be sealed shall, if
`accompanied by a motion to seal, be treated as sealed pending the outcome
`of the ruling on the motion. Accordingly, we exercise our discretion to
`make the oral hearing publically available via in-person attendance.
`
`
`2 For expediency, IPR2017-00561 is representative and these citations are to
`IPR2017-00561.
`
`2
`
`
`
`IPR2017-00561 (Patent 8,001,434 B1)
`IPR2017-00562 (Patent 8,359,501 B1)
`
`
`Specifically, the hearing will commence at 1:00 PM Eastern Time, on
`April 6th, 2017, on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. The hearing will be open to the public for in-
`person attendance that will be accommodated on a first-come, first-served
`basis.
`
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served seven (7)
`business days before the hearing. The parties may refer to St. Jude Medical,
`Cardiology Division, Inc. v. The Board of Regents of the University of
`Michigan, IPR2013-00041, slip op. 2–5 (PTAB Jan. 27, 2014) (Paper 65),
`regarding the appropriate content of demonstrative exhibits. 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
`parties also shall provide the demonstrative exhibits to the Board at least two
`business days prior to the hearing by emailing them to Trials@uspto.gov.
`The parties shall email demonstrative exhibits to the Board but 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 shall confer and attempt to resolve any objections to
`demonstratives prior to involving the Board. 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 business days prior to the date of the hearing. Any
`
`3
`
`
`
`IPR2017-00561 (Patent 8,001,434 B1)
`IPR2017-00562 (Patent 8,359,501 B1)
`
`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.
`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. If the request is not received
`timely, the equipment may not be available on the day of the hearing.
`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 participating
`in the hearing remotely, that demonstrative will not be considered. If the
`parties have questions as to whether demonstrative exhibits would be
`sufficiently visible and available to all of the judges, the parties are invited
`to contact the Board at (571) 272-9797. 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 the reporter’s transcript and the ability of
`
`4
`
`
`
`IPR2017-00561 (Patent 8,001,434 B1)
`IPR2017-00562 (Patent 8,359,501 B1)
`
`the judge participating in the hearing remotely to closely follow the
`presenter’s arguments.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, lead or backup counsel may present the
`party’s argument. If either party anticipates 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 business days prior to the oral
`hearing to discuss the matter.
`
`
`
`5
`
`
`
`IPR2017-00561 (Patent 8,001,434 B1)
`IPR2017-00562 (Patent 8,359,501 B1)
`
`PETITIONER:
`Joseph Micallef
`Steven Baik
`Wonjoo Suh
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`sbaik@sidley.com
`wsuh@sidley.com
`
`PATENT OWNER:
`Thomas J. Wimbiscus
`Christopher C. Winslade
`Scott P. McBride
`Ronald H. Spuhler
`Wayne H. Bradley
`MCANDREWS, HELD & MALLOY, LTD.
`twimbiscus@mcandrews-ip.com
`cwinslade@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`rspuhler@mcandrews-ip.com
`wbradley@mcandrews-ip.com
`
`William Meunier
`MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY AND POPEO, P.C.
`wameunier@mintz.com
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
