`Trials@uspto.gov
`571-272-7822 Entered: April 2, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SK HYNIX INC., SK HYNIX AMERICA INC., and SK HYNIX
`MEMORY SOLUTIONS INC.,
`Petitioner,
`
`v.
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`NETLIST, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00577
`Patent 8,516,185 B2
`____________
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`
`
`Before BRYAN F. MOORE, MATTHEW R. CLEMENTS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
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`
`
`ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
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`The parties have each requested an oral hearing for the above inter
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`partes review proceeding pursuant to 37 C.F.R. § 42.70. Papers 18, 19.
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`Upon consideration by the panel, the parties’ requests are granted.
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`Each party will have thirty minutes of total time to present arguments.
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`Petitioner bears the ultimate burden of proof that Patent Owner’s claims at
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`IPR2017-00577
`Patent 8,516,185 B2
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`issue in this review are unpatentable. Petitioner will, therefore, begin by
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`presenting its case regarding the challenged claims and grounds for which
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`the Board instituted trial in the proceeding. Patent Owner will then respond
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`to Petitioner’s arguments. Petitioner may reserve time to respond to
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`arguments presented by Patent Owner. There is no motion to amend
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`pending in the subject proceeding.
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`There is a strong public policy interest in making all information
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`presented in these proceedings public, as the review determines the
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`patentability of claims in an issued patent and, thus, affects the rights of the
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`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
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`and 35 U.S.C. § 326(a)(1), which provide that the file of any inter partes
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`review or post grant review be made available to the public, except that any
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`petition or document filed with the intent that it be sealed shall, if
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`accompanied by a motion to seal, be treated as sealed pending the outcome
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`of the ruling on the motion. Accordingly, we exercise our discretion to
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`make the oral hearing publically available via in-person attendance.
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`Specifically, the hearing will commence immediately following the
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`hearing in IPR2017-00561 and IPR2017-00562 (which begin at 1:00 PM
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`Eastern Time), on April 6th, 2017, on the ninth floor of Madison Building
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`East, 600 Dulany Street, Alexandria, Virginia. The hearing will be open to
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`the public for in-person attendance that will be accommodated on a first-
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`come, first-served basis.
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`The Board will provide a court reporter for the hearing, and the
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`reporter’s transcript will constitute the official record of the hearing.
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served seven (7)
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`business days before the hearing. The parties may refer to St. Jude Medical,
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`2
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`IPR2017-00577
`Patent 8,516,185 B2
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`Cardiology Division, Inc. v. The Board of Regents of the University of
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`Michigan, IPR2013-00041, slip op. 2–5 (PTAB Jan. 27, 2014) (Paper 65),
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`regarding the appropriate content of demonstrative exhibits. The parties are
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`reminded that the presenter must identify clearly and specifically each
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`demonstrative exhibit (e.g., by slide or screen number) referenced during the
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`hearing to ensure the clarity and accuracy of the reporter’s transcript. The
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`parties also shall provide the demonstrative exhibits to the Board at least two
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`business days prior to the hearing by emailing them to Trials@uspto.gov.
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`The parties shall email demonstrative exhibits to the Board but shall not file
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`any demonstrative exhibits in this case without prior authorization from the
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`Board. A hard copy of the demonstratives should be provided to the court
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`reporter at the hearing.
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`The parties shall confer and attempt to resolve any objections to
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`demonstratives prior to involving the Board. For any issue regarding the
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`proposed demonstrative exhibits that cannot be resolved after conferring
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`with the opposing party, the parties may file jointly a one-page list of
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`objections at least two business days prior to the date of the hearing. Any
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`such list should identify with particularity which demonstrative exhibit(s) is
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`(are) subject to objection and include a short statement (no more than one
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`concise sentence) of the reason for each objection. No argument or further
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`explanation is permitted.
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`We will consider the objections and schedule a conference call, if
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`necessary, to discuss them. Otherwise, we may strike demonstrative exhibits
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`that we find objectionable or reserve ruling on the objections until the
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`hearing or after the hearing. Any objection to a demonstrative exhibit that is
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`not presented in a timely-filed list will be considered waived. Regardless of
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`IPR2017-00577
`Patent 8,516,185 B2
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`any objections raised by the parties, the Board may expunge any
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`demonstrative exhibits that it finds excessive in number or content.
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`Questions regarding specific audio-visual equipment should be
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`directed to the Board at (571) 272-9797. Requests for audio-visual
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`equipment are to be made five (5) days in advance of the hearing date. The
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`request is to be sent to Trials@uspto.gov. If the request is not received
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`timely, the equipment may not be available on the day of the hearing.
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`The parties also should note that at least one member of the panel will
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`be attending the hearing electronically from a remote location, and that if a
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`demonstrative is not made fully available or visible to the judge participating
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`in the hearing remotely, that demonstrative will not be considered. If the
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`parties have questions as to whether demonstrative exhibits would be
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`sufficiently visible and available to all of the judges, the parties are invited
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`to contact the Board at (571) 272-9797. The parties are also reminded that
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`the presenter must identify clearly and specifically each demonstrative
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`exhibit (e.g., by slide or screen number) referenced during the hearing to
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`ensure the clarity and accuracy of the reporter’s transcript and the ability of
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`the judge participating in the hearing remotely to closely follow the
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`presenter’s arguments.
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`The Board expects lead counsel for each party to be present in person
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`at the oral hearing. However, lead or backup counsel may present the
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`party’s argument. If either party anticipates that its lead counsel will not be
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`attending the oral argument, the parties should initiate a joint telephone
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`conference with the Board no later than two business days prior to the oral
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`hearing to discuss the matter.
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`IPR2017-00577
`Patent 8,516,185 B2
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`PETITIONER:
`Joseph Micallef
`Theodore Chandler
`Wonjoo Suh
`Ferenc Pazmandi
`Sidley Austin LLP
`jmicallef@sidley.com
`tchandler@sidley.com
`wsuh@sidley.com
`fpazmandi@sidley.com
`
`
`PATENT OWNER:
`Mehran Arjomand
`Erol Basol
`MORRISON & FOERSTER LLP
`marjomand@mofo.com
`ebasol@mofo.com
`
`William Meunier
`MINTZ, LEVIN, COHEN, FERRIS, GLOVSKY AND POPEO, P.C.
`wameunier@mintz.com
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