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Trials@uspto.gov
`571.272.7822
`
`Paper 25
`Entered: April 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`Case IPR2017-00729 (Patent 8,494,581 B2)
`Case IPR2017-00741 (Patent 6,633,900 B1)
`Case IPR2017-00787 (Patent 7,199,715 B2)
`Case IPR2017-00859 (Patent 9,047,586 B2)1
`
`Before TREVOR M. JEFFERSON, DAVID C. MCKONE,
`BARBARA A. PARVIS, and JOHN A. HUDALLA,
`Administrative Patent Judges.2
`
`PARVIS, Administrative Patent Judge.
`
`ORDER
`Request for Oral Hearing
`37 C.F.R. § 42.70
`
`1 This Order addresses the same issues in these inter partes reviews.
`Therefore, we issue one Order to be filed in all of the cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers.
`2 This is not an order from an expanded panel of the Board.
`Judges McKone, Parvis, and Hudalla are paneled on IPR2017-00729,
`IPR2017-00741, and IPR2017-00787. Judges Jefferson, McKone, and
`Hudalla are paneled on IPR2017-00859
`
`

`

`IPR2017-00729 (Patent 8,494,581), IPR2017-00741 (Patent 6,633,900),
`IPR2017-00787 (Patent 7,199,715), IPR2017-00859 (Patent 9,047,586)
`
`
`We instituted inter partes review (Paper 7)3 in the instant proceedings
`
`and issued a Scheduling Order (Paper 8) in each proceeding, which sets the
`
`date for oral hearing to April 26, 2018, if oral hearing is requested by either
`
`party and granted by the Board. The parties requested oral hearings pursuant
`
`to 37 C.F.R. § 42.70. See, e.g., Paper 28; Paper 29. The parties’ requests
`
`are granted.
`
`The hearings will commence at 10:00 AM Eastern Time, on
`
`April 26, 2018, and will be conducted at the UPSTO Headquarters,
`
`Ninth Floor of Madison Building East, 600 Dulany Street, Alexandria,
`
`Virginia, 22314. The parties will be given a one-hour break at 12:00 PM
`
`Eastern Time. The hearings will be open to the public for in-person
`
`attendance that will be accommodated on a first come, first served basis.
`
`The parties have provided their proposals for the oral hearings. Upon
`
`review of the record, we set the following schedule for oral argument.
`
`IPR/Challenged Patent
`
`IPR2017-00729
`(Patent 8,494,581 B2)
`IPR2017-00741
`(Patent 6,633,900 B1)
`IPR2017-00787
`(Patent 7,199,715 B2)
`IPR2017-00859
`(Patent 9,047,586 B2)
`
`
`
`Time Hearing
`will Commence
`10 AM Eastern
`Time
`11 AM Eastern
`Time
`1 PM Eastern
`Time
`2 PM Eastern
`Time
`
`Minutes for Oral
`Argument
`30 minutes per side
`
`30 minutes per side
`
`30 minutes per side
`
`30 minutes per side
`
`Because Petitioner bears the ultimate burden of proof that the
`
`challenged claims are unpatentable, in each hearing, Petitioner will proceed
`
`first to present its case as to the challenged claims of the challenged patent
`
`
`3 Paper numbers are provided for IPR2017-00729, unless otherwise noted.
`
`
`
`2
`
`

`

`IPR2017-00729 (Patent 8,494,581), IPR2017-00741 (Patent 6,633,900),
`IPR2017-00787 (Patent 7,199,715), IPR2017-00859 (Patent 9,047,586)
`
`and instituted grounds of unpatentability. Thereafter, Patent Owner will
`
`respond to Petitioner’s case. After that, Petitioner will make use of the rest
`
`of its time for its rebuttal, responding to Patent Owner’s specific arguments
`
`presented at the oral hearing.
`
`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 no
`
`later than seven business days before the hearing date. They shall be filed
`
`with the Board no later than five business days prior to the hearing date.
`
`The parties must initiate a conference call with the Board at least three
`
`business days prior to the hearings to resolve any dispute over the propriety
`
`of each party’s demonstrative exhibits. 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 each presenter must identify clearly and
`
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`
`referenced during each hearing to ensure the clarity and accuracy of the
`
`reporter’s transcript. The parties also should note that at least one member
`
`of each panel will be attending the hearings electronically from a remote
`
`
`
`3
`
`

`

`IPR2017-00729 (Patent 8,494,581), IPR2017-00741 (Patent 6,633,900),
`IPR2017-00787 (Patent 7,199,715), IPR2017-00859 (Patent 9,047,586)
`
`location and that if a demonstrative is not filed or otherwise made fully
`
`available or visible to the judge presiding over the hearings, that
`
`demonstrative will not be considered. The parties also should note that the
`
`panel member appearing remotely might not able to hear the parties unless
`
`they speak into the microphone at the podium. 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 Board expects lead counsel for each party to be present at oral
`
`hearings, although any backup counsel may make the actual presentation, in
`
`whole or in part. If lead counsel for either party is unable to attend the oral
`
`argument, the Board should be notified via a joint telephone conference call
`
`no later than five business days prior to the oral hearings to discuss the
`
`matter.
`
`The Board will provide a court reporter for the hearings, and the
`
`reporter’s transcript will constitute the official record of the hearings. The
`
`hearing transcripts will be entered in the record of these proceedings.
`
`Any requests regarding special equipment or needs, such as for audio
`
`visual equipment, should be directed to Trials@uspto.gov. Requests for
`
`audio-visual equipment are to be made at least five business days in advance
`
`of the hearing date.
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`

`

`IPR2017-00729 (Patent 8,494,581), IPR2017-00741 (Patent 6,633,900),
`IPR2017-00787 (Patent 7,199,715), IPR2017-00859 (Patent 9,047,586)
`
`PETITIONER:
`
`Jeffrey A. Berkowitz
`Michael V. Young, Sr.
`Daniel Tucker
`Gracie Mills
`Alexander Boyer
`Bradford Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Jeffrey.berkowitz@finnegan.com
`Michael.young@finnegan.com
`Daniel.tucker@finnegan.com
`Gracie.mills@finnegan.com
`Alexander.boyer@finnegan.com
`Bradford.schulz@finnegan.com
`
`PATENT OWNER:
`
`Andrew G. Heinz
`Kevin K.McNish
`DESMARAIS LLP
`aheinz@desmaraisllp.com
`kkm-ptab@desmaraisllp.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`
`
`
`5
`
`

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