`571-272-7822
`
`Date: April 18, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUMITOMO ELECTRIC INDUSTRIES, LTD.,
`Petitioner,
`
`v.
`
`UNITED TECHNOLOGIES CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-00966
`Patent 9,166,243 B2
`____________
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`
`CRUMBLEY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`Petitioner Sumitomo Electric Industries, Ltd. (“SEI”) and Patent
`
`Owner United Technologies Corporation (“UTC”) each requested oral
`
`argument in this inter partes review trial pursuant to 37 C.F.R. § 42.70.
`
`Papers 17, 22. SEI requested no more than one hour of argument time,
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`while UTC requested thirty minutes. Id. Upon consideration, the requests
`
`
`
`are granted, and each party shall have thirty minutes of total argument time.
`
`Oral argument shall commence at 1:00 PM Eastern Time on May 10, 2018,
`
`on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`
`Virginia.
`
`
`
`SEI, as Petitioner, bears the ultimate burden of proof that the claims at
`
`issue in the inter partes review are unpatentable. Therefore, SEI will open
`
`the hearing by presenting argument regarding the pending grounds of
`
`unpatentability. UTC will then have the opportunity to respond to SEI’s
`
`arguments. If desired, SEI may reserve rebuttal time, not to exceed half the
`
`total time allotted. SEI is cautioned that rebuttal time may only be used to
`
`respond to arguments made during UTC’s argument.
`
`The Board will provide a court reporter, and the transcript shall
`
`constitute the official record of the hearing. No Motions to Seal have been
`
`filed in this proceeding. Accordingly, the Board will make the oral hearing
`
`publicly accessible. The hearing will be open to the public for in-person
`
`attendance that will be accommodated on a first-come, first-served basis.
`
`Demonstrative exhibits shall be served on opposing counsel at least
`
`five business days before the hearing, and filed with the Board no later than
`
`two business days before the hearing. All pages of demonstrative exhibits
`
`should be clearly marked with the legend “DEMONSTRATIVE
`
`EXHIBIT—NOT EVIDENCE.” 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.
`
`2
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`
`The Board expects that the parties will meet and confer in good faith
`
`
`
`to resolve any objections to demonstrative exhibits, but if such objections
`
`cannot be resolved the parties may file any objections to demonstratives with
`
`the Board at least two business days before the hearing. The objections
`
`should identify with particularity which portions of the demonstrative
`
`exhibits are subject to objection and include a one-sentence statement of the
`
`basis for each objection. No argument or further explanation is permitted.
`
`The Board will consider any objections and schedule a conference call if
`
`deemed necessary. Otherwise, the Board will reserve ruling on the
`
`objections. Any objection to demonstrative exhibits that is not timely
`
`presented will be considered waived.
`
`A member of the panel may attend oral argument remotely by use of
`
`two-way audio-visual communication equipment. The parties are reminded
`
`that counsel must identify clearly and specifically each demonstrative
`
`exhibit (e.g., by slide or screen number) referenced during the hearing to
`
`assist any remote judges in following the presentation, and 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. Any counsel of record, however, may present the party’s
`
`argument. If any 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.
`
`Any special requests for audio visual equipment should be directed to
`
`Trials@uspto.gov. Requests for special equipment will not be honored
`
`3
`
`
`
`
`IPR2017-00966
`Patent 9,166,243 B2
`
`
`unless presented in a separate communication not less than five days before
`
`
`
`the hearing directed to the above email address.
`
`
`
`In light of the foregoing, it is ORDERED that oral hearing, conducted
`
`pursuant to the procedures outlined above, shall commence at 1:00 PM
`
`Eastern Time on May 10, 2018.
`
`
`
`
`
`
`
`
`
`
`
`
`
`For PETITIONER:
`
`John S. Goetz
`goetz@fr.com
`
`John Pegram
`pegram@fr.com
`
`For PATENT OWNER:
`
`Theodore Olds
`tolds@cgolaw.com
`
`Matthew Koziarz
`mkoziarz@cgolaw.com
`
`
`
`
`4
`
`
`