Trials@uspto.gov
`571-272-7822
`
`
` Paper: 54
`
`Entered: December 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`
`____________
`
`Case IPR2017-01068
`Patent 5,859,601 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`571-272-7822
`
`
` Paper: 54
`
`Entered: December 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
`Petitioner,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`
`____________
`
`Case IPR2017-01068
`Patent 5,859,601 B2
`____________
`
`
`
`
`Before JENNIFER S. BISK, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2017-01068
`Patent 5,859,601 B2
`
`
`Both parties requested oral argument in this inter partes review trial
`pursuant to 37 C.F.R. § 42.70. Papers 52, 53. Patent Owner requests one
`hour of total argument time, 30 minutes per side. Paper 52, 1. Petitioner
`requests “at least 60 minutes to address all issues in this matter.” Paper 53,
`1. Upon consideration, the request for oral argument is granted, and each
`party shall have 60 minutes of argument time.
`Oral arguments will commence at 1:00 pm Eastern time on
`January 19, 2021, by video. The parties are directed to contact the Board at
`least 10 days in advance of the argument if there are any concerns about
`disclosing confidential information. The Board will provide a court reporter
`for the argument, and the reporter’s transcript will constitute the official
`record of the argument.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov at least five business days prior to the oral
`argument date to receive video set-up information. As a reminder, all
`arrangements and the expenses involved with appearing by video, such as
`the selection of the facility from which a party will attend by video, must be
`borne by that party. If a video connection cannot be established, the parties
`will be provided with dial-in connection information, and the oral argument
`will be conducted telephonically.
`If one or both parties would prefer to participate in the oral argument
`telephonically, they shall notify PTAB Hearings at the above email address
`
`2
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`IPR2017-01068
`Patent 5,859,601 B2
`
`at least five business days prior to the argument to receive dial-in connection
`information.
`Petitioner, bears the ultimate burden of proof that the claims at issue
`in the inter partes reviews are unpatentable. Therefore, Petitioner will open
`the argument by presenting argument regarding the pending grounds of
`unpatentability. Patent Owner will then have the opportunity to respond to
`Petitioner’s arguments. If desired, Petitioner may reserve rebuttal time, not
`to exceed half the total time allotted. Petitioner is cautioned that rebuttal
`time may only be used to respond to issues raised during Patent Owner’s
`argument. If requested, the Board may permit Patent Owner to present a
`short sur-rebuttal argument to address any issues raised during Petitioner’s
`rebuttal.
`Demonstrative exhibits shall be served on opposing counsel pursuant
`to 37 C.F.R. § 42.70(b). In addition, we request the parties file exhibits with
`the Board no later than five business days before the argument. Upon filing,
`a copy of the demonstrative exhibits should also be emailed to
`PTABHearings@uspto.gov so that they may be provided to the court
`reporter prior to the video 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, IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014), for guidance
`regarding the appropriate content of demonstrative exhibits.
`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
`
`3
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`IPR2017-01068
`Patent 5,859,601 B2
`
`the Board at least two business days before the argument. 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.
`The Board generally expects lead counsel for each party to be present by
`video at the oral argument. Any counsel of record that is present by video
`may present the party’s argument. In addition, the Board has established the
`“Legal Experience and Advancement Program,” or “LEAP,” to encourage
`advocates with less legal experience to argue before the Board to develop
`their skills. The Board defines a LEAP practitioner as a patent agent or
`attorney having three or fewer substantive oral arguments in any federal
`tribunal, including PTAB, and seven or fewer years of experience as a
`licensed attorney or agent.1
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a qualifying LEAP practitioner
`participate in the program and conduct at least a portion of the party’s oral
`argument. The Board will grant up to fifteen minutes of additional argument
`
`
`1 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`4
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`
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`IPR2017-01068
`Patent 5,859,601 B2
`
`time to that party, depending on the length of the proceeding and the
`PTAB’s hearing schedule. A party should submit a request, no later than at
`least five business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov.2
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.3 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements, either due to the years of experience as a licensed
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`
`
`2 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`3 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`5
`
`
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`IPR2017-01068
`Patent 5,859,601 B2
`
`but nonetheless has a basis for considering themselves to be in the category
`of advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided when the advocate does not qualify for
`LEAP, a party may share argument time among counsel and the Board will
`permit the more experienced counsel to provide some assistance, if
`necessary, during oral argument, and to clarify any statements on the record
`before the conclusion of the oral argument.
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent. Any special
`requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video oral argument, such as a request to
`accommodate visual or hearing impairments, and indicate how the Board
`may accommodate the special request. Any special requests must be
`presented in a separate communication not less than five days before the
`argument.
`The panel will have access to all papers filed with the Board,
`including demonstratives. During the oral argument, counsel are advised to
`identify clearly and specifically each demonstrative referenced (e.g., by slide
`or screen number) to ensure the clarity and accuracy of the court reporter’s
`transcript. In addition, counsel are advised to speak slowly and identify
`themselves each time they speak. The parties should be aware that the
`remote nature of the oral argument may also result in an audio lag, so
`
`6
`
`
`
`IPR2017-01068
`Patent 5,859,601 B2
`
`counsel are advised to observe a pause prior to speaking, so as to avoid
`speaking over others. Please unmute yourself only when speaking.
`Members of the public may request to listen in on this oral argument.
`If resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov at least five business days
`prior to the oral argument date.
`
`In light of the foregoing, it is ORDERED that oral argument,
`conducted pursuant to the procedures outlined above, shall commence
`at 1:00 pm Eastern time on January 19, 2021.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`
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`
`
`7
`
`
`
`IPR2017-01068
`Patent 5,859,601 B2
`
`For PETITIONER:
`
`Kristopher Reed
`Edward Mayle
`Kilpatrick Townsend & Stockton LLP
`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`
`For PATENT OWNER:
`
`Patrick McElhinny
`Mark Knedeisen
`K&L GATES LLP
`patrick.mcelhinny@klgates.com
`mark.knedeisen@klgates.com
`
`
`
`
`
`
`8
`
`
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