Trials@uspto.gov
`571–272–7822
`
`Paper 24
`Entered: June 26, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TECHNICAL CONSUMER PRODUCTS, INC., NICOR INC.,
`and AMAX LIGHTING,
`Petitioner,
`
`
`
`v.
`
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`Case IPR2017-01280 (Patent 8,967,844 B2)
`Case IPR2017-01285 (Patent 8,672,518 B2)
`Case IPR2017-01287 (Patent 8,201,968 B2)1, 2
`____________
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`1 This Order pertains to all of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`2 Additional proceedings are joined herewith, as discussed below.
`
`
`571–272–7822
`
`Paper 24
`Entered: June 26, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TECHNICAL CONSUMER PRODUCTS, INC., NICOR INC.,
`and AMAX LIGHTING,
`Petitioner,
`
`
`
`v.
`
`
`LIGHTING SCIENCE GROUP CORP.,
`Patent Owner.
`____________
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`Case IPR2017-01280 (Patent 8,967,844 B2)
`Case IPR2017-01285 (Patent 8,672,518 B2)
`Case IPR2017-01287 (Patent 8,201,968 B2)1, 2
`____________
`
`Before KEVIN F. TURNER, PATRICK M. BOUCHER, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`
`
`1 This Order pertains to all of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`2 Additional proceedings are joined herewith, as discussed below.
`
`
`
`IPR2017-01280 (Patent 8,967,844 B2)
`IPR2017-01285 (Patent 8,672,518 B2)
`IPR2017-01287 (Patent 8,201,968 B2)
`
`
`On November 1, 2017, we entered Decisions to Institute trials in
`proceedings IPR2017-01280, IPR2017-01285, and IPR2017-01287 with
`respect to Petitioner Technical Consumer Products, Inc., Nicor Inc., and
`Amax Lighting (“TCP”). Papers 10. A joint Scheduling Order for those
`proceedings set the date for oral hearing, if requested by either party, as July
`26, 2018. Papers 11.
`Subsequently, additional Petitioners, namely Jiawei Technology (HK)
`Ltd., Jiawei Technology (USA) Ltd., and Shenzhen Jiawei Photovoltaic
`Lighting Co., Ltd. (collectively, “Jiawei”) and Leedarson Lighting Co., Ltd.,
`and Leedarson America, Inc. (collectively, “Leedarson”), requested
`institutions of inter partes review, based on the same or similar petitions, as
`well as joinder with the previously instituted proceedings. We instituted
`trials on the additional petitions and joined those new proceedings,
`according the table below:
`Paper
`Joined with
`Proceeding
`Petitioner Patent
`IPR2018-00261
`Jiawei
`8,967,844 B2 IPR2017-01280 19
`IPR2018-00262
`Jiawei
`8,672,518 B2 IPR2017-01285 22
`IPR2018-00263
`Jiawei
`8,201,968 B2 IPR2017-01287 22
`IPR2018-00269 Leedarson 8,201,968 B2 IPR2017-01287 23
`IPR2018-00270 Leedarson 8,672,518 B2 IPR2017-01285 23
`IPR2018-00271 Leedarson 8,967,844 B2 IPR2017-01280 20
`
`As discussed in the decisions instituting trial and joining with the
`existing proceedings, we consigned both later Petitioners to an “understudy
`role,” providing that the later Petitioners will be provided argument time
`
`2
`
`
`
`IPR2017-01280 (Patent 8,967,844 B2)
`IPR2017-01285 (Patent 8,672,518 B2)
`IPR2017-01287 (Patent 8,201,968 B2)
`
`only at the acquiescence of and within the time limits that would normally
`be given to TCP.
`Pursuant to 37 C.F.R. § 42.70, Petitioners and Patent Owner have
`requested an oral hearing in the cited proceedings. Papers 24, 25 (IPR2017-
`01280); Papers 23, 24 (IPR2017-01285); Papers 20, 21 (IPR2017-01287).
`Petitioners requested a consolidated oral hearing to cover all three
`proceedings. Petitioners’ and Patent Owner’s requests for oral hearing in all
`three proceedings are granted, in the form of a consolidated hearing.
`The oral arguments for all three cases will be heard on the same day
`and location, namely on August 20, 2018 on the ninth floor of Madison
`Building East, 600 Dulany Street, Alexandria, Virginia.3 The hearing will
`commence at 1:00 PM in Hearing Room “A.” In person attendance will be
`accommodated on a first-come-first-served basis. If the parties have any
`concern about disclosing confidential information, they are to contact the
`Board at least five (5) business days in advance of the hearings to discuss the
`matter.
`Each party will have sixty (60) minutes of total time to present
`arguments for the three cases. Petitioner bears the ultimate burden of proof
`that the claims at issue are unpatentable. Therefore, Petitioner will proceed
`first to present its case with regard to the challenged claims and grounds on
`which we instituted trial, or that were later introduced. Patent Owner then
`will argue its opposition to Petitioner’s case. Petitioner may reserve rebuttal
`
`
`3 The panel has changed the hearing date from July 26, 2018, to August 20,
`2018, due to a scheduling conflict.
`
`3
`
`
`
`IPR2017-01280 (Patent 8,967,844 B2)
`IPR2017-01285 (Patent 8,672,518 B2)
`IPR2017-01287 (Patent 8,201,968 B2)
`
`time. The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the 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.
`
`Furthermore, pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits
`must be served at least five (5) business days before the hearing. The parties
`shall provide a courtesy copy of any demonstrative exhibits to the Board at
`least three (3) business days prior to the hearing by emailing them to
`Trials@uspto.gov. The demonstrative exhibits in these cases are not
`evidence and are intended only to assist the parties in presenting their oral
`argument to the Board.
`The parties must, however, file any objections to the demonstratives
`with the Board at least three (3) business days before the hearing. Any
`objection to the demonstrative exhibits that is not presented timely will be
`considered waived. The objections should identify with particularity which
`demonstratives are subject to objection, and include a short (one sentence or
`less) statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until after the oral argument. The parties are
`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
`Regents of the University of Michigan, IPR2013-00041 (PTAB January 27,
`
`4
`
`
`
`IPR2017-01280 (Patent 8,967,844 B2)
`IPR2017-01285 (Patent 8,672,518 B2)
`IPR2017-01287 (Patent 8,201,968 B2)
`
`2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`The Board expects lead counsel for each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party will not be in attendance at
`oral hearing, the Board should be notified via a joint telephone conference
`call no later than three (3) 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
`unless presented in a separate communication not less than five (5) business
`days before the hearing directed to the above email address.
`At least one judge will be participating remotely via a
`videoconferencing device and will not be able to view the projection screen
`in the hearing room. 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 avoid confusion, and to
`ensure the clarity and accuracy of the reporter’s transcript.
`Accordingly, it is
`ORDERED that Due Date 7 (Papers 11) is reset to August 20, 2018.
`
`
`
`
`5
`
`
`
`IPR2017-01280 (Patent 8,967,844 B2)
`IPR2017-01285 (Patent 8,672,518 B2)
`IPR2017-01287 (Patent 8,201,968 B2)
`
`PETITIONER(TCP):
`Jason G. Harp
`Steven H. Noll
`Thomas A. Rammer
`Stacie Hartman (admitted pro hac vice)
`SCHIFF HARDIN LLP
`jharp@schiffhardin.com
`snoll@schiffhardin.com
`trammer@schiffhardin.com
`shartman@schiffhardin.com
`
`PETITIONER(Jiawei):
`Mark C. Nelson
`Daniel Valenzuela
`BARNES & THORNBURG LLP
`mnelson@btlaw.com
`dvalenzuela@btlaw.com
`
`PETITIONER(Leedarson):
`Jeffery Johnson
`Don Daybell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`3J6PTABDocket@orrick.com
`D2DPTABDocket@orrick.com
`
`
`PATENT OWNER:
`Garret A. Leach
`Eric D. Hayes
`Eugene Goryunov
`Kyle M. Kantarek
`KIRKLAND & ELLIS LLP
`garret.leach@kirkland.com
`eric.hayes@kirkland.com
`eugene.goryunov@kirkland.com
`kyle.kantarek@kirkland.com
`
`6
`
`
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