Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 33
`Entered: September 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZSCALER, INC.,
`Petitioner
`
`v.
`
`SEMANTEC CORPORATION,
`Patent Owner
`____________
`
`Case IPR2017-01342
`Patent 8,661,498 B2
`
`____________
`
`
`Before DANIEL N. FISHMAN and STACEY G. WHITE,
`Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 33
`Entered: September 4, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZSCALER, INC.,
`Petitioner
`
`v.
`
`SEMANTEC CORPORATION,
`Patent Owner
`____________
`
`Case IPR2017-01342
`Patent 8,661,498 B2
`
`____________
`
`
`Before DANIEL N. FISHMAN and STACEY G. WHITE,
`Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01342
`Patent 8,661,498 B2
`
`
`Patent Owner requested oral argument pursuant to 37 C.F.R.
`§ 42.70(a). Paper 29. Petitioner did “not specifically request oral
`argument,” but agreed to “be prepared and pleased to address at the hearing
`any questions the Board may have regarding Petitioners unopposed request
`for adverse judgment as to claims 1–2, 13, 28, and 39.” Paper 26, 1. Patent
`Owner’s request is granted and each party will be allotted sixty (60) minutes
`for argument.
`The hearing will commence at 9:00 AM ET, on Thursday,
`September 6, 2018, on the ninth floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia. The hearing will be open to the
`public for in-person attendance that will be accommodated on a first-come,
`first-served basis. The Board will provide a court reporter, and the
`reporter’s transcript will constitute the official record of the hearing.
`The Board recently published an update to its Trial Practice Guide,
`which states the following regarding hearing procedures:
`At the oral hearing, a petitioner generally will argue first,
`followed by the patent owner, after which a rebuttal may be given
`by the petitioner. . . . The Board may also permit patent owners
`the opportunity to present a brief sur-rebuttal if requested.
`Trial Practice Guide August 2018 Update, p. 20, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_
`Practice_Guide.pdf (“TPG Update”).
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`patent claims at issue are unpatentable. Petitioner will proceed first to
`present its case with respect to the challenged patent claims and grounds
`with respect to which the Board instituted. Petitioner may reserve some of
`its argument time to respond to Patent Owner’s presentation. Thereafter,
`
`2
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`IPR2017-01342
`Patent 8,661,498 B2
`
`
`Patent Owner will respond to Petitioner’s arguments. In light of the
`guidance in the TPG Update, Patent Owner may reserve some of its
`argument time to respond to issues raised in Petitioner’s response to Patent
`Owner’s presentation. Petitioner may make use of the time it has reserved,
`if any, to rebut Patent Owner’s opposing presentation regarding
`patentability. Lastly, Patent Owner may make use of the time it has reserved,
`if any, to present its sur-rebuttal to Petitioner’s rebuttal.
`In view of the compressed revised schedule in this matter,
`demonstrative exhibits must be served on the opposing party, and filed
`at the Board, no later than Tuesday September 4, 2018. We note that
`regarding demonstrative exhibits the TPG Update states:
`Demonstrative exhibits used at the final hearing are aids to oral
`argument and not evidence, and should be clearly marked as
`such. For example, each slide of a demonstrative exhibit may
`be marked with the words “DEMONSTRATIVE EXHIBIT –
`NOT EVIDENCE” in the footer. Demonstrative exhibits
`cannot be used to advance arguments or introduce evidence not
`previously presented in the record.
`
`Id. at 21. Furthermore, in view of the compressed schedule in this
`matter, the parties are instructed to attempt to resolve any objections to
`demonstrative exhibits prior to the hearing in view of the above
`guidance in the TPG Update that demonstrative exhibits are not
`evidence in the trial. If the parties cannot resolve any such objections,
`the parties shall be prepared to discuss any such objections in their
`respective allotted time for arguments. The Board may reserve ruling
`on such objections until after completion of 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,
`
`3
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`IPR2017-01342
`Patent 8,661,498 B2
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`2014) (Paper 65), for additional guidance regarding the appropriate content
`of demonstrative exhibits.
`The parties should note that at least one member of the panel will be
`attending the hearing electronically from a remote location. The parties are
`reminded that each presenter must identify clearly and specifically each
`document, exhibit, or demonstrative exhibit (e.g., by slide or screen number)
`referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript and for the benefit of judges participating electronically
`from remote locations.
`Patent Owner’s Request for Oral Argument (Paper 29) included a
`request for audio-visual equipment. We remind both parties that such
`requests were to be sent to Trials@uspto.gov or should be directed to
`the Board at (571) 272-9797. If the request is not received timely, the
`equipment may not be available on the day of the hearing.
`The Board expects lead counsel for each party to be present at the
`hearing, although lead or back-up counsel of record may make the
`presentation. If either party anticipates that its lead counsel will not attend
`the oral argument, the parties should initiate a joint telephone conference
`with the Board no later than two (2) business days prior to the oral hearing to
`discuss the matter.
`The TPG Update provides further guidance regarding arguments at an
`oral hearing as follows:
`No new evidence and arguments. During an oral hearing, a party
`may rely upon appropriate demonstrative exhibits as well as
`evidence that has been previously submitted in the proceeding,
`but may only present arguments relied upon in the papers
`previously submitted. Except in cases where the Board permits
`
`4
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`IPR2017-01342
`Patent 8,661,498 B2
`
`
`live testimony, no new evidence may be presented at the oral
`argument.
`TPG Update 23.
`In a pre-hearing conference call on Wednesday, August 30, 2018, the
`Board instructed the parties to be prepared to discuss, at least, the following
`issues:
`1.
`
`Status of claims 1, 2, 13, 28, and 39 in view of Patent Owner’s
`statutory disclaimer thereof and 37 C.F.R. § 42.73. See Ex.
`2007.
`The parties’ mutual requests to terminate this proceeding in
`view of Patent Owner’s statutory disclaimer of claims of claims
`1, 2, 13, 28, and 39. See Papers 14 (“PO Resp.”), 15 (“Reply”).
`Patent Owner’s Motion to Strike Petitioner’s Supplemental
`Reply and Petitioner’s Opposition thereto. See Papers 27, 32.
`Proper interpretation of “not revealing” in the claims at issue
`and any related teachings or suggestion of such in the prior art.
`
`2.
`
`3.
`
`4.
`
`
`
`Accordingly, it is
`ORDERED that oral argument will commence at 9:00 AM ET,
`on Thursday, September 6, 2018, on the ninth floor of Madison Building
`East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`5
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`IPR2017-01342
`Patent 8,661,498 B2
`
`
`
`PETITIONER:
`
`Leo L. Lam
`KEKER, VAN NEST & PETERS LLP
`llam@kvn.com
`
`PATENT OWNER:
`
`Chad C. Walters
`Kurt M. Pankratz
`James Williams
`Harrison G. Rich
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`james.williams@bakerbotts.com
`harrison.rich@bakerbotts.com
`
`6
`
`
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