Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper: 40
`Entered: August 31, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioner,
`
`v.
`
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`
`Case IPR2017-01605
`Patent 7,166,253 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper: 40
`Entered: August 31, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`DONGHEE AMERICA, INC. and DONGHEE ALABAMA, LLC,
`Petitioner,
`
`v.
`
`PLASTIC OMNIUM ADVANCED INNOVATION AND RESEARCH,
`Patent Owner.
`
`
`Case IPR2017-01605
`Patent 7,166,253 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, CHRISTOPHER M. KAISER, and
`ROBERT L. KINDER, Administrative Patent Judges.
`KAISER, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`Donghee America, Inc. and Donghee Alabama, LLC (“Petitioner”)
`and Plastic Omnium Advanced Innovation and Research (“Patent Owner”)
`each request oral hearing pursuant to 37 C.F.R. § 42.70. Paper 35; Paper 37.
`This Order resolves those requests.
`We note at the outset that each of the requests for oral hearing is
`untimely. The scheduling order governing this proceeding set August 10,
`2018, as Due Date 4, the deadline for requesting oral hearing. Paper 11, 5,
`7. Despite this, neither request was filed until August 21, 2018, making
`those requests untimely.
`The parties presumably consider their requests timely because they
`stipulated to a change in the deadline to request oral hearing. Paper 35, 1
`(“Pursuant to . . . the Parties’ July 24, 2018 Joint Notice of Stipulation to
`Revise Schedule . . . [Patent Owner] respectfully request[s] oral
`argument . . . .”); Paper 37, 1 (“Petitioners . . . hereby request oral argument
`pursuant to . . . the Joint Notice of Stipulation to Revise Schedule . . . .”).
`The parties did in fact stipulate to a change in Due Date 4 from August 10 to
`August 21. Paper 32, 1. And the scheduling order does give the parties the
`authority to stipulate to changes in certain due dates, including Due Date 4.
`Paper 11, 3 (“The parties may stipulate to different dates for DUE DATES 1
`through 5 . . . .”). But the scheduling order places an important limitation on
`the parties’ authority to change Due Date 4: “Any stipulated extension of
`DUE DATE 4 shall not modify the deadline set forth in this Order by
`which a party must request oral argument.” Id. at 3–4 (emphasis added).
`Accordingly, the deadline to request oral argument remains August 10,
`2018. The parties’ requests for oral hearing filed on August 21, 2018, are
`therefore untimely.
`
`2
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`A way out of this dilemma may be found in Rule 42.5(c)(3).
`Although neither party bothered to invoke this rule, it provides us with the
`independent power to decide “that consideration [of a late filing] on the
`merits would be in the interests of justice.” 37 C.F.R. § 42.5(c)(3). This
`provision helps to ensure that our rules are “construed to secure the just . . .
`resolution of every proceeding.” Id. § 42.1(b). Here, both parties wish to
`have an oral hearing, which suggests that, at a minimum, neither party would
`be prejudiced by our holding a hearing based on the untimely hearing
`requests. We also believe that the opportunity for the parties to crystallize
`their arguments and respond to questions from the panel would be useful in
`resolving this proceeding on the merits. Because Petitioner, Patent Owner,
`and the Board all would prefer to hold an oral hearing, the interests of justice
`strongly favor holding the hearing.
`Consistent with the discussion above, we grant the parties’ requests
`for oral hearing. Oral argument shall commence at 1:00 pm Eastern Time
`on September 12, 2018, on the 9th floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia.
`Each side requests 30 minutes of argument time. Paper 35, 2;
`Paper 37, 1. Petitioner and Patent Owner each shall have 30 minutes of total
`time to present arguments. The hearing will proceed as follows. Petitioner
`will open the hearing by presenting its case regarding the challenged claims
`and the proposed substitute claims. Patent Owner then will respond to
`Petitioner’s presentation. Petitioner may reserve rebuttal time (of no more
`than half its total argument time) to reply to Patent Owner’s arguments.
`Patent Owner may reserve sur-rebuttal time (of no more than half its total
`argument time) to respond to Petitioner’s rebuttal.
`
`3
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis.
`The parties shall serve on opposing counsel demonstrative exhibits no
`later than September 5, 2018. The parties also shall provide the
`demonstrative exhibits to the Board at least three business days prior to the
`hearing by emailing them to Trials@uspto.gov. The parties shall not file
`any demonstrative exhibits in this proceeding without prior authorization
`from the Board. A hard copy of the demonstrative exhibits should be
`provided to the court reporter at the hearing.
`We remind the parties that demonstrative exhibits are not evidence,
`but are intended to assist the parties in presenting their oral arguments to the
`Board. We also remind the parties that demonstrative exhibits are not a
`mechanism for making arguments not previously addressed in the papers.
`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, which must include citations to the
`record.
`To the extent that the parties object to the propriety of any
`demonstrative exhibits, we expect the parties will meet and confer in good
`faith to resolve any objections to demonstrative exhibits. If such objections
`cannot be resolved, the parties may file objections to demonstratives with
`the Board at least two business days before the hearing. The objections
`should identify with particularity the portions of each demonstrative exhibit
`
`4
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`subject to objection, include a copy of the objected-to portions, and include a
`one-sentence statement of the reason for each objection. No further
`argument or explanation is permitted. We will consider any objections and
`schedule a conference call if deemed necessary. Otherwise, we will reserve
`ruling on the objections. Any objection to demonstrative exhibits that is not
`timely presented will be considered waived.
`At least one member of the panel will be attending the hearing
`electronically from a remote location and may not be able to view the
`projection screen in the hearing room. In particular, documents presented on
`the Elmo projector are not visible to remote judges, so please plan
`accordingly. If a demonstrative exhibit is not made available or visible to
`the judge(s) presiding over the hearing remotely, that demonstrative will not
`be considered. Each presenter must identify clearly and specifically each
`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 the judge(s) presiding over the hearing remotely. Because of
`limitations of the audio transmission systems in our hearing rooms, the
`presenter may speak only when standing at the hearing room lectern.
`No live witness testimony shall be taken at the oral argument. The
`Board expects lead counsel for each party to be present in person at the oral
`hearing. However, any counsel of record may present the party’s argument.
`If either party expects 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.
`
`5
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`Any requests for audiovisual equipment should be directed to
`Trials@uspto.gov. Requests for equipment will not be honored unless
`presented in a separate communication not less than three business days
`before the hearing, directed to the above email address.
`
`
`
`
`
`
`
`6
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`It is
`ORDERED that the parties’ requests for oral hearing are granted
`subject to the conditions set forth in this Order; and
`FURTHER ORDERED that an oral hearing, conducted pursuant to
`the procedures outlined above, shall commence at 1:00 PM Eastern Time on
`September 12, 2018.
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2017-01605
`Patent 7,166,253 B2
`
`PETITIONER:
`Alyssa Caridis
`Bas de Blank
`Donald Daybell
`ORRICK, HERRINGTON, & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`m2bptabdocket@orrick.com
`d2dptabdocket@orrick.com
`
`
`PATENT OWNER:
`Robert C. Mattson
`Vincent Shier
`Christopher Ricciuti
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`CPDocketMattson@oblon.com
`CPDocketShier@oblon.com
`CPDocketRicciuti@oblon.com
`
`
`8
`
`
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