Trials@uspto.gov
`Tel: 571.272.7822
`
`
`Paper No. 20
`Entered: August 31, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`TOSHIBA CORPORATION, TOSHIBA MEMORY CORPORATION, and
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC.,
`Petitioner,
`v.
`MACRONIX INTERNATIONAL CO., LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-01632
`Patent 8,035,417 B1
`____________
`
`Before KEN B. BARRETT, JENNIFER S. BISK, and JASON M. REPKO,
`Administrative Patent Judges.
`
`REPKO, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Request for Oral Hearing
`37 C.F.R. § 42.70
`
`

`

`IPR2017-01632
`Patent 8,035,417 B1
`
`
`Both parties request oral hearing for each of these proceedings
`pursuant to 37 C.F.R. § 42.70. Paper 15 (Patent Owner’s Request);
`Ex. 3003 (Petitioner’s Request).1 The requests are granted.
`Oral hearing will commence at 1:00 PM ET on September 14, 2018,
`on the ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia. The hearings 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 for the hearing and the reporter’s
`transcript will constitute the hearing’s official record. Each party will have
`one hour of total time to present arguments in this case.
`Petitioner will open the hearing by presenting its case regarding the
`challenged claims for which we instituted trial. Patent Owner will follow.
`Petitioner may reserve rebuttal time.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served
`seven business days before the hearing. They shall be filed at the Board
`before the hearing. It is preferred that the demonstrative exhibits be filed
`
`
`1 The Patent Trial and Appeal Board End to End filing system (PTAB E2E)
`was unavailable on the due date of the request (August 17, 2018). Petitioner
`served the request for oral argument on Patent Owner via email and notified
`the Board of the service also via email. See Ex. 3002 (Petitioner’s email);
`Ex. 3003 (Petitioner’s Request for Oral Argument attached to email).
`According to the USPTO’s website, “if PTAB E2E is unavailable during
`normal business hours or other unscheduled outage periods, petitions (and
`other documents) may be served on opposing counsel via email, and the
`Board notified of the service by email copying opposing counsel.” See
`United States Patent and Trademark Office, PTAB E2E FAQ, A2 (Aug. 31,
`2018), https://www.uspto.gov/patents-application-process/patent-trial-and-
`appeal-board/ptab-e2e-frequently-asked-questions. On these facts, we treat
`Petitioner’s request as timely.
`
`2
`
`

`

`IPR2017-01632
`Patent 8,035,417 B1
`
`before 5:00 pm ET on September 13, 2018, to ensure the judges have access
`to those in advance of the hearing. The parties must initiate a conference
`call with the Board by two business days prior to the hearing to resolve any
`dispute over the propriety of each party’s demonstrative exhibits. Any
`dispute over the propriety of demonstrative exhibits that is not timely
`presented two business days prior to the hearing will be considered waived.
`The parties are directed to CBS Interactive Inc. v. Helferich Patent
`Licensing, LLC, IPR2013-00033, Paper 118 (PTAB Oct. 23, 2013) regarding
`the appropriate content of demonstrative exhibits. We will consider the
`objections and schedule a conference call if necessary. Otherwise, we will
`reserve ruling on the objections. Any objection to demonstrative exhibits
`that is not presented timely will be considered waived.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`referenced during each hearing to ensure the clarity and accuracy of the
`reporter’s transcript.
`Requests for audio-visual equipment are to be made five business
`days in advance of the hearing date. The request is to be sent to
`Trials@uspto.gov. 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 oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party is unable to attend the oral
`argument, the Board should be notified via a joint telephone conference call
`no later than two business days prior to the oral hearing to discuss the
`matter.
`
`3
`
`

`

`IPR2017-01632
`Patent 8,035,417 B1
`
`Accordingly, it is
`
`ORDERED that oral argument will commence at 1:00 PM ET, on
`
`September 14, 2018, on the ninth floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia.
`
`
`
`4
`
`

`

`IPR2017-01632
`Patent 8,035,417 B1
`
`PETITIONER:
`Kevin C. Hamilton
`Steven L. Park
`Gerald T. Sekimura
`DLA PIPER LLP (US)
`kevin.hamilton@dlapiper.com
`steven.park@dlapiper.com
`gerald.sekimura@dlapiper.com
`
`PATENT OWNER:
`Timothy W. Riffe
`Ayan Roy-Chowdhury
`Ryan Chowdhury
`Kevin Su
`Christian A. Chu
`Michael J. McKeon
`FISH & RICHARDSON P.C.
`riffe@fr.com
`roy-chowdhury@fr.com
`rchowdhury@fr.com
`su@fr.com
`chu@fr.com
`mckeon@fr.com
`
`
`5
`
`