Trials@uspto.gov Paper No. 33
` Filed: September 25, 2018
`571.272.7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MULTI PACKAGING SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPI CARD GROUP – MINNESOTA, INC.,
`Patent Owner.
`____________
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
` Filed: September 25, 2018
`571.272.7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MULTI PACKAGING SOLUTIONS, INC.,
`Petitioner,
`
`v.
`
`CPI CARD GROUP – MINNESOTA, INC.,
`Patent Owner.
`____________
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`Case IPR2017-01650
`Patent 8,419,889 B2
`
`
`
`Patent Owner and Petitioner jointly request an oral hearing pursuant to
`37 C.F.R. § 42.70. Paper 30. The request is granted to the extent set forth
`below and subject to the following conditions.
`Oral argument shall commence at 1:00 PM Eastern Time on
`October 3, 2018, on the 9th floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia.
`The parties propose an allocation of sixty (60) minutes total argument
`time per side. Paper 30, 2. Accordingly, the Board determines that each
`party shall be allotted sixty (60) minutes of total time to present argument.
`Petitioner bears the ultimate burden of proof that the patent claims at issue
`are unpatentable. Therefore, Petitioner will open the hearing by presenting
`its case regarding the challenged claims for which we instituted trial.
`Petitioner may reserve some of its argument time for rebuttal. Thereafter,
`Patent Owner will respond to Petitioner’s presentation. Patent Owner also
`may reserve some of its argument time for rebuttal.
`
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript shall 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. If the parties have any
`concern about disclosing confidential information, they are requested to
`contact the Board by September 28, 2018, to request a conference call to
`discuss the matter.
`The Board’s August 2018 Trial Practice Guide Update (“TPGU”)
`provides an opportunity for the parties to request a pre-hearing conference.
`See TPGU 19 (“The purpose of the pre-hearing conference is to afford the
`parties the opportunity to preview (but not argue) the issues to be discussed
`
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`at the oral hearing, and to seek the Board’s guidance as to particular issues
`that the panel would like addressed by the parties.”). If either party desires a
`pre-hearing conference, the parties should jointly contact the Board by
`September 28, 2018, to request a conference call for that purpose.
`
`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 must not include new evidence and each must
`include citations to the record sufficient to establish that the exhibit contains
`no new argument or evidence not already of record in the proceeding(s) in
`which it is offered. The parties are directed to serve demonstrative exhibits
`on opposing counsel at least five (5) days before the hearing date. Please
`also provide a courtesy copy of any demonstrative exhibits to the Board at
`least five (5) days prior to the hearing by emailing them to
`Trials@uspto.gov. The parties are directed to refrain from filing
`demonstrative exhibits in the record of this proceeding.
`
`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 demonstrative
`exhibits with the Board at least two (2) days before the hearing. Any
`objection to demonstrative exhibits that is not timely presented 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
`
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`
`schedule a conference call if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until 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,
`2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`The parties should be prepared for the possibility that at least one
`member of the panel may attend the hearing electronically from a remote
`location and may not be able to view the projection screen in the hearing
`room. 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. Counsel 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.
`
`No live testimony from any witness will 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 attend the oral
`hearing, the parties should initiate a joint telephone conference with the
`Board no later than two (2) days prior to the oral hearing to discuss the
`matter.
`
`The parties request permission to use certain audio/visual equipment
`to display exhibits during the oral hearing. Paper 30, 2. Those requests, and
`any other special requests for audiovisual equipment, should be directed to
`Trials@uspto.gov. Requests for special equipment will not be honored
`
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`Case IPR2017-01650
`Patent 8,419,889 B2
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`unless presented in a separate communication not less than five days before
`the hearing, directed to the above email address.
`
`
`It is
`ORDERED that the parties’ joint request for oral hearing (Paper 30) is
`granted subject to the conditions set forth in this Order; and
`FURTHER ORDERED that oral hearing, conducted pursuant to the
`procedures outlined above, shall commence at 1:00 PM Eastern Time on
`October 3, 2018.
`
`5
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`
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`Case IPR2017-01650
`Patent 8,419,889 B2
`
`PETITIONER:
`
`Mark D. Rowland
`Gabrielle E. Higgins
`Ropes & Gray LLP
`mark.rowland@ropesgray.com
`gabrielle.higgins@ropesgray.com
`
`PATENT OWNER:
`
`
`Michael J. Scheer
`The Law Office of Michael J. Scheer
`mscheer@michaeljscheer.com
`
`Pejman Sharifi
`Louis L. Campbell
`Winston & Strawn LLP
`psharifi@winston.com
`llcampbell@winston.com
`
`
`6
`
`
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