Trials@uspto.gov
`Tel: 571-272-7822
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`Paper No. 50
`Entered: September 26, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`SPRING VENTURES, LTD.,
`Patent Owner.
`_______________
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`Case IPR2017-01653
`Patent 8,661,094 B2
` _______________
`
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`Before MICHAEL R. ZECHER, MINN CHUNG, and SCOTT E. BAIN,
`Administrative Patent Judges.
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`BAIN, Administrative Patent Judge.
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`ORDER
`Oral Argument
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
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`IPR2017-01653
`Patent 8,661,094 B2
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`On January 16, 2018, we instituted an inter partes review only as to
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`claims 1–13, 15, and 16 of U.S. Patent No. 8,661,094 B2 (“the ’094 patent) based
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`on all the grounds of unpatentability (“grounds”) presented in the Petition.
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`Paper 11. Subsequently, following the U.S. Supreme Court’s decision in SAS
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`Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018), we modified our institution decision
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`to include all of the challenged claims (i.e., claims 1–16) based on all the grounds
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`presented in the Petition. Paper 16. The parties request oral argument for this
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`proceeding, pursuant to 37 C.F.R. § 42.70(a). Papers 44, 45. The parties’ requests
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`are granted.
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`The parties both propose that each side have one hour to present its
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`arguments. Papers 44, 45. We have reviewed the issues that the parties intend to
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`address, and we agree that each party should be accorded one hour to present oral
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`arguments.
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`Petitioner bears the ultimate burden of proof that claims 1–16 of the
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`’094 patent are unpatentable based on the grounds instituted in this proceeding.
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`35 U.S.C. § 316(e) (“[T]he petitioner shall have the burden of proving a
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`proposition of unpatentability by a preponderance of the evidence.”). The burden
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`of persuasion ordinary lies with Petitioner to demonstrate that proposed, substitute
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`claims 17–20 are unpatentable based on the entirety of the record. See Western
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`Digital Corp. v. Spex Technologies, Inc., Case IPR2018-00082 (PTAB Apr. 25,
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`2018) (Paper 13) (informative). Consequently, Petitioner will proceed first to
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`present its case as to the unpatentability of claims 1–16 of the ’094 patent and the
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`grounds instituted, as well as the unpatentability of proposed, substitute claims 17–
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`20. Petitioner may reserve rebuttal time. Absent special circumstances, Petitioner
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`will not be permitted to reserve for rebuttal more than half the total time it has been
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`IPR2017-01653
`Patent 8,661,094 B2
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`allotted for argument. Thereafter, Patent Owner will respond to Petitioner’s case.
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`Petitioner then will make use of its rebuttal time to respond to Patent Owner’s case.
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`The hearing will commence at 1:00 PM Eastern Time on Thursday,
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`October 18, 2018, and it will be open to the public for in-person attendance on the
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`ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia
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`(Hearing Room B). In-person attendance will be accommodated on a first-come,
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`first-served basis. The Board will provide a court reporter for the hearing, and the
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`reporter’s transcript will constitute the official record of the hearing.
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`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no
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`later than seven (7) business days before the hearing date, and filed with the Board
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`no later than the time of the hearing. Demonstrative exhibits are not evidence,
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`but merely a visual aid for use at the hearing. Demonstrative exhibits shall not
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`introduce new arguments or evidence. The parties must initiate a conference call
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`with us at least three (3) business days prior to the hearing date to resolve any
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`dispute over the propriety of each party’s demonstrative exhibits. Regardless of
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`whether the propriety of any demonstrative exhibit is disputed by either party, we
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`consider demonstrative exhibits only to the extent (1) that they elucidate the
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`parties’ arguments presented during the hearing; and (2) that they include only
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`arguments and/or evidence already of record in these proceedings. For further
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`guidance on what constitutes an appropriate demonstrative exhibit, the parties are
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`directed to CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case
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`IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118).
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`We remind the parties that each presenter must identify clearly and
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`specifically each demonstrative exhibit (e.g., by slide or screen number) referenced
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`during the hearing to ensure the clarity and accuracy of the reporter’s transcript.
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`The parties also should note that one member of the panel will be attending the
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`IPR2017-01653
`Patent 8,661,094 B2
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`hearing electronically from a remote location. If the parties have questions as to
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`whether demonstrative exhibits would be sufficiently visible and available to each
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`of the Administrative Patent Judges presiding over the hearing, the parties are
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`invited to contact the Board at 571-272-9797.
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`The Board expects lead counsel for each party to be present at the hearing;
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`however, any backup counsel may make the actual presentation, in whole or in
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`part. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug.
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`14, 2012). If lead counsel for either party is unable to attend the hearing, the
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`parties shall request a joint telephone conference call no later than two (2) business
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`days prior to the hearing date to discuss the matter.
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`Requests for special accommodations or audio-visual equipment are to be
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`made at least five (5) business days in advance of the hearing date. Such requests
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`must be sent to Trials@uspto.gov. If the requests are not received timely,
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`requested accommodations and/or equipment may not be available on the day of
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`the hearing.
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`IPR2017-01653
`Patent 8,661,094 B2
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`For PETITIONER:
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`Scott McKeown
`Scott.mckeown@ropesgray.com
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`Gabrielle E. Higgins
`Gabrielle.higgins@ropesgray.com
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`Keyna Chow
`Keyna.chow@ropesgray.com
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`For PATENT OWNER:
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`Seth Ostrow
`sho@msf-law.com
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`Antonio Papageorgiou
`ap@msf-law.com
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