`Tel: 571-272-7822
`
`Paper: 35
`Entered: October 18, 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 IPR2017-01654 (Patent 9,079,490 B2)
`Case IPR2017-01890 (Patent 9,399,327 B2)
`Case IPR2017-01945 (Patent 9,399,326 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
`
`
`
`
`
`
`
`
`Case IPR2017-01654 (Patent 9,079,490 B2)
`Case IPR2017-01890 (Patent 9,399,327 B2)
`Case IPR2017-01945 (Patent 9,399,326 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 in each of these
`cases.1 Paper 29; Paper 30.2 Subject to the discussion in the present order,
`we grant the parties’ requests for oral hearing. Oral argument shall
`commence at 1:00 pm Eastern Time on November 5, 2018, on the 9th floor
`of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`Petitioner requests 60 minutes of argument time, and Patent Owner
`requests 90 minutes. Paper 29, 3; Paper 30, 1. Petitioner and Patent Owner
`each shall have 60 minutes of total time to present arguments, divided
`between IPR2017-01654, IPR2017-01890, and IPR2017-01945 as each
`party sees fit. The hearing will proceed as follows. Petitioner will open the
`hearing by presenting its case regarding the challenged 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 to respond
`only to Petitioner’s rebuttal.
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`
`
`1 Although the hearing in IPR2017-01654 originally was scheduled to be
`held October 22, 2018, the parties jointly requested continuing that hearing
`until November 5, 2018, to be held jointly with the hearings in IPR2017-
`01890 and IPR2017-01945. IPR2017-01654, Paper 32; IPR2017-01654,
`Paper 33. We granted that request, and we will hold hearings in all three
`cases on November 5, 2018.
`2 Our citations are to the record in IPR2017-01890. Similar filings are
`present in IPR2017-01654 and IPR2017-01945.
`
`2
`
`
`
`Case IPR2017-01654 (Patent 9,079,490 B2)
`Case IPR2017-01890 (Patent 9,399,327 B2)
`Case IPR2017-01945 (Patent 9,399,326 B2)
`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 October 29, 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
`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
`
`3
`
`
`
`Case IPR2017-01654 (Patent 9,079,490 B2)
`Case IPR2017-01890 (Patent 9,399,327 B2)
`Case IPR2017-01945 (Patent 9,399,326 B2)
`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.
`Any requests for audiovisual equipment should be directed to
`Trials@uspto.gov. Requests for equipment will not be honored unless
`
`4
`
`
`
`Case IPR2017-01654 (Patent 9,079,490 B2)
`Case IPR2017-01890 (Patent 9,399,327 B2)
`Case IPR2017-01945 (Patent 9,399,326 B2)
`presented in a separate communication not less than three business days
`before the hearing, directed to the above email address.
`
`
`
`
`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
`November 5, 2018.
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2017-01654 (Patent 9,079,490 B2)
`Case IPR2017-01890 (Patent 9,399,327 B2)
`Case IPR2017-01945 (Patent 9,399,326 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
`
`
`6
`
`