Paper No. 38
`Trials@uspto.gov
`571-272-782 Entered: October 23, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HID GLOBAL CORP.,
`Petitioner,
`
`v.
`
`IDEMIA IDENTITY & SECURITY USA LLC
`and L-1 SECURE CREDENTIALING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083,152 B2)
`
`____________
`
`
`Before KARL D. EASTHOM, CHRISTA P. ZADO, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`TRIAL HEARING ORDER AND
`ORDER ON SUR-REPLIES1
`37 C.F.R. § 42.70; 42.20
`
`
`
`
`1 This Order issues in each case.
`
`1
`
`
`Trials@uspto.gov
`571-272-782 Entered: October 23, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HID GLOBAL CORP.,
`Petitioner,
`
`v.
`
`IDEMIA IDENTITY & SECURITY USA LLC
`and L-1 SECURE CREDENTIALING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01938 (Patent 7,207,494 B2)
`Case IPR2017-01939 (Patent 7,207,494 B2)
`Case IPR2017-01940 (Patent 7,661,600 B2)
`Case IPR2017-01941 (Patent 8,083,152 B2)
`
`____________
`
`
`Before KARL D. EASTHOM, CHRISTA P. ZADO, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`TRIAL HEARING ORDER AND
`ORDER ON SUR-REPLIES1
`37 C.F.R. § 42.70; 42.20
`
`
`
`
`1 This Order issues in each case.
`
`1
`
`
`
`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`I. INTRODUCTION
`The parties and the panel conducted a teleconference on October 10,
`2018, to consider Petitioner’s request to consolidate the above-listed cases and
`to file sur-replies in each case addressing Patent Owner’s Reply in Support of
`its Contingent Motion to Amend (Paper 18, “Reply”).2 The teleconference
`also addressed how much time to allot for the Hearing requested by the parties
`scheduled for November 15, 2018. Petitioner filed a transcript of the
`teleconference. See Ex. 1014.
`II. SUR-REPLY
`During the teleconference, Petitioner requested leave to file a sur-reply
`with evidence to oppose Patent Owner’s Reply in each case. Petitioner
`explained that Patent Owner’s Reply unexpectedly raised a new issue about a
`“combined security feature” in two of the four cases, thereby requiring
`responsive sur-replies and evidence. Petitioner contended declaration
`evidence by its expert about the “combined security feature” exists in two of
`the four cases, so that consolidating the four cases would obviate a need for
`new evidence and allow Petitioner to cite the existing evidence in all four
`cases. Petitioner added that proposed amended claim 11 in IPR2017-01940
`(Paper 33, Claims Appendix) filed after Patent Owner’s Contingent Motion to
`Amend (id., Paper 18) also required a responsive sur-reply and evidence.
`Patent Owner responded that its Contingent Motion to Amend in each case
`
`
`2 Citations refer to Case IPR2017-01938. The parties filed similar papers in
`each case with the exception of Papers 18 and 33 in IPR2017-01941 discussed
`below.
`
`2
`
`
`
`
`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`fairly raised any issue about the “combined security feature” and that the
`updated Trial Practice Guide), avail. at https://go.usa.gov/xU7GP, 83 Fed.
`Reg. 39989 (Aug. 13, 2018) (“UTPG”), precludes additional declaration
`evidence.
` The panel explained that the late stage of the proceedings––i.e., with
`briefing complete except for the requested sur-replies––tilted against
`consolidating the cases. The panel also explained, as Patent Owner argued,
`that the UTPG allows sur-replies but not declaration evidence: “Sur-replies to
`principal briefs (i.e., to a reply to a patent owner response or to a reply to an
`opposition to a motion to amend) normally will be authorized by the
`scheduling order entered at institution. The sur-reply may not be accompanied
`by new evidence other than deposition transcripts of the cross-examination of
`any reply witness.” Id. at 14.
`Based on the UTPG and the circumstances here, the panel authorized
`sur-replies but not additional evidence. The sur-replies provide Petitioner a
`sufficient opportunity to address any allegedly new arguments in Patent
`Owner’s Reply and to address proposed amended claim 11 in IPR2017-01940.
`Accordingly, the panel authorized Petitioner to file a sur-reply limited to 12
`pages in each of the proceedings, due on or before October 19, 2018. See id.
`at 6 (“[R]eplies to oppositions to motions to amend are limited to 12 pages.”).3
`
`
`3 Petitioner filed the sur-replies on October 19, 2018. See, e.g., Paper 31.
`3
`
`
`
`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`
`III. HEARING
`The parties request a Hearing to present oral argument pursuant to 37
`C.F.R. § 42.70(a). Papers 28, 29. The panel grants the parties’ Hearing
`requests to the extent described below.
`Petitioner requested a total of two hours of Hearing time for the four
`cases in the event the panel decided to deny Petitioner’s request to consolidate
`the cases. Paper 29, 4. Patent Owner requested a total of two and a half hours
`of Hearing time to rebut Petitioner’s arguments and to argue in support of its
`Contingent Motions to Amend. Paper 28, 2.
`Based on a review of the existing briefing in the cases that reveals a
`substantial overlap of issues, and after considering the parties’ concerns, the
`Board determined that two hours per party represents a reasonable and
`sufficient amount of Hearing time. As the panel generally explained during
`the teleconference, the issues across the four cases overlap substantially, with
`the cases involving claims of similar scope, the same asserted prior art, similar
`declaration testimony per expert, and a common specification for all three of
`the challenged patents. Patent Owner generally agreed the cases overlap but
`responded that different issues in its four Contingent Motions to Amend might
`require extending the Hearing over two hours depending on the extent of the
`questioning by the panel. Although two hours for each party represents a
`sufficient amount of expected Hearing time based on the overlap of issues, the
`panel informed the parties it reserves flexibility to reassess and adjust the
`allotted time as the Hearing progresses.
`Petitioner bears the ultimate burden of proof to show the unpatentability
`of challenged claims. See 35 U.S.C. § 316(e). So first, at the Hearing,
`
`4
`
`
`
`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`Petitioner may argue in support of the instituted grounds of alleged
`unpatentability. Second, Patent Owner may oppose Petitioner’s arguments
`and argue in support of Patent Owner’s Contingent Motion to Amend. Third,
`if Petitioner reserves rebuttal time, Petitioner may provide rebuttal arguments
`to Patent Owner’s arguments.
`The Hearing will start at 1:00 PM (ET) on Friday, November 15,
`2018, at the U.S. Patent & Trademark Office in Alexandria, Virginia. All
`attendees must present a valid form of government-issued identification in
`order to enter the Hearing building and should expect possible security
`screening. The Hearing will be open to the public for in-person attendance,
`accommodated on a first-come, first-served basis.
`At least seven (7) business days prior to the Hearing, each party shall
`serve on the other party any demonstrative(s) it intends to use. See 37 C.F.R.
`§ 42.70(b). The parties shall e-mail the demonstrative(s) to the Board at
`Trials@uspto.gov at least five (5) business days prior to the Hearing.
`Demonstratives do not constitute evidence but serve as a visual aid at the
`Hearing. Demonstratives shall not introduce new evidence or raise new
`arguments and shall cite to the record.
`The parties must attempt to resolve any objections to demonstratives
`prior to involving the panel. The parties must request a teleconference with
`the panel by contacting the Board at Trials@uspto.gov least three (3) business
`days before the Hearing to discuss any unresolved objections to the
`demonstratives. Failing to contact the Board timely to address an unresolved
`objection likely shall result in waiver of the issue. The parties should confine
`
`5
`
`
`
`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`demonstrative objections to violations prejudicial to the administration of
`justice.
`Each presenter must identify clearly and specifically each demonstrative
`(e.g., by slide or screen number), paper, or exhibit referenced during the
`Hearing to ensure the clarity and accuracy of the Hearing transcript. At least
`one member of the panel will attend the Hearing electronically from a remote
`location. All demonstratives must be available or visible to the entire panel.
`The Board expects lead counsel for each party to be present in person at
`Hearing. If a party’s lead counsel expects not to attend in person, the party
`must contact the Board to request a joint teleconference with the panel no later
`than seven (7) business days prior to the Hearing to justify the expected
`absence. Any counsel of record may present its party’s arguments at the
`Hearing.
`Lead counsel and back-up counsel may use portable computers in the
`Hearing room at the counsel tables and lectern. A party must request audio-
`visual equipment at Trials@uspto.gov least five (5) business days prior to the
`Hearing to ensure availability of the equipment.
`IV. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s sur-replies are authorized as specified
`above; and
`FURTHER ORDERED that the Hearing shall start at 1:00 PM (ET) on
`Thursday, November 15, 2018 at the U.S. Patent & Trademark Office,
`Madison Building East, Ninth Floor, 600 Dulany Street, Alexandria,
`Virginia.
`
`6
`
`
`
`IPR2017-01938 & IPR2017-01939 (Patent 7,207,494 B2)
`IPR2017-01940 (Patent 7,661,600 B2)
`IPR2017-01941 (Patent 8,083,152 B2)
`
`
`PETITIONER:
`
`Lionel M. Lavenue
`Guang-Yu Zhu
`David C. Seastrunk
`Rachel L. Emsley
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`guang-yu.zhu@finnegan.com
`david.seastrunk@finnegan.com
`rachel.emsley@finnegan.com
`
`
`PATENT OWNER:
`
`Scott McKeown
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`
`Marc W. Vander Tuig
`Richard L. Brophy
`James M. Heinen, Jr.
`Patrick W. Rasche
`ARMSTRONG TEASDALE LLP
`mvandertuig@armstrongteasdale.com
`rbrophy@armstrongteasdale.com
`jheinen@amstrongteasdale.com
`prasche@armstrongteasdale.com
`
`
`
`
`
`
`
`
`7
`
`
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