Trials@uspto.gov
`571.272.7822
`
`Paper No. 23
`Entered: October 18, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SMART AUTHENTICATION IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02047
`Patent 8,082,213 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, MICHELLE N. WORMMEESTER, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`571.272.7822
`
`Paper No. 23
`Entered: October 18, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SMART AUTHENTICATION IP, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02047
`Patent 8,082,213 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, MICHELLE N. WORMMEESTER, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`IPR2017-02047
`Patent 8,082,213 B2
`
`
`We instituted inter partes review (see Paper 9) in this proceeding and
`issued a Scheduling Order (Paper 10) that sets the date for oral hearing as
`November 6, 2018, if a hearing is requested by either party and granted by
`the Board. Petitioner requests oral hearing pursuant to 37 C.F.R. § 42.70.
`Paper 22. Patent Owner did not file a request for oral hearing. We grant
`Petitioner’s request.
`The hearing will commence at 1:00 PM Eastern Time, on
`November 6, 2018, and will be conducted at the USPTO Headquarters,
`Ninth Floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia 22314. 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 at least three business days in advance of
`the hearing to discuss the matter.
`We grant one hour of oral argument time to each party, for a total of
`two hours. Because Petitioner bears the ultimate burden of proof that the
`challenged claims are unpatentable, Petitioner will proceed first to present its
`case as to the challenged claims and instituted grounds of unpatentability.
`Thereafter, Patent Owner will respond to Petitioner’s case. Petitioner may
`reserve rebuttal time to respond to arguments presented by Patent Owner.
`No live testimony from any witness will be taken at the oral argument.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been so
`filed.
`
`2
`
`
`
`IPR2017-02047
`Patent 8,082,213 B2
`
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no
`later than seven business days before the hearing date. They shall be filed
`with the Board no later than five business days prior to the hearing date.
`The parties must initiate a conference call with the Board at least three
`business days prior to the hearing to resolve any dispute over the propriety
`of each party’s demonstrative exhibits. 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. See
`also CBS Interactive Inc. v. Helferich Patent Licensing, LLC, Case
`IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118) (The Board has the
`discretion to limit the parties’ demonstratives to pages in the record should
`there be no easy resolution to objections over demonstratives.).
`If a demonstrative is not made available to the Board in the manner
`indicated above, that demonstrative may not be available to each of the
`judges during the hearing and may not be considered. Additionally, the
`parties are reminded that the 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. Because of limitations on the audio transmission systems in our
`hearing rooms, the presenter may speak only when standing at the hearing
`room podium. If the parties have questions as to whether demonstrative
`exhibits would be sufficiently visible and available to all the judges, the
`parties are invited to contact the Board at (571) 272-9797.
`The Board expects lead counsel for each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`
`3
`
`
`
`IPR2017-02047
`Patent 8,082,213 B2
`
`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 five business days prior to the oral hearing to discuss the
`matter.
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`hearing transcript will be entered in the record of this proceeding.
`Any requests regarding special equipment or needs, such as for audio-
`visual equipment, should be directed to Trials@uspto.gov. Requests for
`audio-visual equipment are to be made at least five business days in advance
`of the hearing date.
`It is
`ORDERED that oral argument will commence at 1:00 PM ET on
`November 6, 2018, in Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2017-02047
`Patent 8,082,213 B2
`
`PETITIONER:
`
`Alexander P. Ott
`McDERMOTT WILL & EMERY
`aott@mwe.com
`
`Roshan Mansinghani
` Jonathan Stroud
`UNIFIED PATENTS INC.
`roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Tarek N. Fahmi
`Jason LaBerteaux
`ASCENDA LAW GROUP, PC
`tarek.fahmi@ascendalaw.com
`jason.laberteaux@ascendalaw.com
`
`5
`
`
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