Trials@uspto.gov
`571-272-7822
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`Paper 36
`Date: December 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WESTERN DIGITAL CORPORATION,
`KINGSTON TECHNOLOGY COMPANY, INC.,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-000821
`Patent 6,088,802
`
`
`
`
`
`
`1 Kingston Technology Company, Inc., which filed a Petition in Case IPR2018-
`01003, has been joined as a petitioner in this proceeding. Toshiba Corporation,
`Toshiba America Electronic Components, Inc., and Apricorn, which filed a
`Petition in Case IPR2018-01067, have been joined as petitioners in this
`proceeding.
`
`

`

`
`
`Case IPR2018-00082 (Patent 6,088,802)
`Case IPR2018-00084 (Patent 6,003,135)
`
`
`
`WESTERN DIGITAL CORPORATION,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN
`Petitioner,
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-000842
`Patent 6,003,135
`
`____________
`
`
`
`Before LYNNE E. PETTIGREW, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`HEARING ORDER
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`
`2 Toshiba Corporation, Toshiba America Electronic Components, Inc., and
`Apricorn, which filed a Petition in Case IPR2018-01068, have been joined as
`petitioners in this proceeding.
`
`2
`
`
`

`

`Case IPR2018-00082 (Patent 6,088,802)
`Case IPR2018-00084 (Patent 6,003,135)
`
`
`
`Petitioner has requested one half hour for oral argument in each of the
`
`
`
`captioned proceedings, pursuant to 37 C.F.R. § 42.70. See IPR2018-00082,
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`Paper 34; IPR2018-00084, Paper 33. Patent Owner notified the Board that it felt
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`no hearing was required in IPR2018-00082 but that, if Petitioner’s request for a
`
`hearing was granted, Patent Owner requests one half hour of time for argument.
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`IPR2018-00082, Paper 35. For Case IPR2018-00084, Patent Owner requests one
`
`half hour of time for argument. IPR2018-00084, Paper 33.
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`We grant the parties’ requests such that each party will be allocated one half
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`hour (30 minutes) for argument in each of the captioned cases. The hearing for
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`Case IPR2018-00082 will be held first, followed by the hearing for Case IPR2018-
`
`00084.
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`Both parties are cautioned that oral argument can only address issues raised
`
`in the filed papers. See 37 C.F.R. § 42.70 (“A party may request oral argument on
`
`an issue raised in a paper at a time set by the Board”) (emphasis added). In
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`particular, in Case IPR2018-00082, Patent Owner waived its opportunity to file a
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`Patent Owner’s Response. See IPR2018-00082, Paper 23. In view of that waiver,
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`Petitioner’s request to file a Reply (IPR2018-00082, Paper 24) was denied because
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`there were no issues raised by Patent Owner to which Petitioner could reply
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`(IPR2018-00082, Paper 32). In view of the limited record of filings in IPR2018-
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`00082, the Board requires that any argument presented by either party during oral
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`argument for IPR2018-00082 be prefaced, or followed by, a clear identification of
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`where the argument may be found in the record.
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`The hearing for these proceedings will commence at 1 pm Eastern Time on
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`January 14, 2019. Petitioner and Patent Owner each will have thirty (30) minutes
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`of argument time for each captioned case—for a total of one hour for each of the
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`captioned cases. Petitioner bears the ultimate burden of proof that the claims at
`
`3
`
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`

`

`Case IPR2018-00082 (Patent 6,088,802)
`Case IPR2018-00084 (Patent 6,003,135)
`
`
`issue in this review are unpatentable. Therefore, at oral argument, Petitioner will
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`
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`proceed first to present its case regarding the challenged patent claims and the
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`grounds on which the Board instituted trial in IPR2018-00082. Petitioner may
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`reserve some (but not more than half) of its argument time to respond to any
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`arguments presented by the Patent Owner. After Petitioner’s initial presentation, if
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`Patent Owner desires to participate in the hearing, Patent Owner will be given an
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`opportunity to respond and also may reserve some of its argument time for sur-
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`rebuttal. Thereafter, Petitioner may use any reserved time to reply to Patent
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`Owner’s presentation, and finally, Patent Owner may present a brief sur-rebuttal if
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`it has reserved time. The same procedure will then be repeated for IPR2018-
`
`00084.
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`The hearing will be conducted on the ninth floor of Madison Building
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`East, 600 Dulany Street, Alexandria, Virginia. The hearing will be open to the
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`public for in-person attendance, which will be accommodated on a first-come,
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`first-served basis. If the parties have concerns about disclosing confidential
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`information, they are requested to contact the Board at least ten business days in
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`advance of the hearing to discuss the matter.
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at least
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`seven business days before the hearing. The parties shall confer regarding any
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`objections to demonstrative exhibits, and file demonstrative exhibits with the
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`Board, as a separate exhibit in accordance with 37 C.F.R. § 42.63, at least five
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`business days prior to the hearing.
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`Demonstrative exhibits are not evidence, but merely visual aids for use at the
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`oral hearing. For any issue regarding the proposed demonstrative exhibits that
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`cannot be resolved after conferring with the opposing party, the parties may file
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`jointly a one-page list of objections at least five business days prior to the hearing.
`
`4
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`

`

`Case IPR2018-00082 (Patent 6,088,802)
`Case IPR2018-00084 (Patent 6,003,135)
`
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`The list should identify with particularity which demonstrative exhibits are subject
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`
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`to objection and include a short statement (no more than one concise sentence) of
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`the reason for each objection. No argument or further explanation is permitted.
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`We will consider the objections and schedule a conference call, if necessary,
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`to discuss them. Otherwise, we may expunge all demonstratives or allow only
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`those that we do not find objectionable. Typically, however, we reserve ruling on
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`the objections until the hearing or ruling is necessary to resolve the dispute. Any
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`objection to demonstrative exhibits that is not presented timely will be considered
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`waived. Each party also shall provide a hard copy of its demonstrative exhibits to
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`the court reporter at the hearing.
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`The parties are reminded that the presenter must identify clearly and
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`specifically each demonstrative exhibit (e.g., by slide or screen number and by
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`content) referenced during each hearing to ensure the clarity and accuracy of the
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`reporter’s transcript. The parties also should note that Judges Fishman and
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`Boudreau will each be attending the hearing electronically and will only have
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`access to the courtesy copy of the demonstratives provided in advance, as
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`referenced above. If a demonstrative is not made available to the Board in the
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`manner indicated above, that demonstrative may not be available to each of the
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`judges during the hearing and may not be considered. Further, images projected,
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`using audio visual equipment in Alexandria, will not be visible to Judges Fishman
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`and Boudreau. Because of limitations on the audio transmission systems in our
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`hearing rooms, the presenter may speak only when standing at the hearing room
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`podium. If the parties have questions as to whether demonstrative exhibits would
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`be sufficiently visible and available to all of the judges, the parties are invited to
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`contact the Board at (571) 272-9797.
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`5
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`

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`Case IPR2018-00082 (Patent 6,088,802)
`Case IPR2018-00084 (Patent 6,003,135)
`
`
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`The Board expects lead counsel for each party to be present at oral hearing,
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`
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`although any backup counsel may make the actual presentation, in whole or in part.
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`If lead counsel for either party is unable to attend the oral argument, the Board
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`should be notified via a joint telephone conference call no later than five business
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`days prior to the oral hearing to discuss the matter.
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`The Board will provide a court reporter for each hearing, and the reporter’s
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`transcript will constitute the official record of the hearing. The reporter’s transcript
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`will be entered in the record of the proceedings.
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`Requests for audio-visual equipment or special accommodations at the
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`hearing are to be made five days in advance of the hearing date. The requests must
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`be sent to Trials@uspto.gov. If the requests are not received timely, equipment or
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`accommodations may not be available on the day of the hearing.
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`For PETITIONER:
`
`Brian Buroker
`bburoker@gibsondunn.com
`
`Blair Silver
`bsilver@bannerwitcoff.com
`
`
`For PATENT OWNER:
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`
`Vincent Rubino
`vrubino@brownrudnick.com
`
`Enrique Iturralde
`eiturralde@brownrudnick.com
`
`
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`6
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