Trials@uspto.gov
`571.272.7822
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` Paper No. 28
` Entered: January 24, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IEE SENSING, INC,
`Petitioner,
`
`v.
`
`DELPHI TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00179
`Patent 8,500,194 B2
`____________
`
`
`
`Before HYUN J. JUNG, CARL M. DEFRANCO, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 28
` Entered: January 24, 2019
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`IEE SENSING, INC,
`Petitioner,
`
`v.
`
`DELPHI TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00179
`Patent 8,500,194 B2
`____________
`
`
`
`Before HYUN J. JUNG, CARL M. DEFRANCO, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2018-00179
`Patent 8,500,194 B2
`
`
`
`
`The parties requested oral argument pursuant to 37 C.F.R. § 42.70 in
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`the above-captioned proceeding. Papers 22, 25. The parties’ requests are
`
`granted.
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`Oral argument for the proceeding will commence at 10:00 AM
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`Eastern Time on February 12, 2019, on the ninth floor of Madison Building
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`East, 600 Dulany Street, Alexandria, Virginia 22314. As stated on the
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`Office’s website (uspto.gov), “[a]lthough parts of the federal government
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`have experienced a lapse in appropriated funding, the USPTO remains open
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`for business as normal . . . because the agency has access to prior-year fee
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`collections, which enables the USPTO to continue normal operations for a
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`few weeks.” The parties should monitor the Office’s website to verify that
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`the Office will be open on the date scheduled for oral argument. If the
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`Office is closed on that date, the Board will provide further guidance as soon
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`as the Office reopens.
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`The hearing will be open to the public for in-person attendance, and
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`in-person attendance will be accommodated on a first-come, first-served
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`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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`Petitioner requests one (1) hour of total time to present argument.
`
`Paper 22, 2. Patent Owner requests forty-five (45) minutes of total time to
`
`present argument. Paper 25, 2. We allocate each party one (1) hour of total
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`argument time. The parties may use their one hour to present their
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`arguments as they see fit. If the panel requires a lengthy examination of a
`
`party’s argument, the panel may extend argument time. If the panel extends
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`argument time for one party, the panel will extend argument time for the
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`other party by an equal amount.
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`2
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`
`
`IPR2018-00179
`Patent 8,500,194 B2
`
`
`
`
`Petitioner bears the ultimate burden of proof that the claims at issue
`
`are unpatentable. The burden of persuasion with respect to the patentability
`
`of proposed substitute claims presented in the contingent motion to amend is
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`not placed on the Patent Owner. See Aqua Products, Inc. v. Matal, 872 F.3d
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`1290, 1327 (Fed. Cir. 2017) (stating that “the PTO may not place that
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`burden [of persuasion with respect to the patentability of amended claims]
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`on the patentee”). Therefore, at the hearing, Petitioner will proceed first to
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`present its arguments with regard to the challenged claims and grounds on
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`which basis we instituted trial in this proceeding. Petitioner may reserve
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`rebuttal time. Thereafter, Patent Owner will argue its opposition to
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`Petitioner’s case and present the issues for which it bears the ultimate
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`burden. Patent Owner may also reserve rebuttal time. To the extent
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`Petitioner reserves rebuttal time, Petitioner then may make use of its rebuttal
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`time responding to Patent Owner. To the extent Patent Owner reserves
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`rebuttal time, Patent Owner then may make use of its rebuttal time
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`responding to Petitioner.
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
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`least seven business days before the hearing. The parties also shall file a
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`copy of the demonstratives as an exhibit at least seven business days prior to
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`the hearing. Each party shall provide a hard copy of its demonstratives to
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`the court reporter at the hearing. The parties are directed to St. Jude
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`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
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`of Michigan, IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance
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`regarding the appropriate content of demonstrative exhibits. The parties
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`shall meet and confer to discuss any objections to demonstrative exhibits at
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`least three business days before the hearing. If any issues regarding
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`demonstratives remain unresolved after the parties meet and confer, the
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`3
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`IPR2018-00179
`Patent 8,500,194 B2
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`
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`parties shall file jointly a one-page list of objections to the demonstrative
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`exhibits at least two business days before the hearing. For each objection,
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`the list must identify with particularity the demonstratives subject to the
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`objection and include a short, one-sentence statement explaining the
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`objection. The panel will consider the objections and schedule a conference
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`call if necessary. Otherwise, rulings on the objections will be reserved until
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`the hearing or after the hearing. Any objection to demonstrative exhibits not
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`presented timely will be considered waived.
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`The parties are reminded that demonstrative exhibits are visual aids to
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`oral argument and not evidence, and should be clearly marked as such. For
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`example, each slide may be marked with the words “DEMONSTRATIVE
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`EXHIBIT – NOT EVIDENCE” in the footer. Demonstrative exhibits may
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`not be used to advance arguments or introduce evidence not previously
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`presented in the record. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
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`1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the
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`petitioner’s] untimely argument . . . raised for the first time during oral
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`argument”). Instead, demonstrative exhibits should cite to the briefs and
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`evidence in the record.
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`The Board expects lead counsel for each party to be present in person
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`at the hearing. Lead or backup counsel, however, may present the party’s
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`argument. If either party anticipates that its lead counsel will not be
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`attending the hearing, that party should initiate a joint telephone conference
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`with the other party and the panel no later than three business days prior to
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`the hearing to discuss the matter.
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`Per the recent update to the Office Patent Trial Practice Guide, either
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`party may request a pre-hearing conference (Office Patent Trial Practice
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`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
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`4
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`
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`IPR2018-00179
`Patent 8,500,194 B2
`
`
`
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`the following link to the USPTO website: https://go.usa.gov/xU7GP)).
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`Requests for a pre-hearing conference must be made by January 31, 2019.
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`To request such a conference, an email should be sent to Trials@uspto.gov
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`including several dates and times of availability for one or both parties, as
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`appropriate, that are generally no later than three business days prior to the
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`oral hearing. Please refer to the Guide for more information on the
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`prehearing conference.
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`Requests for audio-visual equipment are to be made five business days
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`in advance of the hearing date. The request is to be sent to
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`Trials@uspto.gov. If the request is not received timely, the equipment may
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`not be available on the day of the hearing.
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`It is
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`ORDERED that oral argument will commence at 10:00 AM Eastern
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`Time on February 12, 2019, in Alexandria, Virginia.
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`5
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`IPR2018-00179
`Patent 8,500,194 B2
`
`
`
`PETITIONER:
`
`Frank Angileri
`fangileri@brookskushman.com
`
`Brian Doughty
`bdoughty@brookskushman.com
`
`PATENT OWNER:
`
`Jason Mudd
`Jason.mudd@eriseip.com
`
`Eric Buresh
`Eric.buresh@eriseip.com
`
`Mark Lang
`Mark.lang@eriseip.com
`
`
`6
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