Paper 55
`Trials@uspto.gov
`Entered: February 15, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ILLUMINA, INC.,
`Petitioner,
`v.
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`
`Case IPR2018-00291 (Patent 9,718,852 B2)
`Case IPR2018-00318 (Patent 9,719,139 B2)
`Case IPR2018-00322 (Patent 9,708,358 B2)
`Case IPR2018-00385 (Patent 9,725,480 B2)
` Case IPR2018-00797 (Patent 9,868,985 B2)1
`
`
`
`
`
`
`
`
`
`Before JAMES A. WORTH, MICHELLE N. ANKENBRAND,
`BRIAN D. RANGE Administrative Patent Judges.
`WORTH, Administrative Patent Judge.
`ORDER
`Oral Argument
`37 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`1 The proceedings have not been consolidated. The parties are not
`authorized to use a combined caption unless an identical paper is being
`entered into each proceeding, and the paper contains a footnote indicating
`the same.
`
`
`Trials@uspto.gov
`Entered: February 15, 2019
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ILLUMINA, INC.,
`Petitioner,
`v.
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`
`Case IPR2018-00291 (Patent 9,718,852 B2)
`Case IPR2018-00318 (Patent 9,719,139 B2)
`Case IPR2018-00322 (Patent 9,708,358 B2)
`Case IPR2018-00385 (Patent 9,725,480 B2)
` Case IPR2018-00797 (Patent 9,868,985 B2)1
`
`
`
`
`
`
`
`
`
`Before JAMES A. WORTH, MICHELLE N. ANKENBRAND,
`BRIAN D. RANGE Administrative Patent Judges.
`WORTH, Administrative Patent Judge.
`ORDER
`Oral Argument
`37 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`1 The proceedings have not been consolidated. The parties are not
`authorized to use a combined caption unless an identical paper is being
`entered into each proceeding, and the paper contains a footnote indicating
`the same.
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`
`The date set for oral argument in these five proceedings is March 5,
`2019, if either party requests oral argument and the Board grants the request.
`Case IPR2018-00291, Paper 30, 32; Case IPR2018-00385, Paper 23, 8;
`Case IPR2018-00797, Paper 26, 9. Both parties have requested oral
`argument pursuant to 37 C.F.R. § 42.70. Papers 51, 52. The parties
`represent that they have conferred and that they agree in their request for a
`consolidated argument for the five proceedings, in which each side is
`allotted one hour for its arguments. Id. The parties’ requests are granted to
`the extent set forth below.
`A single combined oral argument for all five cases will commence at
`9:00 AM Eastern Time, on Tuesday, March 5, 2019. The oral argument
`will be conducted on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. The oral argument will be open to the public
`for in-person attendance, which will be accommodated on a first-come, first-
`served basis. The Board will provide a court reporter for the oral argument,
`and the reporter’s transcript will constitute the official record of the oral
`argument.
`As there is significant commonality of issues in the five proceedings,
`we believe that it would be appropriate to have a combined hearing with
`each party presenting its arguments in all cases in a single argument, and to
`allocate each party a total of 1 hour to present arguments. Because
`Petitioner bears the ultimate burden of proof that the claims at issue are
`
`
`2 Where the same or similar papers have been filed in multiple proceedings,
`we refer herein to the papers filed in Case IPR2018-00291, except where
`otherwise indicated.
`
`2
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`unpatentable, Petitioner will begin the oral argument by presenting its case
`regarding the challenged claims at issue and on any of Petitioner’s pending
`motions, such as Motions to Exclude. Thereafter, Patent Owner will argue
`its opposition to Petitioner’s case, and can present on any pending motions.
`Petitioner may reserve time to rebut Patent Owner’s opposition. Finally,
`Patent Owner may request an opportunity to present a brief sur-rebuttal to
`Petitioner’s rebuttal.
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served at least seven (7) business days before the hearing date. The
`demonstrative exhibits shall be filed with the Board no later than five (5)
`business days before the hearing date. Demonstrative exhibits are not
`evidence, but merely a visual aid for use at the hearing, and should be
`clearly marked as such. For example, each slide of the demonstratives
`may be marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer.
`Demonstrative exhibits shall not introduce new arguments or
`evidence. The parties shall meet and confer in good faith to discuss any
`objections to demonstrative exhibits at least three (3) business days before
`the hearing. If any issues regarding demonstratives remain unresolved after
`the parties meet and confer, the parties shall jointly file a one-page list of
`objections to the demonstrative exhibits with the Board at least two (2)
`business days before the hearing. For each objection, the list must identify
`with particularity the demonstratives subject to the objection and include a
`short, one-sentence statement explaining the objection. We will consider the
`objections and schedule a conference call if necessary. Regardless of
`
`3
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`whether either party disputes the propriety of any demonstrative exhibit, we
`consider demonstrative exhibits only to the extent (1) they elucidate the
`parties’ arguments presented during the hearing and (2) they include only
`arguments and/or evidence already of record in the proceedings. For further
`guidance on what constitutes an appropriate demonstrative exhibit, the
`parties are directed to CBS Interactive Inc. v. Helferich Patent Licensing,
`LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118).
`We expect lead counsel for each party to be present at the hearing;
`however, any backup counsel may make the actual presentation, in whole or
`in part. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758
`(Aug. 14, 2012). If lead counsel for either party is unable to attend the
`hearing, the parties shall request a joint telephone conference call no later
`than two (2) days prior to the hearing date to discuss the matter.
`At least one member of the panel will be attending the hearing
`electronically from a remote location and will have access only to the
`courtesy copy of the demonstratives provided in advance, as referenced
`above, and will not be able to view the projection screen in the hearing
`room. We take this opportunity to remind the parties that 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 to enable any judge that is
`attending the hearing from a remote location to follow the presentation.
`Requests for special accommodations or audio-visual equipment are
`to be made at least five (5) business days in advance of the hearing date.
`Such requests must be sent to Trials@uspto.gov. If the requests are not
`
`4
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`received timely, requested accommodations and/or equipment may not be
`available on the day of the hearing.
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`
`PETITIONER:
`
`Kerry Taylor
`Michael L. Fuller
`William Zimmerman
`Nathanael Luman
`KNOBBER, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2mlf@knobbe.com
`2wrz@knobbe.com
`2nrl@knobbe.com
`
`
`
`PATENT OWNER:
`
`John P. White
`Gary J. Gershik
`COOPER & DUNHAM, LLP
`jwhite@cooperdunham.com
`ggershik@cooperdunham.com
`
`John D. Murnane
`Justin J. Oliver
`VENABLE LLP
`jmurnane@venable.com
`joliver@venable.com
`
`
`6
`
`
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