Trials@uspto.gov Paper No. 51
`571-272-7822 Entered: January 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`_______________
`
`IPR2018-00340 (Patent 7,260,538)1
`IPR2018-00341 (Patent 7,260,538)
`IPR2018-00342 (Patent RE44,326)
`IPR2018-00343 (Patent RE44,326)
`IPR2018-00344 (Patent 7,047,196)
`IPR2018-00345 (Patent 7,047,196)
`_______________
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and ALEX S. YAP,
`Administrative Patent Judges.
`
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`571-272-7822 Entered: January 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`
`v.
`
`PROMPTU SYSTEMS CORPORATION,
`Patent Owner.
`_______________
`
`IPR2018-00340 (Patent 7,260,538)1
`IPR2018-00341 (Patent 7,260,538)
`IPR2018-00342 (Patent RE44,326)
`IPR2018-00343 (Patent RE44,326)
`IPR2018-00344 (Patent 7,047,196)
`IPR2018-00345 (Patent 7,047,196)
`_______________
`
`
`Before JAMESON LEE, ROBERT L. KINDER, and ALEX S. YAP,
`Administrative Patent Judges.
`
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 We issue one Order and enter it in each proceeding.
`
`
`
`IPR2018-00340 (Patent 7,260,538); IPR2018-00341 (Patent 7,260,538)
`IPR2018-00342 (Patent RE44,326); IPR2018-00343 (Patent RE44,326)
`IPR2018-00344 (Patent 7,047,196); IPR2018-00345 (Patent 7,047,196)
`
`
`
`Petitioner, Comcast Cable Communications, LLC. (“Comcast”) and
`Patent Owner, Promptu Systems Corporation. (“Promptu”) request oral
`argument in cases IPR2018-00340, IPR2018-00341, IPR2018-00342 (Patent
`RE44,326), IPR2018-00343, IPR2018-00344 (Patent 7,047,196), IPR2018-
`00345 (Patent 7,047,196) pursuant to 37 C.F.R. § 42.70.
`At our request during a conference call conducted on December 27,
`2018, the parties filed a “Joint Stipulation Regarding Oral Argument,” in
`each proceeding. See, e.g., IPR2018-00340, Paper 43 (Jan. 4, 2019). The
`parties jointly proposed:
`1. Consolidated oral argument for IPR2018-00340 and
`IPR2018-00341 (involving U.S. Patent 7,260,538) with 60
`minutes per side.
`2. Consolidated oral argument for IPR2018-00342 and
`IPR2018-00343 (involving U.S. Patent RE44,326) and IPR2018-
`00344 and IPR2018-00345 (involving U.S. Patent 7,047,196)
`with 75 minutes per side.
`See, e.g., id. at 2.
`The parties’ requests for oral hearing are granted with the following
`additional instructions. These proceedings have not been consolidated or
`joined, but entail overlapping issues such that oral argument will be
`provided in two consolidated hearings on September 28, 2018 – a morning
`hearing and an afternoon hearing – according to the following schedule.
`a. IPR2018-00340 and IPR2018-00341 at 10:45 AM–12:45 PM
`Eastern Time on January 28, 2019, on the ninth floor of the
`Madison Building East, 600 Dulany Street, Alexandria, VA. Each
`
`2
`
`
`
`IPR2018-00340 (Patent 7,260,538); IPR2018-00341 (Patent 7,260,538)
`IPR2018-00342 (Patent RE44,326); IPR2018-00343 (Patent RE44,326)
`IPR2018-00344 (Patent 7,047,196); IPR2018-00345 (Patent 7,047,196)
`
`
`
`party will have a total of 60 minutes of argument time. The parties
`may allocate their argument time at their discretion over each of
`the two cases, not to exceed 60 minutes in total for each party.
`Petitioner will first present arguments in IPR2018-00340 and
`IPR2018-00341 (involving U.S. Patent 7,260,538). Patent Owner
`then will have the opportunity to respond to Petitioner’s
`arguments. Next, Petitioner may use any time it has reserved for
`rebuttal to respond to Patent Owner’s arguments. Then, Patent
`Owner may present a brief sur-rebuttal if it has reserved time. The
`parties may address pending motions to exclude during their
`argument time.
`b. IPR2018-00342, IPR2018-00343, IPR2018-00344, and IPR2018-
`00345 at 1:45–4:30 PM Eastern Time on January 28, 2019, on
`the ninth floor of the Madison Building East, 600 Dulany Street,
`Alexandria, VA. Each party will have a total of 75 minutes of
`argument time. The parties may allocate their argument time at
`their discretion over each of the two cases, not to exceed 75
`minutes in total for each party. Petitioner will first present
`arguments in IPR2018-00342 and IPR2018-00343 (involving U.S.
`Patent RE44,326) and IPR2018-00344 and IPR2018-00345
`(involving U.S. Patent 7,047,196). Patent Owner then will have
`the opportunity to respond to Petitioner’s arguments. Next,
`Petitioner may use any time it has reserved for rebuttal to respond
`to Patent Owner’s arguments. Then, Patent Owner may present a
`
`3
`
`
`
`IPR2018-00340 (Patent 7,260,538); IPR2018-00341 (Patent 7,260,538)
`IPR2018-00342 (Patent RE44,326); IPR2018-00343 (Patent RE44,326)
`IPR2018-00344 (Patent 7,047,196); IPR2018-00345 (Patent 7,047,196)
`
`
`
`brief sur-rebuttal if it has reserved time. The parties may address
`pending motions to exclude during their argument time. At least
`one short break will be taken during the afternoon session.
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the hearing. The
`court reporter will create two separate transcripts, one for the morning
`session, and one for the afternoon session.
`The hearings will be open to the public for in-person attendance that
`will be accommodated on a first-come, first-served basis. The parties should
`not disclose confidential information during the hearings. Under 37 C.F.R.
`§ 42.70(b), demonstrative exhibits must be served at least seven business
`days before the hearing date and filed no later than the time of the oral
`argument. The parties also shall provide a courtesy copy of any
`demonstrative exhibits to the Board at least five business days prior to the
`hearing by emailing them to Trials@uspto.gov.
`The parties must file any objections to the demonstrative exhibits with
`the Board at least two business days before the hearing. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived. The objections should identify with particularity which
`demonstrative exhibits are subject to objection, and include a short (one
`sentence or less) statement of the reason for each objection. No argument or
`further explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. The parties are directed to St.
`Jude Medical, Cardiology Division, Inc. v. Board of Regents of the
`
`4
`
`
`
`IPR2018-00340 (Patent 7,260,538); IPR2018-00341 (Patent 7,260,538)
`IPR2018-00342 (Patent RE44,326); IPR2018-00343 (Patent RE44,326)
`IPR2018-00344 (Patent 7,047,196); IPR2018-00345 (Patent 7,047,196)
`
`
`University of Michigan, IPR2013-00041 (PTAB Jan. 27, 2015) (Paper 65),
`for guidance regarding the appropriate content of demonstrative exhibits.
`The parties are reminded that the demonstrative exhibits presented in this
`case are not evidence and are intended only to assist the parties in presenting
`their oral argument to the panel. Because these hearings are being
`conducted on a large family of six related IPR proceedings, the parties may,
`but are not required to, provide the panel slides that show how any common
`issues overlap between proceedings.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument. If either party expects that its lead counsel will not be attending
`the oral argument, the parties should initiate a joint telephone conference
`with the Board no later than two business days prior to the oral hearing to
`discuss the matter. Any special requests for audio-visual equipment should
`be directed to Trials@uspto.gov. Requests for special equipment will not be
`honored unless presented in a separate communication not less than five
`days before the hearing directed to the above email address.
`Weather / potential USPTO shutdown: The parties should monitor
`OPM’s official website for shutdowns of the federal government due to
`weather emergencies (https://www.opm.gov/policy-data-oversight/snow-
`dismissal-procedures/current-status/). The parties also should monitor the
`USPTO and Board official websites for notices related to the ongoing partial
`federal government shutdown.
`
`
`
`5
`
`
`
`IPR2018-00340 (Patent 7,260,538); IPR2018-00341 (Patent 7,260,538)
`IPR2018-00342 (Patent RE44,326); IPR2018-00343 (Patent RE44,326)
`IPR2018-00344 (Patent 7,047,196); IPR2018-00345 (Patent 7,047,196)
`
`
`PETITIONER:
`
`James L. Day
`Daniel Callaway
`FARELLA BRAUN + MARTEL LLP
`jday@fbm.com
`dcallaway@fbm.com
`
`Leo L. Lam
`KEKER, VAN NEST & PETERS LLP
`llam@keker.com
`
`
`PATENT OWNER:
`
`Joshua L. Goldberg
`Jacob A. Schroeder
`Cory C. Bell
`Daniel Klodowski
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`joshua.goldberg@finnegan.com
`jacob.schroeder@finnegan.com
`cory.bell@finnegan.com
`daniel.klodowski@finnegan.com
`
`John S. Ferrell
`Wade C. Yamazaki
`CARR & FERRELL LLP
`jsferrell@carrferrell.com
`wyamazaki@carrferrell.com
`
`
`
`
`
`6
`
`
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