Trials@uspto.gov Paper No. 39
`571-272-7822 Entered: June 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`Date and Time of Hearing
`
`Inter Partes Review in IPR2018-00788 was instituted on October 3,
`
`2018. Paper 11. A Scheduling Order set the oral hearing date to June 24,
`
`
`571-272-7822 Entered: June 11, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`Case IPR2018-00788
`Patent 9,336,336 B2
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`Date and Time of Hearing
`
`Inter Partes Review in IPR2018-00788 was instituted on October 3,
`
`2018. Paper 11. A Scheduling Order set the oral hearing date to June 24,
`
`
`
`IPR2018-00788
`Patent 9,336,336
`
`2019, if hearing is requested by the parties and granted by the Board. See
`
`Papers 12, 14. Petitioner and Patent Owner have both requested an oral
`
`hearing pursuant to 37 C.F.R. § 42.70. See Papers 34, 35. Petitioner
`
`requests “one hour of argument per side.” Paper 34. Patent Owner also
`
`requests “one hour of argument per side.” Paper 35.
`
`The Parties’ requests are GRANTED according to the terms set forth
`
`in this Order. The oral hearing will commence at 1 PM Eastern Time on
`
`Monday, June 24, 2019, in Hearing Room A on the ninth floor of Madison
`
`Building East, 600 Dulany Street, Alexandria, Virginia.
`
`Allotted Argument Time
`
`Each party will have sixty (60) minutes of total argument time to
`
`present its arguments in the above-captioned proceeding. Petitioner bears
`
`the ultimate burden of proof that the claims at issue in these reviews are
`
`unpatentable. Therefore, at oral hearing Petitioner will proceed first to
`
`present its case on Petitioner’s challenges to patentability and on any of
`
`Petitioner’s pending motions, such as Motions to Exclude. Petitioner may
`
`reserve some (but not more than half) of its allotted argument time for
`
`rebuttal to respond to Patent Owner’s arguments.
`
`After Petitioner’s initial presentation, Patent Owner will argue its
`
`opposition to Petitioner’s case and present argument on any of Patent
`
`Owner’s pending motions. Thereafter, Petitioner may use any reserved time
`
`to respond to Patent Owner’s presentation. Patent Owner may reserve some
`
`(but no more than half) of its allotted argument time for use in sur-rebuttal if
`
`it so chooses, and may use its reserved time for sur-rebuttal to respond to
`
`
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`2
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`
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`IPR2018-00788
`Patent 9,336,336
`
`Petitioner’s arguments.1 The parties are reminded that arguments made
`
`during rebuttal and sur-rebuttal periods must be responsive to arguments the
`
`opposing party made in its immediately preceding presentation. The parties
`
`also are reminded that during the hearing, the parties “may only present
`
`arguments relied upon in the papers previously submitted.” Trial Practice
`
`Guide August 2018 Update, p. 23.
`
`Patent Owner filed a Motion to Exclude Evidence. Paper 36. Thus,
`
`the oral hearing may pertain to the subject of evidence exclusion. Patent
`
`Owner did not file a Motion to Amend Claims. Thus, the oral hearing will
`
`not pertain to claim amendments. Also, new arguments not previously
`
`presented in the parties’ substantive papers in this proceeding shall not be
`
`raised at oral hearing.
`
`
`
`Confidentiality
`
`There is a strong public policy interest in making all information
`
`presented in these proceedings public, as the review determines the
`
`patentability of claims in an issued patent and thus, affects the rights of the
`
`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
`
`and 35 U.S.C. § 326(a)(1) which provide that the file of any inter partes
`
`review or post grant review be made available to the public, except that any
`
`petition or document filed with the intent that it be sealed shall, if
`
`
`1 See Trial Practice Guide August 2018 Update, p. 20, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf (providing that the “Board may also permit patent owners the
`opportunity to present a brief sur-rebuttal if requested”).
`
`
`
`3
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`
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`IPR2018-00788
`Patent 9,336,336
`
`accompanied by a motion to seal, be treated as sealed pending the outcome
`
`of the ruling on the motion.
`
`At this time, the parties are advised that the Board exercises its
`
`discretion to make the oral hearing publically available via in-person
`
`attendance. In-person attendance will be accommodated on a first-come,
`
`first-served basis. Please be advised, available seating is limited. The Board
`
`will provide a court reporter, and the reporter’s transcript shall constitute the
`
`official record of the trial hearing.
`
`Demonstrative Exhibits
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served on
`
`opposing counsel at least seven (7) business days before the hearing.
`
`37 C.F.R. § 42.70(b). The parties also shall file a courtesy copy of the
`
`demonstratives as an exhibit to the Board at least three (3) business days
`
`prior to the hearing (or five business (5) days prior to a pre-hearing
`
`conference if one is scheduled) by emailing them to Trials@uspto.gov. In
`
`addition, the parties shall file any demonstrative exhibits in these
`
`proceedings within two (2) days of the hearing. Demonstrative exhibits are
`
`visual aids to oral argument and not evidence and are intended only to assist
`
`the parties in presenting their oral argument to the panel. The parties are
`
`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
`
`Regents of the University of Michigan, IPR2013-00041 (PTAB Jan. 27,
`
`2014) (Paper 65) for guidance regarding the appropriate content of
`
`demonstrative exhibits. Demonstrative exhibits may not be used to advance
`
`arguments or introduce evidence not previously presented in the record. See
`
`Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting
`
`that the “Board was obligated to dismiss [the petitioner’s] untimely
`
`
`
`4
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`
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`IPR2018-00788
`Patent 9,336,336
`
`argument . . . raised for the first time during oral argument”). Instead,
`
`demonstrative exhibits should cite to the briefs and evidence in the record.
`
`The parties shall meet and confer to discuss any objections to
`
`demonstrative exhibits. If any issues regarding demonstratives remain
`
`unresolved after the parties meet and confer, the parties shall file jointly (by
`
`email to Trials@uspto.gov) a one-page list of objections to the
`
`demonstrative exhibits at least three (3) business days before the hearing if
`
`no pre-hearing conference is requested, or three (3) business days before a
`
`pre-hearing conference if one is scheduled. 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. The panel
`
`will consider the objections and may schedule a conference call if deemed
`
`necessary. Otherwise, the panel will reserve ruling on the objections. Any
`
`objection to demonstrative exhibits not presented timely will be considered
`
`waived.
`
`During the oral hearing, 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, and to assist Judges Ippolito and Branch, who will join
`
`the hearing remotely. Judges Ippolito and Branch will be unable to view
`
`images projected in the hearing room. Similarly, to ensure presenters may
`
`be heard by Judges Ippolito and Branch, the parties are reminded to speak
`
`only when standing at the hearing room podium and toward the attached
`
`microphone. The parties should note that if a demonstrative is not filed or
`
`otherwise made fully available or visible to the judges presiding over the
`
`hearing remotely, that demonstrative will not be considered. If the parties
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`5
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`IPR2018-00788
`Patent 9,336,336
`
`have questions as to whether demonstrative exhibits would be sufficiently
`
`visible and available to all of the judges, the parties are invited to contact the
`
`Board at 571-272-9797.
`
`Equipment Requests
`
`Hearing rooms are equipped with projectors for PowerPoint
`
`presentations, and the parties may request the use of audio-visual equipment
`
`during the oral hearing. Such requests should be directed to
`
`Trials@uspto.gov at least five (5) business days in advance of the hearing
`
`date. If the request is not received timely, the equipment may not be
`
`available on the day of the hearing.
`
`A party should advise the Board as soon as possible before an oral
`
`argument of any special needs. Any special requests for audio-visual
`
`equipment should be directed to Trials@uspto.gov. Examples of such needs
`
`include additional space for a wheelchair, an easel for posters, or an
`
`overhead projector (“Elmo”). A party may indicate any special requests
`
`related to appearing at an in-person oral hearing, such as a request to
`
`accommodate physical needs that limit mobility or visual or hearing
`
`impairments, and indicate how the PTAB may accommodate the special
`
`request. Parties should not make assumptions about the equipment the
`
`Board may have on hand. Any special requests must be presented in a
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`separate communication not less than five (5) days before the hearing. If the
`
`request is not received timely, the equipment may not be available on the
`
`day of the hearing.
`
`A party may request remote video attendance for one or more of its
`
`other attendees to view the hearing from any USPTO location. The
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`available locations include the Texas Regional Office in Dallas, Texas; the
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`6
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`IPR2018-00788
`Patent 9,336,336
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`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
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`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`
`in San Jose, CA. To request remote video viewing, a party must send an
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`email message to Trials@uspto.gov ten (10) business days prior to the
`
`hearing, indicating the requested location and the number planning to view
`
`the hearing from the remote location. The Board will notify the parties if the
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`request for video viewing is granted. Note that it may not be possible to
`
`grant the request due to the availability of resources.
`
`Attendance of Counsel
`
`The Board expects lead counsel for each party to be present in person
`
`at the oral hearing. However, lead or backup counsel may present the
`
`party’s argument. If either party anticipates 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 (2) business days prior to the
`
`oral hearing to discuss the matter.
`
`No live testimony from any witness will be taken at the oral argument.
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`Official Record
`
`The Board will provide a court reporter for the hearing and the
`
`reporter’s transcript will constitute the official record of the hearing.
`
`
`
`Accordingly, it is
`
`ORDERED that the oral argument for IPR2018-00788 shall take place
`
`on Monday, June 24, 2019, in Hearing Room A on the ninth floor of
`
`Madison Building East, 600 Dulany Street, Alexandria, Virginia, at 1 PM
`
`Eastern Time.
`
`
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`
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`7
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`
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`IPR2018-00788
`Patent 9,336,336
`
`
`
`For PETITIONER:
`
`Matthew Lowrie
`mlowrie@foley.com
`
`Christopher McKenna
`cmckenna@foley.com
`
`
`
`
`For PATENT OWNER:
`
`Todd Walters
`todd.walters@bipc.com
`
`Roger Lee
`roger.lee@bipc.com
`
`
`
`
`
`
`
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`8
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`
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