Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 36
`
` Entered: July 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`LECTROSONICS, INC.,
`Petitioner,
`
`v.
`
`ZAXCOM, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00972
`Patent 9,336,307 B2
`____________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge,
`KALYAN K. DESHPANDE, and LYNNE E. PETTIGREW, Administrative
`Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`

`

`IPR2018-00972
`Patent 9,336,307 B2
`
`
`The Scheduling Order (Paper 12) provides that an oral hearing is scheduled
`for August 5, 2019, if requested by the parties. Patent Owner requests oral hearing
`with each party allocated thirty (30) minutes to present arguments directed to the
`instituted grounds of unpatentability. Paper 34. Petitioner requests oral hearing
`with each party allocated sixty (60) minutes to present arguments directed to the
`instituted grounds and Patent Owner’s Motion to Amend. Paper 32 (citing Paper
`17). Petitioner further requests that “two attorneys at Petitioner’s counsel’s table
`be allowed to use computers at the hearing.” Id. Patent Owner and Petitioner’s
`requests for an oral hearing are granted.
`The oral hearing for this proceeding will be held on August 5, 2019 on the
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`The hearing will commence at 2:00 PM Eastern Time and it will be open to the
`public for in-person attendance. In-person attendance will be accommodated on a
`first-come-first-served basis. If the parties have any concern about disclosing
`confidential information, they are to contact the Board at least three (3) business
`days in advance of the hearing to discuss the matter.
`Each party will have sixty (60) minutes of total time to present arguments.
`Petitioner bears the ultimate burden of proof that the claims at issue are
`unpatentable. Therefore, Petitioner will proceed first to present its arguments.
`Thereafter, Patent Owner will respond. Petitioner and Patent Owner may reserve
`time, of no more than twenty (20) minutes, in their initial presentation for rebuttal
`and sur-rebuttal, respectively. After Patent Owner’s response, Petitioner may
`make use of reserved time or any remaining allocated time responding to Patent
`Owner. After Petitioner’s rebuttal, Patent Owner may make use of reserved time
`or any remaining allocated time responding to Petitioner’s rebuttal.
`
`
`
`
`2
`
`

`

`IPR2018-00972
`Patent 9,336,307 B2
`
`
`Petitioner and Patent Owner may present arguments directed to both the
`instituted grounds identified in the Decision to Institute (see Paper 11) and Patent
`Owner’s contingent Motion to Amend (Paper 17). Petitioner bears the ultimate
`burden of proof, and, therefore, Petitioner may present arguments directed to both
`the instituted grounds and Patent Owner’s contingent Motion to Amend in its
`initial presentation, and during rebuttal. Patent Owner similarly may present
`arguments directed to both the instituted grounds and its contingent Motion to
`Amend in its initial presentation, and during sur-rebuttal.
`Petitioner’s request that “two attorneys at Petitioner’s counsel’s table be
`allowed to use computers at the hearing” is granted. Paper 32.
`The Board will provide a court reporter for the hearing and the court
`reporter’s transcript will constitute the official record of the hearing.
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days before the hearing. The demonstrative exhibits in this
`case are not evidence and are intended only to assist the parties in presenting their
`oral argument to the Board. The parties shall serve objections to each other at least
`four (4) business days before the hearing. The parties shall meet and confer in
`good faith in an attempt to resolved objections. For any unresolved objections, the
`parties must file the objections to the demonstratives with the Board at least three
`(3) business days before the hearing. Any objection to the demonstrative exhibits
`that is not presented timely will be considered waived. The objections should
`identify with particularity which demonstratives 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. Otherwise, the Board
`will reserve ruling on the objections until after the oral argument. The parties are
`
`
`
`
`3
`
`

`

`IPR2018-00972
`Patent 9,336,307 B2
`
`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of
`the University of Michigan, IPR2013-00041 (PTAB January 27, 2014) (Paper 65),
`for guidance regarding the appropriate content of demonstrative exhibits.
`The parties shall file demonstrative exhibits into the records of these
`proceedings at least three (3) business days prior to the hearing.
`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 as
`long as that counsel is present in person. 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 (2) business days prior to
`the oral hearing to discuss the matter.
`A party may request remote video attendance for one or more of its other
`attendees to view the hearing from any USPTO location. The available locations
`include the Texas Regional Office in Dallas, Texas; the Rocky Mountain Regional
`Office in Denver, Colorado; the Elijah J. McCoy 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 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 request for remote video viewing is granted. Note that it
`may not be possible to grant the request due to the availability of resources.
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. A party may also indicate any other special request 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. All special requests must be
`
`
`
`
`4
`
`

`

`IPR2018-00972
`Patent 9,336,307 B2
`
`presented in a separate communication not less than five (5) days before the
`hearing.
`
`
`PETITIONER:
`
`C. Brandon Rash
`Cory C. Bell
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Lectrosonics-IPR@finnegan.com
`brandon.rash@finnegan.com
`cory.bell@finnegan.com
`
`Deborah Peacock
`Justin Muehlmeyer
`PEACOCK LAW P.C.
`dpeacock@peacocklaw.com
`jmuehlmeyer@peacocklaw.com
`
`PATENT OWNER:
`
`Dr. Gregory J. Gonsalves
`GONSALVES LAW
`gonsalves@gonsalveslawfirm.com
`
`Rita C. Chipperson
`CHIPPERSON LAW GROUP, P.C.
`rcc@chippersonlaw.com
`
`
`
`
`
`
`5
`
`