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` Paper 21
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` Entered: December 20, 2019
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CISCO SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`CENTRIPETAL NETWORKS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01513
`Patent 9,560,077 B2
`____________
`
`
`Before BRIAN J. McNAMARA, J. JOHN LEE, and
`JOHN P. PINKERTON, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`Case IPR2018-01513
`Patent 9,560,077 B2
`
`
`Patent Owner, Centripetal Networks, Inc., requested oral argument
`pursuant to 37 C.F.R. § 42.70. Paper 19. The request is GRANTED
`according to the terms set forth in this Order. Oral argument for the
`proceeding will commence at 10:00 AM Eastern Time on Thursday,
`January 9, 2020, on the ninth floor of USPTO Headquarters, Madison
`Building East, 600 Dulany Street, Alexandria, Virginia 22314. We allocate
`each party forty-five (45) minutes of total argument time to present its
`arguments.
`
`Pre-Hearing Conference
`Either party may request a pre-hearing conference. Office Patent
`Trial Practice Guide, August 2018 Update, p. 19, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf. Requests for a pre-hearing conference must be made by
`December 30, 2019. Prior to making a request, the parties should meet and
`confer and send a joint request to the Board with an agreed upon set of
`limited issues for discussion in the pre-hearing conference. Issues
`appropriate for discussion in a pre-hearing conference may include
`objections to demonstratives, pending motions (particularly motions to
`exclude), and any other issue that may affect the ability of a party to present
`its arguments at the hearing. To request a pre-hearing conference, a joint
`email request should be sent to Trials@uspto.gov, including several dates
`and times of availability for both parties. If the parties are unable to agree
`on the issues to be addressed at the pre-hearing conference, the joint request
`shall specify which issues are disputed and provide a brief statement (not to
`exceed one sentence) of the opposing party’s objection.
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`Case IPR2018-01513
`Patent 9,560,077 B2
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`The panel may, at its discretion, indicate certain issues during the pre-
`hearing conference that it wishes parties to emphasize at the oral hearing.
`Although the parties and the panel may discuss issues for the oral hearing at
`the pre-hearing conference, the issues discussed at the pre-hearing
`conference do not limit the scope of the oral hearing. Instead, the parties
`remain free to address at the oral hearing any issue properly raised during
`the trial, and the panel may ask questions on issues other than those
`identified at the pre-hearing conference.
`The prehearing conference is not required, and absent a request, no
`call will be held.
`
`Order of Argument and Attending/Viewing Hearing
`Petitioner bears the ultimate burden of proof that the challenged
`claims are unpatentable. Therefore, at the hearing, Petitioner will proceed
`first to present its arguments with regard to the challenged claims and
`grounds on which we instituted trial in this proceeding, as well as any
`motions for which it bears the ultimate burden of proof. Petitioner may
`reserve some 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 any issues for which it bears the
`ultimate burden, including argument on any of Patent Owner’s pending
`motions. Patent Owner may reserve some of its allotted argument time for
`sur-rebuttal. Thereafter, Petitioner may use any reserved time to respond to
`Patent Owner’s presentation. Finally, Patent Owner may use any reserved
`time to respond to Petitioner’s rebuttal arguments. The parties are reminded
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`Patent 9,560,077 B2
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`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.” Office Trial Practice Guide, August 2018 Update,
`p. 23. New arguments not previously raised will be disregarded.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. Lead or backup counsel, however, may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the hearing, that party should initiate a joint telephone conference
`with the other party and the panel no later than five (5) business days prior
`to the hearing to discuss the matter.
`The hearing will be open to the public for in-person attendance, and
`in-person attendance will be accommodated on a first-come, first-served
`basis. Please be advised that available seating is limited, and a party
`expecting more than five people (including counsel) to attend in person
`should inform the Board via email message to PTABHearings@uspto.gov at
`least five (5) business days prior to the hearing.
`A party may request that counsel be permitted to present arguments
`remotely from an alternative 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 that counsel be permitted to present arguments from a
`remote location, a party should send an email message to
`PTABHearings@uspto.gov at least seven (7) business days prior to the
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`hearing and provide a short statement of reasons for the request. The Board
`will notify the parties if the request is approved, but approval does not
`guarantee that a member of the panel will be present at the remote location.
`A party may also request remote video attendance for one or more of
`its other attendees to view the hearing from any of the above USPTO
`locations. To request remote video viewing, a party must send an email
`message to PTABHearings@uspto.gov at least seven (7) 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 video viewing is granted. Note that it
`may not be possible to grant the request due to the availability of resources.
`
`Demonstratives
`Under 37 C.F.R. § 42.70(b), each party’s demonstratives must be
`served on opposing counsel at least seven (7) business days before the
`hearing. The parties also shall file a courtesy copy of the demonstratives
`with the Board at least three (3) business days prior to the hearing as
`separate papers (not as exhibits). Each party shall provide a hard copy of its
`demonstratives to the court reporter at the hearing. The parties are reminded
`that demonstratives are visual aids to oral argument, 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,
`Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the appropriate
`content of demonstratives. Demonstratives may not be used to advance
`arguments or introduce evidence not previously presented in the record. See
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`Case IPR2018-01513
`Patent 9,560,077 B2
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`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
`argument . . . raised for the first time during oral argument”). Each
`demonstrative must include a citation to the briefs and/or evidence in the
`record indicating the source(s) of its content.
`The parties shall meet and confer to discuss any objections to the
`demonstratives. If any issues regarding demonstratives remain unresolved
`after the parties meet and confer, the parties shall jointly submit (by email to
`Trials@uspto.gov) a one-page list of objections to the demonstratives at
`least three (3) business days before the hearing, if no pre-hearing
`conference was requested. 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, rulings on the objections will be reserved until the hearing or
`after the hearing. Any objection to the demonstratives not timely presented
`will be considered waived.
`During the oral hearing, the presenter must identify clearly and
`specifically each demonstrative (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 any judge appearing remotely. A judge appearing
`remotely may be unable to view images projected in the hearing room but
`will have access to demonstratives filed with the Board. Similarly, to ensure
`presenters may be heard by all judges, the parties are reminded to speak into
`the provided microphone(s). The parties should note that if a demonstrative
`is not filed or otherwise made fully available or visible to a judge appearing
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`remotely, that demonstrative will not be considered. If the parties have
`questions as to whether demonstratives would be sufficiently visible and
`available to all of the judges, the parties are invited to contact the Board at
`(571) 272-9797.
`
`Official Transcript and Audio-Visual Equipment
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`Hearing rooms are equipped with projectors for PowerPoint
`presentations, and the parties may request the use of audio-visual equipment
`during the oral hearing. A party should also advise the Board as soon as
`possible before an oral argument of any special needs. Any requests for
`audio-visual equipment or other accommodations should be directed to
`PTABHearings@uspto.gov at least seven (7) business days before the
`hearing. If the request is not timely received, the equipment or
`accommodation may not be available on the day of the hearing. Examples
`of special needs may 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 or remote
`location, 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.
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`Case IPR2018-01513
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`Live Testimony
`No live testimony from any witness will be permitted at the hearing
`without prior authorization from the Board. A party requesting authorization
`to present live testimony at the hearing shall initiate a joint telephone
`conference with the other party and the panel as soon as possible, and in any
`event no later than seven (7) business days prior to the hearing to discuss
`the matter. The parties are directed to the Board’s decision in K-40
`Electronics, LLC v. Escort, Inc., IPR2013-00203, Paper 34 (PTAB May 21,
`2014) (precedential) for guidance as to the limited circumstances in which
`live testimony may be authorized.
`
`Confidential Information
`There is a strong public policy interest in making all information
`presented in above-captioned proceeding 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 accompanied by a motion to seal, be treated as sealed pending the
`outcome of the ruling on the motion. If either party expects that any
`information subject to a motion to seal will be raised at the hearing, that
`party shall initiate a joint telephone conference with the other party and the
`panel no later than five (5) business days prior to the hearing to discuss the
`matter.
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`Case IPR2018-01513
`Patent 9,560,077 B2
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`
`ORDER
`
`
`
`It is
`ORDERED that oral argument will commence at 10:00 AM Eastern
`Time on Thursday, January 9, 2020, at USPTO Headquarters in Alexandria,
`Virginia; and
`ORDERED that the measures set forth above shall govern the oral
`hearing in the above-captioned proceeding.
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`9
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`Case IPR2018-01513
`Patent 9,560,077 B2
`
`PETITIONER:
`Daniel McDonald
`Jeffrey Blake
`Kathleen Ott
`Michael Wagner
`Christopher Davis
`MERCHANT & GOULD P.C.
`dmcdonald@merchantgould.com
`jblake@merchantgould.com
`kott@merchantgould.com
`mwagner@merchantgould.com
`cdavis@merchantgould.com
`
`PATENT OWNER:
`James Hannah
`Jeffrey Price
`Michael Lee
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`mhlee@kramerlevin.com
`
`Bradley Wright
`BANNER & WITCOFF, LTD
`bwright@bannerwitcoff.com
`
`
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`10
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