Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper No. 24
`Entered: October 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2018-01552
`IPR2018-01553
`(Patent 5,699,275)1, 2
`____________
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`1 This Order addresses the same issues in the inter partes reviews listed
`above. Therefore, we issue one Order to be filed in both cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers.
`2 Google LLC, who filed petitions in IPR2019-00110 and IPR2019-00111,
`has been joined as a petitioner in the respective proceedings.
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper No. 24
`Entered: October 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`IPR2018-01552
`IPR2018-01553
`(Patent 5,699,275)1, 2
`____________
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON, and
`ARTHUR M. PESLAK, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`1 This Order addresses the same issues in the inter partes reviews listed
`above. Therefore, we issue one Order to be filed in both cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers.
`2 Google LLC, who filed petitions in IPR2019-00110 and IPR2019-00111,
`has been joined as a petitioner in the respective proceedings.
`
`
`
`IPR2018-01552 (Patent 5,699,275)
`IPR2018-01553 (Patent 5,699,275)
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`Petitioner and Patent Owner have each filed requests for oral hearing
`in the above captioned proceedings, pursuant to 37 C.F.R. § 42.70.
`IPR2018-01552, Papers 22, 23.3 Petitioner proposes that the hearing for
`these cases be combined and that each party be allocated forty-five (45)
`minutes to present its argument for the combined hearing. Paper 23, 2.
`Patent Owner does not propose combining the cases for hearing, nor does
`Patent Owner propose an amount of time to present argument. Based on the
`issues presented in the cases, we agree with Petitioner’s proposal regarding
`the format for the hearing. The requests for oral hearing are granted
`according to the terms set forth in this Order.
`
`The combined oral hearing will commence at 1:00 PM Eastern Time
`on Monday, November 4, 2019, in Hearing Room B on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia. The
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. The Board will provide a
`court reporter for the hearing and the reporter’s transcript will constitute the
`official record of the hearing.
`
`Each party will have forty-five (45) minutes of total time to present
`arguments in the above-identified proceedings. As the party with the burden
`of proof and persuasion, Petitioner will proceed first to present its case with
`regard to the challenged claim and grounds set forth in the Petitions.
`
`
`3 For convenience, we cite to papers in IPR2018-01552. Similar papers
`were filed in IPR2018-01553.
`
`2
`
`
`
`IPR2018-01552 (Patent 5,699,275)
`IPR2018-01553 (Patent 5,699,275)
`
`Thereafter, Patent Owner may respond to Petitioner’s case. Petitioner may
`use any of its remaining time for rebuttal regarding Patent Owner’s
`arguments regarding the challenged claim. And, thereafter, Patent Owner
`may use any of its remaining time for sur-rebuttal, to respond to Petitioner’s
`rebuttal arguments. 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.
`
`At least seven business days prior to the hearing, each party shall
`serve on the other party any demonstrative exhibit(s) it intends to use during
`the hearing. See 37 C.F.R. § 42.70(b). At least three business days prior to
`the hearing, the parties shall file any demonstrative exhibits in this case.
`
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. For
`example, each slide of a demonstrative exhibit may be marked with the
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`Demonstrative exhibits cannot 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 argument . . . raised for the
`first time during oral argument”).
`
`The parties should attempt to work out any objections to
`demonstratives prior to involving the Board. Should either party disagree
`with the propriety of any of the opposing party’s demonstratives, the party
`may send, contemporaneously with their own slides three business days
`prior to the hearing, an email to Trials@uspto.gov including a paper limited
`to identifying the opposing party’s slide(s) objected to and a brief sentence
`
`3
`
`
`
`IPR2018-01552 (Patent 5,699,275)
`IPR2018-01553 (Patent 5,699,275)
`
`as to the general basis of the objection(s). No further argument is permitted
`in that paper. The Board will then take the objections under advisement, and
`if the content is inappropriate, it will not be considered. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived. The Board asks the parties to confine demonstrative exhibit
`objections to those identifying egregious violations that are prejudicial to the
`administration of justice. The parties are directed to St. Jude Med.,
`Cardiology Div., Inc. v. The Board of Regents of the Univ. of Mich.,
`IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the
`appropriate content of demonstrative exhibits. In general, if the content on a
`slide cannot be readily associated with an argument made, or evidence
`referenced, in a substantive paper, it is inappropriate. The best practice is to
`indicate on each slide where support may be found in a substantive paper
`and/or an exhibit of record in this proceeding.
`
`The parties are reminded 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. The parties also should note that at least one member
`of the panel may be attending the hearing electronically from a remote
`location, and that if a demonstrative is not made fully available or visible to
`all judges at the hearing, that demonstrative will not be considered. If the
`parties 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.
`
`The Board expects lead counsel for each party to be present in person
`at the hearing. If a party anticipates that its lead counsel will not be
`
`4
`
`
`
`IPR2018-01552 (Patent 5,699,275)
`IPR2018-01553 (Patent 5,699,275)
`
`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 counsel of record, however, may present
`the party’s arguments.
`
`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 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.
`
`Per the recent update to the Office Patent Trial Practice Guide, either
`party may request a pre-hearing conference. Office Patent Trial Practice
`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
`the following link to the USPTO website: https://go.usa.gov/xU7GP).
`Requests for a pre-hearing conference must be made by Monday, October
`21, 2019. To request such a conference, an email should be sent to
`Trials@uspto.gov including several dates and times of availability for both
`parties that are generally no later than three business days prior to the oral
`hearing. Please refer to the Guide for more information on the pre-hearing
`conference.
`
`5
`
`
`
`IPR2018-01552 (Patent 5,699,275)
`IPR2018-01553 (Patent 5,699,275)
`
`Any special requests for audio-visual equipment should be directed to
`
`Trials@uspto.gov. A party may also 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. Any special
`requests must be presented in a separate communication not less than five
`days before the hearing.
`It is
`ORDERED that oral argument will commence at 1:00 PM EASTERN
`
`TIME on Monday, November 4, 2019.
`
`
`
`
`
`6
`
`
`
`IPR2018-01552 (Patent 5,699,275)
`IPR2018-01553 (Patent 5,699,275)
`
`For PETITIONER:
`
`Joseph Palys
`josephpalys@paulhastings.com
`
`Naveen Modi
`naveenmodi@paulhastings.com
`
`Phillip Citroen
`phillipcitroen@paulhastings.com
`
`
`For PATENT OWNER:
`
`Albert Deaver
`adeaver@md-iplaw.com
`
`Robert McAughan
`bmcaughan@md-iplaw.com
`
`Jeffrey Andrews
`jandrews@yettercoleman.com
`
`Christopher Lonvick
`clonvick@md-iplaw.com
`
`7
`
`
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