Trials@uspto.gov
`571-272-7822
`
`Paper 58
`Date: December 11, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`DIRECTSTREAM, LLC,
`Patent Owner.
`
`IPR2018-01594 (Patent 6,434,687 B2)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)1
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)2
`
`
`
`
`
`
`
`
`
`
`Before KALYAN K. DESHPANDE, JUSTIN T. ARBES, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`ARBES, Administrative Patent Judge.
`ORDER
`Trial Hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`1 Cases IPR2018-01602 and IPR2018-01603 have been consolidated with
`Case IPR2018-01601.
`2 Cases IPR2018-01606 and IPR2018-01607 have been consolidated with
`Case IPR2018-01605. This Order addresses issues pertaining to both cases.
`Therefore, we exercise our discretion to issue a single Order to be filed in
`each case. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`
`
`

`

`IPR2018-01594 (Patent 6,434,687 B2)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)
`
`
`Petitioner and Patent Owner requested a hearing in each of the instant
`proceedings pursuant to 37 C.F.R. § 42.70(a).3 The requests are granted.
`The hearings will take place at the following dates and times:
`Case(s)
`Date/Time
`IPR2018-01599 and IPR2018-01600
`12:00 PM Eastern Time,
`(consolidated hearing)
`February 3, 2020
`IPR2018-01604
`Immediately following
`the hearing in
`IPR2018-01599 and
`IPR2018-01600,
`February 3, 2020
`12:00 PM Eastern Time,
`February 4, 2020
`Immediately following
`the hearing in
`IPR2018-01601 and
`IPR2018-01605,
`February 4, 2020
`
`IPR2018-01601 and IPR2018-01605
`(consolidated hearing)
`IPR2018-01594
`
`Consolidated hearings will be conducted for Cases IPR2018-01599 and
`IPR2018-01600, and for Cases IPR2018-01601 and IPR2018-01605, as set
`forth above. For each consolidated hearing, each party will have ninety (90)
`minutes of total time to present arguments. For each of the other two
`
`
`3 See IPR2018-01594, Papers 52, 54; IPR2018-01599, Papers 52, 54;
`IPR2018-01600, Papers 52, 54; IPR2018-01601, Papers 52, 54;
`IPR2018-01604, Papers 53, 55; IPR2018-01605, Papers 52, 54. We refer
`herein to Petitioner’s “corrected” request for oral argument in each
`proceeding.
`
`2
`
`

`

`IPR2018-01594 (Patent 6,434,687 B2)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)
`
`hearings, each party will have sixty (60) minutes of total time to present
`arguments.
`For each hearing, Petitioner will proceed first to present its case as to
`the challenged claims, and may argue any motion to exclude it filed in the
`respective proceeding(s) and may reserve rebuttal time (no more than thirty
`(30) minutes). Patent Owner then will respond to Petitioner’s presentation,
`and may argue any motion to exclude it filed in the respective proceeding(s)
`and may reserve rebuttal time (no more than fifteen (15) minutes). After
`that, Petitioner may use the rest of its time to respond to Patent Owner’s
`presentation. Finally, Patent Owner may present a brief sur-rebuttal
`responding to Petitioner’s rebuttal arguments only, if requested.4
`The hearings will be open to the public for in-person attendance on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`
`
`4 Patent Owner requests that the parties each be permitted a ten (10) minute
`“opening statement” and that the hearings follow a procedure in which each
`party argues and “pass[es] the argument to [the opposing party] when it
`chooses . . . in turn until each side has exhausted its total presentation time.”
`See, e.g., IPR2018-01594, Paper 52, 6. We see no need for such a
`procedure, as the arguments presented at the hearings will be based on the
`papers and exhibits of record, of which the Board is aware. The order of
`presentation is the standard order set forth in the Board’s Trial Practice
`Guide Update (August 2018), 20, available at
`https://www.uspto.gov/sites/default/files/documents/
`2018_Revised_Trial_Practice_Guide.pdf (“Trial Practice Guide Update”).
`Consistent with that procedure, both parties will have the opportunity to
`argue twice during each hearing and respond to arguments made by the
`opposing party.
`
`3
`
`

`

`IPR2018-01594 (Patent 6,434,687 B2)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)
`
`Virginia. In-person attendance will be accommodated on a first come, first
`served basis. The Board will provide a court reporter for each hearing, and
`the reporter’s transcripts will constitute the official record of the hearings.
`Notwithstanding 37 C.F.R. § 42.70(b), the parties may agree on a date
`for service of demonstrative exhibits. The parties shall confer with each
`other regarding any objections to demonstrative exhibits and file
`demonstrative exhibits with the Board at least two business days prior to the
`respective hearing. For any issue that cannot be resolved after conferring
`with the opposing party, the parties may file jointly a one-page list of
`objections at least two business days prior to the hearing. The list should
`identify with particularity which demonstrative exhibits are subject to
`objection and include a short statement (no more than one sentence) of the
`reason for each objection. No argument or further explanation is permitted.
`We will consider the objections and schedule a conference call, if necessary.
`Otherwise, we will reserve ruling on the objections until the hearing or after
`the hearing. Any objection to demonstrative exhibits that is not presented
`timely will be considered waived. Each party also shall provide a hard copy
`of its demonstrative exhibits to the court reporter at the hearing.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. Board of Regents of the University of Michigan, IPR2013-00041, Paper 65
`(PTAB Jan. 27, 2014), regarding the appropriate content of demonstrative
`exhibits. Demonstrative exhibits are only an aid to oral argument and are
`not evidence, and should be clearly marked as such. For example, each slide
`
`4
`
`

`

`IPR2018-01594 (Patent 6,434,687 B2)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)
`
`may be marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. See Trial Practice Guide Update, 21–22.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`referenced during the hearings to ensure the clarity and accuracy of the
`reporter’s transcripts. The parties also should note that one member of the
`panel will be attending the hearings electronically from a remote location
`and that if a demonstrative exhibit is not filed or otherwise made fully
`available or visible to the judge presiding over the hearings remotely, that
`demonstrative exhibit will not be considered. The judge presiding remotely
`will not be able to view the screen in the hearing room.
`The Board expects lead counsel for each party to be present in person
`at the hearings. However, any counsel of record may present the party’s
`argument, in whole or in part, as long as that counsel is present in person.
`If either party expects that its lead counsel will not be attending a hearing,
`the parties should initiate a joint telephone conference with the Board no
`later than two business days prior to the hearing to discuss the matter.
`A party may request remote video attendance for one or more of its
`other attendees to view the hearings from any U.S. Patent and Trademark
`Office 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
`
`5
`
`

`

`IPR2018-01594 (Patent 6,434,687 B2)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)
`
`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.
`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 Board may accommodate the special request. Any special
`requests must be presented in a separate communication not less than five
`days before the hearing.
`
`
`
`
`6
`
`

`

`IPR2018-01594 (Patent 6,434,687 B2)
`IPR2018-01599 (Patent 6,076,152)
`IPR2018-01600 (Patent 6,247,110 B1)
`IPR2018-01601 (Patent 7,225,324 B2)
`IPR2018-01604 (Patent 7,421,524 B2)
`IPR2018-01605 (Patent 7,620,800 B2)
`
`FOR PETITIONER:
`
`Joseph A. Micallef
`Jason P. Greenhut
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`jgreenhut@sidley.com
`
`
`FOR PATENT OWNER:
`
`Alfonso Chan
`Joseph DePumpo
`SHORE CHAN DePUMPO LLP
`achan@shorechan.com
`jdepumpo@shorechan.com
`
`Sean Hsu
`G. Donald Puckett
`Rajkumar Vinnakota
`JANIK VINNAKOTA LLP
`
`
`
`7
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`