`Tel: 571-272-7822
`
`Paper 19
`Entered: August 19, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ASKELADDEN LLC,
`Petitioner,
`v.
`LEIGH M. ROTHSCHILD,
`Patent Owner.
`
`IPR2019-00855 and IPR2019-00856
`Patent 8,799,088 B2
`
`
`
`
`
`
`
`
`
`Before MITCHELL G. WEATHERLY, JOHN P. PINKERTON, and
`JAMES A. WORTH, Administrative Patent Judges.
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Canceling Oral Hearing
`37 C.F.R. §§ 42.5, 42.70
`
`On August 10, 2020, we entered an Order setting the oral hearing in
`these proceedings for August 20, 2020. Paper 17.1 Based on
`communications received via e-mail from both parties on August 13, 2020,
`
`
`1 Citations to paper numbers are the same for both IPR2019-00855 and
`IPR2019-00856.
`
`
`
`IPR2019-00855 and IPR2019-00856
`Patent 8,799,088 B2
`we became aware that Petitioner wished to withdraw its request for oral
`argument and have the issues presented in the proceedings decided on the
`written record. The e-mails also revealed that Patent Owner, Mr. Rothschild
`(appearing pro se), still wished to have an oral hearing despite not having
`requested one previously. Accordingly, the panel set a teleconference with
`the parties and instructed the parties to be prepared to discuss (1) what they
`believe to be the proper scope of argument they are permitted to present at
`an oral hearing and (2) whether and by when either party should be
`permitted to file additional substantive papers in the proceeding as a
`substitute for a hearing.
`The teleconference was conducted on August 17, 2020. During the
`call, Petitioner reiterated its desire to have the proceeding decided on the
`written record, and Patent Owner reiterated his desire to be heard at oral
`argument. Patent Owner did not file a request for oral hearing or file any
`papers in the proceeding after filing its Motion to Amend on the jointly
`modified DUE DATE 1 of February 21, 2020. The Motion to Amend was
`filed eight days after its original due date pursuant to a stipulated extension
`of DUE DATE 1. Paper 10. Accordingly, by filing a joint stipulation to
`extend the first two deadlines in the Scheduling Order, both parties
`demonstrated that they were fully aware of the deadlines set forth in the
`Scheduling Order.
`Mr. Rothschild, nevertheless indicated that he now sought
`authorization to file a Reply in support of his Motion to Amend, which was
`originally due June 18, 2020. Paper 9. Petitioner would be entitled to file a
`Sur-reply responding to such a Reply approximately three weeks later on
`July 9, 2020. When asked about his failure to file any papers after DUE
`
`2
`
`
`
`IPR2019-00855 and IPR2019-00856
`Patent 8,799,088 B2
`DATE 1 or seeking any further extensions of time for filing such papers,
`Mr. Rothschild provided no explanation other than being inexperienced and
`busy with multiple matters. After deliberation, the panel decided that it
`would not authorize additional written submissions because
`(1) Mr. Rothschild’s request was two months after the original deadline for
`filing a Reply and he had not provided sufficient cause to extend the
`deadline and (2) of the difficulty in setting a briefing and discovery schedule
`that would fairly permit both parties to file briefs and complete discovery
`within the time remaining before a final written decision is due by statute.
`Oral argument is limited to issues “raised in a paper.” 37 C.F.R.
`§ 42.70(a). Accordingly, the panel explained that the scope of oral argument
`would be defined and limited by the parties’ existing written submissions.
`Based on the substantive limitations set for oral hearing under our Rules,
`Mr. Rothschild indicated that he saw no utility in presenting oral argument
`and withdrew his prior opposition to Petitioner’s request for permission to
`withdraw its request for oral hearing. The panel authorized Petitioner to file
`a notice withdrawing its request for oral hearing, which it indicated would be
`filed by August 18. Petitioner has filed this notice. Paper 18. The panel
`informed both parties that the hearing would be canceled and that the issues
`in these proceedings would be decided on the written record.
`For the foregoing reasons, it is
`ORDERED that the hearing previously set for August 20, 2020, in
`IPR2019-00855 and IPR2019-00856 is canceled; and
`FURTHER ORDERED that the issues presented by the parties in
`these proceedings will be decided upon the panel’s consideration of the
`written record.
`
`3
`
`
`
`IPR2019-00855 and IPR2019-00856
`Patent 8,799,088 B2
`PETITIONER:
`Frank A. DeLucia
`Andrew O. Larsen
`MERCHANT & GOULD P.C.
`fdelucia@merchantgould.com
`alarsen@merchantgould.com
`AskeladdenIPR@merchantgould.com
`
`PATENT OWNER:
`Leigh M. Rothschild
`PRO SE
`leigh.rothschild@gmail.com
`
`4
`
`
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