Paper No. 24
`Entered: July 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioners,
`
`v.
`
`WHITSERVE LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01019
`Patent 8,812,437 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, MICHELLE N. WORMMEESTER,
`and SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`Entered: July 16, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DROPBOX, INC.,
`Petitioners,
`
`v.
`
`WHITSERVE LLC,
`Patent Owner.
`____________
`
`Case IPR2019-01019
`Patent 8,812,437 B2
`____________
`
`
`Before KALYAN K. DESHPANDE, MICHELLE N. WORMMEESTER,
`and SCOTT RAEVSKY, Administrative Patent Judges.
`
`RAEVSKY, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`Petitioner and Patent Owner both request oral argument. Paper 21;
`Paper 22. Patent Owner requested thirty minutes per side for oral argument
`(Paper 21), and Petitioner requested sixty minutes per side (Paper 22). The
`Parties’ requests are granted as detailed below.
`
`Oral Argument
`Oral arguments will commence at 1:00 PM Eastern Time on July
`30, 2020, by video. The parties are directed to contact the Board at least 10
`days in advance of the hearing if there are any concerns about disclosing
`confidential information. The Board will provide a court reporter for the
`hearing, and the reporter’s transcript will constitute the official record of the
`hearing.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.1
`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 five business days prior to the oral hearing date to receive
`video set-up information. As a reminder, all arrangements and the expenses
`involved with appearing by video, such as the selection of the facility to be
`used from which a party will attend by video, must be borne by that party. If
`a video connection cannot be established, the parties will be provided with
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`
`
`2
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`dial-in connection information, and the oral hearing will be conducted
`telephonically.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above telephone
`number five business days prior to the hearing to receive dial-in connection
`information.
`Each party will have sixty minutes of total argument time. At oral
`hearing, Petitioner will open the hearing by presenting its arguments.
`Thereafter, Patent Owner may argue its opposition to Petitioner’s arguments.
`Petitioner may reserve time for rebuttal and Patent Owner may reserve time
`for sur-rebuttal. Petitioner bears the ultimate burden of proof that the claims
`at issue in these reviews are unpatentable.
`Demonstrative Exhibits
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days before the hearing. The Board further requests that
`such exhibits be filed at least three business days before the hearing to
`facilitate the panel’s preparation. The demonstratives should be emailed to
`PTABHearings@uspto.gov, and the Board will provide the demonstratives
`to the court reporter prior to the hearing.
`The Board reminds the parties that demonstrative exhibits are
`intended to assist the parties in presenting their oral arguments and are 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. The
`Board also reminds the parties that demonstrative exhibits are not a
`
`
`
`3
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`mechanism for making arguments or introducing evidence not previously
`presented in the record. 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 demonstrative exhibits.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits. If, however, the parties
`are unable to resolve their disagreement, either party may file objections to
`the demonstratives with the Board at least three business days before the
`hearing. Any objection to demonstrative exhibits that is not timely
`presented 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.
`
`Pre-Hearing Conference
`Either party may request a pre-hearing conference be held no later
`than three business days before the hearing. Consolidated Trial Practice
`Guide, 82, available at www.uspto.gov/sites/default/files/documents/
`tpgnov.pdf? MURL=. The prehearing conference is not required, and absent
`a request, no call will be held.
`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
`
`
`
`4
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`discussion in the pre-hearing conference. Issues appropriate for discussion
`in a pre-hearing conference may include objections to demonstratives,
`pending motions, allocation of argument time, 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.
`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.
`
`Counsel Attendance at Oral Hearing
`The Board generally expects lead counsel for each party to be present
`by video at the oral hearing. Any counsel of record may present the party’s
`argument as long as that counsel is present by video.
`A party may indicate any special requests related to appearing at a
`video oral hearing, such as a request to accommodate visual or hearing
`
`
`
`5
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`impairments, and indicate how the PTAB may accommodate the special
`request. Any such requests should be directed to
`PTABHearings@uspto.gov. Any special requests must be presented in a
`separate communication not less than five (5) days before the hearing.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the oral hearing, the parties are advised to identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the oral hearing may also result in an audio lag, and so the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`Members of the public may request to listen in on this oral hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov at least five business days
`prior to the oral hearing date.
`
`Accordingly, it is ORDERED that oral arguments for this proceeding
`shall take place beginning at 1:00 pm Eastern Time on July 30, 2020, by
`video.
`
`
`
`
`
`6
`
`
`
`IPR2019-01019
`Patent 8,812,437 B2
`
`
`
`
`
`For PETITIONER:
`
`Monica Grewal
`Yvonne Lee
`Ronald Iraelsen
`WILMER CUTLER PICKERING HALE AND DORR LLP
`monica.grewal@wilmerhale.com
`yvonne.lee@wilmerhale.com
`greg.israelsen@wilmerhale.com
`
`
`For PATENT OWNER:
`
`
`Michael Kosma
`Stephen Ball
`WHITMYER IP GROUP LLC
`mkosma@whipgroup.com
`sball@whipgroup.com
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
