Trials@uspto.gov
`571-272-7822
`
`Paper 27
`Date: October 19, 2020
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FORD MOTOR CO.,
`Petitioner,
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`PER CURIAM
`
`
`
`
`ORDER
` Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`571-272-7822
`
`Paper 27
`Date: October 19, 2020
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FORD MOTOR CO.,
`Petitioner,
`
`v.
`
`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`
`
`
`Before KEN B. BARRETT, LYNNE H. BROWNE, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`PER CURIAM
`
`
`
`
`ORDER
` Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`
`I. ORAL ARGUMENT
`The Scheduling Order for IPR2019-01399, IPR2019-01401, and
`IPR2019-01402 provided that an oral argument would be conducted on
`November 19, 2020, if requested by the parties and granted by the Board.
`Paper 11. 1 Petitioner and Patent Owner requested a single, consolidated oral
`argument for these three proceedings. Paper 25; Paper 26. The requests for
`oral argument are granted subject to the conditions set forth in this Order.
`A. Time and Format
`Oral arguments will commence at 9:00 AM Eastern Time on
`November 19, 2020, by video. The Board will provide a court reporter for
`the hearing, and the reporter’s transcript will constitute the official record of
`the hearing.
`As requested by the parties, Petitioner will have a total of 90 minutes
`to present argument in these proceedings, and Patent Owner will have a total
`of 90 minutes to respond. Paper 25; Paper 26. Petitioner will open the
`hearing by presenting its case regarding the challenged claims for which the
`Board instituted trial in these proceedings. Thereafter, Patent Owner will
`respond to Petitioner’s arguments. Petitioner may reserve rebuttal time to
`respond to arguments presented by Patent Owner. In accordance with the
`Consolidated Trial Practice Guide2 (“CTPG”), issued in November 2019,
`Patent Owner may reserve time for sur-rebuttal.
`
`
`1 We cite to papers in IPR2019-01399 in this Order only. Similar papers are
`provided in IPR2019-01401 and IPR2019-01402.
`2 Available at https://www.uspto.gov/about-us/news-updates/consolidated-
`trial-practice-guide-november-2019.
`
`2
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`
`The parties may request a pre-hearing conference in advance of the
`hearing. See CTPG 82. “The purpose of the pre-hearing conference is to
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the oral hearing, and to seek the Board’s guidance as to
`particular issues that the panel would like addressed by the parties.” Id. If
`either party desires a pre-hearing conference, the parties should jointly
`contact the Board at Trials@uspto.gov at least seven (7) business days
`before the hearing date to request a conference call for that purpose. The
`request may be made by e-mail and shall include a list of issues to be
`discussed.
`B. Demonstratives
`Demonstrative exhibits shall be served on opposing counsel at least
`seven (7) business days before the hearing date. Notwithstanding 37 C.F.R.
`§ 42.70(b), the parties are requested to file its demonstrative exhibits with
`the Board no later than three (3) business days of the hearing. 3
`Demonstrative exhibits are not a mechanism for making new
`arguments. Demonstrative exhibits also are not evidence, and will not be
`relied upon as evidence. Rather, demonstrative exhibits are visual aids to a
`party’s oral presentation regarding arguments and evidence previously
`presented and discussed in the papers. Accordingly, demonstrative exhibits
`shall be clearly marked with the words “DEMONSTRATIVE EXHIBIT –
`NOT EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d
`
`
`3 The parties may stipulate to an alternative schedule for serving and filing
`demonstrative exhibits, and request that the Board modify the schedule for
`filing and serving demonstrative exhibits at least seven (7) business days
`before the hearing date.
`
`3
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`1364, 1369 (Fed. Cir. 2018) (holding that the Board is obligated under its
`own regulations to dismiss untimely argument “raised for the first time
`during oral argument”); Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,768 (Aug. 14, 2012) (“No new evidence or arguments may be
`presented at the oral argument.”); see also St. Jude Med., Cardiology Div.,
`Inc. v. The Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65,
`2–3 (PTAB Jan. 27, 2014) (explaining that “new” evidence includes
`evidence already of record but not previously discussed in any paper of
`record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to the record, which allows the Board
`to easily ascertain whether a given demonstrative contains “new” argument
`or evidence or, instead, contains only that which is developed in the existing
`record.
`Due to the nature of the Board’s consideration of demonstrative
`exhibits and the opportunity afforded for the parties to reach an agreement
`without involving the Board, the Board does not anticipate receiving
`objections to such exhibits. Nevertheless, to the extent that a party objects to
`the propriety of any demonstrative exhibit, the parties shall meet and confer
`in good faith to resolve any objections to demonstrative exhibits prior to
`filing them with the Board. If such objections cannot be resolved, the parties
`may file any objections to demonstratives with the Board no later than the
`time of the hearing. The objections shall identify with particularity which
`portions of the demonstrative exhibits are subject to objection (and should
`
`4
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`include a copy of the objected-to portions) and include a one (1) sentence
`statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider any objections, and
`reserve ruling on the objections. 4 Any objection to demonstrative exhibits
`that is not timely presented will be considered waived.
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`by video at the hearing. Any counsel of record may present the party’s
`argument as long as that counsel is present by video.
`D. Video Hearing Details
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made. 5
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) business days prior to the
`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 dial-in connection information,
`and the hearing will be conducted telephonically.
`
`4 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`5 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`5
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five (5) business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the 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 hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`E. Remote Video Attendance Requests
`Members of the public may request to listen to this 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 at PTABHearings@uspto.gov at least seven (7) business days prior to
`the hearing date.
`F. Audio/Visual Equipment Requests
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video hearing, such as a request to accommodate
`visual or hearing impairments, and indicate how the PTAB may
`
`6
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five (5) business days before the hearing
`date.
`G. Legal Experience and Advancement Program
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`their skills and to aid in succession planning for the next generation. The
`Board defines a LEAP practitioner as a patent agent or attorney having three
`(3) or fewer substantive oral arguments in any federal tribunal, including
`PTAB, and seven (7) or fewer years of experience as a licensed attorney or
`agent. 6
`Parties are encouraged to participate in the Board’s LEAP program.
`Either party may request that a LEAP practitioner participate in the program
`and conduct at least a portion of the party’s oral argument. In exchange, the
`Board will grant up to fifteen (15) minutes of additional argument time to
`that party, depending on the length of the proceeding and the PTAB’s
`hearing schedule. A party should submit a request no later than at least five
`
`
`6 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`
`7
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`(5) business days before the hearing, by email to the Board at
`PTABHearings@uspto.gov. 7
`A LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner. 8 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements, either due to the years of experience as a licensed
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`but nonetheless has a basis for considering themselves to be in the category
`of advocates that this program is intended to assist, the Board encourages
`
`
`7 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`8 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`8
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided in such circumstances, as with LEAP, a
`party may request to share time with counsel and the Board will permit more
`experienced counsel to provide some assistance, if necessary, during oral
`argument, and to clarify any statements on the record before the conclusion
`of the oral argument.
`As always, all practitioners appearing before the Board shall
`demonstrate the highest professional standards. All practitioners are
`expected to have a command of the factual record, the applicable law, and
`Board procedures, as well as the authority to commit the party they
`represent. The Board discerns that it is often LEAP practitioners who have
`the best understanding of the facts of the case and the evidence of record,
`and the Board encourages their participation. 9
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for these proceedings shall commence
`at 9:00 AM Eastern Time on November 19, 2020, by video, and proceed
`in the manner set forth herein.
`
`
`
`
`
`
`9 The Board encourages the participation of LEAP practitioners throughout
`this proceeding, including in Board conference calls, pre-hearing
`conferences, and depositions.
`
`9
`
`
`
`IPR2019-01399 (Patent 9,810,166 B2)
`IPR2019-01401 (Patent 9,255,519 B2)
`IPR2019-01402 (Patent 10,138,826 B2)
`
`FOR PETITIONER:
`
`Christopher TL Douglas
`Michael S. Connor
`Lauren E. Burrow
`Brian D. Hill
`ALSTON & BIRD LLP
`christopher.douglas@alston.com
`mike.connor@alston.com
`lauren.burrow@alston.com
`brian.hill@alston.com
`
`FOR PATENT OWNER:
`
`Lawrence P. Cogswell III
`Keith J. Wood
`HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
`lawrence.cogswell@hbsr.com
`keith.wood@hbsr.com
`
`10
`
`
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