Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 57
`Entered: April 21, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DYNAMICS INC.,
`Patent Owner.
`_______________
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`_______________
`
`
`Before TREVOR M. JEFFERSON, GEORGIANNA W. BRADEN, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`Tel: 571-272-7822
`
`Paper 57
`Entered: April 21, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DYNAMICS INC.,
`Patent Owner.
`_______________
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`_______________
`
`
`Before TREVOR M. JEFFERSON, GEORGIANNA W. BRADEN, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`
`Date and Time of Hearing
`On August 12, 2020, we entered a Decision to Institute a trial
`proceeding in IPR2020-00499. Paper 41. A Scheduling Order set the date
`for oral hearing, if requested by either party, as May 12, 2021. Paper 42, 12.
`Pursuant to 37 C.F.R. § 42.70, both parties have requested a consolidated
`oral argument for IPR2020-00499 with related proceedings IPR2020-00502,
`IPR2020-00504, and IPR2020-00505. See Papers 20, 21. Petitioner
`requests seventy-five (75) minutes per side, while Patent Owner requests “no
`more than ninety (90) minutes per side” for the hearing. Id. The Board
`grants Petitioner’s and Patent Owner’s requests for oral argument.
`Accordingly, oral argument for this proceeding will commence
`at 1:00 PM Eastern Time/12:00 PM Central Time, on May 12, 2020 and
`will be conducted by video. The parties are directed to contact the Board at
`least ten (10) business days before 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. If any technical problems arise during the
`hearing, the panel will adjust the parties’ argument time accordingly.
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov five (5) business days before the oral hearing
`date to receive video set-up information. As a reminder, all arrangements
`
`2
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`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 oral hearing
`will be conducted telephonically.
`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 hearing by video, such as a request to accommodate
`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 (5) business days before the
`hearing.
`If one or both parties would prefer to participate in the hearing
`telephonically, they should notify PTAB Hearings at the above email
`address five (5) business days before the hearing to receive dial-in
`connection information.
`Allotted Argument Time
`Each party will have ninety (90) minutes of total time to present
`arguments for its case. Petitioner bears the ultimate burden of proof that the
`claims at issue are unpatentable by a preponderance of the evidence.
`35 U.S.C. § 316(e). Therefore, Petitioner will proceed first to present its
`case with regard to the challenged claims and grounds on which we
`instituted trial in this proceeding and may reserve no more than half its time
`for rebuttal. Thereafter, Patent Owner will respond to Petitioner’s case and
`present the issues for which it bears the ultimate burden. After that,
`
`3
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`Petitioner may use the rest of its time for its rebuttal, responding to Patent
`Owner’s specific arguments presented at the oral hearing. If Patent Owner
`has reserved time for sur-rebuttal and up to the time remaining, Patent
`Owner may present sur-rebuttal argument. 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. The parties also are reminded that during the hearing, the
`parties “may only present arguments relied upon in the papers previously
`submitted.” Trial Practice Guide August 2018 Update, p. 23. Consult the
`November 2019 Consolidated Trial Practice Guide1 for information on
`requests for live testimony. The parties may also address any pending
`motions during their respective presentations. No live testimony from any
`witness will be taken at the oral hearing.
`The Board generally expects lead counsel for each party to be present
`by video at the hearing. Any counsel of record, however, may present a
`party’s argument as long as that counsel is present by video. If either party
`expects that its lead counsel will not attend the hearing, the parties should
`initiate a joint telephone conference with the Board no later than two (2)
`business days before the hearing to discuss the matter.
`Demonstrative Exhibits
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served on
`opposing counsel at least seven (7) business days before the hearing.
`37 C.F.R. § 42.70(b). The parties also shall file a courtesy copy of the
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`4
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`demonstratives as an exhibit to the Board at least three (3) business days
`prior to the hearing (or five business (5) days prior to a pre-hearing
`conference if one is scheduled). The parties are reminded that under
`37 C.F.R. § 42.53(f)(7), a proponent of deposition testimony must file such
`testimony as an exhibit. The Board will not consider any deposition
`testimony that has not been so filed.
`Demonstrative exhibits used at the hearing are visual aids to oral
`argument, they are not evidence and are intended only to assist the
`parties in presenting their oral argument to the Board. For example,
`each slide of a demonstrative exhibit may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. The
`parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The
`Board of Regents of the University of Michigan, IPR2013-00041 (PTAB
`Jan. 27, 2014) (Paper 65) for guidance regarding the appropriate content of
`demonstrative exhibits. Demonstrative exhibits may not 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”). Instead,
`demonstrative exhibits should cite to the briefs and evidence in the record.
`The parties shall meet and confer to discuss any objections to
`demonstrative exhibits. If any issues regarding demonstratives remain
`unresolved after the parties meet and confer, the parties shall file jointly a
`one-page list of objections to the demonstrative exhibits at least three (3)
`business days before the hearing if no pre-hearing conference is requested,
`
`5
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`or three (3) business days before a pre-hearing conference if one is
`scheduled. For each objection, the list must identify with particularity the
`demonstratives subject to the objection and include a short, one-sentence
`statement explaining the objection. The panel will consider the objections
`and may schedule a conference call if deemed necessary. Otherwise, the
`panel will reserve ruling on the objections. Any objection to demonstrative
`exhibits not presented timely will be considered waived.
`Guidance For Video Hearing
`The panel will have access to all papers filed with the Board as well as
`demonstratives submitted according to the above instructions. During the
`oral hearing, the parties must identify clearly and specifically each
`demonstrative referenced (e.g., by slide number) to ensure the clarity and
`accuracy of the court reporter’s transcript. The Board requests identification
`for all exhibits discussed during the hearing in the interest of providing a
`clear record. In addition, the parties are requested to identify themselves
`each time they speak. Furthermore, the remote nature of the hearing may
`also result in an audio lag. Accordingly, counsel should observe a pause
`prior to speaking, so as to avoid speaking over others. Also, please unmute
`yourself only when speaking.
`Request for Pre-hearing Conference
`No later than DUE DATE 6 (April 27, 2021) in the Scheduling Order
`for IPR2020-00499, either party may request a pre-hearing conference. See
`Paper 42, 12. Prior to making a request, the parties should confer and send a
`joint request to the Board with an agreed upon set of limited issues for
`discussion in the pre-hearing conference. To request a pre-hearing
`
`6
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`conference, a joint email request should be sent to Trials@uspto.gov
`including several dates and times of availability for both parties. Such a
`request shall include the following:
`• a bullet list of items the parties would like to discuss with the
`panel, which may include:
`o a brief preview (but not argument) as to issues the parties
`plan to address at the oral hearing
`o issues for which the parties would like the panel’s
`guidance on whether to address at the oral hearing.
`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. The parties may also discuss
`objections to demonstrative exhibits at the pre-hearing conference, but the
`panel may reserve ruling on such objections until a later time.
`The prehearing conference is not required, and absent a request, no
`pre-hearing conference will be held.
`
`7
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`Accordingly, it is
`ORDERED that Petitioner’s and Patent Owner’s requests for oral
`argument are granted subject to the conditions set forth in this Order; and
`FURTHER ORDERED that such oral argument, conducted pursuant
`to the procedures outlined above, will commence at 1:00 PM (Eastern) on
`May 12, 2021 by video.
`
`
`8
`
`
`
`IPR2020-00499 Patent 8,827,153
`IPR2020-00502 Patent 10,032,100
`IPR2020-00504 Patent 10,223,631
`IPR2020-00505 Patent 10,255,545
`
`PETITIONER:
`
`F. Christopher Mizzo
`Gregory Arovas
`James Marina
`Alan Rabinowitz
`KIRKLAND @ ELLIS LLP
`Chris.misso@Kirkland.com
`Greg.arovas@kirkland.com
`James.marina@kirkland.com
`Alan.rabinwoitz@kirkland.com
`
`
`PATENT OWNER:
`
`Robert W. Morris
`ECKERT SEAMANS CHERIN & MELLOTT, LLC
`rwmorris@eckertseamans.com
`
`Michael V. Messinger
`SHAMI MESSINGER PLLC
`mike@shamimessinger.com
`
`
`
`9
`
`
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
