Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 49
`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 49
`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
`
`
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