Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
` Paper 30
`Entered: May 6, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETNUT LTD.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`(f/k/a LUMINATI NETWORKS LTD.),
`Patent Owner.
`
`____________
`
`IPR2021-00458 (Patent 9,241,044 B2)
` IPR2021-00465 (Patent 9,742,866 B2)1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70(a)
`
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties may not use this
`caption for any subsequent papers without prior Board authorization.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
` Paper 30
`Entered: May 6, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETNUT LTD.,
`Petitioner,
`
`v.
`
`BRIGHT DATA LTD.,
`(f/k/a LUMINATI NETWORKS LTD.),
`Patent Owner.
`
`____________
`
`IPR2021-00458 (Patent 9,241,044 B2)
` IPR2021-00465 (Patent 9,742,866 B2)1
`____________
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70(a)
`
`
`
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties may not use this
`caption for any subsequent papers without prior Board authorization.
`
`
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`
`I. ORAL ARGUMENT
`
`The Revised Scheduling Orders (Paper 212) for these proceedings
`
`provided that an oral argument would be conducted on June 10, 2022, if
`
`requested by the parties and granted by the Board. Petitioner requests 60
`
`minutes of argument time for IPR2021-00458 and 60 minutes of argument
`
`time for IPR2021-00465. Paper 25, 1; IPR2021-00465, Paper 24 at 1.
`
`Patent Owner requests that the arguments in IPR2021-00458 and IPR2021-
`
`00465 be heard in a single hearing in view of the similarity of issues
`
`between the cases, and that 90 minutes of argument be permitted per party.
`
`Paper 28, 1; IPR2021-00465, Paper 27 at 1.
`
`We have considered the briefings filed in the cases and because many
`
`of the issues presented in IPR2021-00458 and IPR2021-00465 overlap, the
`
`cases will be heard in a single hearing. At the hearing. each party will have
`
`90 minutes of total argument time.
`
`Oral arguments will commence at 1:00 PM ET on Friday, June 10,
`
`2022, by video. The parties are directed to contact the Board at least ten
`
`business 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 consolidated transcript will constitute the
`
`official record of the hearing.
`
`If at any time during the proceedings, an attorney encounters technical
`
`or other difficulties that fundamentally undermine the attorney’s ability to
`
`
`2 For purposes of expediency, we cite to papers filed in IPR2021-00458,
`unless otherwise noted. Similar papers are filed in IPR2021-00465.
`
`2
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`adequately represent the attorney’s client, please inform the panel
`
`immediately, and adjustments will be made.3
`
`To facilitate planning, each party must contact PTAB Hearings at
`
`PTABHearings@uspto.gov at least 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 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 email
`
`address five business days prior to the hearing to receive dial-in connection
`
`information.
`
`Patent Owner has filed non-contingent Revised Motions to Amend,
`
`and the only issues that the parties identify for argument at the hearing relate
`
`to the Revised Motions to Amend. See Papers 20, 25, 28. Petitioner will
`
`open the hearing by presenting its case. After Petitioner’s presentation,
`
`Patent Owner will respond to Petitioner’s argument. Next, Petitioner may
`
`reserve rebuttal time to respond to arguments presented by Patent Owner.
`
`Lastly, Patent Owner may reserve sur-rebuttal time; however, Patent
`
`Owner’s sur-rebuttal must be limited in scope to the issues Petitioner raises
`
`during its rebuttal time. No live testimony from any witness will be taken at
`
`the hearing.
`
`
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`3
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`
`II. DEMONSTRATIVES
`
`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 at 2–5 (PTAB Jan. 27, 2014) (Order – Conduct of the Proceeding),
`
`for guidance regarding the appropriate content of demonstrative exhibits.
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at least
`
`seven business days before the hearing. The parties also shall provide file
`
`the demonstrative exhibits at least five business days before the hearing A
`
`copy of the demonstratives should also be sent by email to
`
`PTABHearings@uspto.gov.
`
`The parties shall meet and confer to discuss and resolve any
`
`objections to demonstrative exhibits. Any party with unresolved objections
`
`must file a list of those objections with the Board at least two business days
`
`before the hearing. For each objection, the list must identify with
`
`particularity which portions of the demonstrative exhibits are subject to the
`
`objection and may include a short, one-sentence statement explaining the
`
`objection. No argument or further explanation is permitted. The Board will
`
`consider any objections and schedule a conference call if deemed necessary.
`
`Otherwise, the Board will reserve ruling on the objections. Any objection to
`
`demonstrative exhibits not timely presented may be considered waived. The
`
`Board may reserve ruling on the objections until after the hearing.
`
`If desired, a request for a pre-hearing conference must be made by
`
`June 2, 2022. To request such a conference, an email message should be
`
`sent to Trials@uspto.gov including several dates and times of availability for
`
`one or both parties, as appropriate, that are generally no later than three
`
`business days before the hearing.
`
`4
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`
`III. OTHER MATTERS
`
`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, in whole or in part, as long as that counsel is present by video.
`
`Any special requests for audio-visual equipment must be directed to
`
`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`related to appearing at a video oral hearing, 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 days before the
`
`hearing.
`
`Attorneys will unmute themselves only when speaking. The panel
`
`will have access to all papers filed with the Board, including demonstratives.
`
`During the oral hearing, attorneys must 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, attorneys
`
`must identify themselves at the beginning of their presentation or after
`
`another attorney speaks. Furthermore, the remote nature of the oral hearing
`
`may also result in an audio lag, so attorneys must observe a pause prior to
`
`speaking 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.
`
`5
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`
`IV. LEAP
`
`The Board has established the “Legal Experience and Advancement
`
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`
`argue before the Board to develop their skills. The Board defines a LEAP
`
`practitioner as a patent agent or attorney having three or fewer substantive
`
`oral arguments in any federal tribunal, including PTAB.4
`
`The parties are encouraged to participate in the Board’s LEAP
`
`program. Either party may request that a qualifying LEAP practitioner
`
`participate in the program and conduct at least a portion of the party’s oral
`
`argument. The Board will grant up to fifteen 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 business days before the oral hearing, by email to the Board at
`
`PTABHearings@uspto.gov.5
`
`The 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
`
`
`4 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.
`5 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.
`
`6
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`be conducted by the LEAP practitioner.6 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 due to 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
`
`argument by such advocates during oral hearings. Even though additional
`
`argument time will not be provided when the advocate does not qualify for
`
`LEAP, a party may share argument time among counsel and the Board will
`
`permit the 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.
`
`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.
`
`
`6 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.
`
`7
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`
`
`
`V. ORDER
`
`Accordingly, it is
`
`ORDERED that the parties’ requests for oral hearing are granted
`
`subject to the conditions set forth above in this Order; and
`
`FURTHER ORDERED that a video oral hearing, conducted pursuant
`
`to the procedures outlined above, shall commence at 1:00 PM ET on Friday,
`
`June 10, 2022.
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2021-00458 (Patent 9,241,044 B2)
`IPR2021-00465 (Patent 9,742,866 B2)
`
`For PETITIONER:
`
`Ronald Abramson
`M. Michael Lewis
`Ari J. Jaffess
`LISTON ABRAMSON LLP
`ron.abramson@listonabramson.com
`michael.lewis@listonabramson.com
`ari.jaffess@listonabramson.com
`
`
`For PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O'Brien
`RUYAKCHERIAN LLP
`tomd@ruyakcherian.com
`elizabetho@ruyakcherian.com
`
`
`9
`
`
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