`571-272-7822
`
`Paper 42
`Entered: February 10, 2023
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`THE DATA COMPANY TECHNOLOGIES INC.,
`Petitioner,
`v.
`BRIGHT DATA LTD.,
`Patent Owner.
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`
`
`Before THOMAS L. GIANNETTI, SHEILA F. McSHANE, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`GIANNETTI, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70(a)
`
`
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`I. ORAL ARGUMENT
`
`A. Time and Format
`The Scheduling Order for this proceeding provided that an oral
`argument would be conducted on March 1, 2023, if requested by the parties
`and granted by the Board. Each party requests 60 minutes of argument time.
`Paper 33, 1; Paper 34, 1. Both parties request that the oral hearing be held
`remotely by videoconference. Paper 33,1; Paper 34, 2.
`We grant the requests. Each party will have 60 minutes of total
`argument time. Petitioner will argue first and may present its argument and
`may reserve no more than half of its time for rebuttal. Patent Owner will
`argue second and may present its arguments and may reserve no more than
`half of its time for sur-rebuttal. Petitioner may present rebuttal to respond to
`arguments made by Patent Owner. Patent Owner may present sur-rebuttal to
`respond to arguments made by Petitioner.
`Oral argument will commence at 11:00 AM ET on Wednesday,
`March 1, 2023, 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.
`The parties shall confer and notify the Board at least three business
`days prior to the oral hearing by email to PTABHearings@uspto.gov if the
`parties anticipate that confidential information will need to be disclosed at
`the oral hearing. We note that the Board favors public access to oral hearings
`to provide a complete record for public access, as well as for appellate
`review.
`
`2
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`The parties may request a pre-hearing conference in advance of the
`hearing. See Consolidated Trial Practice Guide1 (“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 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 business days before the hearing date to request a conference
`call for that purpose.
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven business days before the hearing date and
`filed three days prior to the hearing. A copy of the demonstratives should
`also be sent by email to PTABHearings@uspto.gov.
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`evidence. Rather, demonstratives are visual aids to a party’s oral
`presentation regarding arguments and evidence previously presented and
`discussed in the papers. Accordingly, demonstratives shall be clearly
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 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”). “[N]o new evidence may be presented at the oral
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`argument.” CTPG 85; 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 a paper in 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.
`To the extent that a party objects to the propriety of any
`demonstrative, the parties shall meet and confer in good faith to resolve any
`objections to demonstratives prior to filing the objections with the Board. If
`such objections cannot be resolved, the parties may file any objections to
`demonstratives with the Board one day prior to the hearing. The objections
`shall identify with particularity which portions of the demonstratives are
`subject to objection (and should include a copy of the objected-to portions)
`and include a one sentence statement of the reason for each objection. No
`argument or further explanation is permitted. The Board will consider any
`objections, and may reserve ruling on the objections. 2 Any objection to
`demonstratives that is not timely presented will be considered waived.
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`
`
`2 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`4
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. See CTPG 11. Any counsel of record may present the
`party’s argument as long as lead counsel is also present.
`
`D. Video or Telephonic Hearing Details
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five 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 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.
`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 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 reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`
`5
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`benefit of all participants appearing electronically. 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.
`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. 3
`
`E. Remote Attendance Requests
`Members of the public may request to listen to and/or view 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, as discussed above.
`
`F. Special Requests
`A party may indicate any special requests related to appearing at a
`video hearing, such as a request to accommodate deaf or hard-of-hearing
`individuals and blind or low vision individuals, and indicate how the PTAB
`may accommodate the special request. Any special requests must be
`presented in a separate communication at least five business days before the
`hearing date.
`
`
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`6
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`G. Legal Experience and Advancement Program
`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 (3) 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 (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 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.
`
`
`7
`
`
`
`IPR2022-00135
`Patent 10,257,319 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 may,
`at its discretion, 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.
`
`8
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall commence at
`
`11 AM ET on Wednesday, March 1, 2023, by videoconference, and shall
`proceed in the manner set forth herein.
`
`
`
`9
`
`
`
`IPR2022-00135
`Patent 10,257,319 B2
`PETITIONER:
`Michael Rader
`Adam Wichman
`Gregory Nieberg
`WOLF, GREENFIELD & SACKS, P.C.
`MRader-PTAB@wolfgreenfield.com
`AWichman-PTAB@wolfgreenfield.com
`GNieberg-PTAB@wolfgreenfield.com
`
`PATENT OWNER:
`
`Thomas Dunham
`Elizabeth O’Brien
`RUYAKCHERIAN LLP
`tom@dunham.cc
`elizabetho@ruyakcherian.com
`
`
`10
`
`