Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 31
`Entered: October 10, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SECURUS TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`GLOBAL TEL*LINK CORPORATION,
`Patent Owner.
`
`
`Case PGR2016-00044
`Patent 9,225,838 B2
`____________
`
`
`Before MICHAEL W. KIM and THOMAS L. GIANNETTI, Administrative Patent
`Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
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`
`

`

`PGR2016-00044
`Patent 9,225,838 B2
`
`
`Patent Owner and Petitioner each request oral hearing pursuant to 37
`C.F.R. § 42.70. Papers 27, 28. The requests are granted.1
`The hearing shall commence at 10:00 AM Eastern Time on November 2,
`2017, on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia. The hearing will be open to the public for in-person attendance that will
`be accommodated on a first-come, first-served basis. The Board will provide a
`court reporter for the hearing and the reporter’s transcript will constitute the
`official record of the hearing.
`Each party will have one hour of total time to present arguments. Petitioner
`bears the ultimate burden of proof that the claims at issue are unpatentable.
`Therefore, Petitioner will open the hearing by presenting its case regarding the
`challenged claims for which the Board instituted trial. Patent Owner then will
`have the entirety of their allotted time to respond to Petitioner’s presentation.
`Petitioner may reserve rebuttal time to respond to Patent Owner’s arguments.
`At least five (5) business days prior to the hearing, each party shall serve on
`the other party any demonstrative exhibit(s) it intends to use during the hearing.
`See 37 C.F.R. § 42.70(b). At least two (2) business days prior to the hearing, the
`parties shall file the demonstrative exhibits with the Board. See id. The parties
`should attempt to work out any objections to demonstratives prior to involving the
`Board. The parties must initiate a conference call with the Board at least three (3)
`business days before the hearing to present any objection regarding the propriety of
`any demonstrative exhibit. Any objection to demonstrative exhibits that is not
`
`
`1 The Requests for Oral Argument (Papers 27, 28) were filed after the due date set
`in the Scheduling Order (Paper 8). The parties jointly attest that the delay was
`inadvertent and request an extension of time. Papers 27, 28. Because the request
`is for a short duration, and we do not discern any prejudice to the parties or the
`Board, we grant the request.
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`2
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`PGR2016-00044
`Patent 9,225,838 B2
`
`timely presented will be considered waived. The Board asks the parties to confine
`demonstrative exhibit objections to those identifying egregious violations that are
`prejudicial to the administration of justice. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University of
`Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance
`regarding the appropriate content of demonstrative exhibits.
`The parties are reminded that each presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number) referenced
`during the hearing to ensure the clarity and accuracy of the reporter’s transcript.
`The parties also should note that at least one member of the panel may be attending
`the hearing electronically from a remote location, and that if a demonstrative is not
`filed or otherwise made fully available or visible to all judges at the hearing, that
`demonstrative will not be considered. If the parties have questions as to whether
`demonstrative exhibits would be sufficiently visible and available to all of the
`judges, the parties are invited to contact the Board at (571) 272-9797.
`The Board expects lead counsel for each party to be present in person at the
`hearing. If a party anticipates that its lead counsel will not be attending the oral
`argument, the parties should initiate a joint telephone conference with the Board no
`later than two (2) business days prior to the oral hearing to discuss the matter. Any
`counsel of record, however, may present the party’s argument.
`Requests for audio-visual equipment are to be made at least five business
`days in advance of the hearing date by sending the request to Trials@uspto.gov. If
`the request is not received timely, the equipment may not be available on the day
`of the hearing.
`Finally, after considering Papers 24 and 26, the Board determines that it
`would be helpful if the parties could provide briefing concerning a proper
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`PGR2016-00044
`Patent 9,225,838 B2
`
`construction of “determining, in response to detecting the hook-flash signal,
`whether a call progress tone is present in the audio stream that is indicative of the
`attempted three-way call,” as recited in each of independent claims 1 and 8, and
`also recited in independent claim 15, with the word “signal” to the end of “call
`progress tone.”
`Accordingly, it is
`ORDERED that Petitioner and Patent Owner may each file an optional
`paper, of no more than three (3) pages, concerning a proposed construction of the
`aforementioned claim term, and any relevance that proposed construction has to
`the applied art. The papers are due on October 20, 2017, and no new evidence is
`permitted to be submitted with those papers.
`
`
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`4
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`PGR2016-00044
`Patent 9,225,838 B2
`
`PETITIONER:
`
`Justin B. Kimble
`Nicholas C. Kliewer
`BRAGALONE CONROY PC
`Jkimble-ipr@bcpc-law.com
`nkliewer@bcpc-law.com
`
`PATENT OWNER:
`
`Michael D. Specht
`Richard Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@skgf.com
`rbemben-ptab@skgf.com
`
`5
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`