Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 38
`Date: October 30, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00008
`Patent 9,597,594 B2
`____________
`
`
`Before MICHAEL W. KIM, TIMOTHY J. GOODSON,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`
`37 C.F.R. § 42.70
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 38
`Date: October 30, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00008
`Patent 9,597,594 B2
`____________
`
`
`Before MICHAEL W. KIM, TIMOTHY J. GOODSON,
`and AMANDA F. WIEKER, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`PGR2018-00008
`Patent 9,597,594 B2
`
`
`Patent Owner and Petitioner each request oral hearing pursuant to
`
`37 C.F.R. § 42.70. Papers 36, 37. Upon consideration, the requests for oral
`
`hearing are granted.
`
`The hearing shall commence at 1:00 PM Eastern Time on
`
`November 28, 2018, 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 sixty (60) minutes of total time to present
`
`arguments. As the party with the burden of proof and persuasion, Petitioner
`
`will proceed first to present its case with regard to the challenged claims and
`
`grounds set forth in the Petition. Thereafter, Patent Owner may respond to
`
`Petitioner’s case. Thereafter, Petitioner may use any of its remaining time
`
`for rebuttal regarding Patent Owner’s arguments regarding the challenged
`
`claims. And, thereafter, Patent Owner may use any of its remaining time for
`
`sur-rebuttal, to respond to Petitioner’s rebuttal arguments.
`
`At least seven (7) 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 provide the demonstrative exhibits to the Board
`
`by emailing them to Trials@uspto.gov. The parties shall not file any
`
`demonstrative exhibits in this case, without prior authorization from the
`
`Board.
`
`Demonstrative exhibits used at the oral hearing are aids to oral
`
`argument and not evidence, and should be clearly marked as such. For
`
`2
`
`
`
`PGR2018-00008
`Patent 9,597,594 B2
`
`example, each slide of a demonstrative exhibit may be marked with the
`
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`
`Demonstrative exhibits cannot 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”).
`
`The parties should attempt to work out any objections to
`
`demonstratives prior to involving the Board. Should either party disagree
`
`with the propriety of any of the opposing parties’ demonstratives, the party
`
`may send, contemporaneously with their own slides two (2) business days
`
`prior to the hearing, an email to Trials@uspto.gov including a paper limited
`
`to identifying the opposing parties’ slide(s) objected to, and brief sentence as
`
`to the general basis of the objection. No further argument is permitted in
`
`that paper. The Board will then take the objections under advisement, and if
`
`the content is inappropriate, it will not be considered. Any objection to
`
`demonstrative exhibits that is not 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. In
`
`general, if the content on a slide cannot be readily associated with an
`
`argument made, or evidence referenced, in a substantive paper, it is
`
`inappropriate. The best practice is to indicate on each slide where support
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`3
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`PGR2018-00008
`Patent 9,597,594 B2
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`may be found in a substantive paper and/or an exhibit of record in this
`
`proceeding.
`
`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 business days prior to the oral
`
`hearing to discuss the matter. Any counsel of record, however, may present
`
`the party’s arguments.
`
`Per the recent update to the Office Patent Trial Practice Guide, either
`
`party may request a pre-hearing conference. Office Patent Trial Practice
`
`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
`
`the following link to the USPTO website: https://go.usa.gov/xU7GP).
`
`Requests for a pre-hearing conference must be made by November 14, 2018.
`
`To request such a conference, an email 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 prior to the
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`4
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`
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`PGR2018-00008
`Patent 9,597,594 B2
`
`oral hearing. Please refer to the Guide for more information on the pre-
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`hearing conference.
`
`Requests for audio-visual equipment are to be made at least five
`
`business days in advance of the date of the hearing 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.
`
`
`
`
`
`5
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`
`
`PGR2018-00008
`Patent 9,597,594 B2
`
`For PETITIONER:
`
`Jennifer Bush
`Jbush-ptab@fenwick.com
`
`Michael Sacksteder
`msacksteder@fenwick.com
`
`For PATENT OWNER:
`
`John Alemanni
`jalemanni@kilpatricktownsend.com
`
`Andrew Rinehart
`arinehart@kilpatricktownsend.com
`
`Scott Kolassa
`skolassa@kilpatricktownsend.com
`
`Steve Moore
`smoore@kilpatricktownsend.com
`
`
`
`
`
`
`
`
`
`
`6
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`
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