Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Date: May 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00029 (Patent 9,636,583 B2)
`Case PGR2018-00036 (Patent 9,669,308 B2)
`Case PGR2018-00039 (Patent 9,597,594 B2)
` Case PGR2018-00047 (Patent 9,770,659 B2)1
`
`____________
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`
`37 C.F.R. § 42.70
`
`1 This Order addresses the same issues in these post grant reviews.
`Therefore, we issue one Order to be filed in all of the cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers.
`For the purposes of clarity and expediency, all citations are to PGR2018-
`00029 as representative.
`
`
`571-272-7822
`
`Paper 32
`Date: May 20, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`_________
`
`Case PGR2018-00029 (Patent 9,636,583 B2)
`Case PGR2018-00036 (Patent 9,669,308 B2)
`Case PGR2018-00039 (Patent 9,597,594 B2)
` Case PGR2018-00047 (Patent 9,770,659 B2)1
`
`____________
`
`Before MICHAEL W. KIM, LYNNE H. BROWNE, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`
`37 C.F.R. § 42.70
`
`1 This Order addresses the same issues in these post grant reviews.
`Therefore, we issue one Order to be filed in all of the cases. The parties,
`however, are not authorized to use this style of filing in subsequent papers.
`For the purposes of clarity and expediency, all citations are to PGR2018-
`00029 as representative.
`
`
`
`PGR2018-00029 (Patent 9,636,583 B2)
`PGR2018-00036 (Patent 9,669,308 B2)
`PGR2018-00039 (Patent 9,597,594 B2)
`PGR2018-00047 (Patent 9,770,659 B2)
`
`
`In all identified cases, 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.
`
`These cases are currently scheduled to be heard on June 19–21, 2019.
`
`Paper 22. For PGR2018-00029 and -00047 collectively, Patent Owner
`
`requests sixty (60) minutes per side, while Petitioner requests ninety (90)
`
`minutes per side. Papers 36, 37. For PGR2018-00036, Patent Owner
`
`requests sixty (60) minutes per side, while Petitioner requests up to one (1)
`
`hour per side. PGR2018-00036, Papers 20, 22. For PGR2018-00039, Patent
`
`Owner requests sixty (60) minutes per side, while Petitioner requests up to
`
`one (1) hour per side. PGR2018-00039, Papers 31, 32.
`
`Given the similarities and overlapping issues in the four identified
`
`cases, the panel does not consider all the requested time over three days to
`
`be warranted. Accordingly, we exercise our discretion, and grant a total of
`
`six (6) hours over two days for all of the cases collectively. The panel
`
`requests that the parties confer and jointly propose two of the above listed
`
`days to hold hearings, with a maximum of four hours on any given day. The
`
`parties should file a joint paper indicating their agreed upon dates and time
`
`limits. The panel further requests that the parties confer and jointly propose
`
`how the cases should be organized, and in what order they would like to
`
`present them. The parties are to provide the details of those proposals in the
`
`above-referenced joint paper. If no agreement can be reached on any of the
`
`above issues, the parties must jointly request a conference call no later than
`
`June 12, 2019.
`
`2
`
`
`
`PGR2018-00029 (Patent 9,636,583 B2)
`PGR2018-00036 (Patent 9,669,308 B2)
`PGR2018-00039 (Patent 9,597,594 B2)
`PGR2018-00047 (Patent 9,770,659 B2)
`
`
`All hearings will be located on the ninth floor of Madison Building
`
`East, 600 Dulany Street, Alexandria, Virginia. The hearings 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
`
`hearings and the reporter’s transcript will constitute the official record of the
`
`hearings.
`
`As the party with the burden of proof, Petitioner will proceed first to
`
`present its case with regard to the challenged claims on which the Board
`
`instituted trial. Thereafter, Patent Owner may respond to Petitioner’s case.
`
`Thereafter, Petitioner may use any of its remaining time for rebuttal
`
`regarding the challenged claims. Finally, Patent Owner may use any of its
`
`remaining time for a sur-rebuttal. See Trial Practice Guide Update (Aug.
`
`2018) (“The Board may also permit patent owners the opportunity to present
`
`a brief sur-rebuttal if requested.”).
`
`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 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
`
`timely presented will be considered waived. The Board asks the parties to
`
`confine demonstrative exhibit objections to those identifying egregious
`
`3
`
`
`
`PGR2018-00029 (Patent 9,636,583 B2)
`PGR2018-00036 (Patent 9,669,308 B2)
`PGR2018-00039 (Patent 9,597,594 B2)
`PGR2018-00047 (Patent 9,770,659 B2)
`
`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 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 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.
`
`4
`
`
`
`PGR2018-00029 (Patent 9,636,583 B2)
`PGR2018-00036 (Patent 9,669,308 B2)
`PGR2018-00039 (Patent 9,597,594 B2)
`PGR2018-00047 (Patent 9,770,659 B2)
`
`
`It is ORDERED that Petitioner and Patent Owner confer and file a
`
`joint paper concerning the indicated dates, time limits, and proceeding
`
`organization, no later than June 12, 2019; and
`
`FURTHER ORDERED that parties must contact the Board no later
`
`than June 12, 2019 if no agreement can be reached.
`
`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`5
`
`
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