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` Paper 28
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` Entered: June 19, 2019
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`____________
`
`Cases
`PGR2018-00050 (Patent 9,675,886 B2)
` PGR2018-00060 (Patent 9,694,287 B2)1
`____________
`
`
`Before LYNNE H. BROWNE, HYUN J. JUNG, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 We exercise our discretion to enter one order into both proceedings. The
`parties are not authorized to use a multiple-case caption.
`
`
`
`Case PGR2018-00050 (Patent 9,675,886 B2)
`Case PGR2018-00060 (Patent 9,694,287 B2)
`
`
`Post Grant Review in PGR2018-00050 and PGR2018-00060 was
`instituted on September 28, 2018. Paper 8 in PGR2018-00050; Paper 9 in
`PGR2018-00060. A contemporaneously issued Scheduling Order set the
`date for oral hearing to June 26, 2019, if hearing is requested by the parties
`and granted by the Board. Paper 9 in PGR2018-00050; Paper 10 in
`PGR2018-00060. The parties have requested oral argument pursuant to 37
`C.F.R. § 42.70 in the above-captioned proceedings. Papers 25, 26 in both
`proceedings. The parties’ requests are granted.
`Because of the significant overlap of issues in both proceedings, the
`oral hearing for both will be combined. Oral argument will commence at
`1 PM Eastern Time on Wednesday, June 26, 2019, in Hearing Room A on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia 22314.
`The hearing will be open to the public for in-person attendance, and
`in-person attendance 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.
`Petitioner requests up to one (1) hour of oral argument per side to
`present argument in each proceeding. Paper 26, 1. Patent Owner requests
`one (1) hour of oral argument in each proceeding. Paper 25, 1. We allocate
`each party seventy-five (75) minutes of total argument time. The parties
`may use their 75 minutes to present their arguments for both cases as they
`see fit. If the panel requires a lengthy examination of a party’s argument,
`the panel may extend argument time. If the panel extends argument time for
`one party, the panel will extend argument time for the other party by an
`equal amount.
`
`
`
`
`2
`
`
`
`Case PGR2018-00050 (Patent 9,675,886 B2)
`Case PGR2018-00060 (Patent 9,694,287 B2)
`
`
`Petitioner bears the ultimate burden of proof that the claims at issue in
`these reviews are unpatentable. Therefore, at oral hearing, Petitioner will
`proceed first to present its arguments with regard to the challenged claims
`and grounds on which basis we instituted trial in this proceeding. Petitioner
`may reserve some (but not more than half) of its allotted argument time for
`rebuttal to respond to Patent Owner’s arguments.
`After Petitioner’s initial presentation, Patent Owner will argue its
`opposition to Petitioner’s case and present the issues for which it bears the
`ultimate burden, including argument on any of Patent Owner’s pending
`motions, such as the Motion to Amend Claims. Thereafter, Petitioner may
`use any reserved time to respond to Patent Owner’s presentation. Patent
`Owner may reserve some (but no more than half) of its allotted argument
`time for use in sur-rebuttal if it so chooses, and may use its reserved time for
`sur-rebuttal to respond to Petitioner’s arguments.2 The parties are reminded
`that arguments made during rebuttal and sur-rebuttal periods must be
`responsive to arguments the opposing party made in its immediately
`preceding presentation. The parties are also reminded that during the
`hearing, the parties “may only present arguments relied upon in the papers
`previously submitted.” Trial Practice Guide August 2018 Update, p. 23.
`Demonstrative exhibits must be served on opposing counsel at least
`four (4) business days before the hearing. See also 37 C.F.R. § 42.70(b).
`The parties also shall file a courtesy copy of the demonstratives as an exhibit
`
`
`2 See Trial Practice Guide August 2018 Update, p. 20, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf (providing that the “Board may also permit patent owners the
`opportunity to present a brief sur-rebuttal if requested”).
`
`3
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`Case PGR2018-00050 (Patent 9,675,886 B2)
`Case PGR2018-00060 (Patent 9,694,287 B2)
`
`to the Board at least three (3) business days prior to the hearing by emailing
`them to Trials@uspto.gov. In addition, the parties shall file any
`demonstrative exhibits in these proceedings within two (2) days of the
`hearing. Each party shall provide a hard copy of its demonstratives to the
`court reporter at the hearing. The parties are reminded that demonstrative
`exhibits are visual aids to oral argument and not evidence and are intended
`only to assist the parties in presenting their oral argument to the panel. Each
`slide may be marked with the words “DEMONSTRATIVE EXHIBIT –
`NOT EVIDENCE” in the footer. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`of Michigan, IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65) for guidance
`regarding the appropriate content of demonstrative exhibits. Demonstrative
`exhibits may not 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”). Instead, demonstrative exhibits should cite to the
`briefs and evidence in the record.
`The parties shall meet and confer to discuss any objections to
`demonstrative exhibits. If any issues regarding demonstratives remain
`unresolved after the parties meet and confer, the parties shall file jointly (by
`email to Trials@uspto.gov) a one-page list of objections to the
`demonstrative exhibits at least one (1) business day before the hearing. For
`each objection, the list must identify with particularity the demonstratives
`subject to the objection and include a short, one-sentence statement
`explaining the objection. The panel will consider the objections and may
`
`4
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`
`
`Case PGR2018-00050 (Patent 9,675,886 B2)
`Case PGR2018-00060 (Patent 9,694,287 B2)
`
`schedule a conference call if deemed necessary. Otherwise, rulings on the
`objections will be reserved until the hearing or after the hearing. Any
`objection to demonstrative exhibits not presented timely will be considered
`waived.
`During the oral hearing, the 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, and to assist Judges Browne and DeFranco, who will
`join the hearing remotely from Maryland and Massachusetts, respectively.
`Judges Browne and DeFranco will be unable to view images projected in the
`hearing room. Similarly, to ensure presenters may be heard by Judges
`Browne and DeFranco, the parties are reminded to speak only when standing
`at the hearing room podium and toward the attached microphone. The
`parties should note that if a demonstrative is not filed or otherwise made
`fully available or visible to the judges presiding over the hearing remotely,
`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 oral hearing. Lead or backup counsel, however, may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the hearing, that party should initiate a joint telephone conference
`with the other party and the panel no later than two (2) business days prior to
`the hearing to discuss the matter.
`No live testimony from any witness will be taken at the oral argument.
`5
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`
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`Case PGR2018-00050 (Patent 9,675,886 B2)
`Case PGR2018-00060 (Patent 9,694,287 B2)
`
`
`There is a strong public policy interest in making all information
`presented in this proceeding public, as the review determines the
`patentability of claims in an issued patent and thus, affects the rights of the
`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
`and 35 U.S.C. § 326(a)(1) which provide that the file of any inter partes
`review or post grant review be made available to the public, except that any
`petition or document filed with the intent that it be sealed shall, if
`accompanied by a motion to seal, be treated as sealed pending the outcome
`of the ruling on the motion.
`At this time, the parties are advised that the hearing will be open to
`the public for in-person attendance, and in-person attendance will be
`accommodated on a first-come, first-served basis. Please be advised,
`available seating is limited. The Board will provide a court reporter for the
`hearing, and the reporter’s transcript shall constitute the official record of the
`trial hearing.
`Hearing rooms are equipped with projectors for PowerPoint
`presentations, and the parties may request the use of audio-visual equipment
`during the oral hearing. Such requests should be directed to
`Trials@uspto.gov at least four (4) business days in advance of the hearing
`date. If the request is not received timely, the equipment may not be
`available on the day of the hearing.
`A party should advise the Board as soon as possible before an oral
`argument of any special needs. Any special requests for audio-visual
`equipment should be directed to Trials@uspto.gov. Examples of such needs
`include additional space for a wheelchair, an easel for posters, or an
`overhead projector (“Elmo”). A party may indicate any special requests
`
`6
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`
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`Case PGR2018-00050 (Patent 9,675,886 B2)
`Case PGR2018-00060 (Patent 9,694,287 B2)
`
`related to appearing at an in-person oral hearing, such as a request to
`accommodate physical needs that limit mobility or visual or hearing
`impairments, and indicate how the PTAB may accommodate the special
`request. Parties should not make assumptions about the equipment the
`Board may have on hand. Any special requests must be presented in a
`separate communication not less than four (4) days before the hearing. If the
`request is not received timely, the equipment may not be available on the
`day of the hearing.
`A party may request remote video attendance for one or more of its
`other attendees to view the hearing from any USPTO location. The
`available locations include the Texas Regional Office in Dallas, Texas; the
`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`in San Jose, CA. To request remote video viewing, a party must send an
`email message to Trials@uspto.gov as soon as possible, indicating the
`requested location and the number planning to view the hearing from the
`remote location. The Board will notify the parties if the request for video
`viewing is granted. Note that it may not be possible to grant the request due
`to the availability of resources.
`It is
`ORDERED that oral argument will commence at 1 PM Eastern Time
`on Wednesday, June 26, 2019, in Hearing Room A in Alexandria, Virginia.
`
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`7
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`
`
`Case PGR2018-00050 (Patent 9,675,886 B2)
`Case PGR2018-00060 (Patent 9,694,287 B2)
`
`
`
`For PETITIONER:
`Jennifer Bush
`FENWICK & WEST LLP
`jbush-ptab@fenwick.com
`
`
`
`For PATENT OWNER:
`Jesse Collier
`B. Graham Nelson
`Oliff PLC
`lmostrom@oliff.com
`bnelson@oliff.com
`
`
`
`
`
`8
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`
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