Trials@uspto.gov
`571.272.7822
`
`
`Paper 24
`Date: January 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`20/20 VISION CENTER, LLC,
`Petitioner,
`
`v.
`
`DIGITALOPTOMETRICS LLC,
`Patent Owner.
`_______________
`
`PGR2018-00100
`Patent 9,980,644 B2
`_______________
`
`
`Before PATRICK M. BOUCHER, CHRISTOPHER G. PAULRAJ, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`571.272.7822
`
`
`Paper 24
`Date: January 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`20/20 VISION CENTER, LLC,
`Petitioner,
`
`v.
`
`DIGITALOPTOMETRICS LLC,
`Patent Owner.
`_______________
`
`PGR2018-00100
`Patent 9,980,644 B2
`_______________
`
`
`Before PATRICK M. BOUCHER, CHRISTOPHER G. PAULRAJ, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`Patent Owner and Petitioner request an oral argument in PGR2018-
`
`00100, pursuant to 37 C.F.R. § 42.70. Papers 22, 23. Petitioner does not
`
`request any particular amount of time (Paper 23, 1), but Patent Owner
`
`“requests no more than one hour per side of oral argument time.” Paper 22,
`
`1.
`
`Having considered the parties’ submissions, the parties’ requests for
`
`oral argument are GRANTED. Oral arguments will commence at 12:00 PM
`
`Eastern Time on January 23, 2020, at the USPTO Headquarters 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 parties are directed to
`
`contact the Board at least 10 days in advance of the hearing if there are any
`
`concerns about disclosing confidential information. The Board will provide
`
`a court reporter for the hearing, and the reporter’s transcript will constitute
`
`the official record of the hearing. To facilitate planning, each party must
`
`send an email message to PTABHearings@uspto.gov five days prior to the
`
`hearing if the number planning to attend the hearing in-person for its side
`
`(attorneys and others) exceeds five people.
`
`Each side will have 40 minutes, total, to present its arguments. See
`
`Papers 22, 23. The total hearing time will be no longer than 80 minutes.
`
`Petitioner bears the ultimate burden of proof that Patent Owner’s claims at
`
`issue in this review are unpatentable. See 35 U.S.C. § 326(e). Accordingly,
`
`Petitioner will open the hearing by presenting its case regarding the
`
`patentability of the challenged claims. After Petitioner’s presentation, Patent
`
`Owner will respond to Petitioner’s arguments. Petitioner may reserve up to
`
`half of its time for rebuttal to respond to Patent Owner’s arguments.
`
`
`
`2
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`Thereafter, Patent Owner may use any of its remaining time for sur-rebuttal,
`
`to respond to Petitioner’s rebuttal arguments.
`
`Per the August 2018 update to the Office Patent Trial Practice Guide
`
`(incorporated in the November 2019 Consolidated 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://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Pr
`
`actice_Guide.pdf). Requests for a pre-hearing conference must have been
`
`made no later than DUE DATE 6 provided in the Scheduling Order, which
`
`was January 2, 2020. No such requests were made for this proceeding.
`
`The parties are reminded that, under 37 C.F.R. § 42.70(b),
`
`demonstrative exhibits must be served at least seven (7) business days before
`
`the hearing date. The parties also shall provide a courtesy copy of any
`
`demonstrative exhibits to the Board at least five business days prior to the
`
`hearing by emailing them to PTABHearings@uspto.gov. Notwithstanding
`
`37 C.F.R. § 42.70(b), the parties shall not file any demonstrative exhibits in
`
`this proceeding without prior authorization from the Board. See 37 C.F.R.
`
`§ 42.5(b). A hard copy of the demonstrative exhibits should be provided to
`
`the court reporter at the hearing.
`
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`
`(PTAB January 27, 2015) (Paper 65), for guidance regarding the appropriate
`
`content of demonstrative exhibits. Demonstrative exhibits used at the oral
`
`hearing are aids to oral argument and not evidence, and should be clearly
`
`marked as such. For example, each slide of a demonstrative exhibit may be
`
`
`
`3
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`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 must meet and confer in good faith to discuss and resolve
`
`any objections to demonstrative exhibits. Any party with unresolved
`
`objections must file such objections with the Board at least two (2) business
`
`days before the hearing, if no pre-hearing conference is requested, or two (2)
`
`business days before a pre-hearing conference, if one is scheduled. The
`
`objections should identify with particularity which demonstrative exhibits
`
`are subject to objection, and include a short (one sentence or less) statement
`
`of the reason for each objection. No argument or further explanation is
`
`permitted. The Board will consider the objections and, if no pre-hearing
`
`conference is requested, may schedule a conference if deemed necessary.
`
`Otherwise, the Board will reserve ruling on the objections until after the oral
`
`argument. Any objection to demonstrative exhibits that is not timely
`
`presented will be considered waived.
`
`At least two members of the panel may attend the hearing from a
`
`remote location by use of two-way audio-visual communication equipment
`
`and may not be able to view the projection screen in the hearing room.
`
`Specifically, documents presented on the ELMO projector are not visible to
`
`judges at a remote location, so please plan accordingly. If a demonstrative
`
`exhibit is not made available or visible to the judge(s) presiding over the
`
`hearing remotely, that demonstrative will not be considered. Each presenter
`
`
`
`4
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`must identify clearly and specifically each demonstrative exhibit (e.g., by
`
`slide number) referenced during the hearing to ensure the clarity and
`
`accuracy of the reporter’s transcript and for the benefit of the judge(s)
`
`presiding over the hearing remotely. Because of limitations of the audio
`
`transmission systems in our hearing rooms, the presenter may speak only
`
`when standing at the hearing room lectern.
`
`The Board generally expects lead counsel for each party to be present
`
`in person at the oral hearing. However, any counsel of record may present
`
`the party’s argument as long as that counsel is present in person.
`
`A party may request that counsel be permitted to present arguments
`
`remotely from an alternative USPTO location. The available locations
`
`include the USPTO headquarters in Alexandria, Virginia; 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 that
`
`counsel be permitted to present arguments from a remote location, a party
`
`should send an email message to PTABHearings@uspto.gov at least ten
`
`business days or as soon as practical prior to the hearing and provide a short
`
`statement of reasons for the request. The Board will notify the parties if the
`
`request is approved. Approval of the request does not guarantee that a panel
`
`member will be present at the remote location.
`
`A party may also request remote video attendance for one or more of
`
`its other attendees to view the hearing from any USPTO location. To
`
`request remote video viewing, a party must send an email message to
`
`PTABHearings@uspto.gov ten business days prior to the hearing, indicating
`
`the requested location and the number planning to view the hearing from the
`
`
`
`5
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`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.
`
`Any special requests for audio-visual equipment should be directed to
`
`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`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. Any special requests must be presented in a separate
`
`communication not less than five (5) days before the hearing.
`
`In light of the foregoing, it is:
`
`ORDERED that the oral hearing, conducted pursuant to the
`
`procedures outlined above, shall commence at 12:00 pm Eastern Time on
`
`January 23, 2020.
`
`
`
`
`
`
`
`6
`
`
`
`PGR2018-00100
`Patent 9,980,644 B2
`
`
`
`PETITIONER:
`
` Joseph Richetti
`Joe.richetti@bryancave.com
`
`Kevin Paganini
`Kevin.paganini@bryancave.com
`
`PATENT OWNER:
`
`W. Karl Renner
`Axf-ptab@fr.com
`
`Roberto Devoto
`devoto@fr.com
`
`Mark Koffsky
`mkoffsky@koffskyschwalb.com
`
`Gary Serbin
`gserbin@koffskyschwalb.com
`
`Andrew R. Kopsidas
`kopisdas@fr.com
`
`
`
`
`
`
`7
`
`
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