Trials@uspto.gov
`571.272.7822
`
`Paper 35
`Entered: July 27, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RED DIAMOND, INC.,
`Petitioner,
`
`v.
`
`SOUTHERN VISIONS, LLP,
`Patent Owner.
`_______________
`
`PGR2019-00045
`Patent 10,071,852 B2
`_______________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`KENNEDY, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Request for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`571.272.7822
`
`Paper 35
`Entered: July 27, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`RED DIAMOND, INC.,
`Petitioner,
`
`v.
`
`SOUTHERN VISIONS, LLP,
`Patent Owner.
`_______________
`
`PGR2019-00045
`Patent 10,071,852 B2
`_______________
`
`
`Before CHRISTOPHER L. CRUMBLEY, JEFFREY W. ABRAHAM, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`KENNEDY, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Request for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`
`Background
`The Revised Scheduling Order in this proceeding set the date for any
`oral hearing requested by the parties for August 11, 2020, and it set the
`deadline for requesting an oral hearing as June 30, 2020. Paper 28 at 6.
`Neither party requested an oral hearing by June 30, 2020. The Board issued
`an Order noting that fact and stating that the Board would proceed to issue a
`Final Written Decision in due course without an oral hearing. Paper 33.
`Shortly thereafter, Patent Owner requested an oral hearing. Paper 34;
`Ex. 2072. In its submissions, Patent Owner stated that it believed that it had
`filed a request on June 30, and that it was surprised to learn that its request
`had not been filed. Paper 34 at 1. Patent Owner provided convincing
`evidence that it did, in fact, believe that a request for oral hearing had been
`filed on June 30. See Ex. 2073. Patent Owner requested that the Board
`grant its request for an oral hearing. Id.
`Petitioner has indicated that it believes “oral argument [is] entirely
`unnecessary in this case,” but Petitioner ultimately “takes no position either
`for or against the grant of oral argument.” Paper 34 at 2.
`Because (1) Patent Owner timely notified Petitioner of its intent to
`request an oral hearing, see Ex. 2073, (2) the failure to file the request
`appears to be the result of an inadvertent filing error, see Paper 34, and
`(3) Petitioner does not oppose having an oral hearing, see id., Patent
`Owner’s request for an oral hearing is hereby granted, subject to the
`procedures and requirements below.
`
`Date and Time of Hearing
`The oral hearing will commence at 1:00 pm ET on August 11, 2020,
`by video. The parties are directed to contact the Board at least 10 days in
`
`2
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`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.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.
`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 five business days prior to the oral hearing date to receive
`video set-up information. As a reminder, all arrangements and the expenses
`involved with appearing by video, such as the selection of the facility to be
`used from which a party will attend by video, must be borne by that party. If
`a video connection cannot be established, the parties will be provided with
`dial-in connection information, and the oral hearing will be conducted
`telephonically.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above telephone
`number five business days prior to the hearing to receive dial-in connection
`information.
`
`Allotted Argument Time
`As requested by Patent Owner, each party will have a total of 60
`minutes to present arguments (including any rebuttal). Petitioner will open
`the hearing by presenting its arguments. Petitioner may reserve rebuttal
`time; however, absent special circumstances, Petitioner may reserve no more
`than half its total presentation time. See Consolidated Trial Practice Guide
`
`3
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`(November 2019) at 83, available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Patent
`Owner will then present its arguments. Petitioner may then use any time
`reserved for rebuttal to respond to Patent Owner’s arguments presented at
`oral hearing. Patent Owner may then present a brief sur-rebuttal to
`Petitioner’s arguments presented in rebuttal. See id.
`
`Scope of Arguments
`At the oral hearing, the parties may present arguments (1) on issues
`raised in the Revised Motion to Amend, Opposition, Reply, and Sur-reply,
`and (2) on any other pending motions. The parties may rely upon “evidence
`that has been previously submitted in the proceeding, but may only present
`arguments relied upon in the papers previously submitted.” Consolidated
`Trial Practice Guide at 85–86. “No new evidence may be presented at the
`oral argument.” Id.
`
`Request for Prehearing Conference
`Either party may request a prehearing conference call. See
`Consolidated Trial Practice Guide at 82. The purpose of a prehearing
`conference is to afford the parties the opportunity to preview (but not argue)
`issues to be discussed at the oral hearing, and to seek the Board’s guidance
`as to particular issues that the panel would like the parties to address at the
`oral hearing. The parties may also discuss any unresolved issues with
`demonstrative exhibits. The Board may rule on a limited numbers of
`objections and disputed exhibits during the prehearing conference, or after
`
`4
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`the prehearing conference and before the oral hearing. The Board may also
`defer ruling until the oral hearing or thereafter.
`The prehearing conference is not required, and absent a request, no
`conference will be held. Although the Revised Scheduling Order set the
`deadline for requesting a prehearing conference as July 28, 2020, see Paper
`28 at 6 (Due Date 6), due to the delay by Patent Owner in requesting oral
`argument described above, we will allow a request for prehearing conference
`to be made on or before July 29, 2020. Prior to making such a request,
`Petitioner and Patent Owner shall meet and confer and, when possible, send
`a joint request by email to Trials@uspto.gov with an agreed upon set of
`limited issues for discussion and several proposed times for the conference.
`Any prehearing conference should be no later than three business days prior
`to the hearing.
`
`Demonstrative Exhibits
`Demonstrative exhibits used at the 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 marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`Consolidated Trial Practice Guide at 84. 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”).
`Demonstrative exhibits should cite evidence in the record. The pages of
`each demonstrative should be numbered.
`
`5
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`At least seven 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). The Board expects the parties to
`meet and confer in good faith to discuss any objections to demonstrative
`exhibits. If any issues regarding demonstratives remain unresolved after the
`parties meet and confer, the parties shall jointly file with the Board a one-
`page list of objections to the demonstrative exhibits at least three business
`days before the hearing. For each objection, the list must identify with
`particularity the demonstrative exhibits subject to the objection and include a
`short, one-sentence statement explaining the objection. The panel will
`consider the objections and schedule a conference call, if necessary, or
`include the objections in a discussion at the prehearing conference, if
`requested. Otherwise, we may rule on the objections at or after the hearing.
`Any objections to demonstrative exhibits 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. Petitioner and Patent Owner may
`refer to CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-
`00033 (PTAB October 23, 2013) (Paper 118), and St. Jude Medical,
`Cardiology Div., Inc. v. The Board of Regents of the University of Michigan,
`IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65) regarding the appropriate
`content of demonstrative exhibits.
`The parties shall file their demonstrative exhibits in the record of this
`proceeding (as a separate exhibit in accordance with 37 C.F.R. § 42.63(a)) at
`least three business days before the hearing.
`
`6
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`
`Attendance & Presentation
`The Board generally expects lead counsel for each party to be present
`by video at the oral hearing. Any counsel of record may present the party’s
`argument as long as that counsel is present by video.
`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 a video oral hearing, such as a request to
`accommodate 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.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the oral hearing, the parties are advised to identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the oral hearing may also result in an audio lag, and so the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`Members of the public may request to listen in on this oral hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov at least five business days
`prior to the oral hearing date.
`
`7
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`It is
`ORDERED that the Board’s Order dated July 22, 2020 (Paper 33) is
`vacated;
`FURTHER ORDERED that, subject to the procedures and
`requirements provided above, Patent Owner’s request for an oral hearing is
`granted; and
`FURTHER ORDERED that an oral hearing for this proceeding,
`conducted in accordance with the procedures above, shall commence at
`1:00 pm ET on August 11, 2020, by video.
`
`
`8
`
`
`
`PGR2019-00045
`Patent 10,071,852 B2
`
`For PETITIONER:
`Jamaica Szeliga
`SEYFARTH SHAW LLP
`jszeliga@seyfarth.com
`
`James Robertson
`JM ROBERTSON LLP
`jrobertson@jmrpatents.com
`
`For PATENT OWNER:
`
`Raymond Areaux
`Joseph Miller
`CARVER, DARDEN, KORETSKY, TESSIER, FINN, BLOSSMAN & AREAUX LLC
`areaux@carverdarden.com
`miller@carverdarden.com
`
`
`9
`
`
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