Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
`
` Paper 34
`
` Entered: April 24, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLVAY USA INC.,
`Petitioner,
`v.
`WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC,
`and ECO WORLD GROUP LLC
`Patent Owner.
`____________
`
`PGR2019-00046
`Patent 10,221,108 B2
`____________
`
`
`Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
` Paper 34
`
` Entered: April 24, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLVAY USA INC.,
`Petitioner,
`v.
`WORLDSOURCE ENTERPRISES, LLC, ECO AGRO RESOURCES LLC,
`and ECO WORLD GROUP LLC
`Patent Owner.
`____________
`
`PGR2019-00046
`Patent 10,221,108 B2
`____________
`
`
`Before KRISTINA M. KALAN, JEFFREY W. ABRAHAM, and
`SHELDON M. MCGEE, Administrative Patent Judges.
`
`MCGEE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`ORDER
`
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`
`We instituted trial in this proceeding on August 13, 2019. Paper 7. A
`Scheduling Order set the oral hearing for May 14, 2020. Paper 8, 7. Both
`parties have requested oral hearing. Papers 30, 32. The requests are granted
`according to the terms set forth below.
`Oral arguments will commence at 1:00 PM Eastern Time on May 14,
`2020, by video. 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.
`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.1
`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 five business days prior to the 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
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`number five business days prior to the hearing to receive dial-in connection
`information.
`Either party may request a pre-hearing telephone conference. Patent
`Trial and Appeal Board Consolidated Trial Practice Guide, November 2019
`Update, p. 82 (Trial Practice Guide).2 Requests for a pre-hearing conference
`must be made by May 5, 2020. Prior to making a request, the parties should
`meet and confer and send a joint request to the Board with an agreed upon
`set of limited issues for discussion in the pre-hearing conference. To request
`a pre-hearing telephone conference, a joint email request should be sent to
`Trials@uspto.gov, including several dates and times of availability for both
`parties. If the parties are unable to agree on the issues to be addressed at the
`pre-hearing conference, the joint request shall specify which issues are
`disputed and provide a brief statement (not to exceed one sentence) of the
`opposing party’s objection.
`The panel may, at its discretion, indicate certain issues during the pre-
`hearing conference that it wishes parties to emphasize at the oral hearing.
`Although the parties and the panel may discuss issues for the oral hearing at
`the pre-hearing conference, the issues discussed at the pre-hearing
`conference do not limit the scope of the oral hearing. Instead, the parties
`remain free to address at the oral hearing any issue properly raised during
`the trial, and the panel may ask questions on issues other than those
`identified at the pre-hearing conference.
`The pre-hearing conference is not required, and absent a request, no
`call will be held.
`
`
`2 Available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`3
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`
`Allotted Argument Time
`Each party will have sixty (60) minutes of total argument time to
`present its arguments in this proceeding. Petitioner will proceed first to
`present its case. Petitioner may reserve some, but not more than half, of its
`argument time for rebuttal. Thereafter, Patent Owner will respond to
`Petitioner’s case and may reserve some, but no more than half, of its
`argument time for sur-rebuttal. Next, Petitioner may use any time it has
`reserved for rebuttal to respond to Patent Owner’s specific arguments
`presented at the hearing. Patent Owner may then use any reserved time for
`sur-rebuttal to respond to Petitioner’s arguments.3 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 also are reminded that during the
`hearing, the parties “may only present arguments relied upon in the papers
`previously submitted.” Trial Practice Guide November 2019 Update, p. 86.
`
`Demonstratives
`Under 37 C.F.R. § 42.70(b), any demonstrative exhibits must be
`served on opposing counsel at least seven (7) business days before 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 Jan. 27, 2014) (Paper 65) for guidance regarding the appropriate
`content of demonstrative exhibits. The parties shall file demonstrative
`
`
`3 See Trial Practice Guide November 2019 Update, p. 83 (providing that the
`“Board may also permit patent owners the opportunity to present a brief sur-
`rebuttal if requested”).
`
`4
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`exhibits with the Board at least two business days prior to the hearing.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if any such
`objections cannot be resolved, the parties must file any objections to the
`demonstratives with the Board at least two business days before the hearing.
`The objections should identify with particularity which portions of the
`demonstratives are subject to objection, include a copy of the objected-to
`portions, and include a short, one-sentence statement of the reason for each
`objection. No argument or further explanation is permitted. We will
`consider the objections and schedule a conference call if necessary.
`Otherwise, we will reserve ruling on the objections until the hearing or after
`the hearing. Any objection that is not timely presented will be deemed
`waived.
`We note that demonstrative exhibits are only an aid to oral argument
`and are not evidence of record in the proceeding, and should be clearly
`marked as such. For example, each slide may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. The
`parties also are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number) or
`page of the record referenced during the hearing to ensure the clarity and
`accuracy of the reporter’s transcript.
`
`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
`
`5
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`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.
`
`Accordingly, it is:
`ORDERED that oral argument will commence at 1:00 PM Eastern
`Time on May 14, 2020, by video.
`
`
`6
`
`
`
`PGR2019-00046
`Patent 10,221,108 B2
`
`PETITIONER:
`
`Ching-Lee Fukuda
`Michael Franzinger
`Jason P. Greenhut
`SIDLEY AUSTIN LLP
`clfukuda@sidley.com
`mfranzinger@sidley.com
`jgreenhut@sidley.com
`
`
`
`PATENT OWNER:
`
`Thomas Benjamin Schroeder
`BEN SCHROEDER LAW, PLLC
`ben@leak-schroeder.com
`
`
`David M. Wilkerson
`The Van Winkle Law Firm
`dwilkerson@vwlawfirm.com
`
`7
`
`
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