Trials@uspto.gov Paper 24
`571-272-7822 Entered: August 22, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETSKOPE, INC.,
`Petitioner,
`v.
`BITGLASS, INC.,
`Patent Owner.
`
` IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)1
`
`
`
`
`
`
`
`
`
`
`Before JAMES J. MAYBERRY, KEVIN C. TROCK, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`TROCK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This Order addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order to be entered in
`each proceeding. The Parties are not authorized to use this joint heading and
`filing style in their papers.
`
`
`
`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`
`I. ORAL ARGUMENT
`On August 1, 2022, Petitioner and Patent Owner each filed papers
`concerning oral argument in IPR2021-01045 and PGR2021-00091. See
`Papers 21, 22.2 Petitioner indicates that if the Board schedules oral
`argument, Petitioner requests the same length of time for oral argument
`allotted to Patent Owner. Paper 22, 1. Petitioner also requests that any oral
`argument be conducted by video conference. Id. Patent Owner requests
`sixty (60) minutes of oral argument per side to address the issues. Paper 21,
`2. After considering the parties’ papers, the request for oral argument is
`granted as follows.
`A. Time and Format
`In a consolidate hearing, oral argument in IPR2021-01045 and
`PGR2021-00091 will commence at 1:00 pm Eastern Time on September 19,
`2022, by video conference.3 The Board will provide a court reporter for the
`hearing, and the reporter’s transcript will constitute the official record of the
`hearing. 4
`Petitioner and Patent Owner will each have a total of sixty (60)
`minutes to present argument in a consolidated hearing. Petitioner will open
`the hearing by presenting its case regarding the challenged claims for which
`
`
`2 Similar papers were filed in IPR2021-01045 and PGR2021-00091. For
`convenience, citations are to documents filed in IPR2021-01045 unless
`otherwise noted.
`3 Pursuant to current policy, the Board will only conduct an in-person
`hearing when requested by all parties.
`4 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`
`2
`
`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`the Board instituted trial. Thereafter, Patent Owner will respond to
`Petitioner’s argument. Petitioner may reserve rebuttal time to respond to
`arguments presented by Patent Owner. In accordance with the Consolidated
`Trial Practice Guide5 (“CTPG”), issued in November 2019, Patent Owner
`may request to reserve time for a brief sur-rebuttal. See CTPG 83. Each
`party may allocate its time between the two cases as the party chooses.
`The parties may request a pre-hearing conference in advance of the
`hearing. See id. at 82. “The purpose of the pre-hearing conference is to
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the hearing, and to seek the Board’s guidance as to particular
`issues that the panel would like addressed by the parties.” Id. If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven (7) business days before the hearing date and
`filed no later than three (3) business days before the hearing.6
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`evidence. Rather, demonstratives are visual aids to a party’s oral
`presentation regarding arguments and evidence previously presented and
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`6 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request that the Board modify the schedule for filing
`and serving demonstratives at least seven (7) business days before the
`hearing date.
`
`3
`
`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`discussed in the papers. Accordingly, demonstratives shall be clearly
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`regulations to dismiss untimely argument “raised for the first time during
`oral argument”). “[N]o new evidence may be presented at the oral
`argument.” CTPG 85; see also St. Jude Med., Cardiology Div., Inc. v. The
`Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB
`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
`record but not previously discussed in any paper of record).
`Furthermore, because of the prohibition against the presentation of
`new evidence or arguments at a hearing, it is recommended that each
`demonstrative include a citation to a paper in the record, which allows the
`Board to easily ascertain whether a given demonstrative contains “new”
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the parties shall meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection (and should
`include a copy of the objected-to portions) and include a one (1) sentence
`
`4
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`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider any objections, and may
`reserve ruling on the objections.7 Any objection to demonstratives that is
`not timely presented will be considered waived.
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. See CTPG 11. Any counsel of record may present the
`party’s argument as long as that counsel is present by video.
`D. Video or Telephonic Hearing Details
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) 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 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 hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`
`
`7 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`5
`
`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`least five (5) business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.8
`E. Remote Attendance Requests
`Members of the public may request to listen to and/or view this
`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 at PTABHearings@uspto.gov at least ten (10) business
`days prior to the hearing date.
`
`
`8 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`6
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`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`F. Audio/Visual Equipment Requests
`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 deaf or hard-of-hearing individuals and blind or low vision
`individuals, and indicate how the PTAB may accommodate the special
`request. Any special requests must be presented in a separate
`communication at least five (5) business days before the hearing date.
`G. Legal Experience and Advancement Program
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. The Board defines a LEAP
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB.9
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a qualifying LEAP practitioner
`participate in the program and conduct at least a portion of the party’s oral
`argument. The Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`
`
`9 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`
`7
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`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.10
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.11 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements due to the number of “substantive” oral hearing arguments, but
`nonetheless has a basis for considering themselves to be in the category of
`advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided when the advocate does not qualify for
`
`
`10 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`11 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`8
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`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`LEAP, a party may share argument time among counsel and the Board will
`permit the more experienced counsel to provide some assistance, if
`necessary, during oral argument, and to clarify any statements on the record
`before the conclusion of the oral argument.
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent.
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for these proceedings shall commence
`at 1:00 pm Eastern Time on September 19, 2022, by video conference, and
`proceed in the manner set forth herein.
`
`
`
`9
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`

`

`IPR2021-01045 (Patent 10,757,090 B2)
`PGR2021-00091 (Patent 10,855,671 B2)
`FOR PETITIONER:
`
`Thomas Millikan
`Babak Tehranchi
`Kyle Canavera
`Andrew N. Klein
`PERKINS COIE LLP
`millikan-ptab@perkinscoie.com
`tehranchi-ptab@perkinscoie.com
`canavera-ptab@perkinscoie.com
`klein-ptab@perkinscoie.com
`
`
`FOR PATENT OWNER:
`
`Ben Yorks
`Babak Redjaian
`IRELL & MANELLA LLP
`byorks@irell.com
`bredjaian@irell.com
`
`10
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`