`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 65
` Entered: Nov. 20, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN EXPRESS COMPANY, AMERICAN EXPRESS TRAVEL
`RELATED SERVICES COMPANY, INC., EXPEDIA, INC.,
`HOTELS.COM LP, HOTELS.COM GP, LLC, HOTWIRE, INC., ORBITZ
`WORLDWIDE, INC., PRICELINE.COM, INC., TRAVELOCITY.COM
`LP, and YAHOO! INC.,
`Petitioner,
`
`v.
`
`METASEARCH SYSTEMS, LLC,
`Patent Owner.
`____________
`
`Case CBM2014-00001
`Patent 8,326,924 B1
`____________
`
`
`Before HOWARD B. BLANKENSHIP, KARL D. EASTHOM, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.10
`
`
`
`
`
`
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`
`We instituted a covered business patent review on March 20, 2014.
`Paper 29. Both parties requested a hearing pursuant to 37 C.F.R. § 42.70.
`Papers 63, 64. The requests are granted.
`Each party will have ninety (90) minutes of total argument time.
`Petitioner bears the ultimate burden of proving that the claims at issue are
`unpatentable. Therefore, Petitioner will proceed first to present its case with
`regard to the challenged claims. Thereafter, Patent Owner will respond to
`Petitioner’s case and also may present its case with regard to its Motion to
`Amend claims. See Paper 46. Patent Owner bears the burden of proof on its
`Motion to Amend. After Patent Owner’s case, Petitioner, using any reserved
`time, may respond to Patent Owner on all issues. Finally, Patent Owner,
`using any reserved time, may respond to Petitioner concerning the Motion to
`Amend.
`The hearing will commence at 10:00 AM Eastern Time on December
`5, 2014, and will be open to the public for in-person attendance on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`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.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served
`five business days prior to the hearing. See CBS Interactive Inc. v. Helferich
`Patent Licensing, LLC, IPR2013-00033 (October 23, 2013) (Paper 118)
`(demonstrative exhibit requirements). At least two (2) business days prior to
`the hearing, the demonstrative exhibits shall be filed at the Board, and the
`
`2
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`parties must initiate a conference call with the Board to resolve any dispute
`over the propriety thereof. An untimely request to resolve any dispute over
`the propriety of the demonstrative exhibits will be considered waived.
`
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment must be made five (5) days in advance of the hearing date at
`Trials@uspto.gov. An untimely request may render the equipment
`unavailable on the day of the hearing.
`The Board expects lead counsel for each party to be present at
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If any lead counsel will not be in attendance at hearing, the
`Board should be notified via a joint telephone conference call no later than
`two (2) days prior to the hearing to discuss the matter.
`For the foregoing reasons, it is ORDERED that each request for an
`oral hearing is granted as set forth above.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`CBM2014-00001
`Patent 8,326,924 B1
`
`For PETITIONER:
`
`John D. Vandenberg
`Kristen L. Reichenbach
`KLARQUIST SPARKMAN, LLP
`john.vandenberg@klarquist.com
`kristen.reichenbach@klarquist.com
`
`For PATENT OWNER:
`
`Cyrus A. Morton
`Ryan M. Schultz
`ROBINS, KAPLAN, MILLER, & CIRESI LLP
`CAMorton@rkmc.com
`RMSchultz@rkmc.com
`
`
`
`4
`
`