Trials@uspto.gov
`571-272-7822
`
` Paper 35
`
`Entered: April 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`v.
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B21
`____________
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 This Order addresses the same issues in the above-identified covered
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases.
`
`
`571-272-7822
`
` Paper 35
`
`Entered: April 12, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Petitioner,
`v.
`NADER ASGHARI-KAMRANI and KAMRAN ASGHARI-KAMRANI,
`Patent Owner.
`____________
`
`Cases CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B21
`____________
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 This Order addresses the same issues in the above-identified covered
`business method patent review (“CBM”) proceedings. Therefore, we
`exercise our discretion to issue one Order to be entered in both cases.
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`
`We instituted covered business method patent reviews (Paper 142) in
`the above-referenced proceedings and issued a consolidated Scheduling
`Order (Paper 15), which sets the date for oral hearing to May 15, 2017, if
`oral hearing is requested by either party and granted by the Board. Pursuant
`to 37 C.F.R. § 42.70, Petitioner requests an oral hearing. Paper 34. The
`request is granted.
`The hearing will commence at 1:30 PM Eastern Time, on May 15,
`2017, and will be conducted at the USPTO Headquarters, Ninth Floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia, 22314.3
`The hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-serve basis.
`Each party will have sixty (60) minutes of total time to present
`arguments for both proceedings. Because Petitioner bears the ultimate
`burden of proof that the challenged claims are unpatentable, Petitioner will
`proceed first to present its case as to the challenged claims and instituted
`grounds of unpatentability in both proceedings, and may reserve a small
`portion of its time for rebuttal. Thereafter, Patent Owner will respond to
`Petitioner’s case. After that, Petitioner will use the rest of its time for its
`rebuttal, responding to Patent Owner’s specific arguments presented at the
`
`
`2 Citations refer to CBM2016-00063, as representative, unless otherwise
`noted.
`3 See https://www.uspto.gov/about-us/uspto-locations/alexandria-virginia-
`headquarters for additional information.
`2
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`oral hearing. No live testimony from any witness will be taken at the oral
`argument.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days prior to the hearing. The parties shall confer with
`each other regarding any objections to demonstrative exhibits, and file
`demonstrative exhibits with the Board, as a separate exhibit in accordance
`with 37 C.F.R. § 42.63, at least five business days prior to the hearing.
`Demonstrative exhibits are not evidence, but merely a visual aid at the
`oral hearing. For any issue that cannot be resolved after conferring with the
`opposing party, the parties may file jointly a one-page list of objections at
`least five business days prior to the hearing. The list should identify with
`particularity which demonstrative exhibits are subject to objection and
`include a short statement (no more than one sentence) 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 to demonstrative exhibits that is
`not presented timely will be considered waived. Each party also shall
`provide a hard copy of its demonstrative exhibits 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, Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. See also CBS Interactive Inc. v. Helferich
`
`3
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`Patent Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper
`118) (The Board has the discretion to limit the parties’ demonstratives to
`pages in the record should there be no easy resolution to objections over
`demonstratives.).
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that one panel member,
`Judge Ippolito, will be attending the hearing electronically and will only
`have access to the courtesy copy of the demonstratives provided in advance,
`as referenced above. If a demonstrative is not made available to the Board
`in the manner indicated above, that demonstrative may not be available to
`each of the judges during the hearing and may not be considered. Further,
`images projected, using audio visual equipment in Alexandria, will not be
`visible to Judge Ippolito. Because of limitations on the audio transmission
`systems in our hearing rooms, the presenter may speak only when standing
`at the hearing room podium. If the parties have questions as to whether
`demonstrative exhibits would be sufficiently visible and available to all of
`the judges, the parties are invited to contact the Board at (571) 272-9797.
`
`The Board expects lead counsel for each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party is unable to attend the oral
`argument, the Board should be notified via a joint telephone conference call
`
`4
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`no later than five business days prior to the oral hearing to discuss the
`matter.
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`hearing transcript will be entered in the record of these proceedings.
`Requests for audio-visual equipment at the hearing are to be made
`five days in advance of the hearing date. The requests must be sent to
`Trials@uspto.gov. If the requests are not received timely, equipment may
`not be available on the day of the hearing.
`
`
`
`5
`
`
`
`CBM2016-00063 and CBM2016-00064
`Patent 8,266,432 B2
`
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`Timothy Riffe
`FISH & RICHARDSON P.C.
`CBM36137-0007CP1@fr.com
`PTABInbound@fr.com
`
`
`
`For PATENT OWNER:
`
`Jae Youn Kim
`Harold L. Novick
`Sang Ho Lee
`NOVICK, KIM & LEE, PLLC
`skim@nkllaw.com
`hnovick@nkllaw.com
`slee@nkllaw.com
`
`Steven L. Ashburn
`Timothy M. Hsieh
`MH2 TECHNOLOGY LAW GROUP, LLP
`sashburn@mh2law.com
`tim@mh2law.com
`
`
`6
`
`
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