Trials@uspto.gov
`571-272-7822
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` Paper 26
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` Entered: May 27, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
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`HEWLETT-PACKARD COMPANY
`Petitioner
`
`
`v.
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`MCM PORTFOLIO, LLC
`Patent Owner
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`
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`Case IPR2013-00217
`Patent 7,162,549
`
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`
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`Before JONI Y. CHANG, GLENN J. PERRY, and JENNIFER S. BISK,
`Administrative Patent Judges.
`
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`CHANG, Administrative Patent Judge.
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`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
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`571-272-7822
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` Paper 26
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` Entered: May 27, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`HEWLETT-PACKARD COMPANY
`Petitioner
`
`
`v.
`
`MCM PORTFOLIO, LLC
`Patent Owner
`
`
`
`Case IPR2013-00217
`Patent 7,162,549
`
`
`
`
`
`Before JONI Y. CHANG, GLENN J. PERRY, and JENNIFER S. BISK,
`Administrative Patent Judges.
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`
`
`
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`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`Case IPR2013-00217
`Patent 7,162,549
`
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`The instant inter partes review was instituted on September 10, 2013.
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`Paper 10. Each party has a right to an oral hearing as part of the proceeding.
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`35 U.S.C. § 316(a)(10). In that regard, a party may request oral argument on an
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`issue raised in the trial. 37 C.F.R. § 42.70. The Scheduling Order sets forth a due
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`date for filing such a request and a tentative oral hearing date of June 4, 2014.
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`Paper 11, 4-5.
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`Petitioner’s Request
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`Upon filing all of its substantive brief papers, Petitioner timely requested an
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`oral hearing pursuant to 37 C.F.R. § 42.70. Paper 25. In response, Patent Owner
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`initiated a conference call to request that the Board grants no oral hearing in the
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`instant proceeding or, alternatively, a telephonic hearing. During the conference
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`call held on May 23, 2014, between respective counsel for Patent Owner and
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`Petitioner, and Judges Chang, Perry, and Bisk, Patent Owner alleged that the
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`parties have briefed sufficiently the issues, such that an oral hearing would not be
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`necessary. Patent Owner also indicated that appearing in person before the Board
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`would place an undue financial burden on Patent Owner, as counsel is located on
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`the west coast.
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`Petitioner maintained that an oral hearing is necessary. Although Petitioner
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`did not oppose Patent Owner appearing telephonically in an oral hearing, Petitioner
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`requested authorization to appear in person for the oral hearing, so that Petitioner
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`could present its case effectively using visual demonstrative exhibits.
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`As the Board articulated during the conference call, Petitioner has a right to
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`an oral hearing in the instant inter partes review. The Board, nevertheless,
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`2
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`Case IPR2013-00217
`Patent 7,162,549
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`recognized the burden that places on Patent Owner to appear in person. The Board
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`further agreed with Patent Owner that the issues in this particular case have been
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`briefed sufficiently in that no oral hearing would be necessary for the Board to
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`decide the merits of the case. Moreover, conducting the oral hearing
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`telephonically for both parties in this particular case would not prejudice
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`Petitioner, as Petitioner may use demonstrative exhibits in such a hearing, and the
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`Board will have access to the entire record during the oral hearing, including any
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`demonstrative exhibits filed by the parties.
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`In consideration of the foregoing, Petitioner’s request for an oral hearing is
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`granted, but both parties will be appearing telephonically at the oral hearing.
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`Oral Hearing
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`The oral hearing will commence at 10:00 AM ET, on June 4, 2014. The
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`hearing will be conducted telephonically for both parties. The Board will forward
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`the dial-in information prior to the oral hearing via electronic mail. The Board also
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`will provide a court reporter for the hearing and the reporter’s transcript will
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`constitute the official record of the hearing.
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`As the instant inter partes review merely involved a single instituted ground
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`of unpatentability and four challenged claims, each party will have thirty minutes
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`of total time to present arguments. Petitioner bears the ultimate burden of proof
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`that Patent Owner’s claims at issue are unpatentable. Therefore, at oral hearing,
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`Petitioner will proceed first to present its case with respect to the challenged claims
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`and grounds, on which the Board instituted the inter partes review. Thereafter,
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`3
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`Case IPR2013-00217
`Patent 7,162,549
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`Patent Owner will respond to Petitioner’s case. After that, Petitioner may make
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`use of any remainder of its time to address Patent Owner’s responsive presentation.
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no later
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`than five business days before the hearing. They shall be filed with the Board no
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`later than three business days prior to the hearing and the parties must initiate a
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`conference call with the Board at least two business days prior to the hearing to
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`resolve any dispute over the propriety of each party’s demonstrative exhibits. For
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`guidance on what constitutes an appropriate demonstrative exhibit, the parties are
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`directed to CBS Interactive Inc., v. Helferich Patent Licensing, LLC.,
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`IPR2013-00033, Paper 118 (Oct. 23, 2013). The parties are reminded that the
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`presenter must identify clearly and specifically any demonstrative exhibit
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`referenced during the oral hearing to ensure the clarity and accuracy of the
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`reporter’s transcript.
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`The Board expects lead counsel for each party to be present at oral hearing,
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`although any backup counsel may make the actual presentation, in whole or in part.
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`If lead counsel for either party will not be in attendance at oral argument, the
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`Board should be notified via a joint telephone conference call at least two business
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`days prior to the oral hearing to discuss the matter.
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`4
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`Case IPR2013-00217
`Patent 7,162,549
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`PETITIONER:
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`Robert L. Hails, Jr.
`T. Cy Walker
`KENYON & KENYON LLP
`HP549IPR@kenyon.com
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`PATENT OWNER:
`
`Edward P. Heller III
`Christopher Brittain
`Alliacense Limited LLC
`ned@alliacense.com
`chris@alliacense.com
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`
`5
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`
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