Trials@uspto.gov
`Tel: 571-272-7822
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`
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`Paper 28
`Entered: August 25, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RIVERBED TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`SILVER PEAK SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00402 (Patent 8,312,226 B2)
`Case IPR2013-00403 (Patent 8,370,583 B2)1
`
`
`Before DENISE M. POTHIER, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper 28
`Entered: August 25, 2014
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RIVERBED TECHNOLOGY, INC.,
`Petitioner,
`
`v.
`
`SILVER PEAK SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2013-00402 (Patent 8,312,226 B2)
`Case IPR2013-00403 (Patent 8,370,583 B2)1
`
`
`Before DENISE M. POTHIER, JUSTIN T. ARBES, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses an issue pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`IPR2013-00402 (Patent 8,312,226 B2)
`IPR2013-00403 (Patent 8,370,583 B2)
`
`
`
`
`Petitioner and Patent Owner requested a hearing in each of the above
`
`proceedings pursuant to 37 C.F.R. § 42.70(a). See IPR2013-00402, Papers
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`28, 29; IPR2013-00403, Papers 26, 27. The requests are granted.
`
`The instant proceedings involve related patents, similar challenged
`
`claims, and similar proposed substitute claims. A combined hearing for both
`
`proceedings, therefore, is appropriate under the circumstances.
`
`Each party will have forty-five (45) minutes of total time to present
`
`arguments for both proceedings. In each proceeding, Patent Owner filed a
`
`motion to amend, but not a response, and thus waived any argument as to the
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`patentability of the challenged claims. See IPR2013-00402, Paper 17 at 3;
`
`IPR2013-00403, Paper 15 at 3. Patent Owner bears the burden of proof with
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`respect to its motions to amend. See 37 C.F.R. § 42.20(c). Accordingly,
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`Patent Owner will proceed first to present its case as to the proposed
`
`substitute claims in both proceedings, and may reserve rebuttal time.
`
`Petitioner then may respond to Patent Owner’s case as to the proposed
`
`substitute claims in both proceedings. Finally, Patent Owner may use the
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`rest of its time to respond to Petitioner’s presentation.
`
`The hearing will commence at 10:00 AM Eastern Time on September
`
`30, 2014, and will be open to the public for in-person attendance on the
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`ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
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`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
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`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
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`five business days prior to the hearing. The parties shall confer with each
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`other regarding any objections to demonstrative exhibits in each proceeding,
`
`
`
`2
`
`
`
`IPR2013-00402 (Patent 8,312,226 B2)
`IPR2013-00403 (Patent 8,370,583 B2)
`
`and file demonstrative exhibits with the Board at least two business days
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`
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`prior to the hearing. For any issue that cannot be resolved after conferring
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`with the opposing party, the parties may file jointly a one-page list of
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`objections at least two business days prior to the hearing. The list should
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`identify with particularity which demonstrative exhibits are subject to
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`objection and include a short statement (no more than one sentence) of the
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`reason for each objection. No argument or further explanation is permitted.
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`We will consider the objections and schedule a conference call if necessary.
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`Otherwise, we will reserve ruling on the objections until after the hearing.
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`Any objection to demonstrative exhibits that is not presented timely will be
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`considered waived.
`
`The parties are directed to CBS Interactive Inc. v. Helferich Patent
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`Licensing, LLC, IPR2013-00033, slip op. (PTAB Oct. 23, 2013) (Paper
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`118), regarding the appropriate content of demonstrative exhibits. The
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`parties are reminded that the presenter must identify clearly and specifically
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`each demonstrative exhibit (e.g., by slide or screen number) referenced
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`during the hearing to ensure the clarity and accuracy of the reporter’s
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`transcript. The parties also should note that one member of the panel will be
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`attending the hearing electronically from a remote location and that if a
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`demonstrative exhibit is not filed or otherwise made fully available or visible
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`to the judge presiding over the hearing remotely, that demonstrative exhibit
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`will not be considered.
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`The Board expects lead counsel for Petitioner and Patent Owner to be
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`present at the hearing, although any back-up counsel may make the actual
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`presentation, in whole or in part. If lead counsel for either party will not be
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`in attendance at the hearing, the Board should be notified via a joint
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`
`
`3
`
`
`
`IPR2013-00402 (Patent 8,312,226 B2)
`IPR2013-00403 (Patent 8,370,583 B2)
`
`conference call no later than two days prior to the hearing to discuss the
`
`
`
`matter.
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`Requests for audio-visual equipment at the hearing are to be made
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`five days in advance of the hearing date. The requests must be sent to
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`Trials@uspto.gov. If the requests are not received timely, equipment may
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`not be available on the day of the hearing. Further, if the parties have
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`questions as to whether demonstrative exhibits would be sufficiently visible
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`and available to all of the judges, the parties are invited to contact the Board
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`at 571-272-9797.
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`
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`
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`4
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`
`
`
`
`IPR2013-00402 (Patent 8,312,226 B2)
`IPR2013-00403 (Patent 8,370,583 B2)
`
`PETITIONER:
`
`David M. O’Dell
`Andrew S. Ehmke
`John Russell Emerson
`HAYNES AND BOONE, LLP
`david.odell.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Darren E. Donnelly
`Jason E. Amsel
`FENWICK & WEST LLP
`ddonnelly-ptab@fenwick.com
`jamsel-ptab@fenwick.com
`
`
`
`
`
`5
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`
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