Trials@uspto.gov Paper No. 10 IPR2013-00593 Paper 46
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`571-272-7822
`IPR2013-00594 Paper 39
`IPR2013-00597 Paper 38
`IPR2013-00598 Paper 43
`Date Entered: September 26, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YAMAHA CORPORATION OF AMERICA,
`Petitioner,
`
`v.
`
`BLACK HILLS MEDIA, LLC,
`Patent Owner.
`____________
`
`Case IPR2013-00593
`Patent 8,045,952
`Case IPR2013-00594
`Patent 8,050,652
`Case IPR2013-00597
`Patent 8,230,099
`Case IPR2013-00598
`Patent 8,214,8731
`____________
`
`Before BRIAN J. McNAMARA, STACEY G. WHITE, and
`PETER P. CHEN, Administrative Patent Judges
`
`
`McNAMARA, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37C.F.R. § 42.70
`
`
`1 This Order addresses an issue that is identical in the listed cases. We
`exercise our discretion to issue a single paper to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`

`

`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`
`
` A
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` trial in each of the subject proceedings was instituted on March 20, 2014,
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`in respective Decisions to Institute. A Revised Scheduling Order entered on
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`August 27, 2014, in each of the subject proceedings set the date for oral hearing to
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`October 20, 2014, if hearing were requested by the parties and granted by the
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`Board. Both parties have requested oral hearing pursuant to 37 C.F.R. § 42.70.
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`The request is GRANTED.
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`As there is significant commonality of issues among the subject proceedings,
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`we will conduct a consolidated hearing. Each party will have 75 minutes of total
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`argument time, including any rebuttal. Yamaha Corporation of America
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`(“Petitioner”) bears the ultimate burden of proof that the claims at issue in these
`
`proceedings are unpatentable. Therefore, at oral hearing Petitioner will proceed
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`first to present its case with regard to the challenged claims on which basis we
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`instituted trial. Thereafter, Black Hills Media, LLC (“Patent Owner”) will argue
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`its opposition to Petitioner’s case. Patent Owner will also present its arguments in
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`support of its motion to exclude in each proceeding. Several issues in Patent
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`Owner’s motions to exclude are common to all the proceedings.2 Petitioner may
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`use any time Petitioner reserved to rebut to Patent Owner’s opposition and to
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`oppose Patent Owner’s motions to exclude. Finally, Patent Owner may use any
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`time it reserved solely to rebut Petitioner’s opposition to Patent Owner’s motions
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`to exclude.
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`There is a strong public policy interest in making all information presented
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`in these proceedings public, as the inter partes review determines the patentability
`
`
`2 In IPR2013-00597, Patent Owner also filed Motion to Amend. No argument is
`required, however, because Patent Owner’s Motion to Amend cancels claims, but
`does not propose substitute claims.
`
`
`
`2
`
`

`

`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`
`of claims in an issued patent and thus affects the rights of the public. This policy is
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`reflected in part, for example, in 35 U.S.C. § 316(a)(1) and 35 U.S.C. § 326(a)(1)
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`which provide that the file of any inter partes review or post grant review be made
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`available to the public, except that any petition or document filed with the intent
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`that it be sealed shall, if accompanied by a motion to seal, be treated as sealed
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`pending the outcome of the ruling on the motion. There are no motions to seal in
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`the subject proceedings. Accordingly, the Board exercises its discretion to make
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`the oral hearing publically available via in-person attendance.
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`Specifically, the hearing will commence at 1:00 PM Eastern Time, on
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`October 20, 2014, and it will be open to the public for in-person attendance, on the
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`ninth floor of Madison Building East, 600 Dulaney Street, Alexandria, Virginia.
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`In-person attendance will be accommodated on a first come, first serve basis.
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`The Board will provide a court reporter for the hearing and the reporter’s
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`transcript will constitute the official record of the hearing. Under 37 C.F.R.
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`§ 42.70(b), demonstrative exhibits must be served five business days before the
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`hearing. The parties are directed to CBS Interactive Inc. v. Helferich Patent
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`Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118),
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`regarding the appropriate content of demonstrative exhibits. Any issue regarding
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`demonstrative exhibits should be resolved at least three business days prior to the
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`hearing by way of a joint telephone conference call to the Board. The parties are
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`responsible for requesting such a conference sufficiently in advance of the hearing
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`to accommodate this requirement. Any objection to demonstrative exhibits that is
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`not presented timely will be considered waived. Demonstratives should be filed at
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`the Board no later than two business days before the hearing. A hard copy of the
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`demonstratives should be provided to the court reporter at the hearing.
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`
`
`3
`
`

`

`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`
`
`Questions regarding specific audio-visual equipment should be directed to
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`the Board at (571) 272-9797. Requests for audio-visual equipment are to be
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`made no later than 5 business days in advance of the hearing date. The
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`request is to be sent to Trials@uspto.gov. If the request is not received timely,
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`the equipment may not be available on the day of the hearing. The parties are
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`reminded that the presenter must identify clearly and specifically each
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`demonstrative exhibit (e.g., by slide or screen number) referenced during the
`
`hearing to ensure the clarity and accuracy of the reporter’s transcript.
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`The Board expects lead counsel for each party to be present in person at the
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`oral hearing. However, lead or backup counsel may present the party’s argument.
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`If either party anticipates that its lead counsel will not be attending the oral
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`argument, the parties should initiate a joint telephone conference with the Board no
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`later than two business days prior to the oral hearing to discuss the matter.
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`
`
`
`
`
`
`4
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`

`

`Case IPR2013-00593; -00594;-00597;-00598
`Patent 8,045,952; 8,050,652; 8,230,099; 8,214,873
`
`
`PETITIONER:
`
`David L. Fehrman
`Mehran Arjomand
`MORRISON & FOERSTER LLP
`dfehrman@mofo.com
`marjomand@mofo.com
`
`PATENT OWNER:
`
`Thomas Engellenner
`Lana Gladstein
`Reza Mollaaghababa
`PEPPER HAMILTON LLP
`engellennert@pepperlaw.com
`gladsteinl@pepperlaw.com
`mollaaghababar@pepperlaw.com
`
`Theodosios Thomas
`BLACK HILLS MEDIA, LLC
`ted.thomas@sceneralabs.com
`
`Christopher Horgan
`CONCERT TECHNOLOGY
`chris.horgan@concerttechnology.com
`
`
`
`
`5
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`