Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 38
`Entered: December 11, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH,
`VALEO SCHALTER UND SENSOREN GMBH, AND CONNAUGHT
`ELECTRONICS LTD.,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS, INC.,
`Patent Owner.
`
`
`
`Case IPR2014-00221 (Patent 7,991,522)
`Case IPR2014-00222 (Patent 8,386,114)1
`
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`571-272-7822
`
`
`
`Paper 38
`Entered: December 11, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALEO NORTH AMERICA, INC., VALEO S.A., VALEO GMBH,
`VALEO SCHALTER UND SENSOREN GMBH, AND CONNAUGHT
`ELECTRONICS LTD.,
`Petitioner,
`
`v.
`
`MAGNA ELECTRONICS, INC.,
`Patent Owner.
`
`
`
`Case IPR2014-00221 (Patent 7,991,522)
`Case IPR2014-00222 (Patent 8,386,114)1
`
`
`
`Before JAMESON LEE, PHILLIP J. KAUFFMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`
`
`Case IPR2014-00221 (Patent 7,991,522)
`Case IPR2014-00222 (Patent 8,386,114)
`
`
`
`
`The Scheduling Order for this case set the date for oral hearing on
`January 14, 2015, if a hearing is requested by the parties and granted by the
`Board. Paper 14.2 Both parties requested a hearing pursuant to 37 C.F.R.
`§ 42.70(a). Papers 35, 36. The request is granted.
`A consolidated oral argument for IPR2014-0221 and IPR2014-00222
`will be held on January 14, 2015. Each party will have ninety (90) minutes
`of total time to present arguments. The hearing will commence at 1:00 PM
`Eastern Time on January 14, 2015. Any representation made by counsel at
`the consolidated hearing is applicable to and usable in all proceedings which
`have underlying basis for the representation. 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 each of IPR2014-00221 and IPR2014-00222.
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`original patent claims at issue are unpatentable. Therefore, at oral hearing,
`Petitioner will proceed first to present its case with respect to the challenged
`claims and grounds with respect to which the Board instituted trial.
`Petitioner may reserve some of its argument time for rebuttal.
`Thereafter, Patent Owner will respond to Petitioner’s presentation,
`having available to it the entirety of its allotted argument time.
`Finally, Petitioner may make use of the time it has reserved to rebut
`Patent Owner’s opposing presentation with regard to the original patent
`claims.
`
`
`2 IPR2014-00221 is representative. All citations are to IPR2014-00221
`unless otherwise noted.
`
`2
`
`
`
`Case IPR2014-00221 (Patent 7,991,522)
`Case IPR2014-00222 (Patent 8,386,114)
`
`
`
`
`The hearing 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.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served
`five business days prior to the hearing. They shall be filed at the Board two
`business days prior to the hearing, and the parties must initiate a conference
`call with the Board by two business days prior to the hearing to resolve any
`dispute over the propriety of each party’s demonstrative exhibits. Any
`dispute over the propriety of demonstrative exhibits that is not timely
`presented two business days prior to the hearing will be considered waived.
`The parties are directed to CBS Interactive Inc. v. Helferich Patent
`Licensing, LLC, IPR2013-00033, Paper 118 (October 23, 2013), regarding
`the appropriate content of demonstrative exhibits.
`
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment are to be made 5 days in advance of the hearing date. The
`request is to be sent to Trials@uspto.gov. If the request is not received
`timely, the equipment may not be available on the day of the hearing.
`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 two panel members
`will be attending the hearings electronically from a remote location and that
`if a demonstrative is not filed or otherwise made fully available or visible to
`the judge presiding over the hearing remotely, that demonstrative will not be
`
`3
`
`
`
`
`
`Case IPR2014-00221 (Patent 7,991,522)
`Case IPR2014-00222 (Patent 8,386,114)
`
`considered. 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
`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 days prior to the hearing to discuss the matter.
`
`
`
`4
`
`
`
`
`
`Case IPR2014-00221 (Patent 7,991,522)
`Case IPR2014-00222 (Patent 8,386,114)
`
`
`For PETITIONER:
`
`Tammy J. Terry
`Seema Mehta
`Aly Z. Dossa
`OSHA LIANG LLP
`terry@oshaliang.com
`mehta@oshaliang.com
`dossa@oshaliang.com
`
`For PATENT OWNER:
`
`Timothy A. Flory
`Terence J. Linn
`GARDNER, LINN, BURKHART, & FLORY, LLP
`flory@glbf.com
`linn@glbf.com
`
`David K.S. Cornwell
`Salvador M. Bezos
`STERNE, KESSLER, GOLDSTEIN, & FOX PLLC
`davidc-PTAB@skgf.com
`sbezos-PTAB@skgf.com
`
`
`5
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