Paper No. 43
`Entered: May 11, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDMUND OPTICS, INC.,
`Petitioner,
`
`v.
`
`SEMROCK, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00583
`Patent 7,068,430 C1
`
`Case IPR2014-00599
`Patent 7,119,960 C1
`
`
`Before WILLIAM A. CAPP, TRENTON A. WARD, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`Entered: May 11, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EDMUND OPTICS, INC.,
`Petitioner,
`
`v.
`
`SEMROCK, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00583
`Patent 7,068,430 C1
`
`Case IPR2014-00599
`Patent 7,119,960 C1
`
`
`Before WILLIAM A. CAPP, TRENTON A. WARD, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`CAPP, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2014-00583; Patent 7,068,430 C1
`IPR2014-00599; Patent 7,119,960 C1
`
`
`On September 19, 2014, we entered respective Decisions to institute a trial
`in IPR2014-00583 (Paper 9) and IPR2014-00599 (Paper 9). A Scheduling Order
`issued in each case set the date for oral hearing, if requested by either party, as
`May 21, 2015. Pursuant to 37 C.F.R. § 42.70, the respective parties have requested
`oral hearing in each proceeding. IPR2014-00583 (Paper 38 Semrock, Paper 39
`Edmund); IPR 2014-00599 (Paper 47 Semrock; Paper 48 Edmund). These
`requests are granted.
`Oral argument for IPR2014-00583 and IPR2014-00599 will be held on May
`21, 2015, on the ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia.
`Commencing at 9:00 AM ET, oral argument for the issues in IPR2014-
`00583 will be held. Each party will have 40 minutes of argument time. Edmund
`bears the ultimate burden of proof that the claim at issue is unpatentable.
`Therefore, Edmund will proceed first to present its case with regard to the
`challenged claim and ground on which we instituted trial in this proceeding.
`Semrock then will argue its opposition to Edmund’s case and in support of its
`Contingent Motion to Amend (Paper 19). Edmund may use its remaining time, if
`any, to rebut Semrock’s opposition and oppose Semrock’s motion to amend.
`Finally, Semrock may use its remaining time, if any, to rebut Edmund’s opposition
`to the motion to amend. Semrock’s rebuttal time, however, will be strictly limited
`to the motion to amend. Semrock may not use its rebuttal time in furtherance of its
`opposition to Edmund’s Petition on the originally challenged claim.1
`
`
`1 The parties may allocate a portion of their time to argue Edmund’s motion to
`exclude evidence. Paper 42.
`
`
`
`IPR2014-00583; Patent 7,068,430 C1
`IPR2014-00599; Patent 7,119,960 C1
`
`
`Following a brief recess between cases, argument for the issues in IPR2014-
`00599 will be held. Each party will have 40 minutes of argument time. Edmund
`bears the ultimate burden of proof that the claims at issue are unpatentable.
`Therefore, Edmund will proceed first to present its case with regard to the
`challenged claims and grounds on which we instituted trial in this proceeding.
`Semrock then will argue its opposition to Edmund’s case and in support of its
`Contingent Motion to Amend (Paper 21). Edmund may use its remaining time, if
`any, to rebut Semrock’s opposition and oppose Semrock’s motion to amend.
`Finally, Semrock may use its remaining time, if any, to rebut Edmund’s opposition
`to the motion to amend. Semrock’s rebuttal time, however, will be strictly limited
`to the motion to amend. Semrock may not use its rebuttal time in furtherance of its
`opposition to Edmund’s Petition on the originally challenged claims. 2
`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 will be
`open to the public for in-person attendance that will be accommodated on a first-
`come, first-served basis. If the parties have any concern about disclosing
`confidential information, they are to contact the Board at least 10 days in advance
`of the hearing to discuss the matter.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a proponent of
`deposition testimony must file such testimony as an exhibit. The Board will not
`consider any deposition testimony that has not been so filed.
`Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served at least five business days before the hearing. The parties shall provide a
`
`2 The parties may also allocate a portion of their time to argue their respective
`motions to exclude evidence. Paper 46, 51, 52.
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` 3
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`IPR2014-00583; Patent 7,068,430 C1
`IPR2014-00599; Patent 7,119,960 C1
`
`courtesy copy of any demonstrative exhibits to the Board at least five business
`days prior to the hearing by emailing them to Trials@uspto.gov. The parties shall
`not file any demonstrative exhibits in these proceedings without prior authorization
`from the Board.
`The parties must file any objections to the demonstratives with the Board at
`least two business days before the hearing. Any objection to the demonstrative
`exhibits that is not presented timely will be considered waived. The objections
`should identify with particularity which demonstratives are subject to objection,
`and include a short (one sentence or less) statement of the reason for each
`objection. No argument or further explanation is permitted. The Board will
`consider the objections and schedule a conference if deemed necessary.
`Otherwise, the Board will reserve ruling on the objections until after the oral
`argument. The parties are directed to St. Jude Medical, Cardiology Division, Inc. v.
`The Board of Regents of the University of Michigan, IPR2013-00041 (PTAB
`January 27, 2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`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 will not be in attendance at oral hearing, the Board
`should be notified via a joint telephone conference call no later than two business
`days prior to the oral hearing to discuss the matter.
`Any special requests for audio visual equipment should be directed to
`Trials@uspto.gov. Requests for special equipment will not be honored unless
`presented in a separate communication not less than five days before the hearing
`directed to the above email address.
`
` 4
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`IPR2014-00583; Patent 7,068,430 C1
`IPR2014-00599; Patent 7,119,960 C1
`
`
`At least one judge will be participating remotely via a videoconferencing
`device and will not be able to view the projection screen in the hearing room. 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 avoid confusion, and to ensure the clarity and accuracy of the reporter’s
`transcript.
`
`
`
`For Petitioner:
`
`Lynn E. Rzonca
`John A. Chionchio
`Daniel A. Nadel
`BALLARD SPAHR LLP
`rzoncal@ballardspahr.com
`chionchioj@ballardspahr.com
`nadeld@ballardspahr.com
`
`For Patent Owner:
`
`James Boyle
`Anthony Lombardi
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`james.boyle@finnegan.com
`anthony.lombardi@finnegan.com
`
`
`
` 5
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