`571-272-7822
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`Paper 31
`Date: August 3, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`VMWARE, INC., INTERNATIONAL BUSINESS MACHINES
`CORPORATION and ORACLE AMERICA, INC.
`Petitioners,
`
`v.
`
`ELECTRONICS AND TELECOMMUNICATIONS RESEARCH INSTITUTE,
`Patent Owner.
`
`____________
`
`Case IPR2014-00901
`Case IPR2014-009491
`Patent 6,978,346 B2
`____________
`
`
`Before BRIAN J. McNAMARA, MIRIAM L. QUINN, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`
`
`QUINN, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
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`
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`1 This case was joined with IPR2014-00901 on Jan. 28, 2015 by Order in IPR2014-
`00949, Paper 25.
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`
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`IPR2014-00901
`IPR2014-00949
`Patent 6,978,346 B2
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`
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`The parties have requested an oral hearing in each of these proceedings
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`
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`pursuant to 37 C.F.R. § 42.70. See, Papers 29, 30. We grant the parties’ request.
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`These proceedings will be heard on August 28, 2015. Each party will have
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`45 minutes of total argument time. VMware, Inc., International Business
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`Machines Corporation and Oracle America, Inc. (collectively, “Petitioners”) bear
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`the ultimate burden of proof that the claims at issue in this review are unpatentable.
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`Therefore, Petitioner VMware in IPR2014-00901 will proceed first to present
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`Petitioners’ case with regard to the challenged claims on which basis we instituted
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`trial. Thereafter, Electronics And Telecommunications Research Institute (“Patent
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`Owner”) will respond to Petitioners’ case. After that, Petitioner VMware will
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`make use of the rest of its time responding to Patent Owner. There are no motions
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`to amend or other motions to be addressed at the hearing, and no rebuttal time will
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`be allotted to Patent Owner. Furthermore, separate argument by Petitioner IBM
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`and Oracle will not be allowed, unless such argument has been requested and
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`authorized, at least two business days before hearing.
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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 review determines the patentability of claims in
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`an issued patent and thus affects the rights of the public. This policy is reflected in
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`part, for example, in 35 U.S.C. § 316(a)(1) and 35 U.S. C. § 326(a)(1), which
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`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. Accordingly, we exercise our
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`discretion to make the oral hearing publically available via in-person attendance.
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`2
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`
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`IPR2014-00901
`IPR2014-00949
`Patent 6,978,346 B2
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`
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`Specifically, the hearing will commence at 1:30 PM Eastern Time, on the
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`
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`aforementioned date, on the ninth floor of Madison Building East, 600 Dulany
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`Street, Alexandria, Virginia, and it will be open to the public for in-person
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`attendance. In-person attendance will be accommodated on a first come first serve
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`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, IPR2013-00033, Paper 118 (Oct. 23, 2013), regarding the
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`appropriate content of demonstrative exhibits.
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`Any issue regarding demonstrative exhibits should be resolved at least two
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`business days prior to the hearing by way of a joint telephone conference call to the
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`Board. The parties are responsible for requesting such a conference sufficiently in
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`advance of the hearing to accommodate this requirement. Any objection to
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`demonstrative exhibits that is not timely presented will be considered waived.
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`Demonstratives should be filed at the Board no later than two days before the
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`hearing. A hard copy of the demonstratives should be provided to the court
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`reporter at the hearing. Questions regarding specific audio-visual equipment
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`should be directed to the Board at (571) 272-9797. Requests for audio-visual
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`equipment are to be made 5 days in advance of the hearing date. The request
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`is to be sent directly 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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`3
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`IPR2014-00901
`IPR2014-00949
`Patent 6,978,346 B2
`
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`demonstrative exhibit (e.g., by slide or screen number) referenced during the
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`
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`hearing to ensure the clarity and accuracy of the reporter’s transcript.
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`The parties also should note that at least 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 is not filed or otherwise made fully available or visible to the judge
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`presiding over the hearing remotely, that demonstrative will not be considered. If
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`the parties have questions as to whether demonstrative exhibits would be
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`sufficiently visible and available to all of the judges, the parties are invited to
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`contact the Board at 571-272-9797. Documents presented on the Elmo projector
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`may not be visible to remote judges, so please plan accordingly.
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`The Board expects lead counsel for each party (including each of the joined
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`Petitioners) to be present in person at the oral hearing. However, lead or backup
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`counsel of the presenting party may put forward the party’s argument. If either
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`party anticipates that its lead counsel will not be attending the oral hearing, the
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`parties should initiate a joint telephone conference with the Board no later than two
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`business days prior to the oral hearing to discuss the matter.
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`4
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`IPR2014-00901
`IPR2014-00949
`Patent 6,978,346 B2
`
`PETITIONER:
`
`Katherine Kelly Lutton
`Timothy W. Riffe
`FISH & RICHARDSON P.C.
`lutton@fr.com
`IPR27450-0011IP1@fr.com
`
`Todd Friedman
`Gregory Arovas
`Eugene Goryunov
`Benjamin Lasky
`KIRKLAND & ELLIS LLP
`todd.friedman@kirkland.com
`greg.arovas@kirkland.com
`eugene.goryunov@kirkland.com
`Benjamin.lasky@kirkland.com
`
`
`
`PATENT OWNER:
`
`Mathew C. Phillips
`Derek Meeker
`RENAISSANCE IP LAW GROUP LLP
`matthew.phillips@renaissanceiplaw.com
`derek.meeker@renaissanceiplaw.com
`
`
`5