Trials@uspto.gov
`571-272-7822
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` Paper 42
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` Entered: February 25, 2016
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORPORATION,
`Petitioner,
`
`v.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`____________
`
`Case IPR2015-00375 (Patent 8,074,115 B2)
`Case IPR2015-00377 (Patent 8,601,322 B2)
`____________
`
`Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`ORDER1
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 We exercise our discretion to issue one identical order in each case using
`this caption style. Unless otherwise authorized, the parties are not permitted
`to use this style. This order cites to the record of IPR2015-00375, unless
`otherwise noted.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 42
`
`
`
` Entered: February 25, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SYMANTEC CORPORATION,
`Petitioner,
`
`v.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`____________
`
`Case IPR2015-00375 (Patent 8,074,115 B2)
`Case IPR2015-00377 (Patent 8,601,322 B2)
`____________
`
`Before HOWARD B. BLANKENSHIP, BRYAN F. MOORE, and
`ROBERT J. WEINSCHENK, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`ORDER1
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 We exercise our discretion to issue one identical order in each case using
`this caption style. Unless otherwise authorized, the parties are not permitted
`to use this style. This order cites to the record of IPR2015-00375, unless
`otherwise noted.
`
`
`
`Case IPR2015-00375 (Patent 8,074,115 B2)
`Case IPR2015-00377 (Patent 8,601,322 B2)
`
`
`The parties have requested an oral hearing in the above proceedings
`pursuant to 37 C.F.R. § 42.70. Papers 38, 39. Upon consideration by the
`panel, the request is granted.
`Each party will have one hour of total time to present arguments for
`both cases. Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue in this review are unpatentable. Petitioner will, therefore,
`begin by presenting its case regarding the challenged claims and grounds for
`which the Board instituted trial in the proceeding. Patent Owner will then
`respond to Petitioner’s arguments. Petitioner may reserve time to respond to
`arguments presented by Patent Owner. There is no motion to amend
`pending in either of the subject proceedings.
`There is a strong public policy interest in making all information
`presented in these proceedings public, as the review determines the
`patentability of claims in an issued patent and, thus, affects the rights of the
`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
`and 35 U.S. C. § 326(a)(1), which provide that the file of any inter partes
`review or post grant review be made available to the public, except that any
`petition or document filed with the intent that it be sealed shall, if
`accompanied by a motion to seal, be treated as sealed pending the outcome
`of the ruling on the motion. Accordingly, we exercise our discretion to
`make the oral hearing publically available via in-person attendance.
`Specifically, the hearing will commence at 1:00 PM Eastern Time, on
`March 16th, 2016, on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. The hearing will be open to the public for in-
`
`2
`
`
`
`Case IPR2015-00375 (Patent 8,074,115 B2)
`Case IPR2015-00377 (Patent 8,601,322 B2)
`
`person attendance that will be accommodated on a first-come, first-served
`basis.
`
`The Board will provide a court reporter for the hearing, and 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
`five (5) business days before the hearing. The parties are directed to CBS
`Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-00033,
`slip op. at 1–5 (PTAB Oct. 23, 2013) (Paper 118), regarding the appropriate
`content of demonstrative exhibits. 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 must file any
`objections to the demonstratives with the Board at least three 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 also shall provide the demonstrative exhibits to the Board at least
`two (2) business days prior to the hearing by emailing them to
`Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`this case without prior authorization from the Board. A hard copy of the
`demonstratives should be provided to the court reporter at the hearing.
`3
`
`
`
`Case IPR2015-00375 (Patent 8,074,115 B2)
`Case IPR2015-00377 (Patent 8,601,322 B2)
`
`
`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 five (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 Board expects lead counsel for each party to be present in person
`at the oral hearing. However, lead or backup counsel may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the oral argument, the parties should initiate a joint telephone
`conference with the Board no later than two business days prior to the oral
`hearing to discuss the matter.
`Patent Owner requested live testimony of its declarant, Dr. George
`Cybenko, at the oral hearing by stating that
`[i]n its Reply, Petitioner incorrectly characterized numerous
`[pieces of] evidence (including new ones it raised for the first
`time). These include Dr. Goodrich’s testimony regarding
`emulator (for which he provided little, if any, analysis in his
`original declaration), his citation for the first time a purported
`‘combined model’ disclosed by Agarwal, his new[] theories on
`why a POSITA would have had reasons to combine models
`created on different computers or at different times as required
`by the claims, and Symantec’s attorney argument regarding the
`teaching of a new exhibit, Ex. 1016 (see Reply at 6). Dr.
`Cybenko can explain to the Board why Dr. Goodrich’s and
`Petitioner’s assertions were incorrect. Having Dr. Cybenko
`available to the Board for live testimony would provide the
`Board with the opportunity to address such technical disputes
`the Board may have.
`
`
`4
`
`
`
`Case IPR2015-00375 (Patent 8,074,115 B2)
`Case IPR2015-00377 (Patent 8,601,322 B2)
`
`Paper 39, 1–2. Petitioner opposes this request without presenting a detailed
`argument. Paper 38, 2.
`In an appropriate case, the Board may authorize or require live
`testimony in an IPR. See 37 C.F.R. § 42.53(a). For example, the Board may
`require live testimony where the Board considers the demeanor of a witness
`critical to assessing credibility. See Office Patent Trial Practice Guide,
`77 Fed. Reg. 48756, 48762 (Aug. 14, 2012). Live testimony may be
`requested by either party. Id. at 48768.
`As indicated above, the subject matter of Dr. Cybenko’s proposed live
`testimony relates to essentially rebutting several allegedly new theories and
`new evidence. In the instant case, the witness at issue is an expert, not a fact
`witness. The subject matter on which testimony will be elicited is not fact
`evidence based on the personal knowledge or observation of the witness.
`Although we may need to assess Dr. Cybenko’s credibility in this case,
`Patent Owner does not identify any reason why Dr. Cybenko’s demeanor is
`critical to assessing his credibility. Paper 39, 1–2.
`Additionally, the proper way to respond to alleged new theories or
`evidence presented in a Petitioner’s reply is to request authorization for a
`sur-reply. Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case
`CBM2012-00002, slip op. at 62 (PTAB Jan. 23, 2014) (Paper 66); Norman
`Int’l, Inc. v. Andrew Toti Testamentary Trust, Case IPR2014-00283, slip op.
`at 2 (PTAB Jan. 22, 2015) (Paper 33). To the extent that Patent Owner
`seeks to take an opportunity to expand the existing record, we
`decline to afford Patent Owner the opportunity to so augment the record at
`the hearing.
`
`5
`
`
`
`Case IPR2015-00375 (Patent 8,074,115 B2)
`Case IPR2015-00377 (Patent 8,601,322 B2)
`
`
`In view of the foregoing, Patent Owner’s request to present live
`testimony of Dr. Cybenko at the oral hearing is denied.
`
`PETITIONER:
`
`Brian M. Hoffman
`Michael Sacksteder
`David D. Schumann
`FENWICK & WEST LLP
`bhoffman-ptab@fenwick.com
`msacksteder-ptab@fenwick.com
`dschumann-ptab@fenwick.com
`
`
`
`PATENT OWNER:
`
`Hong Zhong
`Michael Fleming
`Jason G. Sheasby
`IRELL & MANELLA LLP
`hzhong@irell.com
`mfleming@irell.com
`jsheasby@irell.com
`
`
`6
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