`571-272-7822
`
`
`
`Paper 75
`Entered: February 18, 2016
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`MICROSOFT CORPORATION and
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioners,
`
`v.
`
`PARALLEL NETWORKS LICENSING, LLC,
`Patent Owner.
`
`____________
`
`Cases: IPR2015-004831 (Patent 5,894,554)
`IPR2015-004852 (Patent 6,415,335)
`
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 IPR2015-00484 has been consolidated with this proceeding; International
`Business Machines Corporation was joined as a party to this proceeding via
`Motions for Joinder in IPR2015-01729 and IPR2015-01731.
`2 IPR2015-00486 has been consolidated with this proceeding; International
`Business Machines Corporation was joined as a party to this proceeding via
`Motions for Joinder in IPR2015-01732 and IPR2015-01734.
`
`
`
`IPR2015-00483 (Patent 5,894,554)
`IPR2015-00485 (Patent 6,415,335)
`
`
`Petitioners Microsoft Corporation and International Business
`Machines Corporation (collectively, “Microsoft”), and Patent Owner Parallel
`Networks Licensing, LLC (“Parallel”), each requested oral hearings in these
`two related inter partes review trials, pursuant to 37 C.F.R. § 42.70. Papers
`60, 66.3 Upon consideration, the requests for oral hearing are granted. Oral
`argument shall commence at 1:00 PM Eastern Time on March 16, 2016, on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia.
`Because of the related nature of these cases, the Board exercises its
`discretion to consolidate the hearings. Each party will have one hour of total
`time to present arguments. A party may allot argument time between the
`two cases as it wishes.
`Microsoft bears the ultimate burden of proof that Parallel’s claims at
`issue in these reviews are unpatentable. Therefore, Microsoft will open the
`hearing by presenting argument regarding the pending grounds of
`unpatentability in both IPR2014-00483 and IPR2015-00485. Parallel will
`then have the opportunity to respond to Microsoft’s arguments on both
`cases. If desired, Microsoft may reserve rebuttal time to respond to
`arguments presented by Parallel.
`The Board will provide a court reporter, and the transcript shall
`constitute the official record of the hearing. Although a Motion to Seal has
`been granted-in-part and another Motion to Seal is pending, neither party
`requested that the oral hearing be closed to the public. Accordingly, the
`Board concludes that the parties are capable of presenting their arguments in
`
`
`3 Citations are to the record in IPR2015-00483; similar requests may be
`found in the record of IPR2015-00485.
`
`2
`
`
`
`IPR2015-00483 (Patent 5,894,554)
`IPR2015-00485 (Patent 6,415,335)
`
`these cases without discussing confidential information, and exercises its
`discretion to make the oral hearing publicly accessible. The hearing will be
`open to the public for in-person attendance that will be accommodated on a
`first-come, first-served basis.
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits shall be
`served on opposing counsel at least five business days before the hearing,
`and filed with the Board no later than the time of the oral argument. The
`parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The
`Board of Regents of the University of Michigan, Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if such objections
`cannot be resolved the parties may file any objections to demonstratives with
`the Board at least two business days before the hearing. The objections
`should identify with particularity which portions of the demonstrative
`exhibits are subject to objection, include a copy of the objected-to portions,
`and include a one-sentence statement of the reason for each objection. No
`argument or further explanation is permitted. The Board will consider any
`objections and schedule a conference call if deemed necessary. Otherwise,
`the Board will reserve ruling on the objections. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. Any counsel of record, however, may present the party’s
`argument. If either party anticipates that its lead counsel will not be
`
`3
`
`
`
`IPR2015-00483 (Patent 5,894,554)
`IPR2015-00485 (Patent 6,415,335)
`
`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.
`Any special requests for audio visual equipment should be directed to
`Trials@uspto.gov. The parties should be aware that at least one member of
`the panel will be attending the oral argument remotely by use of two-way
`audiovisual communication equipment and will not be able to view the
`projection screen in the hearing room.
`
`In light of the foregoing, it is:
`ORDERED that oral hearing, conducted pursuant to the procedures
`outlined above, shall commence at 1:00 PM Eastern Time on March 16,
`2016.
`
`
`
`
`
`4
`
`
`
`IPR2015-00483 (Patent 5,894,554)
`IPR2015-00485 (Patent 6,415,335)
`
`
`
`
`FOR PETITIONER:
`Joseph Mitcallef
`Jeffrey Kushan
`Michael Hatcher
`SIDLEY AUSTIN, LLP
`iprnotices@sidley.com
`
`Jason Wolff
`FISH & RICHARDSON P.C.
`wolff@fr.com
`
`FOR PATENT OWNER:
`
`Christopher Bovenkamp
`Pierre Hubert
`MCKOOL SMITH, P.C.
`cbovenkamp@mckoolsmith.com
`phubert@mckoolsmith.com
`
`
`5