Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 47
`Entered: June 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00915
`IPR2015-00916
`IPR2015-009171
`Patent 8,710,282 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses identical issues in each of three related cases. We
`exercise our discretion to issue one Order to be entered in each case. The
`parties are not authorized to use this style heading in their papers.
`
`
`571-272-7822
`
`
`
`
`Paper 47
`Entered: June 22, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARKEMA FRANCE,
`Petitioner,
`
`v.
`
`HONEYWELL INTERNATIONAL INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00915
`IPR2015-00916
`IPR2015-009171
`Patent 8,710,282 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses identical issues in each of three related cases. We
`exercise our discretion to issue one Order to be entered in each case. The
`parties are not authorized to use this style heading in their papers.
`
`
`
`IPR2015-00915
`IPR2015-00916
`IPR2015-00917
`Patent 8,710,282 B2
`
`
`Patent Owner and Petitioner each request an oral hearing pursuant to
`37 C.F.R. § 42.70. Papers 45, 46.2 The requests are granted.
`There is substantial overlap in the issues raised in the three cases, and
`we exercise our discretion to conduct a consolidated oral hearing. Each
`party will have 90 minutes of total argument time to present its arguments as
`to all three proceedings, with each party allotting their time among the three
`proceedings as they wish. Petitioner bears the ultimate burden of proof that
`the patent claims at issue in this review are unpatentable. Therefore,
`Petitioner will proceed first to present its case with regard to the challenged
`claims on which basis we instituted trial. Thereafter, Patent Owner will
`respond to Petitioner’s arguments. Petitioner may reserve rebuttal time to
`respond to arguments presented by Patent Owner.
`There is information in the record of these proceedings that has been
`sealed pending the outcome of the parties’ Motions to Seal. Patent Owner
`requests that portions of the oral hearing be closed to the public, and that
`portions of the transcript be designated as confidential, in order to
`accommodate Patent Owner’s confidential exhibits. Paper 45, 1. Petitioner
`opposes this request. Paper 46, 1.
`There is a strong public policy for making all information filed in
`inter partes review proceedings open to the public. Garmin Int’l, Inc. v.
`Cuozzo Speed Techs. LLC, Case IPR2012-00001 (PTAB May 14, 2014)
`(Paper 34). Because an inter partes review affects the rights of the public in
`an issued patent, it is important that a complete and understandable file
`
`2 For brevity, we refer to papers filed in IPR2015-00915. Similar papers
`were filed in each of the other proceedings.
`2
`
`
`
`
`
`IPR2015-00915
`IPR2015-00916
`IPR2015-00917
`Patent 8,710,282 B2
`
`history is maintained. The default rule is that all papers filed in an inter
`partes review will be open and available for access by the public, and that
`only confidential information may be protected from disclosure upon a
`showing of good cause. See 35 U.S.C. §§ 316(a)(1), 316(a)(7); 37 C.F.R.
`§§ 42.14, 42.54 (a).
`We have considered the strong public interest in making all aspects of
`an inter partes review available to the public, while taking into account
`Patent Owner’s interest in protecting truly confidential information. See
`37 C.F.R. §§ 42.14, 42.54; Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,760 (Aug. 14, 2012). For example, in these proceedings, the
`public has a strong interest in knowing the evidence Patent Owner is relying
`on to establish that the date of its claimed invention is prior to the effective
`date of Smith3 and/or Sedat,4 the references relied upon in the grounds of
`unpatentability upon which the trials were instituted in these proceedings.
`Any confidential information that is relied upon or identified in a final
`written decision will be made public. See Office Patent Trial Practice
`Guide, 77 Fed. Reg. at 48,761. Similarly, any argument or information that
`the parties consider to be persuasive at the oral hearing also should be open
`to the public.
`We caution the parties to be mindful, at the oral hearing, not to make
`public information that the other party has asserted in a motion to be
`
`
`3 Smith, WO 2009/138764 A1, published November 19, 2009 (IPR 2015-
`00915, Ex. 1003).
`4 Sedat, French Patent App. Pub. No. 2 940 968, published July 16, 2010
`(IPR2015-00915, Exs. 1004, 1005 (English translation)).
`3
`
`
`
`
`
`IPR2015-00915
`IPR2015-00916
`IPR2015-00917
`Patent 8,710,282 B2
`
`confidential and has requested to be sealed. The parties may present their
`arguments without disclosing specifically any allegedly confidential
`information during the oral hearing. Accordingly, we deny Patent Owner’s
`request that portions of the oral hearing be closed to the public, and that
`portions of the transcript be designated confidential.
`The hearing shall commence at 1:00 pm EDT on July 18, 2016. The
`hearing will be open to the public for in-person attendance on the ninth floor
`of Madison Building East, 600 Dulany Street, Alexandria, VA. In-person
`attendance will be accommodated on a first-come, first-served basis. The
`Board will provide a court reporter, and the transcript shall constitute the
`official record of the hearing.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be
`served seven business days before the hearing. In contrast to what is
`expressly stated in § 42.70, however, the parties shall file the demonstrative
`exhibits no later than two business days before the hearing to allow the panel
`sufficient time to review the materials.
`We remind the parties that demonstrative exhibits are not evidence,
`but are intended to assist the parties in presenting their oral arguments to the
`Board. We also remind the parties that demonstrative exhibits are not a
`mechanism for making arguments not previously addressed in the Papers.
`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. See also CBS Interactive Inc. v. Helferich
`Patent Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper
`
`4
`
`
`
`
`
`IPR2015-00915
`IPR2015-00916
`IPR2015-00917
`Patent 8,710,282 B2
`
`118) (The Board has discretion to limit the parties’ demonstratives to pages
`in the record should there be no easy resolution to objections over
`demonstratives.).
`To the extent that the parties object to the propriety of any
`demonstrative exhibit, we expect that the parties will meet and confer in
`good faith to resolve any objections to demonstrative exhibits. Any issue
`regarding demonstrative exhibits should be resolved at least two business
`days prior to the hearing by way of a joint telephone conference with the
`Board. The parties are responsible for requesting such a conference
`sufficiently in advance of the hearing to accommodate this requirement.
`Any objection to demonstrative exhibits that is not timely presented will be
`considered waived. A hard copy of the demonstratives should be provided
`to the court reporter at the hearing.
`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 no later than 5 days in advance of the hearing date. The
`request is to be sent directly 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 Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument. If either party anticipates that its lead counsel will not be
`
`5
`
`
`
`
`
`IPR2015-00915
`IPR2015-00916
`IPR2015-00917
`Patent 8,710,282 B2
`
`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.
`
`
`
`PETITIONER:
`Jon H. Beaupré
`Allen R. Baum
`Allyn B. Elliott
`Joshua E. Ney
`Richard K. DeMille
`BRINKS GILSON & LIONE
`jbeaupre@brinksgilson.com
`abaum@brinksgilson.com
`aelliott@brinksgilson.com
`jney@brinksgilson.com
`rdemille@brinksgilson.com
`Arkema_HoneywellIPRs@brinksgilson.com
`
`
`
`
`PATENT OWNER:
`
`Bruce J. Rose
`Christopher TL Douglas
`S. Benjamin Pleune
`ALSTON & BIRD LLP
`bruce.rose@alston.com
`chris.douglas@alston.com
`ben.pleune@alston.com
`
`
`6
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