Paper 55
`
`
` Entered: July 13, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HILTI, INC. and
`SNAP-ON INCORPORATED,
`Petitioners,
`
`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01164 (Patent 7,554,290 B2)
`Case IPR2015-01165 (Patent 7,944,173 B2)
` Case IPR2015-01166 (Patent 7,999,510 B2)1,2
`____________
`
`Before GRACE KARAFFA OBERMANN, PATRICK R. SCANLON, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to all three cases. Thus, we exercise
`our discretion to issue a single order to be filed in each case. The parties are
`not authorized to use this style heading in subsequent papers.
`2 Cases IPR2016-00343, IPR2016-00344, and IPR2016-00345 have been
`joined with Cases IPR2015-01164, IPR2015-01165, and IPR2015-01166,
`respectively.
`
`
`
`
` Entered: July 13, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HILTI, INC. and
`SNAP-ON INCORPORATED,
`Petitioners,
`
`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01164 (Patent 7,554,290 B2)
`Case IPR2015-01165 (Patent 7,944,173 B2)
` Case IPR2015-01166 (Patent 7,999,510 B2)1,2
`____________
`
`Before GRACE KARAFFA OBERMANN, PATRICK R. SCANLON, and
`CARL M. DEFRANCO, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to all three cases. Thus, we exercise
`our discretion to issue a single order to be filed in each case. The parties are
`not authorized to use this style heading in subsequent papers.
`2 Cases IPR2016-00343, IPR2016-00344, and IPR2016-00345 have been
`joined with Cases IPR2015-01164, IPR2015-01165, and IPR2015-01166,
`respectively.
`
`
`
`IPR2015-01164 (Patent 7,554,290 B2)
`IPR2015-01165 (Patent 7,944,173 B2)
`IPR2015-01166 (Patent 7,999,510 B2)
`
`
`
`
`
`In the Order dated November 16, 2015 (Paper 10),3 oral argument, if
`requested by the parties, was scheduled for July 28, 2016. Patent Owner and
`Petitioners have each requested oral argument. Papers 46, 48. The parties’
`requests are granted to the extent set forth below.
`The hearing will commence at 1:00 PM Eastern Time, on Thursday,
`July 28, 2016, on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. 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 transcript will be entered in the record of both
`proceedings. The hearing will be open to the public for in-person attendance
`that will be accommodated on a first-come, first-served basis.
`Because there is significant commonality of issues in the three
`proceedings, the oral arguments for these proceedings will be merged and
`conducted as a consolidated hearing. Any argument or evidence presented by
`a party at the consolidated hearing will be applicable only in a proceeding in
`which the record provides a proper foundation for such argument or evidence.
`Each party will have sixty minutes of total argument time. Petitioner
`bears the ultimate burden of proof that Patent Owner’s claims at issue are
`unpatentable. Therefore, at oral argument, Petitioner will proceed first to
`present its case with regard to the challenged claims and grounds for which
`the Board instituted trial. (Petitioner may reserve some of its argument time
`for use after Patent Owner’s presentation.) Thereafter, Patent Owner will
`
`
`3 As the pertinent papers in all three proceedings are substantially similar, we
`refer herein to the papers filed in IPR2015-01164 for convenience.
`2
`
`
`
`
`
`IPR2015-01164 (Patent 7,554,290 B2)
`IPR2015-01165 (Patent 7,944,173 B2)
`IPR2015-01166 (Patent 7,999,510 B2)
`
`respond to Petitioner’s presentation, having its entire allotted argument time
`available. After that, Petitioner may make use of any time it has reserved to
`address Patent Owner’s responsive presentation.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days prior to the hearing. In addition, copies of any
`demonstrative exhibits shall be filed at the Board no later than three business
`days prior to the hearing. The parties shall confer with each other regarding
`any objections to demonstrative exhibits. For any issue that cannot be
`resolved after conferring, the parties must file any objections at least three
`business days prior to the hearing. The filing should identify with
`particularity which demonstrative exhibits are subject to objection and include
`a short statement (no more than one sentence) of the reason for each objection.
`Any objection to demonstrative exhibits that is not presented timely will be
`considered waived. The Board will consider the objections and schedule a
`conference if necessary, or the Board may reserve ruling 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, Case No.
`IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance on the
`appropriate content of demonstrative exhibits.
`The parties are advised that at least one member of the panel will be
`attending the hearing electronically from a remote location and may not be
`able to view the projection screen in the hearing room. Thus, if a
`demonstrative is not filed or otherwise made fully available or visible to the
`judge(s) presiding over the hearing remotely, that demonstrative will not be
`considered.
`
`3
`
`
`
`
`
`IPR2015-01164 (Patent 7,554,290 B2)
`IPR2015-01165 (Patent 7,944,173 B2)
`IPR2015-01166 (Patent 7,999,510 B2)
`
`
`The parties are reminded that each 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 and for the benefit of the judge(s) presiding over the
`hearing remotely.
`The Board expects lead counsel for each party to be present at the
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If any lead counsel will not be in attendance at hearing, the
`Board should be notified via a joint telephone conference call no later than
`two days prior to the hearing to discuss the matter.
`Requests for audio-visual equipment are to be made five days in
`advance of the hearing date. The requests must be sent to Trials@uspto.gov.
`If the requests are not received timely, equipment may not be available on the
`day of the hearing.
`
`4
`
`
`
`
`
`IPR2015-01164 (Patent 7,554,290 B2)
`IPR2015-01165 (Patent 7,944,173 B2)
`IPR2015-01166 (Patent 7,999,510 B2)
`
`
`
`PETITIONER:
`JLindsay@Crowell.com
`MNeblett@Crowell.com
`SBittman@Crowell.com
`
`pdevinsky@mwe.com
`jpaquin@mwe.com
`amparikh@mwe.com
`
`PATENT OWNER:
`dbregman@morganlewis.com
`jason.white@morganlewis.com
`Ahren.hsu-hoffman@morganlewis.com
`chuse@morganlewis.com
`
`5
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