`Tel: 571-272-7822
`
`Paper 26
`Entered: August 2, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ROBERT BOSCH LLC and DAIMLER AG,
`Petitioner,
`
`v.
`
`ORBITAL AUSTRALIA PTY LTD,
`Patent Owner.
`____________
`
`Case IPR2015-01258 (Patent 5,655,365)
`Case IPR2015-01259 (Patent 5,655,365)1
`____________
`
`Before KEN B. BARRETT, JEREMY M. PLENZLER, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 The parties are not authorized to use a joint caption.
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`Robert Bosch LLC and Daimler AG (collectively “Petitioner”) and
`Orbital Australia Pty Ltd (“Patent Owner”) requested oral argument pursuant
`to 37 C.F.R. § 42.70(a). IPR2015-01258, Papers 24, 25; IPR2015-01259,
`Papers 22, 23. The requests are granted.
`The hearing will commence at 9:00 AM ET, on Monday, August
`29, 2016, on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. The hearing will be open to the public for
`in-person attendance that will be accommodated on a first-come, first-served
`basis. The Board will provide a court reporter, and the reporter’s transcript
`will constitute the official record of the hearing.
`Each party will have a total of thirty (30) minutes to present
`arguments for both cases. Petitioner bears the ultimate burden of proof that
`Patent Owner’s patent claims at issue are unpatentable. Thus, Petitioner will
`proceed first to present its case with respect to the challenged patent claims
`and grounds with respect to which the Board instituted trial. Thereafter,
`Patent Owner will respond to Petitioner’s arguments. Petitioner may reserve
`some of its argument time to respond to Patent Owner’s presentation.
`The parties also should note that at least one member of the panel will
`be attending the hearing electronically from a remote location. 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 and the
`ability of the judge participating in the hearing remotely to closely follow
`the presenter’s arguments.
`The parties are reminded that the demonstrative exhibits must be
`served and filed in accordance with 37 C.F.R. § 42.70(b).
`
`2
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`The Board asks that the parties attempt to resolve objections to the
`demonstratives, and if any objections cannot be resolved, the parties must
`file those objections with the Board no later than August 24, 2016. Any
`objection to demonstrative exhibits that is not timely presented 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
`may refer to St. Jude Medical, Cardiology Div., Inc. v. The Board of Regents
`of the University of Michigan, IPR2013-00041 (PTAB Jan. 27, 2014) (Paper
`65) regarding the appropriate content of demonstrative exhibits.
`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.
`Petitioner requests “that two attorneys at Petitioners’ counsel’s table
`be allowed to use computers at the hearing (in addition to the counsel
`making the argument using his or her computer to show the demonstratives),
`to avoid the need for the parties to bring entire paper copies of the record
`into the hearing room and to facilitate efficient answering of panel
`questions.” IPR2015-01258, Paper 24. Each counsel table can
`accommodate only two people and is sized accordingly. Questions
`regarding this request should be directed to the Patent Trial and Appeal
`Board Hearings Clerk at (571) 272-9797.
`
`3
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`We expect lead counsel for each party to be present at the hearing,
`although lead or back-up counsel of record may make the presentation. If
`either party anticipates that its lead counsel will not attend the oral argument,
`the parties should initiate a joint telephone conference with the Board no
`later than two (2) business days prior to the oral hearing to discuss the
`matter.
`The parties are reminded that, at the oral argument, they “may rely
`upon evidence that has been previously submitted in the proceeding and may
`only present arguments relied upon in the papers previously submitted.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012). “No new evidence or arguments may be presented at the oral
`argument.” Id.
`Accordingly, it is
`ORDERED that oral argument will commence at 9:00 AM ET, on
`Monday, August 29, 2016, on the ninth floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`4
`
`
`
`IPR2015-01258 and -01259
`Patent 5,655,365
`
`PETITIONER:
`
`Lionel M. Lavenue
`Aaron L. Parker
`Joshua L. Goldberg
`David C. Reese
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`lionel.lavenue@finnegan.com
`aaron.parker@finnegan.com
`joshua.goldberg@finnegan.com
`david.reese@finnegan.com
`Bosch-Orbital-IPR@finnegan.com
`
`Edward DeFranco
`Brett Watkins
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`eddefranco@quinnemanuel.com
`brettwatkins@quinnemanuel.com
`MB_Orbital_IPR@quinnemanuel.com
`
`PATENT OWNER:
`
`David Magee
`Andrew Schultz
`PEPPER HAMILTON LLP
`mageed@pepperlaw.com
`schultza@pepperlaw.com
`
`
`5