Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 30
`Entered: August 10, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`Petitioners,
`
`v.
`
`BASF CORPORATION,
`Patent Owner.
`
`____________
`
`Cases IPR2015-01265, IPR2015-01266, IPR2015-01267
`Patents 8,899,023 B2, 9,039,982 B2, 9,032,709 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper No. 30
`Entered: August 10, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNSON MATTHEY INC., and JOHNSON MATTHEY PLC,
`Petitioners,
`
`v.
`
`BASF CORPORATION,
`Patent Owner.
`
`____________
`
`Cases IPR2015-01265, IPR2015-01266, IPR2015-01267
`Patents 8,899,023 B2, 9,039,982 B2, 9,032,709 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`Cases IPR2015-01265, IPR2015-01266, IPR2015-01267
`Patents 8,899,023 B2, 9,039,982 B2, 9,032,709 B2
`
`
`Petitioner and Patent Owner each request an oral hearing pursuant to
`37 C.F.R. § 42.70. Papers 25, 26.1 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 60 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 these reviews 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.
`The hearing shall commence at 1:00 pm EDT on August 23, 2016.
`The hearing will be open to the public for in-person attendance in Hearing
`Room D on the ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, VA. Please note that Hearing Room D can only accommodate
`12 attendees. In the absence of an agreement between the parties, in-person
`attendance and seating 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. Notwithstanding what is
`expressly stated in § 42.70, however, the parties shall file the demonstrative
`
`
`1 For brevity, we refer to papers filed in IPR2015-01265. Similar papers
`were filed in each of the other proceedings.
`
`2
`
`
`
`Cases IPR2015-01265, IPR2015-01266, IPR2015-01267
`Patents 8,899,023 B2, 9,039,982 B2, 9,032,709 B2
`
`exhibits no later than three business days before the hearing to allow the
`panel sufficient time to review the materials.
`The Board reminds the parties that demonstrative exhibits are not
`evidence, but are intended to assist the parties in presenting their oral
`arguments to the Board. The Board also reminds 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.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits. If such objections
`cannot be resolved the parties may file any remaining objections with the
`Board at least three business days before the oral hearing. The objections
`should identify with particularity the portions of the demonstrative exhibits
`that are subject to objection and include a one-sentence statement of the
`basis 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. A hard copy of the demonstratives
`should be provided to the court reporter at the hearing.
`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
`attending the oral argument, the parties should initiate a joint telephone
`
`3
`
`
`
`Cases IPR2015-01265, IPR2015-01266, IPR2015-01267
`Patents 8,899,023 B2, 9,039,982 B2, 9,032,709 B2
`
`conference with the Board no later than two business days prior to the oral
`hearing to discuss the matter.
`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.
`
`4
`
`
`
`
`
`Cases IPR2015-01265, IPR2015-01266, IPR2015-01267
`Patents 8,899,023 B2, 9,039,982 B2, 9,032,709 B2
`
`PETITIONER:
`
`Dorothy P. Whelan
`Gwilym Attwell
`Martina Tyreus Hufnal
`Fish & Richardson P.C.
`whelan@fr.com
`IPR38411-0002IP1@fr.com
`
`
`
`PATENT OWNER:
`
`Brian E. Ferguson
`Anish Desai
`Derek C. Walter
`Megan H. Wantland
`Weil Gotshal & Manges LLP
`brian@ferguson@weil.com
`anish.desai@weil.com
`derek.walter@weil.com
`megan.wantland@weil.com
`BASF.IPR.2015.1265@weil.com
`
`
`5
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