Paper 17
`Entered: August 19, 2016
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORPORATION,
`Petitioner,
`
` v.
`
`IMATION CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-01556 (Patent 6,908,038 B1)
`Case IPR2015-01557 (Patent 6,890,188 B1) 1
`____________
`
`Before KEVIN F. TURNER, STACEY G. WHITE, and
`KERRY BEGLEY, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
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`1 This Order addresses an issue pertaining to both IPR2015-01556 and
`IPR2015-01557. The parties are not authorized to use this combined caption for
`any subsequent papers without authorization from the Board.
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`Case IPR2015-01556 (Patent 6,908,038 B1)
`Case IPR2015-01557 (Patent 6,890,188 B1)
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`The updated Scheduling Orders (IPR2015-01556: Paper 13;
`IPR2015-01557: Paper 14) for these proceedings provided that an oral hearing
`would be conducted on September 14, 2016, if the hearing is requested by the
`parties and granted by the Board. Patent Owner and Petitioner requested oral
`hearing pursuant to 37 C.F.R. § 42.70. Papers 15, 16. The requests are granted.
`The oral arguments for both inter partes reviews will be merged and
`conducted at the same time, i.e., not in seriatim. Each party will have ninety (90)
`minutes of total oral argument time for both proceedings. Petitioner bears the
`ultimate burden of proof that Patent Owner’s claims at issue in this review are
`unpatentable. Therefore, Petitioner will open the hearing by presenting its case
`regarding the challenged claims for which the Board instituted trial. Petitioner
`may allocate its time as it wishes between the patents involved and may reserve
`rebuttal time to respond to arguments presented by Patent Owner.
`The hearing will commence at 1:00 PM on September 14, 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 will be open to the public
`for in-person attendance that will be accommodated on a first-come, first-served
`basis. Two members 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.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a proponent of
`deposition testimony must file such testimony as an exhibit. The Board will not
`consider any deposition testimony that has not been so filed. If the parties have
`any concern about disclosing confidential information, they are to contact the
`Board at least 10 days in advance of the hearing to discuss the matter.
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`2
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`Case IPR2015-01556 (Patent 6,908,038 B1)
`Case IPR2015-01557 (Patent 6,890,188 B1)
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`Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served at least seven business days before the hearing date. The parties also shall
`provide a courtesy copy of any demonstrative exhibits to the Board at least five
`business days prior to the hearing by emailing them to Trials@uspto.gov. The
`parties shall not file any demonstrative exhibits in this proceeding without prior
`authorization from the Board.
`The parties must file any objections to the demonstratives with the Board at
`least two business days before the hearing. 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 are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041 (PTAB
`January 27, 2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits. No live testimony from any witness will be taken at the
`oral argument.
`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 expects that its lead counsel will not be 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 audiovisual equipment should be directed
`to Trials@uspto.gov. Requests for special equipment will not be honored unless
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`Case IPR2015-01556 (Patent 6,908,038 B1)
`Case IPR2015-01557 (Patent 6,890,188 B1)
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`presented in a separate communication not less than five days before the hearing,
`directed to the above email address.
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`
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`Case IPR2015-01556 (Patent 6,908,038 B1)
`Case IPR2015-01557 (Patent 6,890,188 B1)
`
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`PETITIONER:
`Gregory S. Gewirtz
`Fahd K. Majiduddin
`LERNER, DAVID, LITTENBERG, KRUMHOLZ, & MENTLIK, LLP
`GGewirtz.ipr@lernerdavid.com
`FMajiduddin@lernerdavid.com
`
`PATENT OWNER:
`Michelle E. Dawson
`Devan V. Padmanabhan
`Nadeem W. Schwen
`WINTHROP & WEINSTINE, P.A.
`mdawson@winthrop.com
`dpadmanabhan@winthrop.com
`nschwen@winthrop.com
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`5