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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`ALLSTEEL INC.
`Petitioner,
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`v.
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`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
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`___________
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`Case No. IPR2015-01691
`Patent No. 8,024,901
`Issue Date: September 27, 2011
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`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`Pursuant to the Board’s Scheduling Order (Paper 47) entered September 17,
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`2018, Patent Owner DIRTT Environmental Solutions Ltd. (“Patent Owner”)
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`hereby requests an oral hearing on the issues set forth below at a time to be set by
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`the Board. The Board has not yet scheduled oral argument on newly-instituted
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`claims 8, 11, 13, and 21-23 on remand in view of SAS Institute Inc. v. Iancu, 138 S.
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`Ct. 1348 (2018). Patent Owner prefers that the oral hearing be held in person
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`rather than telephonically.
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`Patent Owner requests a one-hour hearing, with thirty minutes allotted each
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`to Petitioner and Patent Owner. Patent Owner requests oral argument on the
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`following issues raised by the parties’ supplemental filings:
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`1. Whether Petitioner has met its burden to prove that claim 8 is
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`unpatentable for obviousness in view of Raith and Yu, and particularly (1)
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`whether bracket 189-5 in Yu must be adapted to engage some surface of an L-
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`shaped hook to form part of the claimed “generally L-shaped slot…adapted to
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`receive and engage a substantially L-shaped hook,” (2) whether Petitioner in its
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`reply brief has mischaracterized Patent Owner’s argument as requiring the L-
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`shaped hook to engage “every” surface of the L-shaped hook, (3) whether the
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`claim language “cantilever channel stringer” requires the L-shaped slots to be
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`adapted to receive and engage the generally L-shaped hook in a cantilevered
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`1
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`fashion, and (4) whether Petitioner has failed to present any evidence that the
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`combination of Raith and Yu teaches a “cantilevered channel stringer.”
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`2. Whether Petitioner has met its burden to prove that claims 11 and 13
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`are unpatentable for obviousness in view of Raith and EVH, and particularly (1)
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`whether Petitioner’s argument and evidence that the combination of Raith and
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`EVH teaches the claimed “structural extrusion” is an improper and untimely
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`attempt to make out a prima facie case of unpatentability not presented in the
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`Petition by relying on arguments and evidence submitted with the Petition
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`directed solely to claim 15, on subsequent deposition testimony about extruding
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`EVH’s vertical frames (not Raith’s), and on untimely and conclusory
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`declaration testimony, and (2) whether Petitioner has met its burden to
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`demonstrate that it would have been obvious to modify the roll-formed vertical
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`posts of Raith to be structural extrusions, particularly when an object of Raith is
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`“to eliminate to a significant extent the use of high cost metal extrusions.”
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`3. Whether Petitioner has met its burden to prove that claims 21 – 23 are
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`unpatentable for obviousness in view of Raith and MacGregor, and particularly
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`(1) whether MacGregor teaches extending the depth of a vertical end frame, (2)
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`whether Petitioner’s argument made for the first time in its reply brief that the
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`combination of Raith and MacGregor teaches extending the depth of a vertical
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`end frame because the depths of the walls in each of those references vary is
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`2
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`improper because it attempts to make out a prima facie case of unpatentability
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`that was not presented either in the Petition or even in Petitioner’s supplemental
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`brief, and (3) whether Petitioner has presented evidence that vertical end frames
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`of Raith and MacGregor have different depths and that the combination of those
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`references teaches extending the depth of a vertical end frame when neither
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`reference contains any dimensions concerning the depths of their respective
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`walls.
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`4. The admissibility and/or permissibility of any evidence or argument
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`that is used to attempt to support a theory of unpatentability that was not
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`presented in the Petition.
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`Dated: December 19, 2018
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`Respectfully submitted,
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`By /Chad E. Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
`Michael J. Frodsham, Reg. No. 48,699
`David R. Todd, Reg. No. 41,348
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`Telephone: 801-533-9800
`Facsimile: 801-328-1707
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`Attorneys for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6, I hereby certify that on this 19th day of
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`December, 2018, I caused the foregoing Patent Owner’s Request for Oral
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`Argument to be served by electronic mail on the following counsel of record for
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`Petitioner:
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`Victor P. Jonas
`Nicholas M. Anderson
`Timothy Sullivan
`FAEGRE BAKER DANIELS
`2200 Wells Fargo Center
`90 S. Seventh St.
`Minneapolis, MN 55402
`victor.jonas@faegrebd.com
`nick.anderson@faegrebd.com
`timothy.sullivan@faegrebd.com
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`Trevor Carter
`FAEGRE BAKER DANIELS
`300 N. Meridian Street, Suite 2700
`Indianapolis, IN 46204
`trevor.carter@faegrebd.com
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`/Chad E. Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
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