Trials@uspto.gov
`571-272-7822
`
`Paper No. 22
`Entered: September 13, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GREAT WEST CASUALTY COMPANY,
`BITCO GENERAL INSURANCE CORPORATION, and
`BITCO NATIONAL INSURANCE COMPANY,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC,
`Patent Owner.
`
`
`Cases IPR2015-01706, -01707
`Patent 7,516,177 B2
`____________
`
`
`Before MICHAEL W. KIM, PETER P. CHEN and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`Great West Casualty Company, BITCO General Insurance Corporation, and
`BITCO National Insurance Company (collectively “Petitioner”) and Intellectual
`Ventures II LLC (“Patent Owner”) each request oral hearing pursuant to 37
`
`

`
`IPR2015‐01706, -01707
`
`Patent 7,516,177 B2
`
`C.F.R. § 42.70. Papers 20, 21.1 Upon consideration, the requests for oral hearing
`are granted. Oral argument shall commence at 10:00 am Pacific Time (1:00 pm
`Eastern Time) on October 5, 2016, at the West Coast Regional Office (Silicon
`Valley) on the third floor at 26 S. Fourth Street, San Jose, CA 95113.2
`The above-identified proceedings involve the same parties and similar
`issues. The trial schedules for both proceedings have been synchronized, and the
`oral hearings have been scheduled on the same day. Paper 12. The oral arguments
`for the proceedings will be merged and conducted at the same time, i.e., not in
`seriatim.
`Petitioner requests that each side be afforded a total of sixty (60) minutes for
`both proceedings. Paper 21, 2. Petitioner’s request is granted. Each party will
`have sixty (60) minutes of total time to present arguments. Petitioner bears the
`ultimate burden of proof that the claims at issue are unpatentable. Therefore,
`Petitioner will open the hearing by presenting its case regarding the challenged
`claims for which the Board instituted trial. Patent Owner then will have the
`entirety of their allotted time to respond to Petitioner’s presentation. Petitioner
`may reserve rebuttal time to respond to Patent Owner’s arguments only. One issue
`
`
`1 Unless otherwise indicated, all references are to papers filed in IPR2015-01706.
`Corresponding papers have been filed also in IPR2015-01707.
`2 In their Request for Oral Argument, Petitioner requested oral hearing at the West
`Coast Regional Office (Silicon Valley). Paper 21, 1–2. In the attached e-mail
`correspondence, Patent Owner objected to that request. Ex. 3001. The Board has
`already made some preliminary preparations for holding the hearings at the West
`Coast Regional Office (Silicon Valley). Accordingly, when considered together
`with Petitioner’s request, the factors in favor of holding the oral hearing at the
`West Coast Regional Office (Silicon Valley) outweigh the prearranged travel plans
`of one of Patent Owner’s backup counsel, whose potential absence Patent Owner
`has not indicated would impede the ability of Patent Owner to present their case at
`oral hearing.
`
`2
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`

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`IPR2015‐01706, -01707
`
`Patent 7,516,177 B2
`
`the parties may address is a proper construction of the claim term “content.” After
`considering the parties’ extensive briefing on this issue, it is our understanding that
`the actual disagreement, when distilled to its core, is that Patent Owner asserts that
`there cannot be any overlap between “content” and “links to content,” whereas
`Petitioner asserts that difference in claim scope does not preclude at least some
`overlap.
`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 have
`one transcript, the entirety of which will be applicable to and filed in each
`proceeding.
`The hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. For planning purposes, because
`the hearing is being held at the West Coast Regional Office (Silicon Valley), the
`parties are required to inform the Board by email to Trials@uspto.gov
`approximately how many people they expect to be present at the hearing for
`each side. The email should be sent no later than five (5) business days prior to
`the hearing date.
`At least seven (7) business days prior to the hearing, each party shall serve
`on the other party any demonstrative exhibit(s) it intends to use during the hearing.
`See 37 C.F.R. § 42.70(b). The parties should attempt to work out any objections to
`demonstratives prior to involving the Board. At least two (2) business days prior
`to the hearing, the parties shall file the demonstrative exhibits with the Board. See
`id. 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 parties must initiate a conference call with the Board
`
`3
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`IPR2015‐01706, -01707
`
`Patent 7,516,177 B2
`
`at least two business days before the hearing to present any objection regarding the
`propriety of any demonstrative exhibit. Any objection to demonstrative exhibits
`that is not timely presented will be considered waived. The Board asks the parties
`to confine demonstrative exhibit objections to those identifying egregious
`violations that are prejudicial to the administration of justice.
`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.
`The parties also should note that at least one member of the panel may be attending
`the hearing electronically from a remote location, and that if a demonstrative is not
`filed or otherwise made fully available or visible to all judges at the hearing, that
`demonstrative will not be considered. If the parties have questions as to whether
`demonstrative exhibits would be sufficiently visible and available to all of the
`judges, the parties are invited to contact the Board at (571) 272-9797.
`The Board expects lead counsel for each party to be present in person at the
`hearing. If a party anticipates 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
`counsel of record, however, may present the party’s argument.
`Requests for audio-visual equipment are to be made at least five business
`days in advance of the hearing date by sending the request to Trials@uspto.gov. If
`the request is not received timely, the equipment may not be available on the day
`of the hearing.
`
`
`
`
`
`4
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`

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`IPR2015‐01706, -01707
`
`Patent 7,516,177 B2
`
`PETITIONER:
`
`Joseph Micallef
`iprnotices@sidley.com
`
`Russell Cass
`rcass@sidley.com
`
`Erik Carlson
`ecarlson@sidley.com
`
`PATENT OWNER:
`Brenton Babcock
`2BRB@knobbe.com
`
`Ted Cannon
`2tmc@knobbe.com
`
`Bridget Smith
`2bzs@knobbe.com
`
`Tim Seeley
`tim@intven.com
`
`James Hietala
`jhietala@intven.com
`
`5