`571-272-7822
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`
`
`
`
`Paper 33
`Entered: November 29, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PALO ALTO NETWORKS, INC.,
`Petitioner,
`
`v.
`
`FINJAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-02001
` Case IPR2016-001571
`Patent 8,255,408
`____________
`
`
`
`
`
`Before THOMAS L. GIANNETTI, MIRIAM L. QUINN, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 Case IPR2016-00157 has been consolidated with IPR2015-02001 (“the
`consolidated proceeding”). Cases IPR2016-00955 and IPR2016-00956 have
`been consolidated and joined with the consolidated proceeding.
`
`
`
`IPR2015-02001
`IPR2016-00157
`Patent 8,255,408 B2
`
`
`The date set for oral hearing in each of these proceedings is January 5,
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`2017, if hearing is requested by either party and granted by the Board.
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`Paper 8.2 Both parties request oral hearing. Papers 28, 30. The requests are
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`granted.
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`Each side will have 60 minutes, total, to present its argument.
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`Petitioner bears the ultimate burden of proof that Patent Owner’s claims at
`
`issue in these reviews are unpatentable. Both parties have filed Motions to
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`Exclude Evidence of the other party, and respectively bear the burden of
`
`proof with respect to those Motions. Accordingly, Petitioner will open the
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`hearing by presenting its case regarding the challenged claims for which the
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`Board instituted trial, including addressing, if it wishes, its Motion to
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`Exclude. After Petitioner’s presentation, Patent Owner will respond to
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`Petitioner’s argument, and argue, if it wishes, in support of its Motion to
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`Exclude.
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`Each side may reserve time to respond to arguments presented by the
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`other side, with some limitations. Specifically, to the extent that Petitioner
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`reserves rebuttal time, it may respond to Patent Owner’s presentation on all
`
`matters. To the extent Patent Owner reserves rebuttal time, however, it may
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`respond only to Petitioner’s arguments opposing Patent Owner’s Motion to
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`Exclude and Patent Owner’s arguments concerning secondary considerations
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`of nonobviousness.
`
`
`2 All citations to the record in this Order are to IPR2015-02001.
`2
`
`
`
`IPR2015-02001
`IPR2016-00157
`Patent 8,255,408 B2
`
`
`The hearing will commence at 1:30 PM Eastern Standard Time on
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`January 5, 2017, on the ninth floor of Madison Building East, 600 Dulany
`
`Street, Alexandria, Virginia. The Board will provide a court reporter for the
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`hearing and the reporter’s transcript will constitute the official record of the
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`hearing. At least one member of the panel may be attending the oral
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`argument remotely by use of two-way audio-visual communication
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`equipment. The hearing will be open to the public for in-person attendance
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`that will be accommodated on a first-come, first-served basis. If the parties
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`have any concern about disclosing confidential information, they are
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`requested to contact the Board at least 10 days in advance of the hearing to
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`discuss the matter.
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`The parties are reminded that, under 37 C.F.R. § 42.53(f)(7), a
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`proponent of deposition testimony must file such testimony as an exhibit.
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`The Board will not consider any deposition testimony that has not been so
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`filed.
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`Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must
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`be served at least seven business days before the hearing date. The parties
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`also shall provide a courtesy copy of any demonstrative exhibits to the
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`Board at least seven business days prior to the hearing by emailing them to
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`Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
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`this proceeding without prior authorization from the Board.
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`The parties must file any objections to the demonstrative exhibits with
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`the Board at least two business days before the hearing. Any objection to
`
`3
`
`
`
`IPR2015-02001
`IPR2016-00157
`Patent 8,255,408 B2
`
`demonstrative exhibits that is not timely presented will be considered
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`waived. The objections should identify with particularity which
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`demonstrative exhibits are subject to objection, and include a short (one
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`sentence or less) statement of the reason for each objection. No argument or
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`further explanation is permitted. The Board will consider the objections and
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`schedule a conference if deemed necessary. Otherwise, the Board will
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`reserve ruling on the objections until after the oral argument. The parties are
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`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
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`Regents of the University of Michigan, IPR2013-00041 (PTAB January 27,
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`2014) (Paper 65), for guidance regarding the appropriate content of
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`demonstrative exhibits.
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`The Board expects lead counsel for each party to be present in person
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`at the oral hearing. However, any counsel of record may present the party’s
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`argument. If either party expects that its lead counsel will not be attending
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`the oral argument, the parties should initiate a joint telephone conference
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`with the Board no later than two business days prior to the oral hearing to
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`discuss the matter.
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`Any special requests for audio-visual equipment should be directed to
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`Trials@uspto.gov. Requests for special equipment will not be honored
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`unless presented in a separate communication not less than five days before
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`the hearing directed to the above email address.
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`
`
`
`
`4
`
`
`
`5
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`IPR2015-02001
`IPR2016-00157
`Patent 8,255,408 B2
`
`PETITIONER
`
`Orion Armon
`oarmon@cooley.com
`Christopher Max Colice
`mcolice@cooley.com
`Jennifer Volk
`jvolkfortier@cooley.com
`Brian Eutermoser
`beutermoser@cooley.com
`
`Michael Rosato
`mrosato@wsgr.com
`Andrew Brown
`asbrown@wsgr.com
`
`
`
`PATENT OWNER
`
`James Hannah
`jhannah@kramerlevin.com
`Jeffrey Price
`jprice@kramerlevin.com
`
`Michael Kim
`mkim@finjan.com