Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 48
`Entered: February 1, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DYNAMIC AIR INC.,
`Petitioner,
`
`v.
`
`M-I DRILLING FLUIDS UK LTD.,
`Patent Owner.
`_______________
`
`Cases
`IPR2016-00256 (Patent 6,702,539 B2)
`IPR2016-00259 (Patent 7,544,018 B2)
`IPR2016-00260 (Patent 7,033,124 B2)
`IPR2016-00262 (Patent 7,186,062 B2)
`IPR2016-00263 (Patent 7,186,062 B2)
`IPR2016-00264 (Patent 6,709,217 B1)
`_______________
`
`
`
`Before WILLIAM V. SAINDON and RICHARD E. RICE, Administrative
`Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 48
`Entered: February 1, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`DYNAMIC AIR INC.,
`Petitioner,
`
`v.
`
`M-I DRILLING FLUIDS UK LTD.,
`Patent Owner.
`_______________
`
`Cases
`IPR2016-00256 (Patent 6,702,539 B2)
`IPR2016-00259 (Patent 7,544,018 B2)
`IPR2016-00260 (Patent 7,033,124 B2)
`IPR2016-00262 (Patent 7,186,062 B2)
`IPR2016-00263 (Patent 7,186,062 B2)
`IPR2016-00264 (Patent 6,709,217 B1)
`_______________
`
`
`
`Before WILLIAM V. SAINDON and RICHARD E. RICE, Administrative
`Patent Judges.
`
`
`
`SAINDON, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`IPR2016-00256 (Patent 6,702,539 B2)
`IPR2016-00259 (Patent 7,544,018 B2)
`IPR2016-00260 (Patent 7,033,124 B2)
`IPR2016-00262 (Patent 7,186,062 B2)
`IPR2016-00263 (Patent 7,186,062 B2)
`IPR2016-00264 (Patent 6,709,217 B1)
`
`
`The parties have requested an oral hearing pursuant to 37 C.F.R.
`§ 42.70. Papers 45, 46.1 The request is granted. The hearing will
`commence at 1:00 PM Eastern Time on February 21, 2017, on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`The hearing will be open to the public and seating will be first-come, first-
`served.2
`Patent Owner requests one hour per case. Paper 46. Petitioner
`requests 90 minutes total. Paper 45. Due to the number of cases and overlap
`in subject matter, each party will be allocated a grand total of 120 minutes
`for arguments. The parties may budget their 120-minute time allocation as
`they see fit. A single transcript will be taken, and all statements will be
`presumed to apply to all proceedings. As such, a party need not repeat
`positions it has expressed with respect to another case. The Board will
`provide a court reporter, and the transcript shall be the official record of the
`hearing.
`A typical hearing provides a petitioner with a single block of time for
`its argument (with an opportunity to reserve some of that time for rebuttal)
`and a patent owner with a single block of time for its response. During a
`conference call on February 1, 2017, the panel discussed with the parties an
`
`
`1 IPR2016-00256. The other cases have similar papers.
`2 As noted below, a portion of the hearing may be sealed, but any sealed
`portion will occur at the end of the hearing and will be limited in time.
`
` 2
`
`
`
`
`
`
`
`IPR2016-00256 (Patent 6,702,539 B2)
`IPR2016-00259 (Patent 7,544,018 B2)
`IPR2016-00260 (Patent 7,033,124 B2)
`IPR2016-00262 (Patent 7,186,062 B2)
`IPR2016-00263 (Patent 7,186,062 B2)
`IPR2016-00264 (Patent 6,709,217 B1)
`
`option of breaking the total time for the hearing into several time blocks,
`organized by case, patent, issue, or a hybrid thereof, at the parties’
`discretion, during which the panel will hear arguments from both sides
`before moving to the next time block.3 The parties agreed to discuss among
`themselves and propose to the panel a time block schedule. The panel
`informed the parties that the time block schedule would not be binding, e.g.,
`unused time in a given block would remain available for use during other
`time blocks, and vice versa. The panel also expressed that the parties should
`consider, due to the overlap in issues between the cases, budgeting more
`time to the earlier time blocks for discussion of issues that are common to all
`cases. The parties must provide an initial proposed time block schedule to
`the panel via email no later than five business days prior to the date of the
`hearing and may modify it at any time upon agreement and notice to the
`panel.
`During the February 1, 2017 call, Patent Owner raised the issue of
`having a sealed courtroom at some point during the hearing to discuss
`confidential subject matter relating to secondary considerations of
`commercial success. We informed the parties that one of the time blocks in
`the schedule may be sealed for discussion of confidential information.
`However, we asked the parties to consider providing redacted versions of the
`evidence currently under seal so that only truly confidential information is
`
`
`3 See IPR2016-00034, Paper 59, for an example time block schedule.
`
` 3
`
`
`
`
`
`
`
`IPR2016-00256 (Patent 6,702,539 B2)
`IPR2016-00259 (Patent 7,544,018 B2)
`IPR2016-00260 (Patent 7,033,124 B2)
`IPR2016-00262 (Patent 7,186,062 B2)
`IPR2016-00263 (Patent 7,186,062 B2)
`IPR2016-00264 (Patent 6,709,217 B1)
`
`discussed during any sealed portion of the hearing. To encourage public
`disclosure, if a time block is designated for discussion of confidential
`information, it will occur last on the time block schedule and will be limited
`to no more than 15 minutes of arguments per side. If a portion of the
`hearing is sealed, the transcript will initially be entered into the record as
`viewable by the Board and parties only. Thereafter, within ten business days
`of entry of the transcript, the parties are required to file a joint motion to seal
`the transcript, to identify a proposed protective order, and to file a redacted
`version of the hearing transcript, redacting only confidential material, and
`only from the time block identified in the block schedule as permitting
`discussion of confidential material.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days before the hearing. The panel requests that
`demonstrative exhibits be filed with the Board at least three business days
`before the hearing. 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), 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, but if such objections cannot be resolved the parties must file any
`objections to demonstratives with the Board at least three business days
`before the hearing. The objections should identify with particularity which
`portions of the demonstrative exhibits are subject to objection, include a
`
` 4
`
`
`
`
`
`
`
`IPR2016-00256 (Patent 6,702,539 B2)
`IPR2016-00259 (Patent 7,544,018 B2)
`IPR2016-00260 (Patent 7,033,124 B2)
`IPR2016-00262 (Patent 7,186,062 B2)
`IPR2016-00263 (Patent 7,186,062 B2)
`IPR2016-00264 (Patent 6,709,217 B1)
`
`copy of the objected-to portions, and include a one-sentence statement of the
`reason 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.
`The Board expects a registered practitioner for each party to be
`present at the hearing, although any counsel of record may make the actual
`presentation, in whole or in part.
`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 at least five days in advance of the hearing date.
`The request must be sent to Trials@uspto.gov; any requests not sent
`specifically to that email address will not be considered timely; requests
`made in the parties’ requests for oral argument are not effective. If the
`request is not received timely, the equipment may not be available on the
`day of the hearing.
`
`
`
`
`
` 5
`
`
`
`
`
`
`
`IPR2016-00256 (Patent 6,702,539 B2)
`IPR2016-00259 (Patent 7,544,018 B2)
`IPR2016-00260 (Patent 7,033,124 B2)
`IPR2016-00262 (Patent 7,186,062 B2)
`IPR2016-00263 (Patent 7,186,062 B2)
`IPR2016-00264 (Patent 6,709,217 B1)
`
`For PETITIONER:
`
`Alan Carlson
`Dennis Bremer
`CARLSON, CASPERS, VENDENBURGH, LINDQUIST AND
`SCHUMAN, P.A.
`acarlson@carlsoncaspers.com
`dbremer@carlsoncaspers.com
`
`For PATENT OWNER:
`
`Bruce Rose
`Christopher Douglas
`ALSTON & BIRD LLP
`bruce.rose@alston.com
`christopher.douglas@alston.com
`
` 6
`
`
`
`
`
`
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