Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 44
`Entered: January 28, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`WHATSAPP INC.,
`Petitioner,
`v.
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00717 (Patent 8,874,677 B2)
`Case IPR2016-00718 (Patent 8,874,677 B2)
`_______________
`
`
`Before JOSIAH C. COCKS, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Parties’ Joint Request for Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 44
`Entered: January 28, 2019
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`WHATSAPP INC.,
`Petitioner,
`v.
`TRIPLAY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00717 (Patent 8,874,677 B2)
`Case IPR2016-00718 (Patent 8,874,677 B2)
`_______________
`
`
`Before JOSIAH C. COCKS, BRIAN J. MCNAMARA, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Parties’ Joint Request for Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`
`
`
`
`
`
`
`IPR2016-00717 (Patent 8,874,677 B2)
`IPR2016-00718 (Patent 8,874,677 B2)
`
`
`A final written decision was entered in IPR2016-00717 on August 28,
`2017, in which we determined that Petitioner had not proven, by a
`preponderance of the evidence, that claims 1, 2, 11, 13, 14, 16, 17, 20, and
`21 of U.S. Patent No. 8,874,677 B2 (Ex. 1001, “the ’677 patent”) were
`unpatentable. IPR2016-00717, Paper 42. On the same day, a final written
`decision was entered in IPR2016-00718, in which we determined that
`Petitioner also had not proven, by a preponderance of the evidence, that
`claims 6, 7, and 15 of the ’677 patent were unpatentable. IPR2016-00718,
`Paper 44.
`The final written decisions in both proceedings were appealed by
`Petitioner to the United States Court of Appeals for the Federal Circuit. See
`IPR2017-00717, Paper 43. On November 14, 2018, the Federal Circuit
`vacated our determination in both proceedings and remanded for further
`consideration the motivation to combine the clickable icons of Friedman
`with Coulombe and Bellordre. WhatsApp, Inc. v. TriPlay, Inc., No. 2017-
`2549, 2018 WL 5962733 (Fed. Cir. Nov. 14, 2018).
`On January 23, 2019, a telephone conference call was held between
`respective counsel for the parties, and Judges Cocks and Ippolito.1 The
`purpose of the call was to discuss whether the parties had any request, such
`as additional briefing, in view of the remand by the Federal Circuit. On the
`call, the parties both agreed that additional briefing is not necessary for
`either case. The parties did, however, jointly request a post-remand oral
`hearing to address the remaining remanded issues, namely the evidence and
`arguments the parties have submitted previously regarding the combination
`
`
`1 Judge McNamara was unavailable for the call.
`
` 2
`
`
`
`
`
`
`
`IPR2016-00717 (Patent 8,874,677 B2)
`IPR2016-00718 (Patent 8,874,677 B2)
`
`of Friedman with Coulombe and Bellordre. Petitioner and Patent Owner
`each requested thirty (30) minutes for their respective presentations at a
`supplemental oral hearing.
`Having considered the narrow issues remaining in these proceedings,
`we GRANT the parties’ joint request for a supplemental consolidated oral
`hearing to address the parties’ arguments and supporting evidence regarding
`the combination of Friedman with Coulombe and Bellordre.
`The consolidated hearing will commence at 1:00 pm Eastern Standard
`Time on March 5, 2019, at the USPTO Headquarters in Alexandria,
`Virginia. Each party will have thirty (30) minutes of total argument time to
`present arguments. Petitioner bears the ultimate burden of proof that the
`claims at issue in this review are unpatentable. Therefore, at oral hearing
`Petitioner will proceed first to present its case on Petitioner’s challenges to
`patentability. Thereafter, Patent Owner may argue its opposition to
`Petitioner’s arguments. Petitioner may reserve time for rebuttal arguments.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, lead or backup counsel may present the party’s
`argument. If either 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.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least five business days before the hearing and filed no later than the time of
`the hearing. The Board requests that such exhibits be filed at the Board at
`least five business days before the hearing to facilitate the panel’s
`preparation. The parties are directed to St. Jude Medical, Cardiology
`
` 3
`
`
`
`
`
`
`
`IPR2016-00717 (Patent 8,874,677 B2)
`IPR2016-00718 (Patent 8,874,677 B2)
`
`Division, Inc. v. The Board of Regents of the University of Michigan,
`IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the
`appropriate content of demonstrative exhibits. As a reminder, demonstrative
`exhibits used at the final hearing are aids to oral argument and not evidence.
`Additionally, either party may request a prehearing conference with
`the panel to occur no later than three business days prior the oral hearing.
`The purpose of a pre-hearing conference is to afford the parties the
`opportunity to preview (but not argue) issues to be discussed at the oral
`hearing, and to seek the Board’s guidance as to particular issues that the
`panel would like the parties to address at oral argument.
`The parties are further advised that the hearing will be open to the
`public for in-person attendance, which will be accommodated on a first-
`come, first served basis. There is a strong public policy interest in making
`all information presented in these proceedings public, as the review
`determines the patentability of claims in an issued patent and thus affects the
`rights of the public. This policy is reflected in part, for example, in 35
`U.S.C. § 316(a)(1) and 35 U.S. C. § 326(a)(1) which provide that the file of
`any inter partes review or post grant review be made available to the public,
`except that any petition or document filed with the intent that it be sealed
`shall, if accompanied by a motion to seal, be treated as sealed pending the
`outcome of the ruling on the motion.
`At least one member of the panel hearing the case will attend the
`hearing remotely, by video and audio link. The parties are reminded that,
`during the hearing, the presenter must identify clearly and specifically each
`demonstrative exhibit references (e.g., by slide or screen number) to ensure
`the clarity and accuracy of the reporter’s transcript, and to ensure that the
`
` 4
`
`
`
`
`
`
`
`IPR2016-00717 (Patent 8,874,677 B2)
`IPR2016-00718 (Patent 8,874,677 B2)
`
`remote judge(s) can follow the argument even if the video connection is
`disrupted. The parties are requested to speak directly into the microphone,
`including during initial introduction of counsel.
`Hearing rooms are equipped with projectors for PowerPoint
`presentations. A party should advise the Board as soon as possible before an
`oral argument of any special needs. Examples of such needs include
`additional space for a wheelchair, an easel for posters, or an overhead
`projector (“Elmo”). Parties should not make assumptions about the
`equipment the Board may have on hand. Such requests should be directed in
`the first instance to a Board Trial Division paralegal at (571) 272-9797.
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`ORDERED that oral argument for these proceedings shall take place
`beginning at 1:00 pm Eastern Standard Time on March 5, 2019, at the
`USPTO Headquarters in Alexandria, VA.
`
`
`
`
`
`
`
`
`
`
`
`
` 5
`
`
`
`
`
`
`
`IPR2016-00717 (Patent 8,874,677 B2)
`IPR2016-00718 (Patent 8,874,677 B2)
`
`For PETITIONER:
`
`Heidi Keefe
`Andrew Mace
`Mark Weinstein
`Reuben Chen
`COOLEY LLP
`hkeefe@cooley.com
`WhatsApp_PTAB_IPR@cooley.com
`mweinstein@cooley.com
`rchen@cooley.com
`
`For PATENT OWNER:
`
`Barry Schindler
`GREENBERG TRAURIG LLP
`schindlerb@gtlaw.com
`
`Jeremy Monaldo
`FISH & RICHARDSON PC
`monaldo@fr.com
`
`
` 6
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
