Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 25
`Filed: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`IPR2016-01123 Patent 8,630,726
`IPR2016-01220 Patent 9,007,420
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`BRADEN, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`571.272.7822
`
`
`Paper No. 25
`Filed: July 26, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`_______________
`
`IPR2016-01123 Patent 8,630,726
`IPR2016-01220 Patent 9,007,420
`_______________
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`
`BRADEN, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`IPR2016-01123 Patent 8,630,726
`IPR2016-01220 Patent 9,007,420
`
`
`On December 16, 2016, we entered a Decision to Institute a trial
`proceeding in IPR2016-01220. Paper 8. A Scheduling Order in the case set
`the date for oral hearing, if requested by either party, as August 9, 2017.
`Paper 9. Pursuant to 37 C.F.R. § 42.70, both parties have requested an oral
`hearing in IPR2016-01220. Papers 20, 22. Petitioner’s and Patent Owner’s
`requests for oral hearing in IPR2016-01220 are granted.
`Additionally, oral arguments for IPR2016-01123 were set previously
`for August 2, 2017. Paper 26. We informed the parties that unless either
`party raised objections, we would hear oral arguments for both cases on
`same day. Neither party objected.
`Accordingly, oral argument for both proceedings will be held on
`August 9, 2017 on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. The hearing for IPR2016-01123 will
`commence at 1:00 PM and end at 2:30 PM Eastern Time. The hearing for
`IPR2016-01220 will commence at 2:40 PM and end at 4:10 PM Eastern
`Time. Both hearings will be open to the public for in-person attendance. In-
`person attendance will be accommodated on a first-come-first-served basis.
`If the parties have any concern about disclosing confidential information,
`they are to contact the Board at least five (5) business days in advance of the
`hearings to discuss the matter.
`Each party will have forty-five (45) minutes of total time to present
`arguments for each case. Petitioner bears the ultimate burden of proof that
`the claims at issue are unpatentable. Therefore, Petitioner will proceed first
`to present its case with regard to the challenged claims and grounds on
`which we instituted trial in IPR2016-01123. Patent Owner then will argue
`its opposition to Petitioner’s case. Petitioner may reserve rebuttal time.
`2
`
`
`
`
`
`IPR2016-01123 Patent 8,630,726
`IPR2016-01220 Patent 9,007,420
`
`Subsequently, after a short break, Petitioner will proceed to present its case
`with regard to the challenged claims and grounds on which we instituted
`trial in IPR2016-01220. Patent Owner then will argue its opposition to
`Petitioner’s case. Petitioner may reserve rebuttal time.
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the hearing.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been so
`filed.
`
`Furthermore, pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits
`must be served at least five (5) business days before the hearing. The parties
`shall provide a courtesy copy of any demonstrative exhibits to the Board at
`least three (3) business days prior to the hearing by emailing them to
`Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`the records of these proceedings without prior authorization from the Board.
`The demonstrative exhibits in this case are not evidence and are intended
`only to assist the parties in presenting their oral argument to the Board. The
`parties must, however, file any objections to the demonstratives with the
`Board at least three (3) business days before the hearing. Any objection to
`the demonstrative exhibits that is not presented timely will be considered
`waived. The objections should identify with particularity which
`demonstratives are subject to objection, and include a short (one sentence or
`less) statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. Otherwise, the Board will
`3
`
`
`
`
`
`IPR2016-01123 Patent 8,630,726
`IPR2016-01220 Patent 9,007,420
`
`reserve ruling on the objections until after the oral argument. The parties are
`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
`Regents of the University of Michigan, IPR2013-00041 (PTAB January 27,
`2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`The Board expects lead counsel for each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party will not be in attendance at
`oral hearing, the Board should be notified via a joint telephone conference
`call no later than three (3) business days prior to the oral hearing to discuss
`the matter.
`Any special requests for audio visual equipment should be directed to
`Trials@uspto.gov. Requests for special equipment will not be honored
`unless presented in a separate communication not less than five (5) business
`days before the hearing directed to the above email address.
`At least one judge will be participating remotely via a
`videoconferencing device and will not be able to view the projection screen
`in the hearing room. The parties are reminded that the presenter must
`identify clearly and specifically each demonstrative exhibit (e.g., by slide or
`screen number) referenced during the hearing to avoid confusion, and to
`ensure the clarity and accuracy of the reporter’s transcript.
`
`
`
`
`
`4
`
`
`
`IPR2016-01123 Patent 8,630,726
`IPR2016-01220 Patent 9,007,420
`
`For PETITIONER:
`
`Michael Specht
`Joseph Mutschelknaus
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Mspecht-ptab@skgf.com
`jmutsche-PTAB@skgf.com
`
`
`For PATENT OWNER:
`
`Justin Kimble
`Terry Saad
`Nicholas Kliewer
`BRAGALONE CONROY PC
`Jkimble-ipr@bcpc-law.com
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`
`5
`
`
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