`571-272-7822
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`
`
`
`
`Paper 18
`Entered: August 31, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`WEBPOWER, INC.,
`
`FRIENDFINDER NETWORKS INC., STEAMRAY INC., WMM, LLC,
`WMM HOLDINGS, LLC, and MULTI MEDIA, LLC,
`
`DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`RISER APPS LLC, and STREAMME, INC. (f/k/a VUBEOLOGY, INC.),
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01238 (Patent 8,122,141 B2)
` Case IPR2016-01239 (Patent 8,364,839 B2)1
`____________
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 The parties are not authorized to use this style of caption.
`
`
`
`IPR2016-01238 (Patent 8,122,141 B2)
`IPR2016-01239 (Patent 8,364,839 B2)
`
`
`The date set for oral hearing in each of these proceedings is
`September 25, 2017, if hearing is requested by either party and granted by
`the Board. Paper 9 (IPR2016-01238); Paper 10 (IPR2016-01239). Both
`parties request oral hearing. Papers 16, 17 (IPR2016-01238); Papers 15, 16
`(IPR2016-01239). The requests are granted.
`There will be back-to-back hearings for these inter partes reviews,
`separated by a short break. The first hearing will be for IPR2016-01238 and
`will commence at 1:00 PM Eastern Time, on September 25, 2017. After
`briefly recessing once arguments in IPR2016-01238 have concluded, the
`second hearing, for IPR2016-01239, will commence. For each proceeding,
`each side will have 40 minutes to present its argument. Petitioner bears the
`ultimate burden of proof that Patent Owner’s claims at issue in these reviews
`are unpatentable. Accordingly, for each hearing, Petitioner will open by
`presenting its case regarding the challenged claims for which the Board
`instituted trial; Patent Owner will respond to Petitioner’s argument; and
`Petitioner may rebut if it has time remaining. For each hearing, Petitioner
`may reserve time to respond to Patent Owner’s argument; Patent Owner may
`not reserve time.
`The hearings will be open to the public for in-person attendance, on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia. The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the hearing. At
`least one member of the panel may be attending the oral argument remotely
`by use of two-way audio-visual communication equipment. If the parties
`
`2
`
`
`
`IPR2016-01238 (Patent 8,122,141 B2)
`IPR2016-01239 (Patent 8,364,839 B2)
`
`have any concern about disclosing confidential information, they are
`requested to contact the Board at least 10 days in advance of the hearing to
`discuss the matter.
`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, under 37 C.F.R. § 42.70(b), demonstrative exhibits must
`be served at least seven business days before the hearing date. The parties
`shall meet and confer to discuss and resolve any objections to demonstrative
`exhibits.
`Any party with unresolved objections must file a list of those
`objections with the Board at least two business days before the hearing. For
`each objection, the list must identify with particularity which portions of the
`demonstrative exhibits are subject to the objection and may include a short,
`one-sentence statement explaining the 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
`not timely presented will be considered waived.
`Notwithstanding 37 C.F.R. § 42.70(b), each party also shall file its
`demonstrative exhibits with the Board as a separate paper at least two
`business days prior to the hearing. A hard copy of the demonstratives
`should be provided to the court reporter at the hearing, but hard copies of the
`demonstratives are not needed for the judges.
`
`3
`
`
`
`IPR2016-01238 (Patent 8,122,141 B2)
`IPR2016-01239 (Patent 8,364,839 B2)
`
`
`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, 2015) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. Demonstrative exhibits are not evidence
`and may not introduce new evidence or arguments. Instead, demonstrative
`exhibits should cite to evidence in the record. 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
`ensure the clarity and accuracy of the reporter’s transcript.
`Generally, the Board expects lead counsel for each party to be present
`in person at the oral hearing. Patent Owner states in its Requests that it
`anticipates that its lead counsel will not be present at oral hearing in these
`cases, and that backup counsel will present argument. Given that Patent
`Owner’s backup counsel is a registered practitioner and has signed Patent
`Owner’s merits briefing, attendance by lead counsel at the oral hearing is
`excused. If Petitioner expects that its lead counsel will not be attending the
`oral hearing, the parties should request a joint telephone conference with the
`Board no later than 10 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 days before
`the hearing directed to the above email address.
`
`
`
`4
`
`
`
`IPR2016-01238 (Patent 8,122,141 B2)
`IPR2016-01239 (Patent 8,364,839 B2)
`
`PETITIONER:
`Frank Gasparo
`fmgasparo@venable.com
`
`Jonathan Falkler
`JLFalkler@venable.com
`
`
`PATENT OWNER:
`Ronald Abramson
`ronald.abramson@lewisbaach.com
`
`Ernest Buff
`ebuff@edbuff.com
`
`
`
`
`
`
`
`5
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`