Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 94
`Date: November 21, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`POLYGROUP LIMITED (MCO),
`Petitioner,
`v.
`WILLIS ELECTRIC COMPANY, LIMITED,
`Patent Owner.
`____________
`
`
`Cases:
`IPR2016-01610 (Patent 8,454,186 B2)
`IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2)
`IPR2016-01615 (Patent 8,936,379 B2)
`IPR2016-01616 (Patent 8,936,379 B2)
`IPR2016-01617 (Patent 8,936,379 B2)
`
`____________
`
`
`Before WILLIAM V. SAINDON, JEREMY M. PLENZLER, and
`BARBARA A. PARVIS, Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`

`

`
`
`IPR2016-01610 (Patent 8,454,186 B2) IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2) IPR2016-01615 (Patent 8,936,379 B2)
`IPR2016-01616 (Patent 8,936,379 B2) IPR2016-01617 (Patent 8,936,379 B2)
`
`The parties have requested an oral hearing pursuant to 37 C.F.R.
`
`§ 42.70. Paper 153 (Patent Owner’s Request); Paper 155 (Petitioner’s
`Request).1 The request for an oral hearing is granted. The oral hearing will
`commence at 10:00 AM Eastern Time on December 15th, 2017, on the ninth
`floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`The oral hearing will be held jointly and simultaneously for each of
`the above-identified IPRs. The panel encourages the parties not to use the
`oral argument time to provide an overview of their case. Instead, the panel
`encourages each party, after some initial remarks, to focus on specific issues
`it would like to highlight or clarify, starting with those the party deems most
`important to discuss with the Board. It is the panel’s experience that long
`slide decks sequentially stepping through each issue in the case is not the
`most effective use of the hearing. The panel will make its decision based on
`the written briefs; oral hearing is the parties’ opportunity to clarify the
`panel’s understanding of the evidence and the parties’ positions in the briefs.
`Due to the number of proceedings to be discussed, and the substantial
`overlap in each, the following schedule will be used. In the first session, the
`parties will present their arguments regarding the patentability of the
`instituted claims. Each side will have ninety minutes to present arguments.
`Petitioner bears the ultimate burden of proof that the claims at issue in this
`review are unpatentable. Petitioner will, therefore, begin by presenting its
`case regarding the challenged claims and grounds for which the Board
`instituted trial in the proceeding. Patent Owner will then respond to
`
`
`1 Citations are to papers in IPR2016-01610. The other proceedings have
`similar papers.
`
`2
`
`
`

`

`IPR2016-01610 (Patent 8,454,186 B2) IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2) IPR2016-01615 (Patent 8,936,379 B2)
`IPR2016-01616 (Patent 8,936,379 B2) IPR2016-01617 (Patent 8,936,379 B2)
`
`Petitioner’s arguments. Petitioner may reserve time to reply to arguments
`presented by Patent Owner.
`In the second session, the parties will present their arguments
`regarding the patentability of the proposed substitute claims. Each side will
`have forty-five minutes to present arguments. Petitioner will begin by
`presenting its case regarding the proposed claims. Patent Owner will then
`respond to Petitioner’s arguments. Petitioner may reserve time to reply to
`arguments presented by Patent Owner. The panel also anticipates providing
`a ninety-minute recess between each session for lunch, and other short
`recesses as it deems appropriate.
`The hearing will be open to the public for in-person attendance that
`will be accommodated on a first-come, first-served basis. The Board will
`provide a court reporter, and the transcript shall constitute the official record
`of the hearing and be entered in each proceeding.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least five business days before the hearing. The panel also 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
`
`3
`
`
`

`

`IPR2016-01610 (Patent 8,454,186 B2) IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2) IPR2016-01615 (Patent 8,936,379 B2)
`IPR2016-01616 (Patent 8,936,379 B2) IPR2016-01617 (Patent 8,936,379 B2)
`
`portions of the demonstrative exhibits are subject to objection, include a
`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.
`One member of the panel from a PTO regional office will be attending
`the conference via remote video link. Physical exhibits and the projector
`screen will not be viewable to this judge. The parties should prepare
`accordingly; all requests to provide physical exhibits or examples are denied.
`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 no later than five days in advance of the hearing
`date. The request is to be sent to Trials@uspto.gov, and any requests not
`sent separately and specifically to that email address will not be considered.
`If the request is not received timely, the equipment may not be available on
`the day of the hearing.
`
`
`4
`
`
`

`

`IPR2016-01610 (Patent 8,454,186 B2) IPR2016-01612 (Patent 8,454,187 B2)
`IPR2016-01613 (Patent 9,044,056 B2) IPR2016-01615 (Patent 8,936,379 B2)
`IPR2016-01616 (Patent 8,936,379 B2) IPR2016-01617 (Patent 8,936,379 B2)
`
`For PETITIONER
`Christopher Forstner
`Ryan Schneider
`Alexis Simpson
`Robert Angle
`Dabney J. Carr, IV
`TROUTMAN SANDERS LLP
`chris.forstner@troutmansanders.com
`ryan.schneider@troutmansanders.com
`alexis.simpson@troutmansanders.com
`robert.angle@troutmansanders.com
`dabney.carr@troutmansanders.com
`
`Jason Eisenberg
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`jasone-ptab@skgf.com
`
`
`For PATENT OWNER:
`Larina Alton
`Lukas Toft
`FOX ROTHSCHILD LLP
`laton@foxrothschild.com
`ltoft@foxrothschild.com
`
`Doug Christensen
`CHRISTENSEND FONDER DARDI
`christensen@cfpatlaw.com
`
`
`
`5
`
`
`