Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 31
`
`Date Entered: November 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU, and
` DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`and RISER APPS LLC,1
`Petitioners
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner
`____________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`Case IPR2016-01658
`Patent 8,364,839 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37C.F.R. § 42.70
`
`
`
`11 DUODECAD IT SERVICES LUXEMBOURG S.À R.L, et al. are present
`by virtue of the joinder of IPR2017-01179 to IPR2016-01658.
`
`
`571-272-7822
`
`
` Paper No. 31
`
`Date Entered: November 15, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`I.M.L. SLU, and
` DUODECAD IT SERVICES LUXEMBOURG S.À R.L.,
`ACCRETIVE TECHNOLOGY GROUP, INC., ICF TECHNOLOGY, INC.,
`and RISER APPS LLC,1
`Petitioners
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner
`____________
`
`Case IPR2016-01656
`Patent 8,122,141 B2
`Case IPR2016-01658
`Patent 8,364,839 B2
`____________
`
`
`Before TREVOR M. JEFFERSON, BRIAN J. McNAMARA, and
`PATRICK M. BOUCHER, Administrative Patent Judges
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37C.F.R. § 42.70
`
`
`
`11 DUODECAD IT SERVICES LUXEMBOURG S.À R.L, et al. are present
`by virtue of the joinder of IPR2017-01179 to IPR2016-01658.
`
`
`
`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`Hearing on the Merits
`
`A trial in IPR2016-01656 and IPR2016-01658 was instituted on
`
`February 27, 2016. Paper 112 (“Decision to Institute”). A Scheduling Order
`
`entered at the same time set the date for oral hearing in each proceeding to
`
`November 30, 2017, if hearing is requested by the parties and granted by the
`
`Board. Paper 12 (“Scheduling Order”). On October 5, 2017, IPR2017-
`
`01179 brought by Duodecad IT Services Luxembourg S.À R.L., Accretive
`
`Technology Group, Inc., ICF Technology, Inc., and Riser Apps LLC
`
`(“Duodecad”) was terminated and joined to IPR2017-01658. In each
`
`proceeding, the parties have requested oral hearing pursuant to 37 C.F.R. §
`
`42.70. The requests are GRANTED. We will conduct a consolidated
`
`hearing of IPR2016-01656 and IPR2016-01658.
`
`Each party will have 45 minutes of total argument time. I.M.L. SLU
`
`(and for purposes of IPR2016-01658 Duodecad) (“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 with regard to the challenged claims on which basis we
`
`instituted trial. Thereafter, WAG Acquisition, LLC (“Patent Owner”) will
`
`argue its opposition to Petitioner’s case. Petitioner may then use any time
`
`Petitioner reserved to rebut to Patent Owner’s opposition. Finally, Patent
`
`Owner may use any time it reserved solely to rebut Petitioner’s opposition to
`
`Patent Owner’s motion to amend.
`
`Hearing on Motion For Discovery
`
`
`2 Paper numbers are provided for IPR2016-01656, unless otherwise noted.
`
`
`
`2
`
`
`
`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`In each proceeding Patent Owner has moved for discovery on matters
`
`relating to real party-in-interest issues. Although we have conducted several
`
`telephone conferences encouraging the parties to agree to appropriate
`
`discovery, the parties appear to have been unable to resolve issues
`
`concerning the scope of discovery. Therefore, following the hearing on the
`
`merits we will hear up to 15 minutes of argument from each side concerning
`
`the scope of discovery. Patent Owner has the burden of persuasion on its
`
`motion and will argue first, Petitioner may then oppose, and Patent Owner
`
`may use any time it reserved to rebut Petitioner’s Opposition. We remind
`
`the parties of our earlier guidance that discovery in inter partes review is
`
`more narrow than that available in district court and must be tailored to the
`
`specific real party-in-interest issue. We also remind the parties that, having
`
`availed itself of this forum, Petitioner is required to make full disclosure in
`
`real party-in-interest matters. See 35 U.S.C. § 312(a)(2).
`
`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. Therefore the hearing will be open to the public
`
`for in-person attendance. Should the hearing on Patent Owner’s discovery
`
`motion require discussion of confidential information, we will address the
`
`matter at that time.
`
`
`
`3
`
`
`
`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`
`The hearings will commence at 1:30 PM Eastern Time on November
`
`30, 2017, on the ninth floor of Madison Building East, 600 Dulany Street,
`
`Alexandria, Virginia. In-person attendance will be accommodated on a first
`
`come first serve basis.
`
`The Board will provide a court reporter for the hearing and the
`
`reporter’s transcript will constitute the official record of the hearing. Any
`
`demonstrative exhibits must be served seven business days before the
`
`hearing. 37 C.F.R. § 42.70(b). 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 directed to St.
`
`Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the
`
`University of Michigan, Case No. IPR2013-00041 (PTAB Jan. 27, 2014)
`
`(Paper 65), and CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`
`IPR2013-00033, Paper 118 (Oct. 23, 2013), regarding the appropriate
`
`content of demonstrative exhibits. Any issue regarding demonstrative
`
`exhibits should be resolved at least three days prior to the hearing by way of
`
`a joint telephone conference call to the Board. The parties are responsible
`
`for requesting such a conference sufficiently in advance of the hearing to
`
`accommodate this requirement. Any objection to demonstrative exhibits
`
`that is not timely presented will be considered waived. Demonstratives
`
`should be filed at the Board no later than two days before the hearing. A
`
`hard copy of the demonstratives should be provided to the court reporter at
`
`the hearing.
`
`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 5 days in advance of the hearing date. The
`
`
`
`4
`
`
`
`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`request is to be sent to Trials@uspto.gov. If the request is not received
`
`timely, the equipment may not be available on the day of the hearing.
`
`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. The parties also should note that at least one member
`
`of the panel for each proceeding will be attending the hearings electronically
`
`from a remote location and that if a demonstrative is not filed or otherwise
`
`made fully available or visible to the judge presiding over the hearing
`
`remotely, that demonstrative will not be considered. If the parties have
`
`questions as to whether demonstrative exhibits would be sufficiently visible
`
`and available to all of the judges, the parties are invited to contact the Board
`
`at 571-272-9797.
`
`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.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2016-01656; IPR2016-01658
`Patent 8,122,141 B2; 8,364,839 B2
`
`PETITIONER: (via electronic transmission)
`
`Steven Yovits
`Beth Jacob
`KELLEY DRYE & WARREN LLP
`syovits@kelleydrye.com
`bjacob@kelleydrye.com
`
`PATENT OWNER: (via electronic transmission)
`
`Ronald Abramson
`Ari Jaffess
`Mord Lewis
`LEWIS BAACH KAUFMANN MIDDLEMISS PLLC
`ronald.abramson@lbkmlaw.com
`ari.jaffess@lbkmlaw.com
`michael.lewis@lbkmlaw.com
`
`Ernest Buff
`ERNEST D. BUFF & ASSOCIATES, L.L.C.
`ebuff@edbuff.com
`
`
`
`6
`
`
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