Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 48
`Entered: December 13, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAPSCH TRAFFICCOM IVHS INC.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01763
`Patent 8,944,337 B2
`_______________
`
`
`Before JUSTIN T. ARBES, TREVOR M. JEFFERSON, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`Paper 48
`Entered: December 13, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KAPSCH TRAFFICCOM IVHS INC.,
`Petitioner,
`
`v.
`
`NEOLOGY, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-01763
`Patent 8,944,337 B2
`_______________
`
`
`Before JUSTIN T. ARBES, TREVOR M. JEFFERSON, and
`CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`IPR2016-01763
`8,944,337 B2
`
`
`The Scheduling Order sets December 14, 2017, as the date for oral
`hearing, if requested by the parties and granted by the Board. Paper 9, 6.
`On October 4, 2017, the Court of Appeals for the Federal Circuit issued its
`decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In
`view of Aqua Products, we granted Petitioner’s request to file a sur-reply
`with regard to Patent Owner’s Contingent Motion to Amend [Claims] (Paper
`13) on October 27, 2017. Paper 23. On November 8, 2017, the parties
`requested oral argument pursuant to 37 C.F.R. § 42.70(a). Papers 26, 27.
`On November 17, 2017, Petitioner filed its sur-reply. Paper 31. On
`November 20, 2017, Patent Owner requested authorization to file a sur-reply
`to Petitioner’s sur-reply, which Petitioner opposed. On November 30, 2017,
`Judges Jefferson and Zado held a conference call with the parties to discuss
`Patent Owner’s request, including the impact the granting of such request
`would have on the oral hearing date. Paper 36 (transcript). On
`December 12, 2017, Judges Arbes, Jefferson, and Zado held a conference
`call to discuss the oral hearing date, and the parties agreed to January 12,
`2018 as the date for oral hearing. The parties’ request for oral hearing is
`granted.
`Each party will have one (1) hour to present arguments. At the oral
`hearing, Petitioner will proceed first to present the issues for which it bears
`the ultimate burden. Thereafter, Patent Owner will argue its opposition to
`Petitioner’s case, and present the issues for which it bears the ultimate
`burden. To the extent Petitioner reserves rebuttal time, Petitioner then may
`make use of its rebuttal time responding to Patent Owner. To the extent
`Patent Owner reserves rebuttal time, Patent Owner then may make use of its
`rebuttal time responding to Petitioner.
`
`2
`
`
`
`IPR2016-01763
`8,944,337 B2
`
`
`Oral argument will commence at 1:00 PM Eastern Time on
`January 12, 2018, on the ninth floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia. All attendees will need a valid form
`of government-issued identification in order to enter the building and may be
`subject to security screening. The hearing will be open to the public for
`in-person attendance, and 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 ten
`(10) days before the hearing to discuss the matter. The Board will provide a
`court reporter for the hearing and the reporter’s transcript will constitute the
`official record of the oral argument.
`At least five (5) days prior to oral argument, each party shall serve on
`the other party any demonstrative exhibit(s) it intends to use during oral
`argument. See 37 C.F.R. § 42.70(b). The parties also shall provide the
`demonstrative exhibits to the Board at least five (5) days prior to oral
`argument by e-mailing them to Trials@uspto.gov. The parties shall not
`file any demonstrative exhibits in these cases without our prior
`authorization. Demonstrative exhibits are not evidence, but merely a visual
`aid at the oral arguments. Demonstrative exhibits may not introduce new
`evidence or raise new arguments, but instead, 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 IPR2013-
`00041 (PTAB Jan. 27, 2014) (Paper 65) and CBS Interactive Inc. v.
`Helferich Patent Licensing, LLC, Case IPR2013-00033 (PTAB Oct. 23,
`2013) (Paper 118), for guidance regarding the appropriate content of
`demonstrative exhibits.
`
`3
`
`
`
`IPR2016-01763
`8,944,337 B2
`
`
`The parties should attempt to resolve any objections to demonstratives
`prior to involving the Board. The parties must request a conference call with
`the Board at least two (2) days before the hearing to present any unresolved
`objection regarding the propriety of any demonstrative exhibit. Any
`unresolved objection to demonstrative exhibits that is not timely presented
`will be considered waived. The Board asks the parties to confine
`demonstrative exhibit objections to those identifying egregious violations
`that are prejudicial to the administration of justice. To aid in the preparation
`of an accurate transcript, each party shall provide paper copies of its
`demonstratives to the court reporter on the day of the oral arguments. Such
`paper copies shall not become part of the record of this proceeding.
`The parties are reminded that each presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number),
`paper, or exhibit referenced during the oral arguments to ensure the clarity
`and accuracy of the reporter’s transcript. The parties also should note that at
`least one member of the panel will be attending the oral arguments
`electronically from a remote location and that if any demonstrative is not
`made fully available or visible to the judge presiding over the oral
`arguments, that demonstrative will not be considered. Because of
`limitations of the audio transmission systems in our hearing rooms, the
`presenter may speak only when standing at the hearing room lectern. 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 oral argument. If a party anticipates that its lead counsel will not be
`
`4
`
`
`
`IPR2016-01763
`8,944,337 B2
`
`attending the oral arguments, the parties should request a joint telephone
`conference with the Board no later than seven (7) days prior to the oral
`arguments to discuss the matter. Any counsel of record, however, may
`present the party’s arguments.
`Lead counsel and back-up counsel may use portable computers in the
`hearing room at the counsel tables and at the hearing room lectern. Requests
`for audio-visual equipment are to be made seven (7) business days in
`advance of the oral argument date. The requests are to be sent to
`Trials@uspto.gov. If the requests are not received timely, the equipment
`may not be available on the day of the hearing.
`
`
`ORDER
`
`It is
`ORDERED that oral argument for this proceeding shall take place
`beginning at 1:00 PM Eastern Time on January 12, 2018, on the ninth floor
`of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2016-01763
`8,944,337 B2
`
`PETITIONER:
`
`Gregg F. LoCascio
`Anders P. Fjellstedt
`Nathan S. Mammen
`KIRKLAND & ELLIS LLP
`gregg.locascio@kirkland.com
`anders.fjellstedt@kirkland.com
`nathan.mammen@kirkland.com
`
`
`PATENT OWNER:
`
`Noel C. Gillespie
`Victor M. Felix
`PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
`noel.gillespie@procopio.com
`victor.felix@procopio.com
`
`
`
`
`6
`
`
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