Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 37
`
`Entered: July 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Petitioner,
`
`v.
`
`RESMED LIMITED,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00272 (Patent 9,242,062 B2)
`IPR2017-00632 (Patent 8,944,061 B2)
`____________
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 This Order addresses issues that are the same in each case. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
`Paper No. 37
`
`Entered: July 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FISHER & PAYKEL HEALTHCARE LIMITED,
`Petitioner,
`
`v.
`
`RESMED LIMITED,
`Patent Owner.
`____________
`
`Cases1
`IPR2017-00272 (Patent 9,242,062 B2)
`IPR2017-00632 (Patent 8,944,061 B2)
`____________
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`JAMES J. MAYBERRY, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 This Order addresses issues that are the same in each case. Therefore, we
`exercise our discretion to issue one Decision to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2017-00272 (Patent 9,242,062 B2)
`IPR2017-00632 (Patent 8,944,061 B2)
`
`
`Petitioner, Fisher & Paykel Healthcare Limited, and Patent Owner,
`ResMed Limited, requested and was granted oral argument in IPR2017-
`00632. Paper 19, 1. However, oral argument, originally scheduled for May
`1, 2018, was canceled in response to the U.S. Supreme Court’s decision in
`SAS Inst., Inc. v. Iancu, 2018 WL 1914661 (U.S. Apr. 24, 2018) and newly
`added challenges to this proceeding. See Paper 28, 1. As we indicated in
`our Order dated May 18, 2018, unless the parties request otherwise, oral
`hearing will be conducted on July 11, 20182 with respect to all challenges in
`this proceeding. Paper 31, 4.
`For IPR 2017-00272, as indicated in our Order dated May 18, 2018,
`unless the parties request otherwise, a supplemental oral hearing will be
`conducted on July 11, 2018. Paper 28, 4. This supplemental oral hearing is
`limited to the challenges added to this proceeding in response to the U.S.
`Supreme Court’s decision in SAS.
`Oral argument will commence at 9:00 AM ET on July 11, 2018.
`The hearing will be conducted at the Midwest Regional USPTO Office,
`300 River Place South, Suite 2900, Detroit, Michigan.3
`In IPR 2017-00632, each party will have forty-five (45) minutes to
`present its arguments, for a total of 90 minutes. 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
`
`
`2 Pursuant to a request from the panel, the parties conferred and agreed to
`this modification of the date set for oral argument in the Order. Paper 9, 7.
`This Order serves to amend Due Date 7 provided in the Scheduling Order
`for this proceedings. Id.
`3 See https://www.uspto.gov/about-us/uspto-locations/detroit-michigan for
`additional information.
`
`
`
`2
`
`
`
`IPR2017-00272 (Patent 9,242,062 B2)
`IPR2017-00632 (Patent 8,944,061 B2)
`
`regard to all challenged claims and grounds on which basis we instituted
`trial in IPR2017-00632. Petitioner may reserve rebuttal time. Thereafter,
`Patent Owner will argue its opposition to Petitioner’s case. Petitioner may
`use any time Petitioner reserved to rebut Patent Owner’s opposition. Patent
`Owner may not reserve rebuttal time. No live testimony from any witness
`will be taken at the oral argument. Also, the parties are reminded that, at the
`oral argument, they “may rely upon evidence that has been previously
`submitted in the proceeding and may only present arguments relied upon in
`the papers previously submitted.” Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). “No new evidence or arguments
`may be presented at the oral argument.” Id.
`After a brief recess, a similar format will be used regarding the newly-
`added challenges at issue in IPR2017-00272 post-SAS with the noted
`exceptions. For the supplemental oral hearing in IPR2017-00272, each party
`will have twenty (20) minutes to present its arguments, for a total of 40
`minutes. Because this is a supplemental hearing, argument is limited to the
`challenges added to this proceeding in response to the U.S. Supreme Court’s
`decision in SAS.
`Both hearings will be open to the public for in-person attendance,
`which will be accommodated on a first-come, first-served basis. If the
`parties have any concern about disclosing confidential information, they are
`requested to contact the Board at least three days in advance of the hearing
`to discuss the matter.
`The Board will provide a court reporter for the hearings, and the
`reporter’s transcript will constitute the official record of each hearing. The
`hearing transcript will be entered in the record of each proceeding.
`
`
`
`3
`
`
`
`IPR2017-00272 (Patent 9,242,062 B2)
`IPR2017-00632 (Patent 8,944,061 B2)
`
`
`Demonstrative exhibits must be served on opposing party three (3)
`business days prior to the hearing. The parties are directed to submit a copy
`of any demonstrative exhibits by email to Trials@uspto.gov at least three (3)
`business days prior to the hearing. The parties must file any objections to
`the demonstratives with the Board at least one (1) business days before the
`hearing. 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. Any objection to demonstrative exhibits that is not
`timely presented will be considered waived. Additionally, 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 may raise any objections during their allotted time in the hearing.
`The Board asks the parties to confine demonstrative exhibit objections to
`those identifying egregious violations that are prejudicial to the
`administration of justice. The parties may refer to CBS Interactive Inc. v.
`Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB October 23, 2013)
`(Paper 118), and St. Jude Medical, Cardiology Div., Inc. v. The Board of
`Regents of the University of Michigan, IPR2013-00041 (PTAB Jan. 27,
`2014) (Paper 65) regarding the appropriate content of demonstrative
`exhibits.
`At least one member of the panel will be attending the hearings
`electronically from a remote location and will only have access to the
`courtesy copy of the demonstratives provided in advance, as referenced
`above, and will not be able to view the projection screen in the hearing
`room. Thus, if a demonstrative exhibit is not made available in advance or
`
`
`
`4
`
`
`
`IPR2017-00272 (Patent 9,242,062 B2)
`IPR2017-00632 (Patent 8,944,061 B2)
`
`visible to the judge(s) presiding over the hearings remotely, that
`demonstrative exhibit will not be helpful. The parties are reminded that each
`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 and for the benefit of the
`judge(s) presiding over the hearing remotely. A hard copy of the
`demonstratives, if used, may be provided to the court reporter at the hearing.
`The Board expects lead counsel for each party to be present in person
`at the oral hearings. Lead or backup counsel, however, may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the oral argument, the parties should request a joint telephone
`conference with the Board no later than two (2) business days prior to the
`oral hearing to discuss the matter.
`Specific requests for video equipment should be directed to
`Trials@uspto.gov at least three (3) days in advance of the hearing date. If
`the request is not received timely, the equipment may not be available on the
`day of the hearing. Questions regarding specific audio-visual equipment
`should be directed to the Board at (571) 272-9797.
`
`It is
`ORDERED that oral argument will commence at 9:00 AM ET on July
`11, 2018 at the Midwest Regional USPTO Office.
`
`
`
`
`
`5
`
`
`
`IPR2017-00272 (Patent 9,242,062 B2)
`IPR2017-00632 (Patent 8,944,061 B2)
`
`PETITIONER:
`
`Sheila N. Swaroop
`Brenton R. Babcock
`Benjamin J. Everton
`Joseph F. Jennings
`William O. Adams
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2sns@knobbe.com
`2brb@knobbe.com
`2bje@knobbe.com
`2jfj@knobbe.com
`2woa@knobbe.com
`
`
`For PATENT OWNER:
`
`Michael T. Hawkins
`Michael J. Kane
`Christopher C. Hoff
`Andrew Dommer
`Stephen R. Schaefer
`Geoffrey D. Biegler
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`kane@fr.com
`hoff@fr.com
`dommer@fr.com
`schaefer@fr.com
`biegler@fr.com
`IPR36784-0053IP1@fr.com
`PTABInbound@fr.com
`
`Joseph A. Rhoa
`Paul Bowen
`NIXON & VANDERHYE P.C.
`jar@nixonvan.com
`ptb@nixonvan.com
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
