Paper 52
`Date: February 25, 2019
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION, CAVIUM, LLC, and
`DELL INC.,1
`Petitioner,
`
`v.
`
`ALACRITECH, INC.,
`Patent Owner.
`____________
`
`Cases IPR2018-00226 (Patent 7,124,205 B2)
` IPR2018-00234 (Patent 8,805,948 B2)
` IPR2018-00401 (Patent 7,945,699 B2)
`____________
`
`Before STEPHEN C. SIU, DANIEL N. FISHMAN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`
`
`
`
`1 Cavium, Inc., which filed petitions in Cases IPR2018-00400 and IPR2018-00403,
`and Dell Inc., which filed petitions in IPR2018-01306 and IPR2018-01307, were
`joined as petitioners in IPR2018-00226 and IPR2018-00234, respectively. Intel
`Corporation, which filed a petition in IPR2018-01352, was joined as a petitioner in
`IPR2018-00401 and was designated as the primary petitioner. According to
`updated mandatory notices filed in the captioned proceedings, Cavium, Inc. has
`now been converted to Cavium, LLC. See, e.g., IPR2018-00226, Paper 28.
`
`
`

`

`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`
`
`
`
`ORDER2
`Oral Hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`Petitioner Intel Corporation and Patent Owner Alacritech, Inc. have
`requested an oral hearing in each of the captioned proceedings pursuant to
`37 C.F.R. § 42.70. See IPR2018-00226, Papers 48, 50; IPR2018-00234, Papers 39,
`41; IPR2018-00401, Papers 33, 35. Each party requests one hour of argument time
`per side for all three cases. See, e.g., IPR2017-00234, Papers 39, 41. Petitioner
`further requests that a portion of the hearing be closed to the public for discussion
`of confidential information. See IPR2017-00234, Paper 39.
`Although the cases have not been consolidated or joined, we determine that
`they entail overlapping issues such that oral argument will be provided in a single
`hearing to commence at 10:00 am Pacific Time on March 4, 2019, on the 3rd
`floor of the USPTO’s Silicon Valley Regional Office, 26 South 4th Street,
`San Jose, California.3
`Petitioner Intel and Patent Owner Alacritech, Inc. each will have sixty (60)
`minutes of total argument time for all three cases. Furthermore, we grant
`Petitioner’s request for a portion of the hearing, not to exceed twenty (20) minutes
`of each party’s allotted sixty minutes, to be closed to the public. See, e.g.,
`IPR2017-00234, Paper 39. The closed portion of the hearing will be the first
`
`
`2 This order addresses issues that are similar in all identified cases. We exercise
`our discretion to issue one order to be filed in each case. The parties are not
`authorized to use this style heading in subsequent papers.
`3 Information concerning the Silicon Valley Regional Office can be found in the
`USPTO website at https://www.uspto.gov/about-us/uspto-locations/silicon-valley-
`california.
`
`2
`
`
`

`

`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`
`portion of the hearing, after which the hearing will be open to the public.
`Allocation of time between the parties and the cases during the closed portion of
`the hearing will be discussed at the start of the hearing. Regarding issues of
`patentability of the challenged claims during the publicly open portion of the
`hearing, Petitioner will proceed first to present its case with regard to the
`challenged claims. Petitioner may reserve some, but not more than one half, of its
`argument time for rebuttal. Thereafter, Patent Owner will respond to Petitioner’s
`case and also may reserve some of its argument time, for sur-rebuttal. Next,
`Petitioner may use any time it has reserved for rebuttal to respond to Patent
`Owner’s specific arguments presented at the hearing. Then, Patent Owner may
`present a brief sur-rebuttal if it has reserved time. No live testimony from any
`witness will be taken at the oral argument.
`The parties are advised that the hearing room has limited capacity.
`Therefore, to facilitate access to the regional office hearing room, each party is
`asked to email the Board (Trials@uspto.gov), at least five business days prior to
`the hearing, indicating the number of attendees for its side (attorneys and others).
`Any demonstrative exhibits shall be served at least four business days before
`the hearing. The parties shall confer regarding any objections to demonstrative
`exhibits, and file demonstrative exhibits with the Board, as a separate exhibit in
`accordance with 37 C.F.R. § 42.63, at least three business days prior to the hearing.
`The parties are reminded that the demonstrative exhibits presented in this
`case are not evidence and are intended only to assist the parties in presenting their
`oral argument to the panel. The parties are directed to St. Jude Medical,
`Cardiology Division, Inc. v. Board of Regents of the University of Michigan, Case
`IPR2013-00041, slip op. 2–5 (PTAB Jan. 27, 2014) (Paper 65), and CBS
`
`3
`
`
`

`

`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`
`Interactive Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-00033, slip op.
`at 2–4 (PTAB Oct. 23, 2013) (Paper 118), for guidance regarding the appropriate
`content of demonstrative exhibits. For any issue regarding the proposed
`demonstrative exhibits that cannot be resolved after conferring with the opposing
`party, the parties may file jointly a one-page list of objections at least two business
`days prior to the hearing. The list should identify with particularity which
`demonstrative exhibits are subject to objection and include a short statement (no
`more than one concise sentence) of the reason for each objection. No argument or
`further explanation is permitted. We will consider the objections and may
`schedule a conference call, if necessary, to discuss them. Typically, however, we
`reserve ruling on the objections until the hearing or ruling is necessary to resolve
`the dispute. Any objection to demonstrative exhibits that is not presented timely
`will be considered waived. Each party also shall provide a hard copy of its
`demonstrative exhibits to the court reporter at the hearing.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number and by
`content) referenced during each hearing to ensure the clarity and accuracy of the
`reporter’s transcript. Further, because a consolidated hearing will be conducted for
`three proceedings, if an argument and/or evidence applies only to a particular
`proceeding or proceedings, the presenter must identify the proceeding or
`proceedings, to which that argument and/or evidence applies. The parties also
`should note that Judges Siu and Fishman will be attending electronically and will
`only have access to the courtesy copy of the demonstratives provided in advance,
`as referenced above. If a demonstrative is not made available to the Board in the
`manner indicated above, that demonstrative may not be available to each of the
`
`4
`
`
`

`

`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`
`judges during the hearing and may not be considered. Further, images projected
`using audio visual equipment in San Jose will not be visible to Judges Siu and
`Fishman. Because of limitations on the audio transmission systems in our hearing
`rooms, the presenter may speak only when standing at the hearing room podium.
`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 at oral hearing,
`although any backup counsel may make the actual presentation, in whole or in part.
`If lead counsel for either party is unable to attend the oral argument, the Board
`should be notified via a joint telephone conference call no later than five business
`days prior to the oral hearing to discuss the matter. Patent Owner has notified the
`Board in an e-mail message that its lead counsel is unavailable for the hearing but
`its backup counsel will represent Patent Owner’s interests.
`The Board will provide a court reporter for each hearing, and the reporter’s
`transcript will constitute the official record of the hearing. The reporter’s transcript
`will be entered in the record of the proceedings.
`Requests for audio-visual equipment or special accommodations at the
`hearing are to be made five days in advance of the hearing date. The requests must
`be sent to Trials@uspto.gov. If the requests are not received timely, equipment or
`accommodations may not be available on the day of the hearing.
`
`
`
`
`
`5
`
`
`

`

`
`
`
`
`IPR2018-00226 (Patent 7,124,205 B2)
`IPR2018-00234 (Patent 8,805,948 B2)
`IPR2018-00401 (Patent 7,945,699 B2)
`
`PETITIONER
`Garland Stephens
`Adrian Percer
`Anne Cappella
`Justin Constant
`William Ansley
`Melissa Hotze
`WEIL, GOTSHAL, & MANGES LLP
`Garland.stephens@weil.com
`Adrian.percer@weil.com
`Anne.cappella@weil.com
`Justin.constant@weil.com
`Sutton.ansley@weil.com
`Melissa.hotze@weil.com
`
`David T. Xue
`
`RIMON, LAW
`David.xue@rimonlaw.com
`
`PATENT OWNER
`
`Jim Glass
`Jospeh Paunovich
`Brian Mack
`QUINN, EMANUEL, URQUHART, & SULLIVAN LLP
`jimglass@quinnemanuel.com
`joepaunovich@quinnemanuel.com
`brianmack@quinnemanuel.com
`
`6
`
`
`