Paper No. 25
`Trials@uspto.gov
`571-272-7822
`Entered: January 9, 2019
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC. and
`EVERLIGHT ELECTRONICS CO. LTD.
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`__________________
`
`IPR2018-00265 (Patent 6,949,771 B2)1
`____________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., CREE, INC., and
`EVERLIGHT ELECTRONICS CO. LTD.
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`__________________
`
`IPR2018-00333 (Patent 7,256,486 B2)2,3
` ____________
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
`Trials@uspto.gov
`571-272-7822
`Entered: January 9, 2019
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC. and
`EVERLIGHT ELECTRONICS CO. LTD.
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`__________________
`
`IPR2018-00265 (Patent 6,949,771 B2)1
`____________
`
`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC., CREE, INC., and
`EVERLIGHT ELECTRONICS CO. LTD.
`Petitioner,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`__________________
`
`IPR2018-00333 (Patent 7,256,486 B2)2,3
` ____________
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`DOUGAL, Administrative Patent Judge.
`
`
`
`IPR2018-00265 (Patent 6,949,771 B2)
`IPR2018-00333 (Patent 7,256,486 B2)
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
` Petitioner and Patent Owner have each filed requests for oral hearings
`in the above captioned proceedings, pursuant to 37 C.F.R. § 42.70.
`IPR2018-00265, Papers 26, 27.4 Petitioner requests thirty (30) minutes to
`present its argument, and Patent Owner requests forty-five (45) minutes to
`present its argument. Paper 27, 1; Paper 26, 1. The requests are granted
`according to the terms set forth in this Order.
`The oral hearings will commence at 1:00 PM Eastern Time on
`Thursday, January 31, 2019, in Hearing Room B on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia. Cases
`IPR2018-00265 and IPR2018-00333 will be argued sequentially in two
`sessions, with a short break between the two sessions. Each party will have
`forty-five (45) minutes total time to present its arguments in each session.
`The hearing will be open to the public for in-person attendance that
`will be accommodated on a first-come, first-served basis. Please be advised,
`available seating is limited.
`
`
`
`1 Everlight Electronics Co., Ltd., who filed a Petition in IPR2018-01244, has
`been joined as a petitioner in this proceeding.
`2 Cree, Inc., who filed a Petition in IPR2018-01205, and Everlight
`Electronics Co., Ltd., who filed a Petition in IPR2018-01225, have been
`joined as petitioners in this proceeding.
`3 This Order will be entered in each case. The parties are not authorized to
`use this caption style.
`4 For convenience, we cite to papers in IPR2018-00265. Similar papers
`were filed in IPR2018-00333.
`
`
`
`2
`
`
`
`IPR2018-00265 (Patent 6,949,771 B2)
`IPR2018-00333 (Patent 7,256,486 B2)
`
`
`Petitioner bears the ultimate burden of proof that the claims at issue in
`these reviews are unpatentable. Therefore, at oral argument, Petitioner will
`proceed first to present its case regarding the challenged patent claims and
`the grounds on which the Board instituted trial. Petitioner may reserve some
`(but not more than half) of its argument time to respond to arguments
`presented by the Patent Owner. After Petitioner’s initial presentation, Patent
`Owner will be given an opportunity to respond, and also may reserve some
`of its argument time for sur-rebuttal. Thereafter, Petitioner may use any
`reserved time to reply to Patent Owner’s presentation, and finally, Patent
`Owner may present a brief sur-rebuttal if it has reserved time.
`New arguments not previously presented in the parties’ substantive
`papers in these proceeding shall not be raised at oral hearing.
`Live Testimony
`Requests for live testimony will be given due consideration. A party
`requesting live testimony should explain why and how this consideration
`applies, for example where an inventor is attempting to antedate a reference
`by establishing a prior reduction to practice. See K-40 Electronics, LLC v.
`Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34). Other
`factors may include the importance of the issue that is the subject of the
`testimony. The Board is more likely to grant oral testimony critical to issues
`that are case-dispositive. Id. at 2.
`Official Record
`The Board will provide a court reporter, and the reporter’s transcript
`shall constitute the official record of the oral hearing.
`
`
`
`3
`
`
`
`IPR2018-00265 (Patent 6,949,771 B2)
`IPR2018-00333 (Patent 7,256,486 B2)
`
`
`Demonstrative Exhibits
`Demonstrative exhibits used at the final hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. Each
`slide of a demonstrative exhibit should be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in a footer.
`Demonstrative exhibits cannot be used to advance arguments or introduce
`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
`first time during oral argument”). Demonstrative exhibits should cite to
`evidence in the record.
`The parties shall serve any demonstrative exhibits on opposing
`counsel at least five business days before the hearing or at least five business
`days before the pre-hearing conference if one is scheduled. In addition, the
`parties shall file any demonstrative exhibits in these proceedings within two
`days of the hearing.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65) for guidance regarding the appropriate
`content of demonstrative exhibits. The parties are encouraged to resolve
`objections to demonstrative exhibits by conferring prior to submitting the
`exhibits to the Board. Objections to demonstratives should be carefully
`considered and framed as the Board has not found that such objections are
`helpful in many cases. Any unresolved issue regarding demonstrative
`exhibits should be addressed during a pre-hearing conference. Any
`
`
`
`4
`
`
`
`IPR2018-00265 (Patent 6,949,771 B2)
`IPR2018-00333 (Patent 7,256,486 B2)
`
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`The parties are reminded that, at the oral hearing, 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, and to assist Judge Moore and Judge
`Dougal, who will join the hearing remotely. Judge Moore and Judge Dougal
`will be unable to view images projected in the hearing room. Similarly, to
`ensure presenters may be heard by Judge Moore and Judge Dougal, the
`parties are reminded to speak only when standing at the hearing room
`podium and toward the attached microphone.
`Pre-Hearing Conference
`Per the recent update to the Office Patent Trial Practice Guide, either
`party may request a pre-hearing conference. Office Patent Trial Practice
`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
`the following link to the USPTO website: https://go.usa.gov/xU7GP).
`Requests for a pre-hearing conference must be made by January 17, 2019.
`To request such a conference, an email should be sent to Trials@uspto.gov
`including several dates and times of availability for one or both parties, as
`appropriate, that are generally no later than three business days prior to the
`oral hearing. Please refer to the Guide for more information on the pre-
`hearing conference.
`If the parties are unable to agree on the issues to be addressed at the
`pre-hearing conference, the joint request shall specify which issues are
`disputed and provide a brief statement (not to exceed one sentence) of the
`opposing party’s objection.
`
`
`
`5
`
`
`
`IPR2018-00265 (Patent 6,949,771 B2)
`IPR2018-00333 (Patent 7,256,486 B2)
`
`
`The panel may, at its discretion, indicate certain issues during the pre-
`hearing conference that it wishes the parties to emphasize at the oral hearing.
`Although the parties and the panel may discuss issues for the oral hearing at
`the pre-hearing conference, the issues discussed at the pre-hearing
`conference do not limit the scope of the oral hearing. Instead, the parties
`remain free to address at the oral hearing any issue properly raised during
`the trial, and the panel may ask questions on issues other than those
`identified at the pre-hearing conference. The parties may also discuss
`objections to demonstrative exhibits at the pre-hearing conference, but the
`panel may reserve ruling on such objections until a later time.
`Attendance of Counsel
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. Any counsel of record, 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 initiate a joint telephone
`conference with the Board no later than two business days prior to the oral
`hearing to discuss the matter.
`Equipment Requests
`The parties may request the use of audio-visual equipment during the
`oral hearing. Such requests should be directed to Trials@uspto.gov at least
`five business 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.
`Accordingly, it is
`ORDERED that the oral arguments for IPR2018-00265 and IPR2018-
`00333 shall take place, one case after the other, starting at 1:00 PM Eastern
`
`
`
`6
`
`
`
`IPR2018-00265 (Patent 6,949,771 B2)
`IPR2018-00333 (Patent 7,256,486 B2)
`
`Time on Thursday, January 31, 2019, in Hearing Room B on the ninth floor
`of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`
`For PETITIONER:
`
`Michael Eisenberg
`michael.eisenberg@hklaw.com
`
`Charles Sanders
`charles.sanders@lw.com
`
`Jon Strang
`jonathan.strang@lw.com
`
`For PATENT OWNER:
`
`Wayne Helge
`whelge@dbjg.com
`
`James Wilson
`jwilson@dbjg.com
`
`Aldo Noto
`anoto@davidsonberquist.com
`
`
`
`7
`
`
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