`571-272-7822
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`Entered: March 8, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SEOUL SEMICONDUCTOR CO., LTD.,
`SEOUL SEMICONDUCTOR, INC. and
`EVERLIGHT ELECTRONICS CO., LTD.
`Petitioner,
`
`v.
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`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`__________________
`
`
`Case IPR2018-005221
`Patent 7,524,087 B1
`____________
`
`
`Before SALLY C. MEDLEY and BRENT M. DOUGAL, Administrative
`Patent Judges.
`
`
`DOUGAL, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
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`1 Everlight Electronics Co., Ltd., who filed a Petition in IPR2018-01226, has
`been joined as a petitioner in this proceeding.
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`
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`IPR2018-00522
`Patent 7,524,087 B1
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`Petitioner and Patent Owner each filed a request for oral hearing in the
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`above captioned proceeding, pursuant to 37 C.F.R. § 42.70. Papers 23, 25.
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`Petitioner and Patent Owner both request thirty (30) minutes per side for
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`each side to present its argument. Paper 27, 1; Paper 26, 1. The requests are
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`granted according to the terms set forth in this Order.
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`The oral hearings will commence at 1:00 PM Eastern Time on
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`Thursday, April 4, 2019, in Hearing Room D on the ninth floor of Madison
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`Building East, 600 Dulany Street, Alexandria, Virginia. Each party will
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`have thirty (30) minutes total time to present its argument.
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`The hearing will be open to the public for in-person attendance that
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`will be accommodated on a first-come, first-served basis. Please be advised,
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`available seating is limited.
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`Petitioner bears the ultimate burden of proof that the claims at issue in
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`these reviews are unpatentable. Therefore, at oral argument, Petitioner will
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`proceed first to present its case regarding the challenged patent claims and
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`the grounds on which the Board instituted trial. Petitioner may reserve some
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`(but not more than half) of its argument time to respond to arguments
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`presented by the Patent Owner. After Petitioner’s initial presentation, Patent
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`Owner will be given an opportunity to respond, and also may reserve some
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`of its argument time for sur-rebuttal. Thereafter, Petitioner may use any
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`reserved time to reply to Patent Owner’s presentation, and finally, Patent
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`Owner may present a brief sur-rebuttal if it has reserved time.
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`New arguments not previously presented in the parties’ substantive
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`papers in these proceeding shall not be raised at oral hearing.
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`IPR2018-00522
`Patent 7,524,087 B1
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`Live Testimony
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`Requests for live testimony will be given due consideration. A party
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`requesting live testimony should explain why and how this consideration
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`applies, for example where an inventor is attempting to antedate a reference
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`by establishing a prior reduction to practice. See K-40 Electronics, LLC v.
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`Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34). Other
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`factors may include the importance of the issue that is the subject of the
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`testimony. The Board is more likely to grant oral testimony critical to issues
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`that are case-dispositive. Id. at 2.
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`Official Record
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`The Board will provide a court reporter, and the reporter’s transcript
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`shall constitute the official record of the oral hearing.
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`Demonstrative Exhibits
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`Demonstrative exhibits used at the final hearing are aids to oral
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`argument and not evidence, and should be clearly marked as such. Each
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`slide of a demonstrative exhibit should be marked with the words
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`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in a footer.
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`Demonstrative exhibits cannot be used to advance arguments or introduce
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`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
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`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
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`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
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`first time during oral argument”). Demonstrative exhibits should cite to
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`evidence in the record.
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`The parties shall serve any demonstrative exhibits on opposing
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`counsel at least five business days before the hearing or at least five business
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`days before the pre-hearing conference if one is scheduled. In addition, the
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`IPR2018-00522
`Patent 7,524,087 B1
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`parties shall file any demonstrative exhibits in these proceedings within two
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`days of the hearing.
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`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
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`v. The Board of Regents of the University of Michigan, IPR2013-00041
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`(PTAB Jan. 27, 2014) (Paper 65) for guidance regarding the appropriate
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`content of demonstrative exhibits. The parties are encouraged to resolve
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`objections to demonstrative exhibits by conferring prior to submitting the
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`exhibits to the Board. Objections to demonstratives should be carefully
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`considered and framed, as the Board has not found that such objections are
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`helpful in many cases. Any unresolved issue regarding demonstrative
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`exhibits should be addressed during a pre-hearing conference. Any
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`objection to demonstrative exhibits that is not timely presented will be
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`considered waived.
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`The parties are reminded that, at the oral hearing, the presenter must
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`identify clearly and specifically each demonstrative exhibit (e.g., by slide or
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`screen number) referenced during the hearing to ensure the clarity and
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`accuracy of the reporter’s transcript, and to assist Judge Moore and Judge
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`Dougal, who will join the hearing remotely. Judge Moore and Judge Dougal
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`will be unable to view images projected in the hearing room. Similarly, to
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`ensure presenters may be heard by Judge Moore and Judge Dougal, the
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`parties are reminded to speak only when standing at the hearing room
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`podium and toward the attached microphone.
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`Pre-Hearing Conference
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`Per the recent update to the Office Patent Trial Practice Guide, either
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`party may request a pre-hearing conference. Office Patent Trial Practice
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`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
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`IPR2018-00522
`Patent 7,524,087 B1
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`the following link to the USPTO website: https://go.usa.gov/xU7GP).
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`Requests for a pre-hearing conference must be made by March 22, 2019. To
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`request such a conference, an email should be sent to Trials@uspto.gov
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`including several dates and times of availability for one or both parties, as
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`appropriate, that are generally no later than three business days prior to the
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`oral hearing. Please refer to the Guide for more information on the pre-
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`hearing conference.
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`If the parties are unable to agree on the issues to be addressed at the
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`pre-hearing conference, the joint request shall specify which issues are
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`disputed and provide a brief statement (not to exceed one sentence) of the
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`opposing party’s objection.
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`The panel may, at its discretion, indicate certain issues during the pre-
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`hearing conference that it wishes the parties to emphasize at the oral hearing.
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`Although the parties and the panel may discuss issues for the oral hearing at
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`the pre-hearing conference, the issues discussed at the pre-hearing
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`conference do not limit the scope of the oral hearing. Instead, the parties
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`remain free to address at the oral hearing any issue properly raised during
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`the trial, and the panel may ask questions on issues other than those
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`identified at the pre-hearing conference. The parties may also discuss
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`objections to demonstrative exhibits at the pre-hearing conference, but the
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`panel may reserve ruling on such objections until a later time.
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`Attendance of Counsel
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`The Board expects lead counsel for each party to be present in person
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`at the oral hearing. Any counsel of record, however, may present the party’s
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`argument. If either party anticipates that its lead counsel will not be
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`attending the oral argument, the parties should initiate a joint telephone
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`IPR2018-00522
`Patent 7,524,087 B1
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`conference with the Board no later than two business days prior to the oral
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`hearing to discuss the matter.
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`Equipment Requests
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`The parties may request the use of audio-visual equipment during the
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`oral hearing. Such requests should be directed to Trials@uspto.gov at least
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`five business days in advance of the hearing date. If the request is not
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`received timely, the equipment may not be available on the day of the
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`hearing.
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`Accordingly, it is
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`ORDERED that the oral argument for IPR2018-00522 shall take
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`place, starting at 1:00 PM Eastern Time on Thursday, April 4, 2019, in
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`Hearing Room D on the ninth floor of Madison Building East, 600 Dulany
`
`Street, Alexandria, Virginia.
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`6
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`IPR2018-00522
`Patent 7,524,087 B1
`
`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
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`7
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