Trials@uspto.gov Paper No. 22
`571-272-7822
`
`Entered: July 18, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`KEYNETIK, INC.,
`Patent Owner.
`
`
`
`
`
`Case IPR2018-00985
`Patent 7,966,146 B2
`
`
`
`
`Before LYNNE E. PETTIGREW, IRVIN E. BRANCH, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`571-272-7822
`
`Entered: July 18, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`KEYNETIK, INC.,
`Patent Owner.
`
`
`
`
`
`Case IPR2018-00985
`Patent 7,966,146 B2
`
`
`
`
`Before LYNNE E. PETTIGREW, IRVIN E. BRANCH, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`WHITE, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`IPR2018-00985
`Patent 7,966,146 B2
`
`
`Date and Time of Hearing
`The Scheduling Order (Paper 8) for this proceeding provided that an
`oral hearing would be conducted on August 8, 2017, if a hearing is requested
`by the parties and granted by the Board. Petitioner and Patent Owner have
`both requested an oral hearing pursuant to 37 C.F.R. § 42.70. See Papers 20,
`21. Petitioner requests 45 minutes per side. Paper 21. Patent Owner did not
`request a specific amount of time. Paper 20. The Parties’ requests are
`GRANTED according to the terms set forth in this Order.
`Please note the time and location of the hearing. The oral hearing
`will commence at 10 AM Eastern Time on Tuesday, August 6, 2019, in
`Hearing Room A on the ninth floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia. The Board will provide a court
`reporter for the hearing and the reporter’s transcript will constitute the
`official record of the hearing.
`Allotted Argument Time
`Each party will have forty-five (45) minutes of total argument time to
`present its arguments in the above-captioned proceeding. Petitioner bears
`the ultimate burden of proof that the claims at issue in these reviews are
`unpatentable. Therefore, at oral hearing Petitioner will proceed first to
`present its case on Petitioner’s challenges to patentability. Petitioner may
`reserve some (but not more than half) of its allotted argument time for
`rebuttal to respond to Patent Owner’s arguments.
`After Petitioner’s initial presentation, Patent Owner will argue its
`opposition to Petitioner’s case. Thereafter, Petitioner may use any reserved
`time to respond to Patent Owner’s presentation. Patent Owner may reserve
`some (but no more than half) of its allotted argument time for use in sur-
`
`
`
`2
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`IPR2018-00985
`Patent 7,966,146 B2
`
`rebuttal if it so chooses, and may use its reserved time for sur-rebuttal to
`respond to Petitioner’s arguments.1 The parties are reminded that arguments
`made during rebuttal and sur-rebuttal periods must be responsive to
`arguments the opposing party made in its immediately preceding
`presentation. The parties also are reminded that during the hearing, the
`parties “may only present arguments relied upon in the papers previously
`submitted.” Trial Practice Guide August 2018 Update, p. 23.
`Patent Owner did not file a Motion to Amend Claims. Thus, the oral
`hearing will not pertain to claim amendments. Also, new arguments not
`previously presented in the parties’ substantive papers in this proceeding
`shall not be raised at oral hearing.
`
`Confidentiality
`There is a strong public policy interest in making all information
`presented in these proceedings public, as the review determines the
`patentability of claims in an issued patent and thus, affects the rights of the
`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
`and 35 U.S.C. § 326(a)(1) which provide that the file of any inter partes
`review or post grant review be made available to the public, except that any
`petition or document filed with the intent that it be sealed shall, if
`accompanied by a motion to seal, be treated as sealed pending the outcome
`of the ruling on the motion.
`
`
`1 See Trial Practice Guide August 2018 Update, p. 20, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf (providing that the “Board may also permit patent owners the
`opportunity to present a brief sur-rebuttal if requested”).
`3
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`IPR2018-00985
`Patent 7,966,146 B2
`
`
`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
`that available seating is limited. In the event that either party believes it is
`necessary to discuss confidential information during the hearing, that party
`should request a pre-hearing conference to discuss the matter.
`Demonstrative Exhibits
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served on
`opposing counsel at least seven (7) business days before the hearing.
`37 C.F.R. § 42.70(b). The parties also shall file a courtesy copy of the
`demonstratives as an exhibit to the Board at least three (3) business days
`prior to the hearing (or five business (5) days prior to a pre-hearing
`conference if one is scheduled) by emailing them to Trials@uspto.gov. In
`addition, the parties shall file any demonstrative exhibits in these
`proceedings within two (2) business days of the hearing. Demonstrative
`exhibits are visual aids to oral argument and 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. 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. Demonstrative exhibits may not 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”). Instead,
`demonstrative exhibits should cite to the briefs and evidence in the record.
`
`
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`IPR2018-00985
`Patent 7,966,146 B2
`
`
`The parties shall meet and confer to discuss any objections to
`demonstrative exhibits. If any issues regarding demonstratives remain
`unresolved after the parties meet and confer, the parties shall file jointly (by
`email to Trials@uspto.gov) a one-page list of objections to the
`demonstrative exhibits at least three (3) business days before the hearing if
`no pre-hearing conference is requested, or three (3) business days before a
`pre-hearing conference if one is scheduled. For each objection, the list must
`identify with particularity the demonstratives subject to the objection and
`include a short, one-sentence statement explaining the objection. The panel
`will consider the objections and may schedule a conference call if deemed
`necessary. Otherwise, the panel will reserve ruling on the objections. Any
`objection to demonstrative exhibits not presented timely will be considered
`waived.
`During 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 Judges White and Branch, who will join
`the hearing remotely. Judges White and Branch will be unable to view
`images projected in the hearing room. Similarly, to ensure presenters may
`be heard by Judges White and Branch, the parties are reminded to speak
`only when standing at the hearing room podium and toward the attached
`microphone. The parties should note that if a demonstrative is not filed or
`otherwise made fully available or visible to the judges presiding over the
`hearing remotely, that demonstrative will not be considered. If the parties
`have questions as to whether demonstrative exhibits would be sufficiently
`
`
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`IPR2018-00985
`Patent 7,966,146 B2
`
`visible and available to all of the judges, the parties are invited to contact the
`Board at 571-272-9797.
`Equipment Requests
`Hearing rooms are equipped with projectors for PowerPoint
`presentations, and 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 (5) 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.
`A party should advise the Board as soon as possible before an oral
`argument of any special needs. Any special requests for audio-visual
`equipment should be directed to Trials@uspto.gov. Examples of such needs
`include additional space for a wheelchair, an easel for posters, or an
`overhead projector (“Elmo”). A party may indicate any special requests
`related to appearing at an in-person oral hearing, such as a request to
`accommodate physical needs that limit mobility or visual or hearing
`impairments, and indicate how the PTAB may accommodate the special
`request. Parties should not make assumptions about the equipment the
`Board may have on hand. Any special requests must be presented in a
`separate communication not less than five business (5) days before the
`hearing. If the request is not received timely, the equipment may not be
`available on the day of the hearing.
`A party may request remote video attendance for one or more of its
`other attendees to view the hearing from any USPTO location. The
`available locations include the Texas Regional Office in Dallas, Texas; the
`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
`
`
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`IPR2018-00985
`Patent 7,966,146 B2
`
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`in San Jose, CA. To request remote video viewing, a party must send an
`email message to Trials@uspto.gov ten (10) business days prior to the
`hearing, indicating the requested location and the number planning to view
`the hearing from the remote location. The Board will notify the parties if the
`request for video viewing is granted. Note that it may not be possible to
`grant the request due to the availability of resources.
`Attendance of Counsel
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, lead or backup counsel 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 (2) business days prior to the
`oral hearing to discuss the matter.
`No live testimony from any witness will be taken at the oral argument.
`Request for Pre-hearing Conference
`No later than DUE DATE 6 (July 22, 2019), either party may request
`a pre-hearing conference. Prior to making a request, the parties should
`confer and send a joint request to the Board with an agreed upon set of
`limited issues for discussion in the pre-hearing conference. To request a pre-
`hearing conference, a joint email request should be sent to Trials@uspto.gov
`including several dates and times of availability for both parties. Such a
`request shall include the following:
`• a bullet list of items the parties would like to discuss with the
`panel, which may include:
`
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`IPR2018-00985
`Patent 7,966,146 B2
`
`
`o a brief preview (but not argument) as to issues the parties
`plan to address at the oral hearing
`o issues for which the parties would like the panel’s
`guidance on whether to address at the oral hearing.
`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.
`The panel may, at its discretion, indicate certain issues during the pre-
`hearing conference that it wishes 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.
`The prehearing call is not required, and absent a request, no call will
`be held.
`
`Accordingly, it is
`ORDERED that the oral argument for IPR2018-00985 shall take place
`on Tuesday, August 6, 2019, in Hearing Room A on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia, at 10 AM
`Eastern Time.
`
`
`
`8
`
`
`
`IPR2018-00985
`Patent 7,966,146 B2
`
`For PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Chetan Bansal
`Arvind Jairam
`Phillip Citroen
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`chetanbansal@paulhastings.com
`arvindjairam@paulhastings.com
`phillipcitroen@paulhastings.com
`
`
`For PATENT OWNER:
`
`Edward Behm
`Mark W. Halderman
`ARMSTRONG TEASDALE LLP
`ebehm@armstrongteasdale.com
`mwhalderman@armstrongteasdale.com
`
`
`
`
`
`9
`
`
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