IPR2018-01091 Paper 44
`Patent 8,308,395 B2 August 9, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01091
`Patent 8,308,395 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
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`
`Patent 8,308,395 B2 August 9, 2019
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CATERPILLAR INC.,
`Petitioner,
`
`v.
`
`WIRTGEN AMERICA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01091
`Patent 8,308,395 B2
`____________
`
`
`
`Before KEVIN W. CHERRY, JAMES J. MAYBERRY, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
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`
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`IPR2018-01091
`Patent 8,308,395 B2
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`The parties requested oral argument pursuant to 37 C.F.R. § 42.70 in
`the above-captioned proceedings. See Papers 39, 40. The parties’ requests
`are granted.
`Oral argument for the proceeding will commence at 1:00 PM Eastern
`Time on August 22, 2019, on the ninth floor of Madison Building East, 600
`Dulany Street, Alexandria, Virginia 22314. The hearing will be open to the
`public for in-person attendance, and in-person attendance will be
`accommodated on a first-come, first-served basis. The Board will provide a
`court reporter for the hearing, and the reporter’s transcript will constitute the
`official record of the hearing.
`Each party will have forty-five (45) minutes of total argument time.
`The parties may use their argument time to present their arguments as they
`see fit. If the panel requires a lengthy examination of a party’s argument,
`the panel may extend argument time. If the panel extends argument time for
`one party, the panel will extend argument time for the other party by an
`equal amount.
`Petitioner bears the ultimate burden of proof that the claims at issue
`are unpatentable. Therefore, at the hearing, Petitioner will proceed first to
`present its arguments with regard to the challenged claims and grounds on
`which basis we instituted trial in this proceeding. Petitioner may reserve
`rebuttal time. Thereafter, Patent Owner will argue its opposition to
`Petitioner’s case and present the issues for which it bears the ultimate
`burden. Patent Owner may also reserve rebuttal time. To the extent
`Petitioner reserves rebuttal time, Petitioner then may make use of its rebuttal
`time responding to Patent Owner. To the extent Patent Owner reserves
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`IPR2018-01091
`Patent 8,308,395 B2
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`rebuttal time, Patent Owner then may make use of its rebuttal time
`responding to Petitioner.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days before the hearing. The parties also shall file a
`copy of the demonstratives as an exhibit at least three business days prior to
`the hearing. Each party shall provide a hard copy of its demonstratives to
`the court reporter at 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
`shall meet and confer to discuss any objections to demonstrative exhibits at
`least three business days before the hearing. If any issues regarding
`demonstratives remain unresolved after the parties meet and confer, the
`parties shall file jointly a one-page list of objections to the demonstrative
`exhibits at least two business days before the hearing. 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 schedule a conference
`call if necessary. Otherwise, rulings on the objections will be reserved until
`the hearing or after the hearing. Any objection to demonstrative exhibits not
`presented timely will be considered waived.
`The parties are reminded that demonstrative exhibits are visual aids to
`oral argument and not evidence, and should be clearly marked as such. For
`example, each slide may be marked with the words “DEMONSTRATIVE
`EXHIBIT – NOT EVIDENCE” in the footer. Demonstrative exhibits may
`not be used to advance arguments or introduce evidence not previously
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`IPR2018-01091
`Patent 8,308,395 B2
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`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.
`Requests for a pre-hearing conference must be made by August 14,
`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 prehearing conference.
`At least one member of the panel hearing the case may attend the
`hearing remotely, by video and audio link. The parties are reminded that,
`during the hearing, the presenter must identify clearly and specifically each
`demonstrative exhibit references (e.g., by slide or screen number) to ensure
`the clarity and accuracy of the reporter’s transcript, and to ensure that the
`remote judge(s) can follow the argument even if the video connection is
`disrupted. The parties are requested to speak directly into the microphone,
`including during initial introduction of counsel.
`The Board expects lead counsel for each party to be present in person
`at the hearing. Lead or backup counsel, however, may present the party’s
`argument. If either party anticipates that its lead counsel will not be
`attending the hearing, that party should initiate a joint telephone conference
`with the other party and the panel no later than three business days prior to
`the hearing to discuss the matter.
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`IPR2018-01091
`Patent 8,308,395 B2
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`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
`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 seven 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.
`Requests for audio-visual equipment are to be made five business days
`in advance of the hearing date. A party may also 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. The request is to be sent to Trials@uspto.gov. If the request is not
`received timely, the equipment may not be available on the day of the
`hearing.
`It is
`ORDERED that oral argument in the above-captioned proceedings
`will commence at 1:00 PM Eastern Time on August 22, 2019, in Alexandria,
`Virginia.
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`IPR2018-01091
`Patent 8,308,395 B2
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`For PETITIONER:
`Joshua L. Goldberg
`Christopher P. Isaac
`Abhay A. Wawa
`David K. Mroz
`Finnegan, Henderson, Firebox, Garrett, & Dunner, LLP
`joshua.goldberg@finnegan.com
`chris.isaac@finnegan.com
`abhay.watwe@finnegan.com
`david.mroz@finnegan.com
`
`
`For PATENT OWNER:
`Richard D. Coller III
`Gary L. Montle
`Jason A. Fitzsimmons
`Trevor M. O’Neill
`rcoller-PTAB@sternekessler.com
`glm@iplawgroup.com
`jfitzsimmons-PTAB@sternekessler.com
`toneill-PTAB@ sternekessler.com
`ptab@sternekessler.com
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