Trials@uspto.gov
`571-272-7822
`
`
`
` Paper No. 28
`
` Entered: September 20, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`____________
`
`
`Before MARC S. HOFF, BRYAN MOORE, AND MONICA
`ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Oral Hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to
`issue one Order to be docketed in each case. The parties may not use this
`style caption for any subsequent papers without prior Board authorization.
`
`
`571-272-7822
`
`
`
` Paper No. 28
`
` Entered: September 20, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01133, Patent 9,538,152 B2,
` Case IPR2018-01140, Patent 9,402,032 B2
` Case IPR2018-01146, Patent 9,568,712 B21
`____________
`
`
`Before MARC S. HOFF, BRYAN MOORE, AND MONICA
`ULLAGADDI, Administrative Patent Judges.
`
`ULLAGADDI, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Oral Hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to
`issue one Order to be docketed in each case. The parties may not use this
`style caption for any subsequent papers without prior Board authorization.
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2
`Case IPR2018-01140, Patent 9,402,032 B2
`Case IPR2018-01146, Patent 9,568,712 B2
`
`
`On December 4, 2018, we instituted inter partes review in IPR2018-
`
`01133 and IPR2018-01140 and contemporaneously issued Scheduling
`
`Orders setting the date for oral arguments in these proceedings to September
`
`3, 2019. IPR2018-0133, Papers 8, 9; IPR2018-01140, Papers 9, 10. On
`
`December 7, 2018, we instituted inter partes review in IPR2018-01146 and
`
`issued a Scheduling Order setting the date for oral argument to September 3,
`
`2019 as well. IPR2018-01146, Papers 8, 9.
`
`On August 23, 2019, we reset the date for oral arguments to October
`
`8, 2019 via email communication to the parties. Patent Owner and
`
`Petitioner filed requests for oral argument pursuant to 37 C.F.R. § 42.70(a).
`
`IPR2018-01133, Papers 26, 27; IPR2018-01140, Papers 25, 26; IPR2018-
`
`01146, Paper 25.
`
`Petitioner requests that the hearings for IPR2018-01146 and IPR2018-
`
`01140 be consolidated. IPR2018-01146, Paper 25, 2. More particularly,
`
`Petitioner requests 45 minutes per side to present combined arguments for
`
`IPR2018-01146 and IPR2018-01140. Id. Petitioner further indicates that it
`
`[A]lso expects to argue IPR2018-01133 (involving the same
`parties as the present proceeding); however, as there are no
`apparent common
`issues with
`the present proceeding,
`consolidation of the three proceedings is not indicated.
`Petitioner’s Request for Oral Argument in IPR2018-01133 seeks
`45 minutes of additional time, separate from this request, to argue
`that case.
`
`Id.
`
`Patent Owner requests 45 minutes per side for IPR2018-01140 and 45
`
`minutes per side for IPR2018-01146. IPR2018-01140, Paper 26. Patent
`
`Owner expresses its belief that “consolidation is inadvisable, because the
`
`2
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2
`Case IPR2018-01140, Patent 9,402,032 B2
`Case IPR2018-01146, Patent 9,568,712 B2
`
`grounds for institution in IPR2018-01140 and IPR2018-01146 involve
`
`different prior art and substantially different arguments.” Id. Patent Owner
`
`also requests 45 minutes per side in IPR2018-01133. IPR2018-01133, Paper
`
`27.
`
`Petitioner’s and Patent Owner’s requests for oral hearing are granted
`
`and arguments will not be consolidated as to any of IPR2018-01133,
`
`IPR2018-01140, and IPR2018-01146. Oral argument will commence at
`
`9:30 AM Eastern Time, on October 8, 2019, and will be conducted at the
`
`USPTO Headquarters, Ninth Floor of Madison Building East, 600
`
`Dulany Street, Alexandria, Virginia, 22314. Each side will receive 2
`
`hours and 15 minutes of presentation time, including any rebuttal time,
`
`with 45 minutes allocated to presenting arguments in IPR2018-01140,
`
`45 minutes allocated to presenting arguments in IPR2018-01146, and 45
`
`minutes allocated to presenting arguments in IPR2018-01133.
`
`The hearing will be open to the public for in-person attendance, which
`
`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.
`
`Petitioner will open the hearing by presenting its case regarding the
`
`challenged claims. Patent Owner then will respond to Petitioner’s
`
`presentation. Petitioner may reserve rebuttal time (of no more than half their
`
`total presentation time) to reply to Patent Owner’s arguments. Patent Owner
`
`may reserve sur-rebuttal time (of no more than half its total presentation
`
`time) to respond to Petitioner’s rebuttal. See Trial Practice Guide Update,
`
`20 (Aug. 2018), available at https://go.usa.gov/xU7GP.
`
`3
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2
`Case IPR2018-01140, Patent 9,402,032 B2
`Case IPR2018-01146, Patent 9,568,712 B2
`
`
`Each 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 for
`
`the benefit of the judge(s) presiding over the hearing remotely. A hard copy
`
`of the demonstratives, if used, should be provided to the court reporter at the
`
`hearing. Also, Petitioner and Patent Owner are reminded that, at the oral
`
`argument, they “may rely upon evidence that has been previously submitted
`
`in the proceeding and may only present argument relied upon in the papers
`
`previously submitted.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,768 (Aug. 14, 2012). “No new evidence or arguments may be
`
`presented at the oral argument.” Id. Petitioner and Patent Owner are
`
`directed to refrain from disclosing any confidential information during the
`
`hearing or including any confidential information in a demonstrative exhibit.
`
`A pre-hearing conference call will be held upon request. The request
`
`must be made no later than September 24, 2019. Prior to making such a
`
`request, Petitioner and Patent Owner shall meet and confer and, when
`
`possible, send a joint request to the Board with an agreed upon set of limited
`
`issues for discussion. A request for a pre-hearing conference may be made
`
`by email to Trials@uspto.gov, and shall include a list of issues to be
`
`discussed during the call and proposed times for the call, which should be no
`
`later than three (3) business days prior to the hearing. If either Petitioner or
`
`Patent Owner has any concerns about disclosing confidential information,
`
`they must contact the Board at least three (3) business days before the
`
`hearing to request a conference call to discuss the matter.
`
`4
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2
`Case IPR2018-01140, Patent 9,402,032 B2
`Case IPR2018-01146, Patent 9,568,712 B2
`
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served on
`
`the opposing party or parties seven (7) business days prior to the hearing.
`
`Demonstrative exhibits used at the hearing are aids to oral argument and not
`
`evidence, and should be clearly marked as such. For example, each slide of
`
`a demonstrative exhibit may be marked with the words
`
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. Trial
`
`Practice Guide Update, 21.
`
`The Board expects that Petitioner and Patent Owner will meet and
`
`confer in good faith to resolve any objections to demonstrative exhibits, but
`
`if such objections cannot be resolved, Petitioner and Patent Owner are
`
`directed to request a conference call with the Board no later than three (3)
`
`business days prior to the hearing to resolve any dispute over the propriety
`
`of demonstrative exhibits. Petitioner and Patent Owner are responsible for
`
`requesting such a conference sufficiently in advance of the hearing to
`
`accommodate this requirement. Any objection to demonstrative exhibits
`
`that is not presented timely will be considered waived. The Board asks
`
`Petitioner and Patent Owner to confine demonstrative exhibit objections to
`
`those identifying egregious violations that are prejudicial to the
`
`administration of justice. Petitioner and Patent Owner may refer to CBS
`
`Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033 (PTAB
`
`October 23, 2013) (Paper 118), and St. Jude Medical, Cardiology Div., Inc.
`
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`
`(PTAB Jan. 27, 2014) (Paper 65) regarding the appropriate content of
`
`demonstrative exhibits. Petitioner and Patent Owner are directed to file their
`
`5
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2
`Case IPR2018-01140, Patent 9,402,032 B2
`Case IPR2018-01146, Patent 9,568,712 B2
`
`demonstrative exhibits, marked as noted above, in the records at least three
`
`(3) business days prior to the hearing.
`
`The Board expects lead counsel for each side to be present in person
`
`at the oral hearing. Any counsel of record, however, may present argument
`
`as long as that counsel is present in person. If either side expects 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.
`
`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 ten 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.
`
`Any special requests for audio-visual equipment should be directed to
`
`Trials@uspto.gov. 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. Any special
`
`6
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2
`Case IPR2018-01140, Patent 9,402,032 B2
`Case IPR2018-01146, Patent 9,568,712 B2
`
`requests must be presented in a separate communication not less than five
`
`(5) days before the hearing.
`
`It is
`
`ORDERED that, subject to the procedures and requirements set forth
`
`above, the requests for oral argument are granted; and
`
`FURTHER ORDERED that oral argument, conducted in accordance
`
`with the procedures above, shall commence at 9:30 AM Eastern Time, on
`
`October 8, 2019.
`
`7
`
`
`
`Case IPR2018-01133, Patent 9,538,152 B2
`Case IPR2018-01140, Patent 9,402,032 B2
`Case IPR2018-01146, Patent 9,568,712 B2
`
`
`
`For PETITIONER:
`
`Michael Parsons
`michael.parsons.ipr@haynesboone.com
`
`Philip Woo
`philip.woo.ipr@haynesboone.com
`
`Jordan Maucotel
`jordan.maucotel@haynesboone.com
`
`David Obrien
`david.obrien.ipr@haynesboone.com
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`
`Hong Shi
`hong.shi.ipr@haynesboone.com
`
`
`
`
`For PATENT OWNER:
`
`Neil Rubin
`nrubin@raklaw.com
`
`C. Jay Chung
`jchung@raklaw.com
`
`Reza Mirzaie
`rmirzaie@raklaw.com
`
`
`
`
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
