Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 20
`Entered: August 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NICHIA CORPORATION, and CREE, INC.,
`Petitioners,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-011661
`Patent 7,256,486 B2
`_______________
`
`
`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`
`
`
`
`
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Oral Argument
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`1 Cree, Inc., who filed a Petition in IPR2019-00506, has been joined as a
`petitioner in this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 20
`Entered: August 6, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NICHIA CORPORATION, and CREE, INC.,
`Petitioners,
`
`v.
`
`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-011661
`Patent 7,256,486 B2
`_______________
`
`
`
`
`Before SCOTT C. MOORE, AMBER L. HAGY, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`
`
`
`
`
`
`HAGY, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Oral Argument
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`1 Cree, Inc., who filed a Petition in IPR2019-00506, has been joined as a
`petitioner in this proceeding.
`
`
`
`IPR2018-01166
`Patent 7,256,486 B2
`
`
`An oral argument for IPR2018-01166 was scheduled for
`
`August 28, 2019, if requested by at least one of the parties. Paper 10
`
`(“Scheduling Order”). Nichia Corporation (“Petitioner”) and Document
`
`Security Systems, Inc. (“Patent Owner”) each requested oral argument.
`
`Papers 18, 19. The requests are granted.
`
`An oral hearing will be held on August 28, 2019, beginning at
`
`1:00 PM Mountain Time at the Rocky Mountain Regional Office, Byron
`
`G. Rogers Federal Building, 1961 Stout St., 14th Floor, Denver,
`
`Colorado 80294. See Scheduling Order 4 (indicating oral argument will be
`
`held at the Denver, Colorado, USPTO Regional Office). 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 oral argument, and the reporter’s transcript will constitute the official
`
`record of the oral argument.
`
`Petitioner proposed allocating 25 minutes per side for the hearing,
`
`whereas Patent Owner proposed allocating 30 minutes per side. Papers 18,
`
`19. Each party will have a total of 30 minutes to present arguments.
`
`Petitioner may reserve rebuttal time to respond to Patent Owner’s
`
`arguments. Patent Owner may present a very brief sur-rebuttal.
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`
`least seven (7) business days before the oral argument. The parties shall file
`
`demonstrative exhibits at least three (3) business days before the oral
`
`argument. See 37 C.F.R. § 42.5(c)(1) (“The Board may set times by order.
`
`Times set by rule are default and may be modified by order.”). The parties
`
`2
`
`
`
`
`
`
`
`IPR2018-01166
`Patent 7,256,486 B2
`
`
`are expected to meet and confer in good faith to resolve any objections to
`
`demonstrative exhibits. If such objections cannot be resolved, however, the
`
`parties may file objections to demonstrative exhibits with the Board at least
`
`two business days before the oral argument. Any objection that is not timely
`
`presented will be considered waived. The objections should identify with
`
`particularity which demonstrative exhibits are subject to objection, and
`
`include a short (one sentence or less) statement of the reason for each
`
`objection. No argument or further explanation is permitted. The Board will
`
`consider the objections and schedule a conference if deemed necessary.
`
`Otherwise, the Board will reserve ruling on the objections until after the oral
`
`argument.
`
`The parties are directed to 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. See also CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`
`Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118) (noting the Board’s
`
`discretion to limit the parties’ demonstratives to pages in the record should
`
`there be no easy resolution to objections over demonstratives).
`
`The parties are reminded that the presenter must identify clearly and
`
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`
`referenced during the oral argument to ensure the clarity and accuracy of the
`
`reporter’s transcript. Demonstrative exhibits are not evidence, but merely a
`
`visual aid for use at the hearing.
`
`3
`
`
`
`
`
`
`
`IPR2018-01166
`Patent 7,256,486 B2
`
`
`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 as long as that counsel is present in person. If either party 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
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`available locations include the USPTO headquarters in Alexandria, Virginia;
`
`the Texas Regional Office in Dallas, Texas; 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
`
`requests must be presented in a separate communication not less than
`
`five (5) days before the hearing.
`
`4
`
`
`
`
`
`
`
`IPR2018-01166
`Patent 7,256,486 B2
`
`
`PETITIONER:
`
`Patrick Colsher
`Patrick.colsher@shearman.com
`
`Matt Berkowitz
`Matt.berkowitz@shearman.com
`
`Eric Lucas
`Eric.lucas@shearman.com
`
`
`PATENT OWNER:
`
`Wayne Helge
`whelge@dbjg.com
`
`James Wilson
`jwilson@dbjg.com
`
`Aldo Noto
`anoto@davidsonberquist.com
`
`
`5
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`
`
`
`
`
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