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` Paper 34
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` Entered: November 26, 2019
`
`Trials@uspto.gov
`571-272-7822
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMAZON.COM, INC.,
`Petitioner,
`
`v.
`
`CUSTOMPLAY, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01496 (Patent 8,494,346 B2)
`Case IPR2018-01497 (Patent 9,124,950 B2)
`Case IPR2018-01498 (Patent 9,380,282 B2)1
`____________
`
`
`Before J. JOHN LEE, JESSICA C. KAISER, and JOHN R. KENNY,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 We exercise our discretion to issue one order for all three of these cases.
`The parties, however, are not authorized to use this format.
`
`
`
`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`
`The Parties requested oral argument pursuant to 37 C.F.R. § 42.70 in
`each of the above-captioned cases. See, e.g., Papers 23, 25.2 Petitioner
`proposes that each party be allocated 30 minutes of argument time per case
`to present its arguments. Paper 23, 1. Patent Owner proposes that each
`party be allocated one hour of argument time per case to present its
`arguments. Paper 25, 2 & n.1.
`The request is GRANTED according to the terms set forth in this
`Order. Oral argument for the proceeding will commence at 1:00 PM
`Eastern Time on Wednesday, December 18, 2019, on the ninth floor of
`USPTO Headquarters, Madison Building East, 600 Dulany Street,
`Alexandria, Virginia 22314. We allocate each party two hours of total
`argument time to present its arguments for all three cases.
`
`Pre-Hearing Conference
`Either party may request a pre-hearing conference. Office Patent
`Trial Practice Guide, August 2018 Update, p. 19, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf. Requests for a pre-hearing conference must be made by
`December 4, 2019. Prior to making a request, the parties should meet and
`confer and send a joint request to the Board with an agreed upon set of
`limited issues for discussion in the pre-hearing conference. Issues
`appropriate for discussion in a pre-hearing conference may include
`objections to demonstratives, pending motions (particularly motions to
`
`
`2 All citations are to IPR2018-01496, unless otherwise specified.
`
`2
`
`
`
`
`
`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`exclude), allocation of argument time, and any other issue that may affect
`the ability of a party to present its arguments at the hearing. 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. 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 prehearing conference is not required, and absent a request, no
`call will be held.
`
`Order of Argument and Attending/Viewing Hearing
`The parties shall meet and confer prior to the hearing and present a
`joint proposal to the Board via email to Trials@uspto.gov as to how each
`party’s time will be allocated to the cases during the hearing, and the order
`in which the cases will be addressed by the parties. The proposal should be
`
`
`
`
`
`3
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`
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`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`sent to the Board prior to any pre-hearing conference, and in any event no
`later than three (3) business days prior to the hearing.
`In each case, Petitioner bears the ultimate burden of proof that the
`challenged claims are unpatentable. Therefore, at the hearing, Petitioner will
`proceed first to present its arguments with regard to the challenged claims
`and grounds on which we instituted trial in this proceeding, as well as any
`motions for which it bears the ultimate burden of proof. Petitioner may
`reserve some 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 and present any issues for which it bears the
`ultimate burden, including argument on any of Patent Owner’s pending
`motions. Patent Owner may reserve some of its allotted argument time for
`sur-rebuttal. Thereafter, Petitioner may use any reserved time to respond to
`Patent Owner’s presentation. Finally, Patent Owner may use any reserved
`time to respond to Petitioner’s rebuttal arguments. 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.” Office Trial Practice Guide, August 2018 Update,
`p. 23. New arguments not previously raised will be disregarded.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. Lead or backup counsel, however, may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`
`4
`
`
`
`
`
`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`attending the hearing, that party should initiate a joint telephone conference
`with the other party and the panel no later than seven (7) business days
`prior to the hearing to discuss the matter.
`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. Please be advised that available seating is limited. 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 at least 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 remote video viewing is granted. Note that it may not be
`possible to grant the request due to the availability of resources.
`
`Demonstratives
`Under 37 C.F.R. § 42.70(b), each party’s demonstratives must be
`served on opposing counsel at least seven (7) business days before the
`hearing. The parties also shall file a courtesy copy of the demonstratives
`with the Board at least three (3) business days prior to the hearing as
`separate papers (not as exhibits). Each party shall provide a hard copy of its
`demonstratives to the court reporter at the hearing. The parties are reminded
`
`5
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`
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`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`that demonstratives are visual aids to oral argument, 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,
`Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the appropriate
`content of demonstratives. Demonstratives 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”). Each
`demonstrative must include a citation to the briefs and/or evidence in the
`record indicating the source(s) of its content.
`The parties shall meet and confer to discuss any objections to the
`demonstratives. If any issues regarding demonstratives remain unresolved
`after the parties meet and confer, the parties shall jointly submit (by email to
`Trials@uspto.gov) a one-page list of objections to the demonstratives at
`least three (3) business days before the hearing, if no pre-hearing
`conference was requested. 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, rulings on the objections will be reserved until the hearing or
`after the hearing. Any objection to the demonstratives not timely presented
`will be considered waived.
`
`
`
`
`
`6
`
`
`
`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`
`During the oral hearing, the presenter must identify clearly and
`specifically each demonstrative (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 any judge appearing remotely. A judge appearing
`remotely may be unable to view images projected in the hearing room but
`will have access to demonstratives filed with the Board. Similarly, to ensure
`presenters may be heard by all judges, the parties are reminded to speak into
`the provided microphone(s). The parties should note that if a demonstrative
`is not filed or otherwise made fully available or visible to a judge appearing
`remotely, that demonstrative will not be considered. If the parties have
`questions as to whether demonstratives would be sufficiently visible and
`available to all of the judges, the parties are invited to contact the Board at
`(571) 272-9797.
`
`Official Transcript and Audio-Visual Equipment
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`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 seven (7) business days in advance of the hearing
`date. If the request is not timely received, 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
`
`7
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`
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`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`equipment or other accommodations should be directed to Trials@uspto.gov
`at least seven (7) business days before the hearing. If the request is not
`timely received, the equipment or accommodation may not be available on
`the day of the hearing. Examples of such needs include additional space for
`a wheelchair or an easel for posters. 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.
`
`Live Testimony
`No live testimony from any witness will be permitted at the hearing
`without prior authorization from the Board. A party requesting authorization
`to present live testimony at the hearing shall initiate a joint telephone
`conference with the other party and the panel as soon as possible, and in any
`event no later than ten (10) business days prior to the hearing to discuss the
`matter. The parties are directed to the Board’s decision in K-40 Electronics,
`LLC v. Escort, Inc., IPR2013-00203, Paper 34 (PTAB May 21, 2014)
`(precedential) for guidance as to the limited circumstances in which live
`testimony may be authorized.
`
`Confidential Information
`There is a strong public policy interest in making all information
`presented in above-captioned proceeding public, as the review determines
`
`8
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`
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`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`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. If either party expects that any
`information subject to a motion to seal will be raised at the hearing, that
`party shall initiate a joint telephone conference with the other party and the
`panel no later than seven (7) business days prior to the hearing to discuss
`the matter.
`
`
`ORDER
`
`
`
`It is
`ORDERED that oral argument will commence at 1:00 PM Eastern
`Time on Wednesday, December 18, 2019, at USPTO Headquarters in
`Alexandria, Virginia; and
`ORDERED that the measures set forth above shall govern the oral
`hearing in the above-captioned proceeding.
`
`
`
`
`
`9
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`
`
`IPR2018-01496 (Patent 8,494,346 B2)
`IPR2018-01497 (Patent 9,124,950 B2)
`IPR2018-01498 (Patent 9,380,282 B2)
`
`
`PETITIONER:
`Colin B. Heideman
`Joseph R. Re
`Christie R.W. Matthaei
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2cbh@knobbe.com
`2jrr@knobbe.com
`2crw@knobbe.com
`
`PATENT OWNER:
`Bryan E. Wilson
`Adam C. Underwood
`CAREY RODRIGUEZ MILIAN GONYA, LLP
`bwilson@careyrodriguez.com
`aunderwood@careyrodriguez.com
`
`
`
`
`
`
`10
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`
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