Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 28
`January 30, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`v.
`NOMADIX, INC.,
`Patent Owner.
`_______________
`
`IPR2019-00211 (Patent 7,953,857 B2)
`IPR2019-00253 (Patent 8,626,922 B2)1
`_______________
`
`
`Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding and Trial Hearing
`35 U.S.C. §§ 42.5, 42.70
`
`
`
`
`1 This Order is being entered in each of the above-identified proceedings.
`The proceedings have not been consolidated and the parties are not
`authorized to use a consolidated caption.
`
`
`571-272-7822
`
`
`
`
`Paper No. 28
`January 30, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GUEST TEK INTERACTIVE ENTERTAINMENT LTD.,
`Petitioner,
`v.
`NOMADIX, INC.,
`Patent Owner.
`_______________
`
`IPR2019-00211 (Patent 7,953,857 B2)
`IPR2019-00253 (Patent 8,626,922 B2)1
`_______________
`
`
`Before SALLY C. MEDLEY, DANIEL J. GALLIGAN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`MELVIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding and Trial Hearing
`35 U.S.C. §§ 42.5, 42.70
`
`
`
`
`1 This Order is being entered in each of the above-identified proceedings.
`The proceedings have not been consolidated and the parties are not
`authorized to use a consolidated caption.
`
`
`
`IPR2019-00211, Patent 7,953,857 B2
`IPR2019-00253, Patent 8,626,922 B2
`
`
`Petitioner and Patent Owner filed requests for oral argument in these
`cases pursuant to 37 C.F.R. § 42.70. Papers 25, 27.2 Subsequently, on
`January 29, 2020, a conference call was held involving counsel for the
`respective parties and Judges Medley, Galligan, and Melvin. The purpose of
`the conference call was to discuss Patent Owner’s opposed request to extend
`the remaining DUE DATES.
`Patent Owner requests an extension of time because of a recent ruling
`by the United States District Court for the Central District of California
`granting Patent Owner’s motion for summary judgment. The court
`determined that Petitioner’s filing of the petitions in these proceedings was a
`violation of a license agreement between the parties. Ex. 3002, 7. According
`to Patent Owner, a judgment will soon follow and injunctive relief is
`expected. Patent Owner argues that continuing to the scheduled February 25,
`2020, oral argument would be inefficient and costly. Petitioner argues that it
`is speculative that injunctive relief will be granted. Petitioner also argues
`that it plans to appeal the district court’s decision to the Federal Circuit and
`that it would be prejudiced by any stay or extension of time.
`A request for an extension of time must be supported by a showing of
`good cause. 37 C.F.R. § 42.5(c)(2). Patent Owner fails to show good cause
`why the remaining DUE DATES should be extended. The reasons Patent
`Owner provides, such that “a judgment will soon follow” and “injunctive
`relief is expected” are speculative. Moreover, even if such events
`materialize, Petitioner represents that it will appeal such decisions to the
`Federal Circuit. Patent Owner fails to persuade us why these proceedings,
`
`2 Papers cited appear in the record for IPR2019-00211. Corresponding
`papers appear in the record for IPR2019-00253.
`
`
`
`2
`
`
`
`IPR2019-00211, Patent 7,953,857 B2
`IPR2019-00253, Patent 8,626,922 B2
`
`which are near the end, cannot proceed in parallel with the district court
`proceeding, followed by any appeal to the Federal Circuit. Accordingly, we
`deny Patent Owner’s request to extend the remaining DUE DATES.
`In its request for oral argument, Patent Owner requests sixty minutes
`of total argument time between the two proceedings. Paper 27, 2. Petitioner
`does not request a specific time but also proposes a combined hearing for the
`two proceedings. Paper 25, 2. Having considered the parties’ submissions,
`the parties’ requests for oral argument are granted.
`The oral argument will commence at 1:00 pm Eastern Time on
`Tuesday, February 25, 2020, at the USPTO Headquarters on the ninth floor
`of Madison Building East, 600 Dulany Street, Alexandria, Virginia. The
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. The parties are directed to
`contact the Board at least ten days in advance of the hearing if there are any
`concerns about disclosing confidential information. The Board will provide
`a court reporter for the hearing, and the reporter’s transcript will constitute
`the official record of the hearing. To facilitate planning, each party must
`send an email message to PTABHearings@uspto.gov five days prior to the
`hearing if the number planning to attend the hearing in-person for its side
`(attorneys and others) exceeds five people.
`Each party will have sixty minutes of total argument time. Petitioner
`will open the hearing by presenting its cases regarding the challenged
`claims. Patent Owner will then respond to Petitioner’s presentation.
`Petitioner may reserve rebuttal time of no more than half its total argument
`time to reply to Patent Owner’s arguments. Patent Owner may reserve sur-
`rebuttal time of no more than half its total argument time to respond to
`
`
`
`3
`
`
`
`IPR2019-00211, Patent 7,953,857 B2
`IPR2019-00253, Patent 8,626,922 B2
`
`Petitioner’s rebuttal. See Trial Practice Guide Update 20 (August 2018),
`https://go.usa.gov/xU7GP. Consult the November 2019 Consolidated Trial
`Practice Guide (available at https://go.usa.gov/xdj8z) for information on
`requests for live testimony.
`A pre-hearing conference call will be held at either party’s request.
`The request must be made no later than February 14, 2020. Prior to making
`such a request, the parties 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
`business days prior to the oral hearing.
`At least one member of the panel will be attending the hearing
`electronically from a remote location and will not be able to view the
`projection screen in the hearing room. Thus, if a demonstrative exhibit is not
`made available in advance or visible to the judge(s) presiding over the
`hearing remotely, that demonstrative exhibit will not be allowed. 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 filed, should be provided to the court reporter at the
`hearing. Also, the parties are reminded that, at the oral argument, they “may
`rely upon evidence that has been previously submitted in the proceeding and
`may only present arguments relied upon in the papers previously submitted.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`
`
`
`4
`
`
`
`IPR2019-00211, Patent 7,953,857 B2
`IPR2019-00253, Patent 8,626,922 B2
`
`2012). “No new evidence or arguments may be presented at the oral
`argument.” Id.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be
`served seven business days before the hearing. Demonstrative exhibits used
`at the final 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 the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if such objections
`cannot be resolved, the parties may raise any dispute over the propriety of
`each party’s demonstrative exhibits during the pre-hearing conference call, if
`requested as set forth above. Any objection to demonstrative exhibits that is
`not presented timely will be considered waived. The Board asks the parties
`to confine demonstrative exhibit objections to those identifying egregious
`violations that are prejudicial to the administration of justice. The parties
`may refer to St. Jude Medical, Cardiology Div., Inc. v. The Board of Regents
`of the University of Michigan, IPR2013-00041, Paper 65 (PTAB Jan. 27,
`2014), regarding the appropriate content of demonstrative exhibits. The
`parties are directed to file their demonstrative exhibits, marked as noted
`above, in the record at least three business days prior to the hearing.
`The Board generally 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 anticipates that its lead counsel will not be attending the oral argument
`in person, the parties should initiate a joint telephone conference with the
`
`
`
`5
`
`
`
`IPR2019-00211, Patent 7,953,857 B2
`IPR2019-00253, Patent 8,626,922 B2
`
`Board no later than two business days prior to the oral hearing to discuss the
`matter.
`A party may request that counsel be permitted to present arguments
`remotely from an alternative USPTO location. The available alternative
`locations are 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, California. To request that counsel be permitted to present
`arguments from a remote location, a party should send an email message to
`PTABHearings@uspto.gov at least ten business days or as soon as practical
`prior to the hearing, and provide a short statement of reasons for the request.
`The Board will notify the parties if the request is approved. Approval of the
`request does not mean that a panel member will be present at the remote
`location.
`A party may also request remote video attendance for one or more of
`its other attendees to view the hearing from any USPTO location. To request
`remote video viewing, a party must send an email message to
`PTABHearings@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
`PTABHearings@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
`
`
`
`6
`
`
`
`IPR2019-00211, Patent 7,953,857 B2
`IPR2019-00253, Patent 8,626,922 B2
`
`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 days before the hearing.
`In light of the foregoing, it is:
`ORDERED that the oral hearing, conducted pursuant to the
`procedures outlined above, shall commence at 1:00 pm Eastern Time on
`February 25, 2020.
`
`
`
`PETITIONER:
`
`Jeffrey W. Lesovitz
`Steven J. Rocci
`Daniel J. Goettle
`BAKER & HOSTETLER LLP
`jlesovitz@bakerlaw.com
`srocci@bakerlaw.com
`dgoettle@bakerlaw.com
`
`PATENT OWNER:
`
`Douglas G. Muehlhauser
`William H. Shreve
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2dgm@knobbe.com
`2whs@knobbe.com
`boxnomadix@knobbe.com
`
`
`
`
`
`7
`
`
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