Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 40
`
`Filed: March 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON INC., CANON U.S.A., INC., and
`AXIS COMMUNICATIONS AB,
`Petitioner,
`
`v.
`
`AVIGILON FORTRESS CORPORATION,
`Patent Owner.
`
`Case IPR2019-00311
`Case IPR2019-003141
`Patent 7,923,923 B2 & C1
`____________
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Granting the Parties’ Requests for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 This Order applies to both listed cases. The parties may not use this style
`heading unless authorized.
`
`
`571.272.7822
`
`
` Paper No. 40
`
`Filed: March 4, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON INC., CANON U.S.A., INC., and
`AXIS COMMUNICATIONS AB,
`Petitioner,
`
`v.
`
`AVIGILON FORTRESS CORPORATION,
`Patent Owner.
`
`Case IPR2019-00311
`Case IPR2019-003141
`Patent 7,923,923 B2 & C1
`____________
`
`
`Before GEORGIANNA W. BRADEN, KIMBERLY McGRAW, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Granting the Parties’ Requests for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 This Order applies to both listed cases. The parties may not use this style
`heading unless authorized.
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`
`INTRODUCTION
`The parties filed a joint request for an oral hearing in each of the
`above captioned cases. Paper 39 (IPR2019-00311); Paper 39
`(IPR2019-00314).2 The parties request a total seventy-five (75) minutes of
`argument time for each side. Paper 39, 1. The requests for oral hearing are
`granted. The oral hearing will commence at 1:00 PM on Wednesday,
`April 8, 2020, at the USPTO Headquarters on the ninth floor of Madison
`Building East, 600 Dulany Street, Alexandria, Virginia.
`There is a substantial overlap of issues between the two cases.
`Therefore, although the cases are not consolidated, the cases will be argued
`together and a single transcript created.
`Each party will have the requested seventy-five (75) minutes of total
`argument time for the two cases. The parties are responsible for allocating
`their argument time between the two cases, including any argument on
`pending motions or procedural matters.
`Petitioner bears the burden of proof to show that the claims at issue
`are unpatentable. Therefore, Petitioner will proceed first with respect to the
`challenged claims and instituted grounds. Patent Owner will then have the
`opportunity to respond to Petitioner’s arguments. Next, Petitioner may use
`any time it has reserved for rebuttal to respond to Patent Owner’s arguments.
`Petitioner’s rebuttal may not be more than half the total allotted time.
`Thereafter, Patent Owner may use any reserved sur-rebuttal time to present a
`brief sur-rebuttal.
`The parties may only rely upon evidence that has been previously
`submitted in the above proceedings and may only present arguments that
`
`2 Citations are to IPR2019-00311 unless otherwise indicated.
`
`2
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`have been previously made in the submitted papers. No new evidence or
`arguments may be presented at the hearing. The parties have not requested
`to present live testimony during the hearing; thus, live testimony will not be
`permitted.
`
`Official Record
`
`The Board will provide a court reporter. A single transcript shall be
`created for both cases, and the reporter’s transcript shall constitute the
`official record of the oral argument.
`
`Pre-Hearing Conference Call
`
`Per the Consolidated Trial Practice Guide, either party may request a
`pre-hearing conference call. See Patent Trial and Appeal Board
`Consolidated Trial Practice Guide, 82 (Nov. 2019).3 Requests for a pre-
`hearing conference must be made by March 30, 2020. See Paper 19, 9
`(Scheduling Order, Due Date 6). To request such a conference, an email
`should be sent to Trials@uspto.gov. The email shall include several dates
`and times of availability for both parties that are generally no later than
`three (3) business days prior to the oral argument and shall include a list of
`issues to be discussed during the conference. The parties may refer to the
`Consolidated Trial Practice Guide for more information about pre-hearing
`conference calls.
`
`
`3 The Consolidated Trial Practice Guide is available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
`
`3
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`Demonstrative Exhibits
`
`At least five (5) business days prior to the hearing, each party shall
`serve on the other party any demonstrative exhibits it intends to use during
`the hearing. See 37 C.F.R. § 42.70(b). The parties may refer to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`of Michigan, IPR2013-00041, slip op. at 2–5 (PTAB Jan. 27, 2014) (Paper
`65) regarding the appropriate content of demonstrative exhibits.
`The parties shall meet and confer to discuss and resolve any
`objections to demonstrative exhibits. If any objections to demonstrative
`exhibits cannot be resolved, the objecting party may file a statement of
`objections with the Board at least three (3) business days before the
`hearing. The statement of objections should identify with particularity the
`portion of each demonstrative exhibit subject to objection and include a brief
`statement (no more than a few sentences) of the reason for such objection.
`The Board will consider the statement of objections and may schedule
`a conference call to discuss the objections or may discuss the objections
`during the pre-hearing conference call, if requested. Otherwise, the Board
`will reserve ruling on the objections. Any objection that is not timely
`presented will be deemed waived.
`Notwithstanding 37 C.F.R. § 42.70(b), each party shall file its
`demonstrative exhibits with the Board as a separate paper no later than three
`(3) business days before the hearing.
`Each party shall provide a hard copy of its demonstratives to the court
`reporter at the hearing. The parties are reminded that the demonstrative
`exhibits presented in this case are not evidence and may not introduce new
`evidence or arguments. Demonstrative exhibits should be clearly marked as
`
`4
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`such. For example, each slide may be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. Any
`demonstrative exhibit not served on a party or filed at the Board may not be
`used during the hearing. Slides should be numbered individually.
`At least one judge on the panel will be hearing the case from a remote
`location and may not be able to view the projection screen in the hearing
`room. Thus, during the hearing, counsel must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`referenced to ensure clarity and accuracy of the reporter’s transcript and for
`the benefit of the judge(s) presiding over the hearing remotely. Because of
`limitations of the audio transmission systems in our hearing rooms, the
`presenter may speak only when standing at the hearing room lectern.
`
`Public Access to the Hearing Room
`
`The hearing will be open to the public, and seating will be
`accommodated on a first-come, first-served basis. The parties are directed to
`refrain from disclosing any confidential information during the hearing or
`including any confidential information in a demonstrative exhibit. If the
`parties have any concern about disclosing confidential information, they
`must contact the Board at least ten (10) business days before the hearing to
`discuss the matter.
`To facilitate planning, each party must send an email message to
`PTABHearings@uspto.gov five (5) business days prior to the hearing if the
`number planning to attend the hearing in-person for its side (attorneys and
`others) exceeds five people.
`
`5
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`Attendance of Counsel
`
`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 a party requires a different arrangement, the party should contact
`the Board as directed below with their request. For example, a party may
`request that counsel be permitted to present arguments remotely from an
`alternative 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 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
`(10) 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 guarantee that a
`panel member will be present at the remote location.
`
`Remote Viewing
`
`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, California.
`
`6
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`
`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 video viewing is granted. Note that it may not be possible to
`grant the request due to the availability of resources.
`
`Special Equipment or Needs
`
`Any requests for audio-visual equipment should be directed to
`Trials@uspto.gov. Requests for equipment will not be honored unless
`presented in a separate communication not less than five (5) business days
`before the hearing, directed to the above email address.
`A party may also indicate any special request 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 request must be
`presented in a separate communication not less than five (5) business days
`before the hearing.
`It is hereby:
`ORDERED that, subject to the procedures set forth above, the parties’
`requests for oral hearing are granted; and
`FURTHER ORDERED that an oral hearing, conducted in accordance
`with the procedures set forth above, shall commence at 1:00 PM Eastern
`Time on April 8, 2020 USPTO Headquarters on the ninth floor of Madison
`Building East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`7
`
`
`
`IPR2019-00311; IPR2019-00314
`Patent 7,932,923 B2 & C1
`
`For PETITIONER:
`C. Gregory Gramenopoulos
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`gramenoc@finnegan.com
`Attorney for Petitioner Axis Communications AB
`
`Joseph Calvaruso
`Richard Martinelli
`ORRICK HERRINGTON & SUTCLIFFE
`jvcptabdocket@orrick.com
`rfmptabdocket@orrick.com
`Attorney for Petitioners Canon Inc. and Canon U.S.A., Inc.
`
`
`For PATENT OWNER:
`
`Reza Dokhanchy
`Adam R. Alper
`Akshay S. Deoras
`Michael De Vries
`KIRKLAND & ELLIS
`reza.dokhanchy@kirkland.com
`aalper@kirkland.com
`adeoras@kirkland.com
`michael.devries@kirkland.com
`
`
`
`
`
`8
`
`
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