Paper 46
`Trials@uspto.gov
`Date: March 5, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INGENICO INC.,
`Petitioner,
`v.
`IOENGINE, LLC,
`Patent Owner.
`
`IPR2019-00416
`Patent 8,539,047 B2
`
`
`
`
`
`
`
`
`
`Before ELIZABETH M. ROESEL, SHEILA F. McSHANE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Oral hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`Both parties have requested oral argument in these matters pursuant to
`37 C.F.R. § 42.70. See Papers 44, 45. Petitioner requests 30 minutes for its
`argument while Patent Owner requests one hour. See Papers 44, 45. We
`have reviewed the issues that the parties intend to address and, accordingly,
`each party will be allocated 60 minutes for argument.
`The hearing for these proceedings will commence at 2:00 PM
`Eastern Time on March 31, 2020. The hearing will be conducted on the
`
`
`
`
`Trials@uspto.gov
`Date: March 5, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INGENICO INC.,
`Petitioner,
`v.
`IOENGINE, LLC,
`Patent Owner.
`
`IPR2019-00416
`Patent 8,539,047 B2
`
`
`
`
`
`
`
`
`
`Before ELIZABETH M. ROESEL, SHEILA F. McSHANE, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Oral hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`Both parties have requested oral argument in these matters pursuant to
`37 C.F.R. § 42.70. See Papers 44, 45. Petitioner requests 30 minutes for its
`argument while Patent Owner requests one hour. See Papers 44, 45. We
`have reviewed the issues that the parties intend to address and, accordingly,
`each party will be allocated 60 minutes for argument.
`The hearing for these proceedings will commence at 2:00 PM
`Eastern Time on March 31, 2020. The hearing will be conducted on the
`
`
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`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 10 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.
`Petitioner will proceed first to present its case with regard to the
`challenged claims. Petitioner may reserve some, but not more than one half,
`of its argument time for rebuttal. Thereafter, Patent Owner will respond to
`Petitioner’s case and may reserve some of its argument time, for sur-rebuttal.
`Next, Petitioner may use any time it has reserved for rebuttal to respond to
`Patent Owner’s specific arguments presented at the hearing. Then, Patent
`Owner may present a brief sur-rebuttal if it has reserved time. No live
`testimony from any witness will be taken at the oral argument.
`Any demonstrative exhibits shall be served at least five (5) business
`days before the hearing. The parties shall confer regarding any objections to
`demonstrative exhibits, and file demonstrative exhibits with the Board, as a
`separate exhibit, at least three (3) business days prior to the hearing. The
`parties are reminded that the demonstrative exhibits presented in this case
`are 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. Board of Regents of the University of Michigan,
`IPR2013-00041, Paper 65, 2–5 (PTAB Jan. 27, 2014), for guidance
`
`2
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`regarding the appropriate content of demonstrative exhibits. For any issue
`regarding the proposed demonstrative exhibits that cannot be resolved after
`conferring with the opposing party, the parties may file jointly a one-page
`list of objections at least two (2) business days prior to the hearing. The list
`should identify with particularity which demonstrative exhibits are subject to
`objection and include a short statement (no more than one concise sentence)
`of the reason for each objection. No argument or further explanation is
`permitted. We will consider the objections and may schedule a conference
`call, if necessary, to discuss them. Typically, however, we reserve ruling on
`the objections until the hearing or until a ruling is necessary to resolve the
`dispute. Any objection to demonstrative exhibits that is not presented timely
`will be considered waived. Each party also shall provide a hard copy of its
`demonstrative exhibits to the court reporter at the hearing.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number and
`by content) referenced during the hearing to ensure the clarity and accuracy
`of the reporter’s transcript. The parties also should note that one or more
`judges on the panel will be attending electronically and will only have
`access to the filed copy of the demonstratives provided in advance, as
`referenced above. If a demonstrative is not made available to the Board in
`the manner indicated above, that demonstrative may not be available to each
`of the judges during the hearing and may not be considered. Further, images
`projected using audio-visual equipment in the hearing room will not be
`visible to judges participating remotely. Because of limitations on the audio
`transmission systems in our hearing rooms, the presenter may speak only
`when standing at the hearing room podium.
`
`3
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`The Board generally expects lead counsel for each party to be present
`in person at the oral hearing. However, any counsel of record may present
`the party’s argument as long as that counsel is present in person.
`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 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.
`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
`
`4
`
`
`
`IPR2019-00416
`Patent 8,539,047 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 (5) days before the hearing.
`
`
`5
`
`
`
`IPR2019-00416
`Patent 8,539,047 B2
`For PETITIONER:
`
`Robert M. Asher
`Timothy M. Murphy
`Kerry L. Timbers
`SUNSTEIN KANN MURPHY AND TIMBER
`rasher@sunsteinlaw.com
`tmurphy@sunsteinlaw.com
`ktimbers@sunsteinlaw.com
`
`
`
`For PATENT OWNER:
`Michael A. Fisher
`Derek J. Brader
`Robert W. Ashbrook
`Noah M. Leibowitz
`Gregory T. Chuebon
`DECHERT LLP
`michael.fisher@dechert.com
`derek.brader@dechert.com
`robert.ashbrook@dechert.com
`noah.leibowitz@dechert.com
`greg.chuebon@dechert.com
`
`6
`
`
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