Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 22
`Entered: April 8, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN MULTI-CINEMA, INC.; AMC ENTERTAINMENT
`HOLDINGS, INC.; BOSTON MARKET CORPORATION; MOBO
`SYSTEMS, INC.; MCDONALD’S CORPORATION; MCDONALD’S
`USA; PANDA RESTAURANT GROUP, INC.; PANDA EXPRESS INC.;
`PAPA JOHN’S INTERNATIONAL, INC.; STAR PAPA LP; and
`PAPA JOHN’S USA, INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Request for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`Tel: 571-272-7822
`
`
`Paper 22
`Entered: April 8, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMERICAN MULTI-CINEMA, INC.; AMC ENTERTAINMENT
`HOLDINGS, INC.; BOSTON MARKET CORPORATION; MOBO
`SYSTEMS, INC.; MCDONALD’S CORPORATION; MCDONALD’S
`USA; PANDA RESTAURANT GROUP, INC.; PANDA EXPRESS INC.;
`PAPA JOHN’S INTERNATIONAL, INC.; STAR PAPA LP; and
`PAPA JOHN’S USA, INC.
`Petitioner,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2019-00610
`Patent 9,454,748 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Request for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`I. HEARING AND ATTENDANCE
`Petitioner requests an oral hearing pursuant to 37 C.F.R. § 42.70 in the
`above proceeding. Paper 21. The request is granted subject to the
`conditions set forth in this Order.
`Oral argument(s) will commence at 1:00 PM Eastern Time on April
`28, 2020, by video. 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.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.1
`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 five (5) business days prior to the oral hearing date to
`receive video set-up information. As a reminder, all arrangements and the
`expenses involved with appearing by video, such as the selection of the
`facility to be used from which a party will attend by video, must be borne by
`that party. If a video connection cannot be established, the parties will be
`provided with dial-in connection information, and the oral hearing will be
`conducted telephonically.
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`related to appearing at a video oral hearing, such as a request to
`accommodate 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.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above telephone
`number five (5) business days prior to the hearing to receive dial-in
`connection information.
`Petitioner requests that each side be given sixty minutes in which to
`present. Patent Owner did not submit a request for oral hearing. Each side
`will be given a total of sixty (60) minutes in which to present.
`Petitioner will present its case first. Patent Owner will then present its
`case. Next, Petitioner may use any time it has reserved for rebuttal, not to
`exceed half the time allotted to it for argument, to respond to issues raised
`during Patent Owner’s argument. Lastly, Patent Owner may use any time it
`has reserved for sur-rebuttal, not to exceed thirty minutes, to address issues
`raised during Petitioner’s rebuttal.
`The Board expects lead counsel for each party to be present by video
`at the oral hearing. However, any counsel of record may present a party’s
`argument as long as that counsel is present by video. 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.
`
`3
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`
`II. DEMONSTRATIVE EXHIBITS
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days before the hearing. The parties also shall
`provide the demonstrative exhibits to the Board at least two (2) business
`days prior to the hearing by emailing them to PTABHearings@uspto.gov.
`Despite the requirement in § 42.70(b) for parties to file demonstratives, the
`parties shall not file any demonstrative exhibits without prior authorization
`from the Board.
`Demonstrative exhibits used at the oral 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.
`Demonstrative exhibits cannot 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 page number(s) of the paper(s) where the argument or
`evidence that is the subject of the demonstrative was advanced by a party.
`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), regarding the appropriate content of
`demonstrative exhibits. 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 file any objections to
`demonstratives with the Board at least two (2) business days before the
`
`4
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`hearing. The objections should identify with particularity which portions of
`the demonstrative exhibits are subject to objection, include a copy of the
`objected-to portions, and include a one-sentence statement of the reason for
`each objection. No argument or further explanation is permitted. The Board
`will consider any objections and schedule a conference call if deemed
`necessary. Otherwise, the Board will reserve ruling on the objections. Any
`objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`
`III. GUIDANCE AND REQUESTS
`The panel will have access to all papers filed with the Board, as well
`as demonstratives submitted via email according to the above instructions.
`During the oral hearing, the parties must identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. The Board requests
`identification for all exhibits discussed during oral argument in the interest
`of providing a clear record. In addition, the parties are requested to identify
`themselves each time they speak. Further, the remote nature of the oral
`hearing may also result in an audio lag. Accordingly, counsel should
`observe a pause prior to speaking, so as to avoid speaking over others.
`Please unmute yourself only when speaking.
`Per the Office Patent Trial Practice Guide, either party may request a
`pre-hearing conference. See Office Patent Trial Practice Guide, 84 Fed.
`Reg. 64,280 (Nov. 21, 2019), which is available at the following link:
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
`Requests for a pre-hearing conference must be made by April 17, 2020. To
`request such a conference, an email should be sent to Trials@uspto.gov
`
`5
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`including several dates and times of availability for one or both parties, as
`appropriate, that are generally no later than three business days prior to the
`oral hearing. Please refer to the Trial Practice Guide for more information
`on the pre-hearing conference. See id. Section II.M.
`Members of the public may request to listen in on this oral hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov at least five (5) business
`days prior to the oral hearing date.
`
`It is
`ORDERED that the Petitioner’s request for oral argument is granted
`subject to the conditions set forth in this Order; and
`FURTHER ORDERED that such oral argument, conducted pursuant
`to the procedures outlined above, shall commence at 1:00 pm Eastern Time
`on April 28, 2020.
`
`
`
`
`
`
`6
`
`
`
`IPR2019-00610
`Patent 9,454,748 B2
`
`PETITIONER:
`
`Tara D. Elliott
`Lisa K. Nguyen
`LATHAM & WATKINS LLP
`tara.elliott@lw.com
`lisa.nguyen@lw.com
`
`Robert H. Reckers
`SHOOK, HARDY & BACON L.L.P.
`rreckers@shb.com
`
`Ricardo Bonilla
`FISH & RICHARDSON P.C.
`rbonilla@fr.com
`
`
`PATENT OWNER:
`
`Terry Watt
`CROWE & DUNLEVY
`terry.watt@crowedunlevy.com
`
`Matthew J. Antonelli
`Michael E. Ellis
`Larry D. Thompson, Jr.
`ANTONELLI, HARRINGTON & THOMPSON
`matt@ahtlawfirm.com
`michael@ahtlawfirm.com
`larry@ahtlawfirm.com
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
