Paper 26
`
`
`
`
`
`
`Trials@uspto.gov
` Date: August 28, 2020
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WELLS FARGO BANK, N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`____________
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1) 1
`____________
`
`
`Before JONI Y. CHANG, BARBARA A. BENOIT, STACEY G. WHITE,
`and JULIET MITCHELL DIRBA, Administrative Patent Judges.2
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses an issue that is identical in all three proceedings.
`Therefore, we exercise our discretion to issue one Order to be filed in each
`proceeding. The parties, however, are not authorized to use this style
`heading in any subsequent papers.
`2 This is not an expanded panel of the Board. The panel for IPR2019-01081
`includes Judges Chang, White, and Dirba; the panel for IPR2019-01082
`includes Judges Chang, Benoit, and White; and the panel for
`IPR2019-01083 includes Judges Chang, White, and Dirba.
`
`
`
`
`
`
`
`
`Trials@uspto.gov
` Date: August 28, 2020
`
`
`
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WELLS FARGO BANK, N.A.,
`Petitioner,
`v.
`UNITED SERVICES AUTOMOBILE ASSOCIATION,
`Patent Owner.
`____________
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1) 1
`____________
`
`
`Before JONI Y. CHANG, BARBARA A. BENOIT, STACEY G. WHITE,
`and JULIET MITCHELL DIRBA, Administrative Patent Judges.2
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses an issue that is identical in all three proceedings.
`Therefore, we exercise our discretion to issue one Order to be filed in each
`proceeding. The parties, however, are not authorized to use this style
`heading in any subsequent papers.
`2 This is not an expanded panel of the Board. The panel for IPR2019-01081
`includes Judges Chang, White, and Dirba; the panel for IPR2019-01082
`includes Judges Chang, Benoit, and White; and the panel for
`IPR2019-01083 includes Judges Chang, White, and Dirba.
`
`
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`
`
`In each above-identified proceeding, we instituted an inter partes
`review (Paper 93) and set an oral hearing date to September 23, 2020, if oral
`hearing is requested by either party and granted by the Board (Paper 10, 10).
`Pursuant to 37 C.F.R. § 42.70, both parties request an oral hearing.
`Papers 25, 26. In particular, Petitioner requests that all three
`above-identified proceedings be heard together in a single one-hour
`consolidated hearing because the issues in these cases are substantially
`similar. Paper 25, 1. Patent Owner requests one hour of total argument time
`per side for each case, a total of six hours. Paper 26, 1.
`In view of the overlapping issues, the requests are granted in that a
`single three-hour consolidated hearing will be held for all three cases. Each
`party will have a total of ninety (90) minutes to present its arguments for all
`three cases.
`
`Oral arguments will commence at 1:00 PM Eastern Time, on
`September 23, 2020, by video. The parties are directed to contact the Board
`at least ten (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 hearing, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`
`
`3 For purposes of expediency, we refer to the papers filed in IPR2019-01082.
`Similar papers were filed in IPR2019-01081 and IPR2019-01083.
`2
`
`
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`
`represent your client, please let the panel know immediately, and
`adjustments will be made.4
`
`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.
`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.
`Each party will have ninety (90) minutes of total time to present its
`arguments for all three above-identified proceedings. Petitioner will proceed
`first to present its case as to the challenged claims and instituted grounds of
`unpatentability, and may reserve a small portion of its time for rebuttal.
`Thereafter, Patent Owner will respond to Petitioner’s case. If Petitioner
`reserves time for rebuttal, Patent Owner may reserve a small portion of its
`time for sur-rebuttal. After that, Petitioner may use any reserved time for its
`
`
`4 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`3
`
`
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`
`rebuttal, responding to Patent Owner’s specific arguments presented at the
`oral hearing, and 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
`hearing.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven (7) business days prior to the hearing. The parties shall confer
`with each other regarding any objections to demonstrative exhibits, and file
`demonstrative exhibits with the Board, as a separate exhibit in accordance
`with 37 C.F.R. § 42.63, at least five (5) business days prior to the hearing.
`Demonstrative exhibits are not evidence, but merely a visual aid at the
`oral hearing. The Board expects the parties will meet and confer in good
`faith to resolve any objections to demonstrative exhibits. For any issue that
`cannot be resolved after conferring with the opposing party, the parties may
`email jointly to Trials@uspto.gov a one-page list of objections at least five
`(5) 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 short sentence) of the reason for
`each objection. No argument or further explanation is permitted.
`We will consider the objections and schedule a conference call, if
`necessary. Otherwise, we will reserve ruling on the objections until the
`hearing or after the hearing. Any objection to demonstrative exhibits that is
`not presented timely will be considered waived.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`
`4
`
`
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`
`referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript. 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.
`The Board generally expects lead counsel for each party to be present
`at the oral hearing. However, any counsel of record may present the party’s
`argument as long as the lead counsel is present by video.
`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 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.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives.
`In addition, the parties are advised to identify themselves each time they
`speak. Furthermore, the remote nature of the oral hearing may also result in
`an audio lag, and so the parties are advised to observe a pause prior to
`speaking, so as to avoid speaking over others.
`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
`
`5
`
`
`
`IPR2019-01081 (Patent 9,336,517 B1)
`IPR2019-01082 (Patent 8,977,571 B1)
`IPR2019-01083 (Patent 8,699,779 B1)
`
`Board by contacting PTABHearings@uspto.gov at least five (5) business
`days prior to the oral hearing date.
`It is
`ORDERED that oral argument will commence at 1:00 PM Eastern
`Time on September 23, 2020.
`
`
`For PETITIONER:
`Louis L. Campbell
`Michael M. Murray
`WINSTON & STRAWN LLP
`llcampbell@winston.com
`mmurray@winston.com
`
`For PATENT OWNER:
`Michael R. Fleming
`Babak Redjaian
`Anthony Q. Rowles
`IRELL & MANELLA LLP
`mfleming@irell.com
`bredjaian@irell.com
`trowles@irell.com
`
`
`6
`
`
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