Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 28
`Entered: February 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`_______________
`
`IPR2020-00320
`Patent 7,446,338 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 28
`Entered: February 22, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG DISPLAY CO., LTD.,
`Petitioner,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner.
`_______________
`
`IPR2020-00320
`Patent 7,446,338 B2
`_______________
`
`
`
`Before SALLY C. MEDLEY, JESSICA C. KAISER, and JULIA HEANEY,
`Administrative Patent Judges
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`IPR2020-00320
`Patent 7,446,338 B2
`
`
`Petitioner and Patent Owner have each filed requests for oral hearing
`in the above captioned proceeding, pursuant to 37 C.F.R. § 42.70.
`Papers 26, 27. The requests for oral hearing are granted according to the
`terms set forth in this order.
`Oral arguments will commence at 1:00 PM Eastern Time on
`March 25, 2021, by video.1 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, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.2
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) business days prior to the
`hearing date to receive video set-up information. As a reminder, all
`arrangements and the expenses involved with appearing by video, such as
`
`
`1 USPTO facilities remain closed to the public. If and when conditions
`allow in-person hearing attendance, the parties will be notified and may be
`permitted to submit a joint request to convert the current video hearing to an
`in-person hearing. The requests will be considered on a case-by-case basis,
`and subject to resource availability.
`2 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
` 2
`
`
`
`
`
`
`
`IPR2020-00320
`Patent 7,446,338 B2
`
`the selection of the facility 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 hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five (5) business days prior to the hearing date to receive dial-in
`connection information.
`Each party will have forty-five (45) minutes of total time to present
`arguments. Petitioner will proceed first to present its case with regard to the
`challenged claims and grounds set forth in the Petition. Thereafter, Patent
`Owner may respond to Petitioner’s case. Petitioner may use any of its
`remaining time for rebuttal regarding Patent Owner’s arguments regarding
`the challenged claims. And, thereafter, Patent Owner may request to use any
`of its remaining time for sur-rebuttal to respond to Petitioner’s rebuttal
`arguments. See Consolidated Trial Practice Guide 83 (“CTPG”).3 The
`parties are reminded that arguments made during rebuttal and sur-rebuttal
`periods must be responsive to arguments the opposing party made in its
`immediately preceding presentation.
`Either party may request a pre-hearing conference. See CTPG 82; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Requests must be made by
`March 11, 2021. See Paper 10, 10 (Due Date 6). To request such a
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
` 3
`
`
`
`
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`IPR2020-00320
`Patent 7,446,338 B2
`
`conference, the parties should jointly contact the Board at Trials@uspto.gov
`and include several dates and times of availability that are generally no later
`than three business days prior to the oral hearing.
`At least seven (7) business days prior to the hearing, each party shall
`serve on the other party any demonstrative exhibit(s) it intends to use during
`the hearing. See 37 C.F.R. § 42.70(b). At least five (5) business days prior
`to the hearing, the parties shall file any demonstrative exhibits in this case.
`Demonstratives are not a mechanism for making new arguments.
`Demonstrative exhibits used at the oral hearing are aids to oral argument and
`not evidence, nor will they be relied upon as evidence. Rather,
`demonstratives are visual aids to a party’s oral presentation regarding
`arguments and evidence previously presented and discussed in the papers.
`Accordingly, demonstratives shall be clearly marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. See
`Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (holding
`that the Board is obligated under its own regulations to dismiss untimely
`argument “raised for the first time during oral argument”). “[N]o new
`evidence may be presented at the oral argument.” CTPG 85; see also St.
`Jude Med., Cardiology Div., Inc. v. The Bd. of Regents of the Univ. of Mich.,
`IPR2013-00041, Paper 65, 2–3 (PTAB Jan. 27, 2014) (explaining that “new”
`evidence includes evidence already of record but not previously discussed in
`any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`
` 4
`
`
`
`
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`
`IPR2020-00320
`Patent 7,446,338 B2
`
`each demonstrative include a citation to a paper in the record, which allows
`the Board to easily ascertain whether a given demonstrative contains “new”
`argument or evidence or, instead, contains only that which is developed in
`the existing record.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the Board expects the
`parties will meet and confer in good faith to resolve any objections to
`demonstratives prior to raising the objections with the Board. 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. The Board
`will consider any objections, and may reserve ruling on the objections until
`the hearing or after the hearing.4 Any objection to demonstratives that is not
`timely presented will be considered waived.
`
`
`4 If time permits, the Board may schedule a conference call with the parties
`to discuss any objections raised prior to the hearing.
`
` 5
`
`
`
`
`
`
`
`IPR2020-00320
`Patent 7,446,338 B2
`
`
`The Board generally expects lead counsel for each party to be present
`at the hearing via video. See CTPG 11. Any counsel of record may present
`the party’s argument as long as that counsel is also present by video.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`their skills and to aid in succession planning for the next generation. The
`Board defines a LEAP practitioner as a patent agent or attorney having three
`(3) or fewer substantive oral arguments in any federal tribunal, including
`PTAB, and seven (7) or fewer years of experience as a licensed attorney or
`agent.5
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a LEAP practitioner participate in
`the program and conduct at least a portion of the party’s oral argument. In
`exchange, the Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request no later than
`at least five (5) business days before the hearing, by email to the Board at
`PTABHearings@uspto.gov.6
`
`
`5 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`6 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`
` 6
`
`
`
`
`
`
`
`IPR2020-00320
`Patent 7,446,338 B2
`
`
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.7 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements, either due to the years of experience as a licensed
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`but nonetheless has a basis for considering themselves to be in the category
`of advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided in such circumstances, as with LEAP, a
`
`
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`7 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analysis of prior art or objective indicia of
`non-obviousness.
`
` 7
`
`
`
`
`
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`IPR2020-00320
`Patent 7,446,338 B2
`
`party may share argument time among counsel and the Board will permit
`more experienced counsel to provide some assistance, if necessary, during
`oral argument, and to clarify any statements on the record before the
`conclusion of the oral argument.
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent.
`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 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 at least five (5) business days before the hearing
`date.
`
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants appearing electronically. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`
` 8
`
`
`
`
`
`
`
`IPR2020-00320
`Patent 7,446,338 B2
`
`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 to this 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 at PTABHearings@uspto.gov at least ten (10) business days prior to
`the hearing date.
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall take place
`beginning at 1:00 PM Eastern Time on March 25, 2021.
`
`
`
`
`
` 9
`
`
`
`
`
`
`
`IPR2020-00320
`Patent 7,446,338 B2
`
`For PETITIONER:
`
`David A. Garr
`Grant D. Johnson
`Peter P. Chen
`COVINGTON & BURLING LLP
`dgarr@cov.com
`gjohnson@cov.com
`pchen@cov.com
`
`
`For PATENT OWNER:
`
`Neil Rubin
`Reza Mirzaie
`Kent Shum
`Philip Wang
`RUSS AUGUST & KABAT
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`kshum@raklaw.com
`pwang@raklaw.com
`
`
`10
`
`
`
`
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