Trials@uspto.gov
`571.272.7822
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` Paper No. 22
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` Date: September 9, 2022
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CONFIGIT A/S,
`Petitioner,
`v.
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`IPR2021-01055
`Patent 6,836,766 B1
`____________
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
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`571.272.7822
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` Paper No. 22
`
` Date: September 9, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CONFIGIT A/S,
`Petitioner,
`v.
`VERSATA DEVELOPMENT GROUP, INC.,
`Patent Owner.
`____________
`
`IPR2021-01055
`Patent 6,836,766 B1
`____________
`
`
`Before KEVIN F. TURNER, DEBRA K. STEPHENS, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-01055
`Patent 6,836,766 B1
`
`Petitioner and Patent Owner each request an oral hearing pursuant to
`37 C.F.R. § 42.70. Papers 18, 19. Upon consideration, the requests for an
`oral hearing are granted.
`Oral arguments will commence at 3:40 PM PACIFIC TIME on
`September 16, 2022, in person at the University of Oregon Law School,
`White Stage Building, 70 NW Couch Street, Portland, OR 97209. The
`hearing will be part of a special PTAB/TTAB Stadium Tour program. The
`parties are welcome to attend the entire program and do not need to register
`for the program.
`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 because it is the party
`with the burden of proof and persuasion. Thereafter, Patent Owner may
`respond to Petitioner’s case. Petitioner and Patent Owner may reserve some,
`but no more than half, of the allotted time for rebuttal and sur-rebuttal,
`respectively. 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. The parties also are
`reminded that during the hearing, the parties “may only present arguments
`relied upon in the papers previously submitted.” Patent Trial and Appeal
`Board Consolidated Trial Practice Guide (“CTPG”) 86 (Nov. 2019). 1
`At least three (3) 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 two (2) business days prior
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
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`IPR2021-01055
`Patent 6,836,766 B1
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`to the hearing, each party shall file any demonstrative exhibits it intends to
`use during the hearing as exhibits.
`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”).
`The parties shall attempt to work out any objections to demonstratives
`prior to involving the Board. Should either party disagree with the propriety
`of any of the opposing party’s demonstratives, the party may send,
`contemporaneously with submitting their own slides two (2) business days
`prior to the hearing, an email to Trials@uspto.gov including a paper limited
`to identifying the opposing party’s slide(s) objected to and a brief sentence
`as to the general basis of the objection(s). No further argument is permitted
`in that paper. The Board will then take the objections under advisement, and
`if the content is inappropriate, it will not be considered. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived. The Board asks the parties to confine demonstrative exhibit
`objections to those identifying egregious violations that are prejudicial to the
`administration of justice. The parties are directed to St. Jude Med.,
`Cardiology Div., Inc. v. The Board of Regents of the Univ. of Mich.,
`IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the
`
`3
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`IPR2021-01055
`Patent 6,836,766 B1
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`appropriate content of demonstrative exhibits. In general, if the content on a
`slide cannot be readily associated with an argument made, or evidence
`referenced, in a substantive paper, it is inappropriate. The best practice is to
`indicate on each slide where support may be found in a substantive paper
`and/or exhibit or record in this proceeding.
`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.
`Members of the public will be attending this hearing. The parties are
`directed to contact the Board at least three(3) 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.
`As always, all practitioners appearing before the Board must
`demonstrate the highest professional standards. The Board expects all
`practitioners 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. The Board generally expects lead counsel for each party to be
`present at the virtual hearing. See CTPG 11.
`Accordingly, it is
`ORDERED that an in-person oral hearing, conducted pursuant to the
`procedures outlined above, will commence at 3:40 PM PACIFIC TIME on
`September 16, 2022, in person at the University of Oregon Law School,
`White Stage Building, 70 NW Couch Street, Portland, OR 97209.
`
`4
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`IPR2021-01055
`Patent 6,836,766 B1
`
`For PETITIONER:
`Kenneth W. Darby Jr.
`David M. Hoffman
`Jeffrey A. Shneidman
`FISH & RICHARDSON P.C.
`kdarby@fr.com
`hoffman@fr.com
`shneidman@fr.com
`
`
`For PATENT OWNER:
`Robert G. Sterne
`James R. Hietala
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`rsterne-ptab@sternekessler.com
`jhietala-ptab@sternekessler.com
`
`
`Kent B. Chambers
`TERRILE, CANNATTI & CHAMBERS LLP
`kchambers@tcciplaw.com
`
`
`5
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