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41 Order: ORDER Conduct of the Proceedings

Document CBM2016-00064, No. 41 Order - ORDER Conduct of the Proceedings (P.T.A.B. May. 4, 2017)

Before JONI Y. CHANG, JUSTIN T. ARBES, and FRANCES L. IPPOLITO, Administrative Patent Judges.

On April 26, 2017, a conference call was held between counsel for both parties, and Judges Chang, Arbes, and Ippolito.

Patent Owner requested that the oral hearing, scheduled for May 15, 2017, be delayed for three weeks, in view of a medical emergency of its back-up counsel.

As discussed, the one-year statutory deadline for entering the final written decisions for the instant proceedings expires on September 21, 2017.

Further, although we were cognizant that Patent Owner has other counsel of record, we nevertheless were mindful of back-up counsel’s unexpected medical emergency.

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- Asghari-Kamrani, Nader
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- Mh2 Technology Law Group
- Novick, Kim & Lee

35 Order: ORDER Oral Hearing

Document CBM2016-00063, No. 35 Order - ORDER Oral Hearing (P.T.A.B. Apr. 13, 2017)

- Granted

We instituted covered business method patent reviews (Paper 142) in the above-referenced proceedings and issued a consolidated Scheduling Order (Paper 15), which sets the date for oral hearing to May 15, 2017, if oral hearing is requested by either party and granted by the Board.

Because Petitioner bears the ultimate burden of proof that the challenged claims are unpatentable, Petitioner will proceed first to present its case as to the challenged claims and instituted grounds of unpatentability in both proceedings, and may reserve a small portion of its time for rebuttal.

The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.

The parties are reminded that the presenter must identify clearly and specifically each demonstrative exhibit (e.g., by slide or screen number) referenced during the hearing to ensure the clarity and accuracy of the reporter’s transcript.

The parties also should note that one panel member, Judge Ippolito, will be attending the hearing electronically and will only have access to the courtesy copy of the demonstratives provided in advance, as referenced above.

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- Asghari-Kamrani, Nader
- United Services Automobile Association
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35 Order: ORDER Oral Hearing

Document CBM2016-00064, No. 35 Order - ORDER Oral Hearing (P.T.A.B. Apr. 13, 2017)

- Granted

We instituted covered business method patent reviews (Paper 142) in the above-referenced proceedings and issued a consolidated Scheduling Order (Paper 15), which sets the date for oral hearing to May 15, 2017, if oral hearing is requested by either party and granted by the Board.

Because Petitioner bears the ultimate burden of proof that the challenged claims are unpatentable, Petitioner will proceed first to present its case as to the challenged claims and instituted grounds of unpatentability in both proceedings, and may reserve a small portion of its time for rebuttal.

The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.

The parties are reminded that the presenter must identify clearly and specifically each demonstrative exhibit (e.g., by slide or screen number) referenced during the hearing to ensure the clarity and accuracy of the reporter’s transcript.

The parties also should note that one panel member, Judge Ippolito, will be attending the hearing electronically and will only have access to the courtesy copy of the demonstratives provided in advance, as referenced above.

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- Asghari-Kamrani, Nader
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- Mh2 Technology Law Group
- Novick, Kim & Lee

28 Order Conduct of Proceeding: Conduct of the Proceedings

Document CBM2016-00063, No. 28 Order Conduct of Proceeding - Conduct of the Proceedings (P.T.A.B. Mar. 23, 2017)

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28 Order Conduct of Proceeding: Conduct of the Proceedings

Document CBM2016-00064, No. 28 Order Conduct of Proceeding - Conduct of the Proceedings (P.T.A.B. Mar. 23, 2017)

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21 Decision Denying Request for Rehearing Patent Owner: Decision Denying Paten...

Document CBM2016-00063, No. 21 Decision Denying Request for Rehearing Patent Owner - Decision Denying Patent Owners Request for Rehearing (P.T.A.B. Oct. 13, 2016)

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21 Decision Denying Request for Rehearing Patent Owner: Decision Denying Paten...

Document CBM2016-00064, No. 21 Decision Denying Request for Rehearing Patent Owner - Decision Denying Patent Owners Request for Rehearing (P.T.A.B. Oct. 13, 2016)