Trials@uspto.gov
`571.272.7822
`
`
`
`
`IPR2015-01586 Paper 28
`IPR2015-01592 Paper 29
`Entered: August 10, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`____________
`
`Cases IPR2015-01586
`Patent 8,841,469 B2
`
`Case IPR2015-01592
`Patent 8,962,059 B11
`____________
`
`Before ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`PRAISS, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This order addresses similar issues in both cases; therefore, we issue a
`single order to be entered in each case. The parties may not use this style
`heading in their papers without prior authorization.
`
`
`571.272.7822
`
`
`
`
`IPR2015-01586 Paper 28
`IPR2015-01592 Paper 29
`Entered: August 10, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`____________
`
`Cases IPR2015-01586
`Patent 8,841,469 B2
`
`Case IPR2015-01592
`Patent 8,962,059 B11
`____________
`
`Before ERICA A. FRANKLIN, DONNA M. PRAISS, and
`JENNIFER MEYER CHAGNON, Administrative Patent Judges.
`
`
`PRAISS, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This order addresses similar issues in both cases; therefore, we issue a
`single order to be entered in each case. The parties may not use this style
`heading in their papers without prior authorization.
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`
`Patent Owner requested oral hearing in these proceedings pursuant to
`
`37 C.F.R. § 42.70. Paper 26 (IPR2015-01586); Paper 27 (IPR2015-01592).
`
`Upon consideration, the requests for oral hearing are granted.
`
`Oral argument shall commence at 9:00 AM Eastern Daylight Time on
`
`September 13, 2016, on the ninth floor of Madison Building East,
`
`600 Dulany Street, Alexandria, Virginia, and it will be open to the public for
`
`in-person attendance. In-person attendance will be accommodated on a
`
`first-come, first-served basis.
`
`The patents at issue in these inter partes reviews are directed to
`
`similar subject matter and are challenged on similar grounds by the same
`
`Petitioner. The Board, therefore, exercises its discretion to consolidate the
`
`oral hearings in these cases.
`
`Petitioner shall have one hour total time to present arguments, and
`
`may divide the time between the cases as it wishes. Patent Owner shall have
`
`one hour of total time to respond to Petitioner, and may divide its time
`
`among the cases as it wishes.
`
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`
`claims at issue are unpatentable. Therefore, Petitioner will open the hearing
`
`by presenting its case regarding the challenged claims for which the Board
`
`instituted trial. Patent Owner will then respond to Petitioner’s arguments.
`
`Petitioner may reserve rebuttal time to respond to arguments presented by
`
`Patent Owner.
`
`The Board will provide a court reporter, and the transcript shall
`
`constitute the official record of the hearing. Under 37 C.F.R. § 42.70(b),
`
`demonstrative exhibits, if any, must be served no later than seven (7)
`
`business days before the hearing. The parties shall also provide a courtesy
`
`2
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`copy of any demonstrative exhibits to the Board no later than three business
`
`days before the hearing by emailing them to Trials@uspto.gov.
`
`Notwithstanding 37 C.F.R. § 42.70(b), the parties shall not file any
`
`demonstrative exhibits in these proceedings without prior authorization from
`
`the Board. 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. See also CBS Interactive
`
`Inc. v. Helferich Patent Licensing, LLC, Case IPR2013-00033 (PTAB
`
`Oct. 23, 2013) (Paper 118) (The Board has discretion to limit the parties’
`
`demonstratives to pages in the record should there be no easy resolution to
`
`objections over demonstratives.).
`
`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 business days before the 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. A hard copy of the demonstratives should be provided to the court
`
`reporter at the hearing.
`
`3
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`
`Questions regarding specific audio-visual equipment should be
`
`directed to the Board at 571-272-9797. Requests for audio-visual equipment
`
`are to be made no later than five (5) days in advance of the hearing date.
`
`The request is to be sent directly to Trials@uspto.gov. If the request is not
`
`received timely, the equipment may not be available on the day of the
`
`hearing. 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 at least one member of the panel will
`
`be attending the hearing electronically from a remote location, and that if a
`
`demonstrative is not filed or otherwise made fully available or visible to the
`
`judge(s) participating in the hearing remotely, that demonstrative will not be
`
`considered. If the parties have questions as to whether demonstrative
`
`exhibits would be sufficiently visible to all of the judges, the parties are
`
`invited to contact the Board at 571-272-9797. Documents presented on the
`
`Elmo projector are not visible to remote judges, so please plan accordingly.
`
`The Board expects lead counsel for each party to be present in person
`
`at the oral hearing. However, any counsel of record may present the party’s
`
`argument. If either party anticipates 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.
`
`
`
`In light of the foregoing, it is:
`
`4
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`
`ORDERED that oral hearing, conducted pursuant to the procedures
`
`outlined above, shall commence at 9:00 AM Eastern Daylight Time on
`
`September 13, 2016, on the ninth floor of Madison Building East,
`
`600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`5
`
`
`
`IPR2015-01586 (Patent 8,841,469 B2)
`IPR2015-01592 (Patent 8,962,059 B1)
`
`
`PETITIONER:
`
`Richard Roche
`Joel Austin
`Christopher J. Fahy
`QUARLES & BRADY LLP
`richard.roche@quarles.com
`joel.austin@quarles.com
`christopher.fahy@quarles.com
`
`PATENT OWNER
`
`Joseph Lucci
`David N. Farsiou
`BAKER & HOSTETLER LLP
`jlucci@bakerlaw.com
`dfarsiou@bakerlaw.com
`
`
`
`
`
`
`
`
`6
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