`
`
`
`Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper 28
`Entered: August 16, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CANON INC., CANON U.S.A., INC.,
`CANON FINANCIAL SERVICES, INC., FUJIFILM CORPORATION,
`FUJIFILM HOLDINGS AMERICA CORPORATION,
`FUJIFILM NORTH AMERICA CORPORATION, JVC KENWOOD
`CORPORATION, JVCKENWOOD USA CORPORATION,
`NIKON CORPORATION, NIKON INC., OLYMPUS CORPORATION,
`OLYMPUS AMERICA INC., PANASONIC CORPORATION,
`PANASONIC CORPORATION OF NORTH AMERICA,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`Cases IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216,
`and IPR2016-01225 (Patent 8,966,144),
`IPR2016-01200, IPR2016-01211, and IPR2016-01213 (Patent 8,504,746)1
`____________
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses the same issues for the above-identified cases. We,
`therefore, exercise our discretion to issue one order to be filed in each case.
`
`
`
`IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216, and
`IPR2016-01225 (Patent 8,966,144),
`IPR2016-01200, IPR2016-01211, and IPR2016-01213 (Patent 8,504,746)
`
`
`In each of the above-identified proceedings, we instituted inter partes
`review (Paper 82) and issued a Scheduling Order (Paper 9), which sets an
`oral hearing date, if oral hearing is requested by either party and granted by
`the Board. In particular, the oral hearing date for cases involving U.S.
`Patent No. 8,966,144 is September 13, 2017, and the oral hearing date for
`cases involving U.S. Patent No. 8,504,746 is September 14, 2017. Pursuant
`to 37 C.F.R. § 42.70, the parties jointly requested an oral hearing in each
`case. Paper 15. The requests are granted.
`In addition to requesting an oral hearing, the parties jointly propose to
`group the cases by the same primary prior art references, for efficiency. Id.
`at 3. Specifically, as to the oral hearing on September 13, 2017, the parties
`propose: (1) arugment on IPR2016-01211, IPR2016-01212, and
`IPR2016-01216, involving Kawaguchi (Ex. 1206, filed in IPR2016-01211),
`for one hour per party; and (2) argument on IPR2016-01225 involving
`McNeill (Ex. 1301, filed in IPR2016-01225), for 30 minutes per party. Id.
`With respect to the oral hearing on September 14, 2017, the parties propose:
`(1) argument on IPR2016-01199 and IPR2016-01200, involving Aytac
`(Ex. 1004, filed in IPR2016-01199), for 45 minutes per party; and (2)
`argument on IPR2016-01213 and IPR2016-01214, involving Yamamoto
`(Ex. 1401, filed in IPR2016-01214), for 45 minutes per party. Id.
`In view of the circumstances before us, we agree with the parties, and
`accept their proposal.
`
`
`2 Citations refer to IPR2016-01199, as representative, unless otherwise
`noted.
`
`2
`
`
`
`IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216, and
`IPR2016-01225 (Patent 8,966,144),
`IPR2016-01200, IPR2016-01211, and IPR2016-01213 (Patent 8,504,746)
`
`
`The consolidated hearing for IPR IPR2016-01211, IPR2016-01212,
`IPR2016-01216, and IPR2016-01225 will commence at 10:00 AM Eastern
`Time, on September 13, 2017. Each party will have ninety (90) minutes of
`total time to present arguments for these proceedings.
`The consolidated hearing for IPR2016-01199, IPR2016-01200,
`IPR2016-01213, and IPR2016-01214 will commence at 10:00 AM Eastern
`Time, on September 14, 2017. Each party will have ninety (90) minutes of
`total time to present arguments for these proceedings.
`Both hearings will be conducted at the USPTO Headquarters, Ninth
`Floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia, 22314.3 The hearings will be open to the public for in-person
`attendance that will be accommodated on a first-come first-serve basis.
`For each oral hearing, 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 the proceedings, and may reserve a small portion of its
`time for rebuttal. Thereafter, Patent Owner will respond to Petitioner’s case.
`After that, Petitioner may use the rest of its time for its rebuttal, responding
`to Patent Owner’s specific arguments presented at the oral hearing. No live
`testimony from any witness will be taken at the oral argument.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days prior to the hearing. The parties shall confer with
`each other regarding any objections to demonstrative exhibits, and file
`
`
`3 See https://www.uspto.gov/about-us/uspto-locations/alexandria-virginia-
`headquarters for additional information.
`
`3
`
`
`
`IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216, and
`IPR2016-01225 (Patent 8,966,144),
`IPR2016-01200, IPR2016-01211, and IPR2016-01213 (Patent 8,504,746)
`
`demonstrative exhibits with the Board, as a separate exhibit in accordance
`with 37 C.F.R. § 42.63, at least five business days prior to the hearing.
`Demonstrative exhibits are not evidence, but merely a visual aid at the
`oral hearing. For any issue that cannot be resolved after conferring with the
`opposing party, the parties may file jointly a one-page list of objections at
`least five 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 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. Each party also shall
`provide a hard copy of its demonstrative exhibits to the court reporter at 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 each hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that Judge Miriam Quinn
`will be attending each hearing electronically and will only have access to the
`courtesy copy of the demonstratives provided in advance, as referenced
`above. 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. Further, images
`projected, using audio visual equipment in Alexandria, will not be visible to
`
`4
`
`
`
`IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216, and
`IPR2016-01225 (Patent 8,966,144),
`IPR2016-01200, IPR2016-01211, and IPR2016-01213 (Patent 8,504,746)
`
`Judge Quinn. Because of limitations on the audio transmission systems in
`our hearing rooms, the presenter may speak only when standing at the
`hearing room podium. If the parties have questions as to whether
`demonstrative exhibits would be sufficiently visible and available to all of
`the judges, the parties are invited to contact the Board at (571) 272-9797.
`
`The Board expects lead counsel for each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party is unable to attend the oral
`argument, the Board should be notified via a joint telephone conference call
`no later than five business days prior to the oral hearing to discuss the
`matter.
`The Board will provide a court reporter for each hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`hearing transcript will be entered in the record of the proceedings.
`Requests for audio-visual equipment at the hearing are to be made
`five days in advance of the hearing date. The requests must be sent to
`Trials@uspto.gov. If the requests are not received timely, equipment may
`not be available on the day of the hearing.
`
`
`
`
`
`5
`
`
`
`IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216, and
`IPR2016-01225 (Patent 8,966,144),
`IPR2016-01200, IPR2016-01211, and IPR2016-01213 (Patent 8,504,746)
`
`For PETITIONER:
`
`T. Vann Pearce
`Christopher Higgins
`Christopher Siebens
`John Inge
`TVPPTABDocket@orrick.com
`0CHPTABDocket@orrick.com
`29CPTABDocket@orrick.com
`JRIPTABDocket@orrick.com
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`
`David Maiorana
`F. Drexel Feeling
`Matthew Johnson
`David Witcoff
`Marc Blackman
`dmaiorana@JonesDay.com
`f.dfeeling@jonesday.com
`mwjohnson@jonesday.com
`dlwitcoff@jonesday.com
`msblackman@jonesday.com
`JONES DAY
`
`Ahren Hsu-Hoffman
`Dion Bregman
`Chris Mizumoto
`Ahren.hsu-hoffman@morganlewis.com
`dion.bregman@morganlewis.com
`chris.mizumoto@morganlewis.com
`MORGAN, LEWIS & BOCKIUS LLP
`
`Gregory Cordrey
`gcordrey@jmbm.com
`JEFFER MANGELS BUTLER & MITCHELL LLP
`
`
`6
`
`
`
`IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216, and
`IPR2016-01225 (Patent 8,966,144),
`IPR2016-01200, IPR2016-01211, and IPR2016-01213 (Patent 8,504,746)
`
`Brian Rupp
`Carrie Beyer
`Nikola Colic
`Brian.Rupp@dbr.com
`Carrie.Beyer@dbr.com
`Nick.Colic@dbr.com
`DRINKR BIDDLE & REATH LLP
`
`For PATENT OWNER:
`Nicholas T. Peters
`Paul Henkelmann
`Joseph Marinelli
`ntpete@fitcheven.com
`phenkelmann@fitcheven.com
`jmarinelli@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`
`Anthony Meola
`info@themeolafirm.com
`THE MEOLA FIRM, PLLC
`
`
`7
`
`
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