`571–272–7822
`
`Paper 35
`Entered: August 25, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`GLOBAL TEL*LINK CORPORATION,
`Petitioner,
`
`v.
`
`SECURUS TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01333 (Patent 9,094,500 B1)
`Case IPR2016-01362 (Patent 9,083,850 B1)
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`
`Before KEVIN F. TURNER, BARBARA A. BENOIT, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`IPR2016-01333 (Patent 9,094,500 B1)
`IPR2016-01362 (Patent 9,083,850 B1)
`
`
`On January 12, 2017, we entered a Decision to Institute a trial
`proceeding in IPR2016-01333. Paper 10. A Scheduling Order in the case
`set the date for oral hearing, if requested by either party, as September 14,
`2017. Paper 11. Pursuant to 37 C.F.R. § 42.70, both parties have requested
`an oral hearing in IPR2016-01333. Papers 23, 24. Petitioner’s and Patent
`Owner’s requests for oral hearing in IPR2016-01333 are granted.
`Additionally, on January 9, 2017, we entered a Decision to Institute a
`trial proceeding in IPR2016-01362. Paper 11. A Scheduling Order in that
`case set the date for oral hearing, if requested by either party, as September
`7, 2017. Paper 12. Pursuant to 37 C.F.R. § 42.70, both parties requested an
`oral hearing in IPR2016-01362. Papers 29, 30. Petitioner’s and Patent
`Owner’s requests for oral hearing in IPR2016-01362 are granted.
`For the sake of judicial economy, the oral arguments for both cases
`will be heard on the same day and location, specifically on September 14,
`2017 on the ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia. The hearing for IPR2016-01333 will commence at
`1:00 PM and end at 2:30 PM Eastern Time. The hearing for IPR2016-01362
`will commence at 2:40 PM and end at 4:10 PM Eastern Time. Both hearings
`will be open to the public for in-person attendance. In person attendance
`will be accommodated on a first-come-first-served basis. If the parties have
`any concern about disclosing confidential information, they are to contact
`the Board at least five (5) business days in advance of the hearings to discuss
`the matter.
`Each party will have forty-five (45) minutes of total time to present
`arguments for each case. Petitioner bears the ultimate burden of proof that
`the claims at issue are unpatentable. Therefore, Petitioner will proceed first
`
`2
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`
`
`IPR2016-01333 (Patent 9,094,500 B1)
`IPR2016-01362 (Patent 9,083,850 B1)
`
`to present its case with regard to the challenged claims and grounds on
`which we instituted trial in IPR2016-01333. Patent Owner then will argue
`its opposition to Petitioner’s case. Petitioner may reserve rebuttal time.
`Subsequently, after a short break, Petitioner will proceed to present its
`case with regard to the challenged claims and grounds on which we
`instituted trial in IPR2016-01362. Patent Owner then will argue its
`opposition to Petitioner’s case. Petitioner may reserve rebuttal time.
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the hearing.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been so
`filed.
`
`Furthermore, pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits
`must be served at least five (5) business days before the hearing. The parties
`shall provide a courtesy copy of any demonstrative exhibits to the Board at
`least three (3) business days prior to the hearing by emailing them to
`Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`the records of these proceedings without prior authorization from the Board.
`The demonstrative exhibits in this case are not evidence and are intended
`only to assist the parties in presenting their oral argument to the Board.
`The parties must, however, file any objections to the demonstratives
`with the Board at least three (3) business days before the hearing. Any
`objection to the demonstrative exhibits that is not presented timely will be
`considered waived. The objections should identify with particularity which
`demonstratives are subject to objection, and include a short (one sentence or
`
`3
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`
`
`IPR2016-01333 (Patent 9,094,500 B1)
`IPR2016-01362 (Patent 9,083,850 B1)
`
`less) statement of the reason for each objection. No argument or further
`explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until after the oral argument. The parties are
`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
`Regents of the University of Michigan, IPR2013-00041 (PTAB January 27,
`2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits.
`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 will not be in attendance at
`oral hearing, the Board should be notified via a joint telephone conference
`call no later than three (3) business days prior to the oral hearing to discuss
`the matter.
`Any special requests for audio visual equipment should be directed to
`Trials@uspto.gov. Requests for special equipment will not be honored
`unless presented in a separate communication not less than five (5) business
`days before the hearing directed to the above email address.
`At least one judge will be participating remotely via a
`videoconferencing device and will not be able to view the projection screen
`in the hearing room. 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 avoid confusion, and to
`ensure the clarity and accuracy of the reporter’s transcript.
`
`
`
`4
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`
`
`IPR2016-01333 (Patent 9,094,500 B1)
`IPR2016-01362 (Patent 9,083,850 B1)
`
`PETITIONER:
`Lori A. Gordon
`Steven M. Pappas
`Steven W. Peters
`Michael B. Ray
`Michael D. Specht
`Byron L. Pickard
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`ptab@skgf.com
`lgordon-PTAB@skgf.com
`spappas@skgf.com
`Speters-ptab@skgf.com
`Mray-PTAB@skgf.com
`Mspecht-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`
`PATENT OWNER (IPR2016-01333):
`Erika H. Arner
`Darren M. Jiron
`Michael Young
`Daniel C. Tucker
`Brandon Bludau
`Jason E. Stach
`Benjamin Saidman
`Guang-Yu Zhu
`Justin Mullen
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`erika.arner@finnegan.com
`darren.jiron@finnegan.com
`michael.young@finnegan.com
`daniel.tucker@finnegan.com
`brandon.bludau@finnegan.com
`jason.stach@finnegan.com
`benjamin.saidman@finnegan.com
`justin.mullen@finnegan.com
`guang-yu.zhu@finnegan.com
`
`
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`5
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`
`
`IPR2016-01333 (Patent 9,094,500 B1)
`IPR2016-01362 (Patent 9,083,850 B1)
`
`PATENT OWNER (IPR2016-01362):
`Justin B. Kimble
`Terry A. Saad
`Nicholas C. Kliewer
`BRAGALONE CONROY PC
`JKimble-IPR@bcpc-law.com
`tsaad@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`6
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`