`571-272-7822
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`Paper No. 29
`Entered: July 9, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
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`DOCUMENT SECURITY SYSTEMS, INC.,
`Patent Owner.
`
`____________
`
`Case IPR2018-00966
`Patent 7,652,297 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, SCOTT C. MOORE, and
`BRENT M. DOUGAL, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
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`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
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`
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`
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`IPR2018-00966
`Patent 7,652,297 B2
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`Petitioner and Patent Owner each request oral hearing pursuant to 37
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`C.F.R. § 42.70. Papers 27, 28. Upon consideration, the requests for oral
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`hearing are granted.
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`
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`The hearing will commence at 1:00 PM EASTERN TIME Tuesday,
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`July 30, 2019, on the ninth floor of Madison Building East of the USPTO
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`headquarters in Alexandria, Virginia, 600 Dulany Street, Alexandria,
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`Virginia. The hearing will be open to the public for in-person attendance
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`that will be accommodated on a first-come, first-served basis. The Board
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`will provide a court reporter for the hearing and the reporter’s transcript will
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`constitute the official record of the hearing.
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`Each party will have forty (40) minutes of total time to present
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`arguments. As the party with the burden of proof and persuasion, Petitioner
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`will proceed first to present its case with regard to the challenged claims and
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`grounds set forth in the Petition. Thereafter, Patent Owner may respond to
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`Petitioner’s case. Thereafter, Petitioner may use any of its remaining time
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`for rebuttal regarding Patent Owner’s arguments regarding the challenged
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`claims. And, thereafter, Patent Owner may use any of its remaining time for
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`sur-rebuttal, to respond to Petitioner’s rebuttal arguments. The parties are
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`reminded that arguments made during rebuttal and sur-rebuttal periods must
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`be responsive to arguments the opposing party made in its immediately
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`preceding presentation.
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`At least seven business days prior to the hearing, each party shall
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`serve on the other party any demonstrative exhibit(s) it intends to use during
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`the hearing. See 37 C.F.R. § 42.70(b). At least three business days prior to
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`the hearing, the parties shall file any demonstrative exhibits in this case.
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`IPR2018-00966
`Patent 7,652,297 B2
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`Demonstrative exhibits used at the oral hearing are aids to oral
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`argument and not evidence, and should be clearly marked as such. For
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`example, each slide of a demonstrative exhibit may be marked with the
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`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
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`Demonstrative exhibits cannot be used to advance arguments or introduce
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`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
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`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
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`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
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`first time during oral argument”).
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`The parties should attempt to work out any objections to
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`demonstratives prior to involving the Board. Should either party disagree
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`with the propriety of any of the opposing party’s demonstratives, the party
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`may send, contemporaneously with their own slides three business days
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`prior to the hearing, an email to Trials@uspto.gov including a paper limited
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`to identifying the opposing party’s slide(s) objected to and a brief sentence
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`as to the general basis of the objection(s). No further argument is permitted
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`in that paper. The Board will then take the objections under advisement, and
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`if the content is inappropriate, it will not be considered. Any objection to
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`demonstrative exhibits that is not timely presented will be considered
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`waived. The Board asks the parties to confine demonstrative exhibit
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`objections to those identifying egregious violations that are prejudicial to the
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`administration of justice. The parties are directed to St. Jude Med.,
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`Cardiology Div., Inc. v. The Board of Regents of the Univ. of Mich., Case
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`IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding
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`the appropriate content of demonstrative exhibits. In general, if the content
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`on a slide cannot be readily associated with an argument made, or evidence
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`IPR2018-00966
`Patent 7,652,297 B2
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`referenced, in a substantive paper, it is inappropriate. The best practice is to
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`indicate on each slide where support may be found in a substantive paper
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`and/or an exhibit of record in this proceeding.
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`The parties are reminded that each presenter must identify clearly and
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`specifically each demonstrative exhibit (e.g., by slide or screen number)
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`referenced during the hearing to ensure the clarity and accuracy of the
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`reporter’s transcript. The parties also should note that at least one member
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`of the panel may be attending the hearing electronically from a remote
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`location, and that if a demonstrative is not made fully available or visible to
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`all judges at the hearing, that demonstrative will not be considered. If the
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`parties have questions as to whether demonstrative exhibits would be
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`sufficiently visible and available to all of the judges, the parties are invited
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`to contact the Board at 571-272-9797.
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`The Board expects lead counsel for each party to be present in person
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`at the hearing. If a party anticipates that its lead counsel will not be
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`attending the oral argument, the parties should initiate a joint telephone
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`conference with the Board no later than two business days prior to the oral
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`hearing to discuss the matter. Any counsel of record, however, may present
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`the party’s arguments.
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`
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`A party may request remote video attendance for one or more of its
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`other attendees to view the hearing from any USPTO location. The
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`available locations include the Texas Regional Office in Dallas, Texas; the
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`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
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`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
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`in San Jose, CA. To request remote video viewing, a party must send an
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`email message to Trials@uspto.gov ten business days prior to the hearing,
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`IPR2018-00966
`Patent 7,652,297 B2
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`indicating the requested location and the number planning to view the
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`hearing from the remote location. The Board will notify the parties if the
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`request for video viewing is granted. Note that it may not be possible to
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`grant the request due to the availability of resources.
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`
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`Per the recent update to the Office Patent Trial Practice Guide, either
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`party may request a pre-hearing conference. Office Patent Trial Practice
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`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
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`the following link to the USPTO website: https://go.usa.gov/xU7GP).
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`Requests for a pre-hearing conference must be made by Monday, July 15,
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`2019. To request such a conference, an email should be sent to
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`Trials@uspto.gov including several dates and times of availability for both
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`parties that are generally no later than three business days prior to the oral
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`hearing. Please refer to the Guide for more information on the pre-hearing
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`conference.
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`
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`Any special requests for audio-visual equipment should be directed to
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`Trials@uspto.gov. A party may also indicate any special requests related to
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`appearing at an in-person oral hearing, such as a request to accommodate
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`physical needs that limit mobility or visual or hearing impairments, and
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`indicate how the PTAB may accommodate the special request. Any special
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`requests must be presented in a separate communication not less than five
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`days before the hearing.
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`It is
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`
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`ORDERED that oral argument will commence at 1:00 PM EASTERN
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`TIME on Tuesday, July 30, 2019.
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`5
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`IPR2018-00966
`Patent 7,652,297 B2
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`For PETITIONER:
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`Patrick Colsher
`patrick.colsher@shearman.com
`
`Matt Berkowitz
`matt.berkowitz@shearman.com
`
`Eric Lucas
`eric.lucas@shearman.com
`
`Thomas R. Makin
`thomas.makin@shearman.com
`
`For PATENT OWNER:
`
`Wayne Helge
`whelge@dbjg.com
`
`James Wilson
`jwilson@dbjg.com
`
`Aldo Noto
`anoto@davidsonberquist.com
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