Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 29
`Entered: July 9, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`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.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 29
`Entered: July 9, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NICHIA CORPORATION,
`Petitioner,
`
`v.
`
`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.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`
`Petitioner and Patent Owner each request oral hearing pursuant to 37
`
`C.F.R. § 42.70. Papers 27, 28. Upon consideration, the requests for oral
`
`hearing are granted.
`
`
`
`The hearing will commence at 1:00 PM EASTERN TIME Tuesday,
`
`July 30, 2019, on the ninth floor of Madison Building East of the USPTO
`
`headquarters in Alexandria, Virginia, 600 Dulany Street, Alexandria,
`
`Virginia. The hearing will be open to the public for in-person attendance
`
`that will be accommodated on a first-come, first-served basis. The Board
`
`will provide a court reporter for the hearing and the reporter’s transcript will
`
`constitute the official record of the hearing.
`
`
`
`Each party will have forty (40) minutes of total time to present
`
`arguments. As the party with the burden of proof and persuasion, Petitioner
`
`will proceed first to present its case with regard to the challenged claims and
`
`grounds set forth in the Petition. Thereafter, Patent Owner may respond to
`
`Petitioner’s case. Thereafter, Petitioner may use any of its remaining time
`
`for rebuttal regarding Patent Owner’s arguments regarding the challenged
`
`claims. And, thereafter, Patent Owner may use any of its remaining time for
`
`sur-rebuttal, to respond to Petitioner’s rebuttal arguments. The parties are
`
`reminded that arguments made during rebuttal and sur-rebuttal periods must
`
`be responsive to arguments the opposing party made in its immediately
`
`preceding presentation.
`
`
`
`At least seven business days prior to the hearing, each party shall
`
`serve on the other party any demonstrative exhibit(s) it intends to use during
`
`the hearing. See 37 C.F.R. § 42.70(b). At least three business days prior to
`
`the hearing, the parties shall file any demonstrative exhibits in this case.
`
`2
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`
`
`Demonstrative exhibits used at the oral hearing are aids to oral
`
`argument and not evidence, and should be clearly marked as such. For
`
`example, each slide of a demonstrative exhibit may be marked with the
`
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`
`Demonstrative exhibits cannot be used to advance arguments or introduce
`
`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
`
`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
`
`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
`
`first time during oral argument”).
`
`
`
`The parties should attempt to work out any objections to
`
`demonstratives prior to involving the Board. Should either party disagree
`
`with the propriety of any of the opposing party’s demonstratives, the party
`
`may send, contemporaneously with their own slides three business days
`
`prior to the hearing, an email to Trials@uspto.gov including a paper limited
`
`to identifying the opposing party’s slide(s) objected to and a brief sentence
`
`as to the general basis of the objection(s). No further argument is permitted
`
`in that paper. The Board will then take the objections under advisement, and
`
`if the content is inappropriate, it will not be considered. Any objection to
`
`demonstrative exhibits that is not timely presented will be considered
`
`waived. The Board asks the parties to confine demonstrative exhibit
`
`objections to those identifying egregious violations that are prejudicial to the
`
`administration of justice. The parties are directed to St. Jude Med.,
`
`Cardiology Div., Inc. v. The Board of Regents of the Univ. of Mich., Case
`
`IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding
`
`the appropriate content of demonstrative exhibits. In general, if the content
`
`on a slide cannot be readily associated with an argument made, or evidence
`
`3
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`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`referenced, in a substantive paper, it is inappropriate. The best practice is to
`
`indicate on each slide where support may be found in a substantive paper
`
`and/or an exhibit of record in this proceeding.
`
`
`
`The parties are reminded that each 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 may be attending the hearing electronically from a remote
`
`location, and that if a demonstrative is not made fully available or visible to
`
`all judges at the hearing, that demonstrative will not be considered. 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 in person
`
`at the hearing. If a 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 business days prior to the oral
`
`hearing to discuss the matter. Any counsel of record, however, may present
`
`the party’s arguments.
`
`
`
`A party may request remote video attendance for one or more of its
`
`other attendees to view the hearing from any USPTO location. The
`
`available locations include the Texas Regional Office in Dallas, Texas; the
`
`Rocky Mountain Regional Office in Denver, Colorado; the Elijah J. McCoy
`
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`
`in San Jose, CA. To request remote video viewing, a party must send an
`
`email message to Trials@uspto.gov ten business days prior to the hearing,
`
`4
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`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`indicating the requested location and the number planning to view the
`
`hearing from the remote location. The Board will notify the parties if the
`
`request for video viewing is granted. Note that it may not be possible to
`
`grant the request due to the availability of resources.
`
`
`
`Per the recent update to the Office Patent Trial Practice Guide, either
`
`party may request a pre-hearing conference. Office Patent Trial Practice
`
`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
`
`the following link to the USPTO website: https://go.usa.gov/xU7GP).
`
`Requests for a pre-hearing conference must be made by Monday, July 15,
`
`2019. To request such a conference, an email should be sent to
`
`Trials@uspto.gov including several dates and times of availability for both
`
`parties that are generally no later than three business days prior to the oral
`
`hearing. Please refer to the Guide for more information on the pre-hearing
`
`conference.
`
`
`
`Any special requests for audio-visual equipment should be directed to
`
`Trials@uspto.gov. A party may also indicate any special requests related to
`
`appearing at an in-person oral hearing, such as a request to accommodate
`
`physical needs that limit mobility or visual or hearing impairments, and
`
`indicate how the PTAB may accommodate the special request. Any special
`
`requests must be presented in a separate communication not less than five
`
`days before the hearing.
`
`It is
`
`
`
`ORDERED that oral argument will commence at 1:00 PM EASTERN
`
`TIME on Tuesday, July 30, 2019.
`
`
`
`
`
`5
`
`
`
`IPR2018-00966
`Patent 7,652,297 B2
`
`For PETITIONER:
`
`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
`
`
`
`6
`
`
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