`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 62
`Date: May 13, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`RTI SURGICAL, INC.,
`Petitioner,
`
`v.
`
`LIFENET HEALTH,
`Patent Owner.
`____________
`
`IPR2019-00569 (Patent 6,458,158 B1)
`IPR2019-00570 (Patent 8,182,532 B2)1
`____________
`
`
`
`Before GEORGE R. HOSKINS, TIMOTHY J. GOODSON, and
`CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
`
`GOODSON, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 This order is being filed in each proceeding listed in the caption. The
`parties may use this style caption only if the paper includes a statement
`certifying that the identical paper is being filed in each proceeding listed in
`the caption.
`
`
`
`

`

`IPR2019-00569 (Patent 6,458,158 B1)
`IPR2019-00570 (Patent 8,182,532 B2)
`
`
`Petitioner and Patent Owner request an oral hearing pursuant to
`37 C.F.R. § 42.70(a) in each of the proceedings captioned above. See
`IPR2019-00569, Papers 58, 59.2 The parties’ requests are granted. These
`cases are not consolidated, but given the overlap in subject matter and
`consistent with the parties’ requests, a single hearing will be held and a
`single transcript will be provided for both cases.
`Oral arguments will commence at 1:00 p.m. ET on June 2, 2020, by
`video. The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.3
`To facilitate planning, each party must contact PTAB Hearings at
`(571) 272-9797 on May 26, 2020 to receive video set-up information. All
`arrangements and the expenses involved with appearing by video, such as
`the selection of the facility to be used from which a party will attend by
`video, must be borne by that party. If a video connection cannot be
`established, the parties will be provided with dial-in connection information,
`and the oral hearing will be conducted telephonically.
`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above telephone
`number on May 26, 2020 to receive dial-in connection information.
`
`
`2 For simplicity, we cite to the record in IPR2019-00569, unless otherwise
`noted. Similar or identical papers were filed in the other proceeding.
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`

`

`IPR2019-00569 (Patent 6,458,158 B1)
`IPR2019-00570 (Patent 8,182,532 B2)
`
`
`Petitioner requests that each side have 60 minutes of argument time to
`address both proceedings, and Patent Owner requests that each side have 90
`minutes. See Paper 59, 2; Paper 58, 2–3. Based on our review of the
`records in these cases, Patent Owner’s proposal seems reasonable.
`Therefore, Petitioner will be allotted 90 minutes of total argument time for
`both cases, and Patent Owner likewise will be allotted 90 minutes of total
`argument time for both cases. Petitioner will begin by presenting its
`argument regarding the challenged claims and grounds in the proceedings,
`and may reserve argument time for use in rebuttal. Thereafter, Patent Owner
`will argue its opposition to Petitioner’s challenges in both proceedings, and
`Patent Owner may reserve argument time for use in sur-rebuttal.4 To the
`extent Petitioner reserves rebuttal time, Petitioner then may make use of that
`rebuttal time. Finally, if Patent Owner reserves time for a brief sur-rebuttal,
`Patent Owner may use that time. 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. The parties are also reminded that during the hearing, the
`parties “may only present arguments relied upon in the papers previously
`submitted.” Trial Practice Guide August 2018 Update, p. 23.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days before the hearing (i.e., by May 22, 2020). The
`parties also shall file a copy of the demonstratives as an exhibit by May 28,
`2020. The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`
`
`4 See Trial Practice Guide August 2018 Update, p. 20, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf (providing that the “Board may also permit patent owners the
`opportunity to present a brief sur-rebuttal if requested”).
`3
`
`

`

`IPR2019-00569 (Patent 6,458,158 B1)
`IPR2019-00570 (Patent 8,182,532 B2)
`
`v. The Board of Regents of the University of Michigan, IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. The parties shall meet and confer to
`discuss any objections to demonstrative exhibits. If any issues regarding
`demonstratives remain unresolved after the parties meet and confer, the
`parties shall file jointly a one-page list of objections to the demonstrative
`exhibits by May 28, 2020. For each objection, the list must identify with
`particularity the demonstratives subject to the objection and include a short,
`one-sentence statement explaining the objection. The panel will consider the
`objections and schedule a conference call if necessary. Otherwise, the panel
`will reserve ruling on the objections. Any objection to demonstrative
`exhibits not presented timely will be considered waived.
`Either party may request a pre-hearing conference call.5 The
`prehearing call is not required, and absent a request, no call will be held.
`Prior to making a request, the parties should confer and send a joint request
`to the Board with an agreed upon set of limited issues for discussion. To
`request a conference, an email should be sent to Trials@uspto.gov by May
`19, 2020, including several dates and times of availability for both parties.
`The Board generally expects lead counsel for each party to be present
`by video at the oral hearing. Any counsel of record may present the party’s
`argument as long as that counsel is present by video.
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at a video oral hearing, such as a request to
`accommodate visual or hearing impairments, and indicate how the PTAB
`
`
`5 See Trial Practice Guide August 2018 Update, p. 19–20.
`4
`
`

`

`IPR2019-00569 (Patent 6,458,158 B1)
`IPR2019-00570 (Patent 8,182,532 B2)
`
`may accommodate the special request. Any special requests must be
`presented in a separate communication by May 26, 2020.
`Please unmute yourself only when speaking. The panel will have
`access to all papers filed with the Board, including demonstratives. During
`the oral hearing, the parties are advised to identify clearly and specifically
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the oral hearing may also result in an audio lag, and so the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`Members of the public may request to listen in on this oral hearing. If
`resources are available, the Board generally expects to grant such requests.
`If either party objects to the Board granting such requests, for example,
`because confidential information may be discussed, the party must notify the
`Board by contacting PTABHearings@uspto.gov by May 26, 2020.
`
`
`
`
`
`5
`
`

`

`IPR2019-00569 (Patent 6,458,158 B1)
`IPR2019-00570 (Patent 8,182,532 B2)
`
`PETITIONER:
`
`Herbert D. Hart III
`David D. Headrick
`Alejandro Menchaca
`Gregory C. Schodde
`Scott P. McBride
`MCANDREWS, HELD & MALLOY, LTD.
`hhart@mcandrews-ip.com
`dheadrick@mcandrews-ip.com
`amenchaca@mcandrews-ip.com
`gschodde@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`
`
`PATENT OWNER:
`
`Michael H. Jacobs
`Deborah H. Yellin
`Vincent J. Galluzzo
`Shannon Lentz
`Ali H.K. Tehrani
`Jacob Zambrzycki
`CROWELL & MORING LLP
`mjacobs@crowell.com
`dyellin@crowell.com
`vgalluzzo@crowell.com
`slentz@crowell.com
`atehrani@crowell.com
`jzambrzycki@crowell.com
`
`6
`
`