`Tel: 571-272-7822
`
`Paper 34
`Date: May 20, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WEATHERFORD INTERNATIONAL, LLC,
`Petitioner,
`
`v.
`
`BAKER HUGHES OILFIELD OPERATIONS, LLC,
`Patent Owner.
`
`IPR2019-00708 and IPR2019-007681
`Patent RE46,137 E
`
`Before MITCHELL G. WEATHERLY, JON B. TORNQUIST, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`WEATHERLY, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`1 This Order sets the schedule for the above-identified, related proceedings,
`which were each instituted on the same day. We exercise our discretion to
`issue one order covering each proceeding. The parties, however, are not
`authorized to use this style heading in any subsequent papers.
`
`
`
`IPR2019-00708 and IPR2019-00768
`Patent RE46,137 E
`
`I. HEARING AND ATTENDANCE
`
`Inter partes reviews IPR2019-00708 (“’708 IPR”) and IPR2019-
`
`00768 (“’768 IPR”) were instituted on September 5, 2019. Paper 8.2 A
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`Scheduling Order was issued the same day, which set the date for oral
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`hearing in the proceeding as June 9, 2020, if a hearing were requested by the
`
`parties and granted by the Board. Paper 9. Both parties have requested oral
`
`hearing pursuant to 37 C.F.R. § 42.70. ’708 IPR, Papers 27, 28; ’768 IPR,
`
`32, 33. Petitioner’s and Patent Owner’s requests for oral hearing are
`
`granted.
`
`The hearing will commence at 10:00 a.m., on June 9, 2020, and be
`
`conducted via video conference. To facilitate planning, each party must
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`contact PTAB Hearings at (571) 272-9797 five business days prior to the
`
`oral hearing date to receive video set-up information. As a reminder, 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 five business days prior to the hearing to receive dial-in connection
`
`information.
`
`As both parties have requested, each party will have sixty (60)
`
`minutes to present arguments to address both cases. Each party may allocate
`
`
`2 Unless otherwise noted, citations to Paper numbers apply to both
`proceedings.
`
`2
`
`
`
`IPR2019-00708 and IPR2019-00768
`Patent RE46,137 E
`
`their time for primary and rebuttal arguments with a maximum of fifteen
`
`(15) minutes reserved for rebuttal. Petitioner will present its primary
`
`argument first regarding the patentability of all claims at issue in each
`
`proceeding. Patent Owner will respond with its primary argument in
`
`response to Petitioner’s primary argument. Petitioner will present its
`
`rebuttal argument, limited to responding to Patent Owner’s responsive
`
`primary argument. Patent Owner will present its rebuttal, limited to
`
`responding to Petitioner’s rebuttal argument.
`
`The hearing will be accessible to the public and the parties are
`
`directed to contact the Board at least 10 days in advance of the hearing if
`
`there are any concerns about disclosing confidential information. The Board
`
`will provide a court reporter for the hearing, and the reporter’s transcript will
`
`constitute the official record of the hearing. 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
`
`may accommodate the special request. Any special requests must be
`
`presented in a separate communication not less than five (5) days before the
`
`hearing.
`
`The panel will have access to all papers filed with the Board,
`
`including demonstratives. During the oral hearing, the parties are advised to
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`identify clearly and specifically each demonstrative, evidence, or paper
`
`3
`
`
`
`IPR2019-00708 and IPR2019-00768
`Patent RE46,137 E
`
`referenced (e.g., by slide or screen number, exhibit number, or paper
`
`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 and mute themselves when not speaking. 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.
`
`II. DEMONSTRATIVE EXHIBITS
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits shall be served on
`
`opposing counsel at least seven (7) business days before the oral hearing,
`
`and filed as an exhibit no later than the time of the oral hearing. The parties
`
`also shall provide a courtesy copy of any demonstrative exhibits to the
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`Board at least three (3) business days prior to the oral hearing by emailing
`
`the exhibits to PTABHearings@uspto.gov. Demonstrative exhibits in this
`
`proceeding are not evidence and are intended only to assist the parties in
`
`presenting their oral argument to the panel, and should be clearly marked as
`
`such. For example, each slide may be marked with the words
`
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. See
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`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
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`are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board
`
`of Regents of the University of Michigan, IPR2013-00041 (PTAB
`
`January 27, 2015) (Paper 65), for guidance regarding the appropriate content
`
`of demonstrative exhibits, which must include citations to the record.
`
`4
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`
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`IPR2019-00708 and IPR2019-00768
`Patent RE46,137 E
`
`If either party objects to demonstrative exhibits, the parties shall meet
`
`and confer in good faith to resolve any such objections. A party may file a
`
`paper addressing any unresolved objections to demonstrative exhibits with
`
`the Board no later than three (3) business days before the oral hearing. The
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`paper shall include a single sentence per objection stating the basis for that
`
`objection and be accompanied by a copy of the allegedly objectionable
`
`demonstrative exhibit that identifies the objectionable portion of the exhibit
`
`with particularity. No further argument or explanation is permitted. We will
`
`consider the objections and, if we deem it necessary, we will further address
`
`the objections in a conference call or at the oral hearing. Otherwise, we will
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`reserve ruling on the objections until after the oral hearing.
`
`5
`
`
`
`IPR2019-00708 and IPR2019-00768
`Patent RE46,137 E
`
`PETITIONER:
`
`Douglas R. Wilson
`Michelle Armond
`ARMOND WILSON, LLP
`doug.wilson@armondwilson.com
`michelle.armond@armondwilson.com
`
`PATENT OWNER:
`
`Mark T. Garrett
`Eagle H. Robinson
`Jeremy Albright
`Michael Pohl
`NORTON ROSE FULBRIGHT US LLP
`mark.garrett@nortonrosefullbright.com
`eagle.robinson@nortonrosefullbright.com
`jeremy.albright@nortonrosefullbright.com
`michael.pohl@nortonrosefullbright.com
`
`6
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`