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`By:
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`
`
`
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`
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`Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SAMSUNG ELECTRONICS CO. LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.; and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
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`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`___________________
`
`Case No. IPR2014-00518
`Patent 8,023,580
`___________________
`
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70
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`
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`
`
`IPR2014-00518
`U.S. Patent No. 8,023,580
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`UNDER 37 C.F.R. § 42.70
`
`Rembrandt Wireless Technologies, LP (“Patent Owner”) respectfully
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`requests oral argument in IPR2014-00518 (“the ‘518 IPR”) under 37 C.F.R.
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`§ 42.70(a). Pursuant to the Scheduling Order dated September 23, 2014 (Paper
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`17), oral argument is currently scheduled for April 24, 2015.
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`Patent Owner notes that oral argument in the related proceeding IPR2014-
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`00519 (“the ‘519 IPR”) has also been scheduled for April 24, 2015. The ‘519 IPR
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`involves the same asserted references as applied to a different set of claims from
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`the same patent at issue in these proceedings. Patent Owner requests a single,
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`consolidated hearing to present its combined arguments in the ‘518 IPR and ‘519
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`IPR in view of the common issues to be addressed. Patent Owner requests 30
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`minutes of total time.
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`Oral argument will focus on patentability of the challenged claims of the
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`‘580 Patent. The principal issues to be argued by Patent Owner’s counsel will be
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`as follows:
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`A. An overview of the ‘580 Patent and the challenged claims.
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`B.
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`The teachings of the art relied upon by the Petitioner (i.e., alleged
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`Admitted Prior Art (“APA”), U.S. Patent No. 5,706,428 of Boer (Ex.
`
`1204) and the Upender/Koopman Article (Ex. 1218)).
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`-1-
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`C.
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`Petitioner’s failure to demonstrate the obviousness of any of the
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`challenged claims over the APA and Boer:
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`1.
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`A person of ordinary skill in the art would not have been
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`motivated to modify Boer as proposed by Petitioner
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` Unreliability of Petitioner’s declarant’s testimony (Ex.
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`1220) regarding purported motivation based on
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`teachings of Upender/Koopman article
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` Testimony of co-author Dr. Koopman (Ex. 2208) that
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`Boer teaches away from the proposed modification and
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`that the Upender/Koopman article does not support such
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`a combination
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`2.
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`Boer fails to disclose using at least two different “types” of
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`modulation methods as alleged by Petitioner
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` proper construction of “types” of modulation methods
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`D. Any additional issues for which the Board requests argument or any
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`additional issue raised by Petitioner prior to or at oral argument (e.g.,
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`in any motion to exclude).
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`At the oral argument, the Patent Owner requests use of audio/visual
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`equipment to display demonstrative exhibits, including the use of a projector and
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`screen for a PowerPoint display. In accordance with the Trial Practice Guide, 77
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`-2-
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`
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`Fed. Reg. at 48768, Patent Owner will contact the Board Trial Division paralegal
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`IPR2014-00518
`U.S. Patent No. 8,023,580
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`to discuss this request. Patent Owner additionally requests permission to present
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`handouts of demonstrative exhibits during the oral argument.
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`Dated: March 20, 2015
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`
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`Respectfully submitted,
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`-3-
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`
`
`IPR2014-00518
`U.S. Patent No. 8,023,580
`
`CERTIFICATE OF SERVICE
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`millerj@dicksteinshapiro.com
`cardyd@dicksteinshapiro.com
`Samsung.Rembrandt@dicksteinshapiro.com
`
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
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`
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` I
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` hereby certify that on March 20, 2015, a true and accurate copy of this paper,
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT, were served on the following
`counsel for Petitioner via email:
`
`Jeffrey A. Miller
`Daniel G. Cardy
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`
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`J. Steven Baughman
`Gabrielle E. Higgins
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`
`Dated: March 20, 2015
`
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`