`571.272.7822
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`Paper No. 26
`Entered: September 25, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAMSUNG ELECTRONICS CO., LTD;
`SAMSUNG ELECTRONICS AMERICA, INC.;1
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`Petitioner,
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`v.
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`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2014-011812
`Patent 8,532,641 B2
`____________
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
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`TORNQUIST, Administrative Patent Judge.
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`
`
`
`ORDER
`Modifying Scheduling Order and
`Granting the Parties’ Request for Oral Argument
`37 C.F.R. §§ 42.5, 42.70
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`
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`
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`1 On January 1, 2015, Samsung Telecommunications America, LLC, an
`originally-named Petitioner in this case, was merged into Samsung
`Electronics America, Inc. See IPR2014-01181, Paper 9.
`2 On March 24, 2015, we consolidated IPR2014-01182 and IPR2014-01184
`with IPR2014-01181. IPR2014-01181, Paper 15, 2.
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`
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`IPR2014-01181
`Patent 8,532,641 B2
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`
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`On September 21, 2015, a telephone conference was held between
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`respective counsel for the parties and Judges Turner, Pettigrew, and
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`Tornquist. Counsel for Patent Owner requested the conference call to seek
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`modification of the current Scheduling Order (Paper 11) in order to
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`accommodate the deposition of Petitioner’s declarant.
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`Scheduling Order
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`On the call, we granted Patent Owner’s request to modify Due Dates
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`4, 5, and 6 of the Scheduling Order, as agreed to by the parties on the call, as
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`follows: Due Date 4 is now October 6; Due Date 5 is now October 13; and
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`Due Date 6 is now October 20. In view of the modification to Due Date 6,
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`service of demonstrative exhibits, and the filing of any objections thereto,
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`shall be in accordance with the deadlines set forth below.
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`Oral Argument
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`On the call, both parties indicated they intend to request oral
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`argument. We deem this to be a request for oral argument pursuant to 37
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`C.F.R. § 42.70, which we grant.
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`Oral argument shall commence at 2:00 PM Eastern Time on October
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`28, 2015, on the 9th floor of Madison Building East, 600 Dulany Street,
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`Alexandria, Virginia.
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`Each side will have ninety (90) minutes to present argument.
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`Petitioner bears the ultimate burden of proof that Patent Owner’s claims at
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`issue are unpatentable. Thus, Petitioner will open the hearing by presenting
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`its case regarding the challenged claims for which we instituted trial.
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`Petitioner may reserve some of its argument time for rebuttal. Thereafter,
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`Patent Owner will respond to Petitioner’s presentation.
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`2
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`IPR2014-01181
`Patent 8,532,641 B2
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`The Board will provide a court reporter for the hearing and the
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`reporter’s transcript will constitute the official record of the hearing. The
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`hearing will be open to the public for in-person attendance that will be
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`accommodated on a first-come, first-served basis. If the parties have any
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`concern about disclosing confidential information, they are requested to
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`contact the Board at least 5 days in advance of the hearing to discuss the
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`matter.
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`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
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`proponent of deposition testimony must file such testimony as an exhibit.
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`The Board will not consider any deposition testimony that has not been so
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`filed.
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`Demonstrative exhibits are to be served by October 23, 2015. The
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`parties shall provide a courtesy copy of any demonstrative exhibits to the
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`Board on or before October 23, 2015 by emailing them to Trials@uspto.gov.
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`The parties also should note that one or more members of the panel will be
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`attending the hearing electronically from a remote location by use of two-
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`way audiovisual communication equipment and will not be able to view the
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`projection screen in the hearing room. If a demonstrative exhibit is not filed
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`before the hearing or otherwise made available to the judge presiding over
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`the hearing remotely, that demonstrative exhibit will not be considered.
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`The Board expects that the parties will meet and confer in good faith
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`to resolve any objections to demonstrative exhibits, but if such objections
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`cannot be resolved the parties may file any objections to demonstratives with
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`the Board on or before October 26, 2015. Any objection to demonstrative
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`exhibits that is not timely presented will be considered waived. The
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`objections should identify with particularity which demonstratives are
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`IPR2014-01181
`Patent 8,532,641 B2
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`subject to objection and include a short (one sentence or less) statement of
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`the reason for each objection. No argument or further explanation is
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`permitted. The Board will consider the objections and schedule a
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`conference if deemed necessary. Otherwise, the Board will reserve ruling on
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`the objections until after the oral argument. The parties are directed to St.
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`Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the
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`University of Michigan, IPR2013-00041 (PTAB January 27, 2014) (Paper
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`65), for guidance regarding the appropriate content of demonstrative
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`exhibits.
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`No live testimony from any witness will be taken at the oral argument.
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`The Board expects lead counsel for each party to be present in person at the
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`oral hearing. However, any counsel of record may present the party’s
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`argument. If either party expects that its lead counsel will not be attending
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`the oral argument, the parties should initiate a joint telephone conference
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`with the Board no later than two business days prior to the oral hearing to
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`discuss the matter.
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`Any special requests for audiovisual equipment should be directed to
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`Trials@uspto.gov. Requests for special equipment will not be honored
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`unless presented in a separate communication not less than five days before
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`the hearing, directed to the above email address.
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`In light of the foregoing, it is:
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`ORDERED that the current Scheduling Order (Paper 11) is hereby
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`modified as follows: Due Date 4 is now October 6; Due Date 5 is now
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`October 13; and Due Date 6 is now October 20; and
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`4
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`IPR2014-01181
`Patent 8,532,641 B2
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`
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`FURTHER ORDERED that oral hearing, conducted pursuant to the
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`procedures outlined above, shall commence at 2:00 PM Eastern Time on
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`October 28, 2015.
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`IPR2014-01181
`Patent 8,532,641 B2
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`PETITIONERS:
`
`J. Steven Baughman
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`Gabrielle E. Higgins
`ROPES & GRAY LLP
`gabrielle.higgins@ropesgray.com
`
`Kathryn N. Hong
`Kathryn.Hong@ropesgray.com
`
`
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`PATENT OWNER:
`
`Ryan M. Schultz
`ROBINS, KAPLAN, MILLER & CIRESI LLP
`rmschultz@rkmc.com
`
`Thomas R. DeSimone
`ROBINS, KAPLAN, MILLER & CIRESI LLP
`trdesimone@rkmc.com
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`
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