`571-272-7822
`
`Paper 38
`Entered: May 3, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`QUALCOMM, INC.,
`Petitioner,
`
`v.
`
`BANDSPEED, INC.,
`Patent Owner.
`____________
`
` IPR2015-00314 (Patent 7,447,624 B2)1
`IPR2015-00315 (Patent 7,477,624 B2)
`IPR2015-00316 (Patent 7,447,624 B2)
`IPR2015-00531 (Patent 8,542,643 B2)
`____________
`
`Before BART A. GERSTENBLITH, DAVID C. McKONE, and
`PATRICK M. BOUCHER, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`ORDER
`Request for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 The parties are not authorized to use this style heading in subsequent
`papers.
`
`
`
`Case IPR2015-00314 (Patent 7,477,624 B2)
`Case IPR2015-00315 (Patent 7,477,624 B2)
`Case IPR2015-00316 (Patent 7,477,624 B2)
`Case IPR2015-00531 (Patent 8,542,643 B2)
`
`
`The date for oral argument in each of these proceedings is set for
`May 26, 2016, if argument is requested by the parties and granted by the
`Board. Paper 22 (IPR2015-00314), Paper 24 (IPR2015-00315), Paper 22
`(IPR2015-00316), Paper 22 (IPR2015-00531). Patent Owner has requested
`oral argument pursuant to 37 C.F.R. § 42.70. Paper 35 (IPR2015-00314),
`Paper 37 (IPR2015-00315), Paper 35 (IPR2015-00316), Paper 35 (IPR2015-
`00531). The request is granted.
`Each side will have 75 minutes, total, to present argument as to all
`four cases. Any representation made by counsel at the consolidated hearing
`is applicable to and useable in all proceedings which have underlying basis
`for the representation. The Board will provide a court reporter for the
`consolidated hearing and the reporter’s transcript will constitute the official
`record of the hearing for all four proceedings.
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue in these reviews are unpatentable. Therefore, Petitioner will
`open the hearing by presenting its case regarding the challenged claims for
`which the Board instituted trial. Petitioner may allocate its time as it wishes
`among the two patents involved in the four proceedings. After Petitioner’s
`presentation, Patent Owner will respond to Petitioner’s argument. Petitioner
`may reserve time to respond to arguments presented by Patent Owner. Time
`may not be reserved by Patent Owner.
`The hearing will commence at 1:00 PM EDT on May 26, 2016, on the
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia. At least one member of the panel will be attending the oral
`argument remotely by use of two-way, audio-visual communication
`
`2
`
`
`
`Case IPR2015-00314 (Patent 7,477,624 B2)
`Case IPR2015-00315 (Patent 7,477,624 B2)
`Case IPR2015-00316 (Patent 7,477,624 B2)
`Case IPR2015-00531 (Patent 8,542,643 B2)
`
`equipment. The hearing will be open to the public for in-person attendance
`that will be accommodated on a first-come, first-served basis. If the parties
`have any concern about disclosing confidential information, they are
`requested to contact the Board at least 10 days in advance of the hearing to
`discuss the matter.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been so
`filed.
`
`Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must
`be served at least seven (7) business days before the hearing date. The
`parties also shall provide a courtesy copy of any demonstrative exhibits to
`the Board at least seven (7) business days prior to the hearing by emailing
`them to Trials@uspto.gov. The parties shall not file any demonstrative
`exhibits in this proceeding without prior authorization from the Board.
`The parties must file any objections to the demonstrative exhibits with
`the Board at least two (2) business days before the hearing. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived. The objections should identify with particularity which
`demonstrative exhibits are subject to objection, and include a short (one
`sentence or less) statement of the reason for each objection. No argument or
`further explanation is permitted. The Board will consider the objections and
`schedule a conference if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections until after the oral argument. The parties are
`directed to St. Jude Med., Cardiology Div., Inc. v. Board of Regents of the
`
`3
`
`
`
`Case IPR2015-00314 (Patent 7,477,624 B2)
`Case IPR2015-00315 (Patent 7,477,624 B2)
`Case IPR2015-00316 (Patent 7,477,624 B2)
`Case IPR2015-00531 (Patent 8,542,643 B2)
`
`Univ. of Mich., IPR2013-00041 (PTAB Jan. 27, 2015) (Paper 65), for
`guidance regarding the appropriate content of demonstrative exhibits.
`The Board expects lead counsel for each party to be present in person
`at the oral argument. However, any counsel of record may present the
`party’s argument. If either party expects 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 (2) business days prior to the
`argument to discuss the matter.
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. Requests for special equipment will not be honored
`unless presented in a separate communication not less than five (5) days
`before the hearing directed to the above email address.
`
`
`
`4
`
`
`
`Case IPR2015-00314 (Patent 7,477,624 B2)
`Case IPR2015-00315 (Patent 7,477,624 B2)
`Case IPR2015-00316 (Patent 7,477,624 B2)
`Case IPR2015-00531 (Patent 8,542,643 B2)
`
`PETITIONER:
`Nathan Rees
`Richard S. Zembek
`R. Ross Viguet
`Daniel Leventhal
`NORTON ROSE FULBRIGHT US LLP
`nate.rees@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`ross.viguet@nortonosefulbright.com
`daniel.leventhal@nortonrosefulbright.com
`
`Robert E. Sokohl
`Jeffrey T. Helvey
`STERNE, KESSLER, GOLDSTEIN & FOX
`rsokohl-PTAB@skgf.com
`jhelvey-PTAB@skgf.com
`
`
`
`PATENT OWNER:
`Gregory Donahue
`DINOVO PRICE ELLWANGER & HARDY LLP
`gdonahue@dpelaw.com
`
`David O. Simmons
`IVC PATENT AGENCY
`dsimmons1@sbcglobal.net
`
`
`5