`Petitioners’ Request for Oral Hearing
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`Paper No.
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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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`SIERRA WIRELESS AMERICA, INC., SIERRA WIRELESS, INC. AND RPX
`CORP.
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`Petitioner
`v.
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`M2M SOLUTIONS LLC
`Patent Owner
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`Patent No. 8,648,717
`Issue Date: February 11, 2015
`Title: PROGRAMMABLE COMMUNICATOR
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`Inter Partes Review No. 2015-01823
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`PETITIONERS’ REQUEST FOR ORAL HEARING
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`4850-6196-5882.1
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`1
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`U.S. Patent No. 8,648,717
`Petitioners’ Request for Oral Hearing
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`I.
`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.70(a), Petitioners, Sierra Wireless America, Inc.,
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`Sierra Wireless, Inc. and RPX Corporation hereby request oral argument. The
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`oral argument is presently scheduled for December 5, 2016. See Paper 19. The
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`issues to be argued are:
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`1. Obviousness based on the instituted grounds:
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`a) Claims 1, 3, 5, 6, 10–13, 15, 18, 22–24, and 29 of the ’717 patent
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`as unpatentable under 35 U.S.C. § 103(a) over the combination of
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`Whitley and the SIM Specification;
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`b) Claims 16, 17, 19, and 20 of the ’717 patent as unpatentable under
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`35 U.S.C. § 103(a) over the combination of Whitley, the SIM
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`Specification, and Kail; and
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`c) Claim 21 of the ’717 patent as unpatentable under 35 U.S.C. §
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`103(a) over the combination of Whitley, the SIM Specification,
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`and Eldredge.
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`2. Rebuttal to Patent Owner’s presentation on all matters;
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`3. Any evidentiary issues raised by the parties;
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`4. Any additional issues on which the Board seeks information or
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`clarification.
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`Sierra Wireless requests it be permitted to argue first. Office Patent Trial
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`4850-6196-5882.1
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`2
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`U.S. Patent No. 8,648,717
`Petitioners’ Request for Oral Hearing
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`Practice Guide, 77 Fed. Reg, 45,756, 48,768 (Aug. 14, 2012) (“[A] petitioner to a
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`hearing will go first followed by the patent owner or respondent after which a
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`rebuttal may be given by the petitioner.”). Sierra Wireless requests a total of sixty
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`(60) minutes for arguments with the opportunity to reserve time for a rebuttal.
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`Sierra Wireless further requests the use of audio-visual equipment to assist
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`its arguments and to display its demonstrative exhibits and evidence of record,
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`including a connectable projector and a screen. Sierra Wireless requests the
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`services of a court reporter to transcribe the proceeding.
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`Respectfully submitted,
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`Dated: October 6, 2016
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`By:
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`/Jennifer Hayes/
`Reg. No. 50,845
`Nixon Peabody LLP
`P.O. Box 60610
`Palo Alto, CA 94306
`Tel. (650) 320-7763
`Fax (650) 320-7701
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`4850-6196-5882.1
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`3
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`U.S. Patent No. 8,648,717
`Petitioners’ Request for Oral Hearing
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
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`Request for Oral Hearing was served on October 6, 2016 upon the following
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`By: /Jennifer Hayes/
`Counsel for Petitioner
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`parties via email:
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`Marc N. Henschke
`Mhenscheke@foley.com
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`Jeffrey Costakos
`jcostakos@foley.com
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`Michelle Moran
`mmoran@foley.com
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`4850-6196-5882.1
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