Paper 30
`Trials@uspto.gov
`571-272-7822
`
`Entered: April 17, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.,
`Petitioner,
`v.
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`
`
`Case IPR2016-00923 (Patent 5,812,789)1
` Case IPR2016-00924 (Patent 5,960,464)2,3
`
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`ORDER
`Oral Argument
`35 U.S.C. 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`1 Case IPR2016-00847 has been joined with this proceeding.
`2 Case IPR2016-00848 has been joined with this proceeding.
`3 This Order addresses an issue that is identical in both cases. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. The parties are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`

`

`IPR2016-00923 (Patent 5,812,789)
`
`
`IPR2016-00924 (Patent 5,960,464)
`On August 23, 2016, we instituted an inter partes review as to claims 1, 3–6,
`11, and 13 of U.S. Patent No. 5,812,789. Case IPR2016-00923, Paper 10. Also,
`on August 23, 2016, we instituted an inter partes review as to claims 1–4, 7–13,
`16–24, 32–36 and 40 of U.S. Patent No. 5,960,464. Case IPR2016-00924, Paper
`10. We issued a Scheduling Order in both proceedings that included the same
`DUE DATES. Case IPR2016-00923, Paper 11; Case IPR2016-00924, Paper 11.
`Both parties request oral argument for these proceedings pursuant to 37 C.F.R.
`§ 42.70(a). Case IPR2016-00923, Papers 28, 29; Case IPR2016-00924, Papers 28,
`29. The parties’ requests are granted.
`Petitioner entities, Apple, Inc., HTC Corporation, and HTC America, Inc.
`(collectively, “Apple”), request one (1) hour, in total, to present oral arguments for
`Cases IPR2016-00923 (Paper 29, 2) and IPR2016-00924 (Paper 29, 2). Patent
`Owner, Parthenon Unified Memory Architecture LLC (“Parthenon”), does not
`request a specific amount of oral argument time for Cases IPR2016-00923 (Paper
`28) and IPR2016-00924 (Paper 28). We have reviewed the issues that the parties
`intend to address for each proceeding, and we agree with Apple that each party
`should be accorded one (1) hour of total time to present oral arguments for both
`proceedings. The hearings for these two cases shall be conducted seriatim. On or
`before May 4, 2017, Apple shall confer with Parthenon and shall inform Parthenon
`and the Board (via e-mail to Trials@uspto.gov) how much of its allotted time it
`shall use for each proceeding.
`Apple bears the ultimate burden of proof that the challenged claims are
`unpatentable based on the grounds of unpatentability (“grounds”) instituted in
`these proceedings. 35 U.S.C. § 316(e). Apple, therefore, will proceed first to
`present its case as to the challenged claims and the grounds instituted in Case
`IPR2016-00923. Apple may reserve rebuttal time. Thereafter, Parthenon will
`respond to Apple’s case. Apple then will make use of its rebuttal time to respond
`2
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`
`
`

`

`
`
`IPR2016-00923 (Patent 5,812,789)
`
`IPR2016-00924 (Patent 5,960,464)
`to Parthenon’s case. After completion of all the parties’ arguments in Case
`IPR2016-00923, the parties then will proceed to follow this same procedure for
`Case IPR2016-00924.
`
`The consolidated hearing will commence at 1:00 PM Eastern Time on
`Thursday, May 18, 2017, and it will be open to the public for in-person attendance
`on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia (Hearing Room A). In-person attendance will be accommodated on a
`first-come first-serve basis. We will provide a court reporter for the hearing, and
`the reporter’s transcript will constitute the official record of the hearing.
`
`Pursuant to 37 C.F.R. § 42.70(b), demonstrative exhibits must be served no
`later than seven (7) business days before the hearing date. They shall be filed with
`the Board no later than the time of the hearing. Demonstrative exhibits are not
`evidence, but merely a visual aid for use at the hearing. Demonstrative exhibits
`shall not introduce new arguments or evidence. The parties must initiate a
`conference call with us at least two (2) business days prior to the hearing date to
`resolve any dispute over the propriety of each party’s demonstrative exhibits.
`Regardless of whether the propriety of any demonstrative exhibit is disputed by
`either party, we consider demonstrative exhibits only to the extent (1) that they
`elucidate the parties’ arguments presented during the hearing and (2) that they
`include only arguments and/or evidence already of record in the proceedings. For
`further guidance on what constitutes an appropriate demonstrative exhibit, the
`parties are directed to CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`Case IPR2013-00033 (PTAB Oct. 23, 2013) (Paper 118).
`We expect lead counsel for each party to be present at the hearing; however,
`any backup counsel may make the actual presentation, in whole or in part. See
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,758 (Aug. 14, 2012).
`If lead counsel for either party is unable to attend the hearing, the parties shall
`3
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`

`

`
`
`IPR2016-00923 (Patent 5,812,789)
`
`IPR2016-00924 (Patent 5,960,464)
`request a joint telephone conference call no later than two (2) business days prior
`to the hearing date to discuss the matter.
`We take this opportunity to remind the parties that each presenter must
`identify clearly and specifically each demonstrative exhibit (e.g., by slide or screen
`number) referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that two members of the panel
`will be attending the hearing electronically from remote locations. If the parties
`have questions as to whether demonstrative exhibits would be sufficiently visible
`and available to each of the Administrative Patent Judges presiding over the
`hearing, the parties are invited to contact the Board at 571-272-9797.
`Requests for special accommodations or audio-visual equipment are to be
`made at least five (5) business days in advance of the hearing date. Such requests
`must be sent to Trials@uspto.gov. If the requests are not received timely,
`requested accommodations and/or equipment may not be available on the day of
`the hearing.
`
`
`
`
`
`
`4
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`

`
`
`
`
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`For PETITIONER:
`Andrew S. Ehmke
`David W. O’Brien
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`david.obrien.ipr@haynesboone.com
`
`For PATENT OWNER:
`Massod Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS,
` ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`5
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`