Paper No. 44
`Trials@uspto.gov
`571-272-7822
`
`Entered: October 2, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`
`
`Case IPR2016-01135
`Patent 5,812,7891
`
`
`
`
`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 IPR2017-00512 has been joined with this proceeding.
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`

`

`IPR2016-01135
`Patent 5,812,789
`
`
`
`
`
`On December 6, 2016, we instituted an inter partes review as to claims 1–8
`and 11–14 of U.S. Patent No. 5,812,789 (Ex. 1001, “the ’789 patent”). Paper 7.
`After issuing an Order to Show Cause (Paper 32), we vacated the Decision to
`Institute with respect to claims 1, 3–6, 11, and 13, thereby leaving only claims 2, 7,
`8, 12, and 14 for our consideration (Paper 43). Per our instructions (Paper 43, 11),
`we received a joint email correspondence from the parties representing that they
`are in advanced discussions to settle their dispute as to the remaining claims of the
`’789 patent. In the event that settlement is not reached, Petitioner, HTC Corp. and
`HTC America, Inc. (“HTC”), requests an oral argument. Patent Owner, Parthenon
`Unified Memory Architecture LLC (“Parthenon”), however, does not believe an
`oral argument is necessary in the light of the parties’ advanced settlement
`discussions. Because there is no guarantee that the parties, indeed, will settle their
`dispute as to the remaining claims of the ’789 patent, and because HTC bears the
`burden of proving that these claims are unpatentable, HTC’s request is granted.
`Given that claims 2, 7, 8, 12, and 14 are the only claims remaining for our
`consideration, each party shall be accorded twenty (20) minutes of total time to
`present oral arguments. As noted above, HTC bears the ultimate burden of proof
`that these challenged claims are unpatentable based on the grounds of
`unpatentability (“grounds”) instituted in this proceeding. 35 U.S.C. § 316(e)
`(“[T]he petitioner shall have the burden of proving a proposition of unpatentability
`by a preponderance of the evidence.”). HTC, therefore, will proceed first to
`present its case as to the challenged claims and the grounds instituted. HTC may
`reserve rebuttal time. Thereafter, Parthenon will respond to HTC’s case. HTC
`then may make use any reserved rebuttal time to respond to Parthenon’s case.
`
`The hearing will commence at 1:00 PM Eastern Time on Wednesday,
`October 11, 2017, and it will be open to the public for in-person attendance on the
`
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`IPR2016-01135
`Patent 5,812,789
`
`
`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
`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
`
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`IPR2016-01135
`Patent 5,812,789
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`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.
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`IPR2016-01135
`Patent 5,812,789
`
`For PETITIONER:
`Andrew Ehmke
`David O’Brien
`Haynes Boone
`Andy.ehmke.ipr@haynesboone.com
`David.obrien.ipr@haynesboone.com
`
`Joseph A. Micallef
`Sidley Austin LLP
`jmicallef@sidley.com
`
`For PATENT OWNER:
`Massod Anjom
`Scott Clark
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
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`5
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