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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.
`Patent Owner
`
`
`
`
`
`
`Case No. IPR2016-01198
`Patent 9,179,005
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`
`

`

`IPR2016-01198
`U.S. Patent No. 9,179,005
`Pursuant to the Board’s November 21, 2016, Scheduling Order (Paper 7),
`
`Petitioner respectfully requests oral argument for the trial currently scheduled on July 20,
`
`2017. Petitioner notes that oral argument for this IPR is scheduled on the same date as
`
`the oral argument for IPR2016-01201, for which Petitioner is filing a similar request for
`
`oral argument. Petitioner respectfully submits that due to the overlap between these two
`
`IPRs combining the oral argument into one hearing would be more efficient than holding
`
`two separate hearings. Pursuant to 37 C.F.R. § 42.70(a), Petitioner requests a total of one
`
`hour of time for an oral argument addressing both IPRs as well as Patent Owner’s
`
`attempts to establish an actual reduction to practice. Petitioner further specifies the
`
`following issues, without intent to waive consideration of any issue not requested, to be
`
`argued for this proceeding:
`
`I. Whether claims 1, 24-26, 49-50, 73-79, 83-84, 88-89, 92, 94-96, and 98-99
`
`of the ’005 Patent are obvious over U.S. Patent No. 7,486,684 to Chu, et al.
`
`(“Chu ’684”) in view of U.S. Patent No 8,036,366 to Chu (“Chu ’366”);
`
`II. Whether claims 1, 24-26, 49-50, 73-79, 83-84, 88-89, 92, 94-96, and 98-99
`
`of the ’005 Patent are obvious over Chu ’684 in view of U.S. Patent
`
`Publication No. 2007/00644919 to Chen, et al. (“Chen”);
`
`III. Whether Voip-Pal has met its burden for establishing an actual reduction to
`
`practice for purposes of antedating Chu ‘366.
`
`IV. Whether Voip-Pal has met its burden for establishing an actual reduction to
`
`practice for purposes of antedating Chen.
`
`
`
`1
`
`

`

`IPR2016-01198
`U.S. Patent No. 9,179,005
`V. Whether any evidence should be excluded pursuant Voip-Pal’s objections
`
`as set forth in Voip-Pal’s not yet filed Motion to Exclude.
`
`Respectfully submitted,
`
`
`
`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Eric A. Buresh, Reg. No. 50,394
`ERISE IP, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`eric.buresh@eriseip.com
`adam.seitz@eriseip.com
`Paul R. Hart, Reg. No. 59,646
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`(913) 777-5600 Phone
`(913) 777-5601 Fax
`paul.hart@eriseip.com
`ATTORNEYS FOR PETITIONER
`
`2
`
`
`
`Date: June 14, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2016-01198
`U.S. Patent No. 9,179,005
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on June 14, 2017, a true and correct
`
`copy of this PETITIONER’S REQUEST FOR ORAL HEARING was
`
`served upon
`
`the following counsel for Petitioners, via
`
`the email
`
`correspondence address of record:
`
`
`
`
`
`
`
`
`
`Kerry Taylor, Reg. No. 43,947
`2kst@knobbe.com
`John M. Carson, Reg. No. 34,303
`2jmc@knobbe.com
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`858-707-4000 Phone
`858-707-4001 Fax
`
`
`Respectfully submitted,
`
`BY:
`
`
`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`
`ATTORNEY FOR PETITIONER
`
`
`3
`
`

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