Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 20
`Entered: August 8, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-012081 and IPR016-012092
`Patent 7,746,916 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, PATRICK M. BOUCHER, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
`The date set for oral hearing is September 15, 2017. IPR2016-01208,
`Paper 9; IPR2016-01209, Paper 9. The parties request oral hearing.
`
`1 IPR2016-01277 has been consolidated with this proceeding.
`2 IPR2016-01280 has been consolidated with this proceeding.
`
`

`

`IPR2016-01208
`Patent 7,746,916 B2
`
`IPR2016-01208, Papers 18, 19; IPR2016-01209, Papers 18, 19. The requests are
`granted.
`These cases involve one patent, and there is overlap in the cited art and the
`Petitioners’ arguments. IPR2016-01208, Papers 2, 7; IPR2016-01209, Papers 2, 7.
`IPR2016-01277 was consolidated with IPR2016-01208, and IPR2016-01280 was
`consolidated with IPR2016-01209, because the petitions were, respectively, identical
`in substance and limited to the same claims, grounds, arguments, and evidence.
`IPR2016-01277, Paper 8; IPR2016-01280, Paper 8. The Petitioners, pursuant to the
`Board’s Orders (id.), filed a joint Reply on behalf of all the Petitioners in IPR2016-
`01208 (Paper 17) and in IPR2016-01209 (Paper 17) and a joint Request for Oral
`Argument on behalf of all the Petitioners in IPR2017-01208 (Paper 19) and in
`IPR2016-01209 (Paper 19). Accordingly, the time allotted to Petitioners for
`argument is to be shared by all the Petitioners.
`The Petitioners are ordered to confer and reach agreement as to one attorney
`who shall argue on behalf of all the Petitioners. If the Petitioners are unable to reach
`agreement as to who shall argue on behalf of all the Petitioners, the parties should
`request a joint telephone conference with the Board no later than 10 days prior to the
`oral hearing to discuss the matter.
`Petitioners will have 60 minutes, total, to present their argument and may
`allocate time between the instituted grounds in IPR2016-01208 and IPR2016-01209
`as they see fit. Patent Owner will have 60 minutes, total, to present its argument.
`Petitioners bear the ultimate burden of proof that Patent Owner’s claims at issue in
`these reviews are unpatentable. Therefore, Petitioners will open the hearing by
`presenting their argument. After Petitioners’ presentation, Patent Owner will respond
`to Petitioners’ argument. Petitioners may reserve time to respond to Patent Owner’s
`argument. Patent Owner may not reserve time.
`
`2
`
`

`

`IPR2016-01208
`Patent 7,746,916 B2
`
`The hearing will commence at 10 AM Eastern Time on September 15, 2017, on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`The Board will provide a court reporter for the hearing and the reporter’s transcript
`will constitute the official record of the hearing. At least one member of the panel
`may be attending the oral argument remotely by use of two-way audio-visual
`communication 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, the parties should
`request a joint telephone conference with the Board no later than 10 days prior to the
`oral 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.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at least
`seven business days before the hearing date. Notwithstanding 37 C.F.R. § 42.70(b),
`each party also shall file its demonstrative exhibits with the Board as a separate paper
`at least two business days prior to the hearing. A hard copy of the demonstratives
`should be provided to the court reporter at the hearing, but hard copies of the
`demonstratives are not needed for the judges.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The
`Board of Regents of the University of Michigan, IPR2013-00041 (PTAB January 27,
`2015) (Paper 65), for guidance regarding the appropriate content of demonstrative
`exhibits. Demonstrative exhibits are not evidence and may not introduce new
`evidence or arguments. Instead, demonstrative exhibits should cite to evidence in the
`record. The parties are reminded that the 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.
`
`3
`
`

`

`IPR2016-01208
`Patent 7,746,916 B2
`
`The parties shall meet and confer to discuss and resolve any objections to
`demonstrative exhibits. Any party with unresolved objections to a demonstrative
`exhibit must file a list of those objections with the Board at least two business days
`before the hearing. For each objection, the list must identify with particularity which
`portions of the exhibits are subject to the objection and may include a short, one-
`sentence statement explaining the objection. No argument or further explanation is
`permitted. The Board will consider any objections and schedule a conference call if
`deemed necessary. Otherwise, the Board will reserve ruling on the objections.
`Generally, the Board expects lead counsel for each party to be present in
`person at the oral hearing. Patent Owner states in its Request that it anticipates that
`its lead counsel will not be present at oral hearing in this case, and that backup
`counsel will present argument. Given that Patent Owner’s backup counsel is a
`registered practitioner, has signed Patent Owner’s merits briefing, and has
`participated extensively in prior conferences with the Board in these matters,
`attendance by lead counsel is not required at the oral hearing. If any Petitioner
`expects that its lead counsel will not be attending the oral hearing, the parties should
`request a joint telephone conference with the Board no later than 10 days prior to the
`oral hearing 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 days before the hearing
`directed to the above email address.
`
`4
`
`

`

`IPR2016-01208
`Patent 7,746,916 B2
`
`PETITIONER
`Walter Renner
`Roberto Devoto
`David Holt
`FISH & RICHARDSON P.C.
`IPR00035-0006IP2@fr.com
`PTABInbound@fr.com
`
`James Glass
`Kevin Johnson
`Todd Briggs
`John McKee
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`Charles M. McMahon
`Hersh H. Mehta
`McDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen S. Korniczky
`Martin Bader
`Ericka J. Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppartmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`PATENT OWNER
`Cyrus A. Morton
`Ryan M. Schultz
`Robins Kaplan LLP
`2800 LaSalle Plaza,
`800 LaSalle Ave,
`
`5
`
`

`

`IPR2016-01208
`Patent 7,746,916 B2
`
`Minneapolis, MN 55402
`CMorton@robinskaplan.com
`RSchultz@robinskaplan.com
`
`6
`
`