`
`Case No. IPR2016-01211
`Patent No. 8,504,746
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Canon Inc., et al.,
`Petitioners
`
`v.
`
`Papst Licensing GMBH & CO. KG,
`Patent Owner
`
`
`
`Case No: IPR2016-01211
`U.S. Patent No. 8,504,746
`
`
`
`
`
`
`
`JOINT REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.70(a), Patent Owner Papst Licensing GMBH &
`
`Case No. IPR2016-01211
`Patent No. 8,504,746
`
`
`CO. KG and Petitioners Canon Inc.; Canon U.S.A., Inc.; Canon Financial Services,
`
`Inc.; FUJIFILM Corporation; FUJIFILM Holdings America Corporation;
`
`FUJIFILM North America Corporation; JVC KENWOOD Corporation;
`
`JVCKENWOOD USA Corporation; Nikon Corporation; Nikon Inc.; Olympus
`
`Corporation; Olympus America Inc.; Panasonic Corporation; Panasonic
`
`Corporation of North America; Samsung Electronics Co., Ltd.; Samsung
`
`Electronics America, Inc.; and joined Petitioners LG Electronics Mobilecomm
`
`USA, Inc.; LG Electronics USA, Inc.; LG Electronics, Inc.; Huawei Device
`
`(Dongguan) Co., Ltd.; Huawei Device Co., Ltd.; Huawei Device USA; Huawei
`
`Technologies Co., Ltd; Huawei Technologies USA, Inc.; and Apple Inc. hereby
`
`jointly request an opportunity to present oral argument regarding the patentability
`
`of the instituted claims of U.S. Patent No. 8,504,746 (“the ’746 patent”).
`
`Between these parties, there are a total of eight IPRs involving the ’746
`
`patent and U.S. Patent No. 8,966,144 (“the ’144 patent”) with oral argument dates
`
`scheduled for either September 13 or 14, 2017. The Scheduling Order for
`
`IPR2016-01199, IPR2016-01212, IPR2016-01214, IPR2016-01216, and IPR2016-
`
`01225 relating to the ’144 patent sets any oral argument for September 13, 2017,
`
`and the Scheduling Orders for IPR2016-01200, IPR2016-01211, and IPR2016-
`
`01213 regarding the ’746 patent set any oral argument for September 14, 2017.
`
`
`
`2
`
`
`
`Such a schedule will require the Board and the parties to address the same primary
`
`Case No. IPR2016-01211
`Patent No. 8,504,746
`
`
`prior art references (i.e., Kawaguchi, Aytac, McNeill, and Yamamoto) on different
`
`days.
`
`The parties believe oral argument can proceed more efficiently by grouping
`
`the IPRs so that the same primary prior art references are addressed the same day.
`
`Consequently, the parties propose that oral argument proceed as follows:
`
`Hearing on September 13, 2017
`
`
`
`
`
`Argument on IPR2016-01211, IPR2016-01212, and IPR2016-01216 (“the
`Kawaguchi IPRs”) (one hour per side, collectively, for all three IPRs).
`
`Argument on IPR2016-01225 (“the McNeill IPR”) (30 minutes per side).
`
`Hearing on September 14, 2017
`
`
`
`
`
`Argument on IPR2016-01199 and IPR2016-01200 (“the Aytac IPRs”) (45
`minutes per side, collectively, for both IPRs).
`
`Argument on IPR2016-01213 and IPR2016-01214 (“the Yamamoto IPRs”)
`(45 minutes per side, collectively, for both IPRs).
`
`The parties request (without waiving consideration of any issue not listed
`
`below) that the oral hearing for IPR2016-01211 address the following issue:
`
`
`
`The patentability of the instituted claims based on combinations of
`references that include Kawaguchi.
`
`The parties request to use audio/visual equipment to display demonstrative
`
`exhibits, including the use of a projector and screen for a PowerPoint display. In
`
`
`
`3
`
`
`
`accordance with the Trial Practice Guide, 77 Fed. Reg. at 48768, Patent Owner
`
`Case No. IPR2016-01211
`Patent No. 8,504,746
`
`
`will contact the Board Trial Division paralegal to discuss this request.
`
`
`
`Dated: August 7, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`/Nicholas T. Peters/
`Nicholas T. Peters (Reg. No. 53,456)
`LEAD COUNSEL FOR PATENT OWNER
`
`
`
`/David M. Maiorana/
`
`David M. Maiorana (Reg. No. 41,449)
`ATTORNEY FOR CANON INC., LEAD COUNSEL
`FOR PETITIONERS
`
`
`4
`
`
`
`Case IPR2016-01211
`Patent No. 8,504,746
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on August 7,
`
`2017, a complete and entire copy of JOINT REQUEST FOR ORAL HEARING
`
`has been served in its entirety by e-mail on the following addresses of record for
`
`Patent Owner:
`
`ntpete@fitcheven.com
`
`phenkelmann@fitcheven.com
`
`jmarinelli@fitcheven.com
`
`nlittle@fitcheven.com
`
`ameola@themeolafirm.com
`
`PapstIPR@fitcheven.com
`
`
`
`Dated: August 7, 2017
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`/David M. Maiorana/
`David M. Maiorana (Reg. No. 41,449)
`ATTORNEY FOR CANON INC., LEAD COUNSEL
`FOR PETITIONERS
`
`
`
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