`571-272-7822
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`Paper 19
`Entered: August 18, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`
`
`APPLE INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY, and
`MICROSOFT MOBILE INC. (F/K/A NOKIA INC.),
`Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01228
` Case IPR2016-012291
`Patent 7,881,236 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, PATRICK M. BOUCHER, and
`TERRENCE McMILLIN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
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`1 The parties are not authorized to use this style of caption.
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`
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`IPR2016-01228
`IPR2016-01229
`Patent 7,881,236 B2
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`
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`The date set for oral hearing in each of these proceedings is
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`September 15, 2017, if hearing is requested by either party and granted by
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`the Board. Paper 9.2 Both parties request oral hearing. Papers 17, 18. The
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`requests are granted.
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`Because each of these proceedings involves the same patent, a
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`consolidated oral argument will be held. Each side will have 45 minutes,
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`total, to present its argument, and may allocate its time among the two
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`proceedings as it wishes. Any representation made by counsel at the
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`consolidated oral argument is applicable to and useable in all proceedings
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`that have underlying basis for the representation.
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`Petitioner bears the ultimate burden of proof that Patent Owner’s
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`claims at issue in these reviews are unpatentable. Accordingly, Petitioner
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`will open the hearing by presenting its case regarding the challenged claims
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`for which the Board instituted trial. After Petitioner’s presentation, Patent
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`Owner will respond to Petitioner’s argument. Petitioner may reserve time to
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`respond to Patent Owner’s argument. Patent Owner may not reserve time.
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`The hearing will commence at 2 PM Eastern Time on September 15,
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`2017, on the ninth floor of Madison Building East, 600 Dulany Street,
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`Alexandria, Virginia. The Board will provide a court reporter for the
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`hearing and the reporter’s transcript will constitute the official record of the
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`hearing. At least one member of the panel may be attending the oral
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`2 The relevant paper numbers are the same in both proceedings.
`2
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`
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`IPR2016-01228
`IPR2016-01229
`Patent 7,881,236 B2
`
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`argument remotely by use of two-way audio-visual communication
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`equipment. The hearing will be open to the public for in-person attendance
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`that will be accommodated on a first-come, first-served basis. If the parties
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`have any concern about disclosing confidential information, they are
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`requested to contact the Board at least 10 days in advance of the hearing to
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`discuss the matter.
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`The parties are reminded that, under 37 C.F.R. § 42.53(f)(7), a
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`proponent of deposition testimony must file such testimony as an exhibit.
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`The Board will not consider any deposition testimony that has not been so
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`filed. Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must
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`be served at least seven business days before the hearing date. The parties
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`shall meet and confer to discuss and resolve any objections to demonstrative
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`exhibits.
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`Any party with unresolved objections must file a list of those
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`objections with the Board at least two business days before the hearing. For
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`each objection, the list must identify with particularity which portions of the
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`demonstrative exhibits are subject to the objection and may include a short,
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`one-sentence statement explaining the objection. No argument or further
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`explanation is permitted. The Board will consider any objections and
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`schedule a conference call if deemed necessary. Otherwise, the Board will
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`reserve ruling on the objections. Any objection to demonstrative exhibits
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`not timely presented will be considered waived.
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`3
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`IPR2016-01228
`IPR2016-01229
`Patent 7,881,236 B2
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`Notwithstanding 37 C.F.R. § 42.70(b), each party also shall file its
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`demonstrative exhibits with the Board as a separate paper at least two
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`business days prior to the hearing. A hard copy of the demonstratives
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`should be provided to the court reporter at the hearing, but hard copies of the
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`demonstratives are not needed for the judges.
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`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
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`v. The Board of Regents of the University of Michigan, IPR2013-00041
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`(PTAB January 27, 2015) (Paper 65), for guidance regarding the appropriate
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`content of demonstrative exhibits. Demonstrative exhibits are not evidence
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`and may not introduce new evidence or arguments. Instead, demonstrative
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`exhibits should cite to evidence in the record. The parties are reminded that
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`the presenter must identify clearly and specifically each demonstrative
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`exhibit (e.g., by slide or screen number) referenced during the hearing to
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`ensure the clarity and accuracy of the reporter’s transcript.
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`Generally, the Board expects lead counsel for each party to be present
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`in person at the oral hearing. Patent Owner states in its Requests that it
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`anticipates that its lead counsel will not be present at oral hearing in these
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`cases, and that backup counsel will present argument. Given that Patent
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`Owner’s backup counsel is a registered practitioner and has signed Patent
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`Owner’s merits briefing, attendance by lead counsel at the oral hearing is
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`excused. If Petitioner expects that its lead counsel will not be attending the
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`oral hearing, the parties should request a joint telephone conference with the
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`Board no later than 10 days prior to the oral hearing to discuss the matter.
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`4
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`IPR2016-01228
`IPR2016-01229
`Patent 7,881,236 B2
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`Any special requests for audio-visual equipment should be directed to
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`Trials@uspto.gov. Requests for special equipment will not be honored
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`unless presented in a separate communication not less than five days before
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`the hearing directed to the above email address.
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`5
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`IPR2016-01228
`IPR2016-01229
`Patent 7,881,236 B2
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`PETITIONER:
`
`Walter Renner
`IPR00035-0009IP1@fr.com
`
`Roberto Devoto
`Daniel Smith
`PTABInbound@fr.com
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`
`
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`PATENT OWNER:
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`Cyrus Morton
`cmorton@robinskaplan.com
`
`Ryan Schultz
`rschultz@robinskaplan.com
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`6
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