Case No. IPR2016-01260
`U.S. Patent No. 8,457,113
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case: IPR2016-01260
`U.S. Patent No. 8,457,113
`
`PETITIONERS’ REQUEST FOR ORAL ARGUMENT
`PURSUANT TO 37 C.F.R. § 42.70(a)
`
`
`U.S. Patent No. 8,457,113
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`YMAX CORPORATION
`Petitioner
`
`v.
`
`FOCAL IP, LLC
`Patent Owner
`
`Case: IPR2016-01260
`U.S. Patent No. 8,457,113
`
`PETITIONERS’ REQUEST FOR ORAL ARGUMENT
`PURSUANT TO 37 C.F.R. § 42.70(a)
`
`
`
`Case No. IPR2016-01260
`U.S. Patent No. 8,457,113
`
`Pursuant to 37 C.F.R. § 42.70(a), Petitioner YMax Corporation
`
`(“Petitioner”) requests an oral hearing in IPR Nos. IPR2016-01256; IPR2016-
`
`01258; and IPR2016-01260. The Board has set Due Date 7 for September 19,
`
`2017 for these IPRs. Paper No. 13 at 4, 6. Petitioner requests (without any intent
`
`to waive consideration of any issue not requested) a total of 90 minutes for the
`
`Petitioner to address the following issues at the oral hearing for these IPRs:
`
`1. The unpatentability of claim 1 of U.S. Patent No. 8,155,298 (“the ‘298
`
`patent”) from instituted Ground 1 (U.S. Patent No. 6,463,145 to
`
`O’Neal et al. (“O’Neal”) in view of U.S. Patent No. 5,809,128 to
`
`McMullin (“McMullin”), the Admitted Prior Art and the knowledge
`
`and skill of a person of ordinary skill in the art (“POSA”) in May
`
`2000), and claim 20 of the ‘298 patent from Ground 2 (O’Neal in
`
`view of U.S. Patent No. 5,958,016 to Chang et al. (“Chang”), the
`
`Admitted Prior Art and the knowledge and skill of a POSA in May
`
`2000) as relied upon in the Petition in IPR2016-01256;
`
`2. The unpatentability of claims 18, 23, 25, 26, 29–31, 37, 38, 41, and 45
`
`of U.S. Patent No. 7,764,777 (“the ‘777 patent”) from instituted
`
`Ground 1 (Anticipation by O’Neal), and claims 21 and 28 of the ‘777
`
`patent from Ground 2 (O’Neal in view of the knowledge and skill of a
`
`POSA in May 2000) as relied upon in the Petition in IPR2016-01258;
`
`
`
`Case No. IPR2016-01260
`U.S. Patent No. 8,457,113
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`3. Whether Patent Owner has met its burden to demonstrate the
`
`patentability of proposed substitute claims 47 and 48 of the ‘777
`
`patent in view of the teachings of O’Neal, Lamb, Admitted Prior Art,
`
`Burke, Blaze, Fuentes, Deschaine, Hanmer, MeLampy, Allen, Elliot,
`
`Wegner, Schumacher, Scherer, Russell, and Andrews and
`
`combinations of the teachings of such references in view of the
`
`knowledge and skill of a POSA, and the state of the art, in May 2000
`
`in IPR2016-01258;
`
`4. The unpatentability of claims 1, 2, 8, 15, 18, and 19 of U.S. Patent No.
`
`8,457,113 (“the ‘113 patent”) from Ground 1 (Anticipation by
`
`International Published Application No. WO 99/14924
`
`(“Schtivelman”)), claims 1, 2, 8, 18, and 19 of the ‘113 patent from
`
`Ground 2 (Anticipation by O’Neal), claims 1, 11, and 15-17 of the
`
`‘113 patent from Ground 3 (O’Neal in view of the knowledge and
`
`skill of a POSA in May 2000), and claims 1, 2, 8, 11, and 15–19 of
`
`the ‘113 patent from Ground 4 (Schtivelman in view of O’Neal and
`
`the knowledge and skill of a POSA in May 2000) as relied upon in the
`
`Petition in IPR2016-01260;
`
`5. Whether Patent Owner has met its burden to demonstrate patentability
`
`of proposed substitute claim 183 of the ‘113 Patent in view of the
`
`2
`
`
`
`Case No. IPR2016-01260
`U.S. Patent No. 8,457,113
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`teachings of O’Neal, Lamb, Burke, Blaze, Fuentes, Deschaine,
`
`Hanmer, MeLampy, Allen, Elliot, Voit, Russell, and Andrews and
`
`combinations of the teachings of such references in view of the
`
`knowledge and skill of a POSA, and the state of the art, in May 2000
`
`in IPR2016-01260;
`
`6. Responses to any issues identified in Patent Owner’s Request for Oral
`
`Argument; and
`
`7. Any other issues the Board deems necessary for issuing a final written
`
`decision.
`
`In coordination with Bright House Networks, LLC, WideOpenWest Finance,
`
`LLC, Knology of Florida, Inc., and Birch Communications, Inc. (Petitioner in
`
`IPR2016-01259, IPR2016-01261, IPR2016-01262, and IPR2016-01263) (“BHN”),
`
`Cisco Systems, Inc. (Petitioner in IPR2016-01254 and IPR2016-01257) (“Cisco”),
`
`and the Patent Owner, Petitioner also proposes the following order for the oral
`
`hearings on September 19, 2017:
`
`1. BHN’s IPRs where each side has 90 minutes;
`
`2. Cisco’s IPRs where each side has 30 minutes; and
`
`3. Petitioner’s IPRs where each side has 90 minutes.
`
`3
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`
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`Case No. IPR2016-01260
`U.S. Patent No. 8,457,113
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`Petitioner additionally requests that the Board provide audio-visual
`
`equipment to display demonstrative exhibits, including a projector to be connected
`
`to a laptop, and an ELMO for displaying documents of record. In accordance with
`
`the Trial Practice Guide, Fed. Reg. Vol. 77, No. 157, at 48768, Petitioner will
`
`contact the Board Trial Division paralegal to discuss this request.
`
`Date: August 21, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax Corporation
`
`4
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`
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`Case No. IPR2016-01260
`U.S. Patent No. 8,457,113
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONERS’
`
`REQUEST FOR ORAL ARGUMENT PURSUANT TO 37 C.F.R. § 42.70(a) was
`
`served electronically via e-mail on August 21, 2017, in its entirety on the
`
`following:
`
`Bren N. Bumgardner
`brent@nelbum.com
`John Murphy
`murphy@nelbum.com
`PAL-IPR@nelbum.com
`NELSON BUMGARDNER P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, TX 76107
`
`Victor Siber
`VSiber@SiberLaw.com
`Hanna Madbak
`HMadbak@SiberLaw.com
`SIBER LAW LLP
`28 West 44th Street, Suite 604
`New York, NY 10036
`
`Date: August 21, 2017
`
`Respectfully submitted,
`
`By: /Joseph J. Richetti/
`Joseph J. Richetti (Reg. No. 47,024)
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`General Tel: (212) 541-2000
`Direct Tel: (212) 541-1092
`Fax: (212) 541-4630
`Email: joe.richetti@bryancave.com
`
`Attorney for Petitioner – YMax Corporation
`
`
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