UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
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`
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`PETITIONERS’ REQUEST FOR ORAL HEARING
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`
`
`Case No. IPR2016-01262
`U.S. Patent No. 7,764,777
`
`
`
`PETITIONERS’ REQUEST FOR ORAL HEARING
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`
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`
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`Pursuant to 37 C.F.R. § 42.70(a), Petitioners Bright House Networks, LLC,
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`WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch
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`Communications, Inc. (collectively “Petitioners”) request an oral hearing in IPR
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`Nos. IPR2016-01259; IPR2016-01261; IPR2016-01262; and IPR2016-01263.
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`The Board has set Due Date 7 for September 19, 2017 for these IPRs. Paper No.
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`20 at 4, 6. Petitioners request (without any intent to waive consideration of any
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`issue not requested) a total of 90 minutes for the Petitioners to address the
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`following issues at the oral hearing for these IPRs:
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`1. The unpatentability of claims 1, 2, 8, 11, 15–19, 94, 95, 102, 109–13,
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`128, 163, 164, 166–168, 175, 179, 180–181 of U.S. Patent No.
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`8,457,113 (the “’113 Patent”) from Ground 1 (U.S. Patent No.
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`6,683,870 to Archer (“Archer”) in view of the knowledge and skill of
`
`a person of ordinary skill in the art (“POSA”) in May 2000), and
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`claims 1, 2, 8, 11, 15-19, 94, 95, 102, 109-113, 128, and 168 of the
`
`’113 Patent from Ground 2 (Archer in view of U.S. Patent No.
`
`5,958,016 to Chang et al. (“Chang”) and the knowledge and skill of a
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`POSA in May 2000) as relied upon in the Petition in IPR2016-01261;
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`2. Whether Patent Owner has met its burden to demonstrate patentability
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`of proposed substitute claim 183 of the ’113 Patent in view of the
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`teachings of Archer, Chang, U.S. Patent No. 6,442,169 to Lewis
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`1
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`
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`
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`(“Lewis”), U.S. Patent No. 6,333,931 to LaPier (“LaPier”), and
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`combinations of the teachings of such references in view of the
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`knowledge and skill of a POSA, and the state of the art, in May 2000.
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`3. The unpatentability of claims 18, 21, 23, 25-26, 28-31, 37, 38, 41, 45
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`and 46 of U.S. Patent No. 7,747,777 (“the ’777 Patent”) from the
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`instituted Ground (Archer in view of Chang and the knowledge and
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`skill of a POSA in May 2000) as relied upon in the Petition in
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`IPR2016-01262;
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`4. Whether Patent Owner has met its burden to demonstrate patentability
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`of proposed substitute claim 49 of the ’777 Patent in view of the
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`teachings of Archer, Chang, Lewis, LaPier, and combinations of the
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`teachings of such references in view of the knowledge and skill of a
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`POSA, and the state of the art, in May 2000.
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`5. The unpatentability of claim 1 of U.S. Patent No. 8,155,298 (“the
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`’298 Patent”) from the instituted Ground (Archer in view of Chang
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`and the knowledge and skill of a POSA in May 2000) as relied upon
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`in the Petition in IPR2016-01263;
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`6. The unpatentability of claim 20 of the ’298 Patent from Ground 1
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`(Archer in view of Chang and the knowledge and skill of a POSA in
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`May 2000) and Ground 2 (Archer in view of Chang, U.S. Patent No.
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`2
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`
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`
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`6,445,694 to Swartz (“Swartz”), and the knowledge and skill of a
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`POSA in May 2000) as relied upon in the Petition in IPR2016-01259;
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`7. Petitioners’ Motion to Exclude;
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`8. Responses to any issues identified in Patent Owner’s Request for Oral
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`Argument; and
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`9. Any other issues the Board deems necessary for issuing a final written
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`decision.
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`In coordination with Cisco Systems, Inc. (Petitioners in IPR2016-01254 and
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`IPR2016-01257) (“Cisco”), YMax Corporation (Petitioners in IPR2016-01256,
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`IPR2016-01258, and IPR2016-01260) (“YMax”) and the Patent Owner, Petitioners
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`also propose the following order for the oral hearings on September 19, 2017:
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`1. Petitioners IPRs where each side has 90 minutes;
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`2. Cisco’s IPRs where each side has 30 minutes; and
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`3. YMax’s IPRs where each side has 90 minutes.
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`Petitioners and Cisco have discussed areas of overlap between the IPR2016-
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`01261, IPR2016-01254 and IPR2016-01257 proceedings, and, to be respectful of
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`the Board’s time, will coordinate so as not to present redundant arguments to the
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`Board during the hearing. Petitioners additionally request that the Board provide
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`audio-visual equipment to display demonstrative exhibits, including a projector to
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`be connected to a laptop, and an ELMO for displaying documents of record. In
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`3
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`accordance with the Trial Practice Guide, Fed. Reg. Vol. 77, No. 157, at 48768,
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`Petitioners will contact the Board Trial Division paralegal to discuss this request.
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`
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`Dated: August 21, 2017
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`DUANE MORRIS LLP
`ATTN: Patrick McPherson
`505 9th Street, NW, Suite 1000
`Washington, DC 20004
`Tel: 202-776-5214
`Fax: 202-776-7801
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`By:
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`
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`Respectfully submitted,
`DUANE MORRIS LLP
`
`/s/ Patrick D. McPherson
`Patrick D. McPherson
`Reg. No. 46,255
`Lead Counsel
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.70, the undersigned certifies that on
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`August 21, 2017, a complete and entire electronic copy of Petitioners’ Request for
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`Oral Hearing was provided via the Patent Trial and Appeal Board End to End
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`(PTAB E2E) System as well as delivering a copy electronically via email on the
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`following:
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`Brent N. Bumgardner
`brent@nelbum.com
`PAL-IPR@nelbum.com
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`John Murphy
`murphy@nelbum.com
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`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`
`Victor Siber
`vsiber@siberlaw.com
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`Hanna Madbak
`hmadbak@siberlaw.com
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`By: /s/ Christopher J. Tyson
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`Christopher J. Tyson
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`Reg. No. 63,850
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`Back-up Counsel
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