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UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`_______________
`
`Case IPR2016-01842
`Patent 9,189,437
`_______________
`___________________________________
`NOTICE OF PATENT OWNER PAPST LICENSING GMBH & CO., KG’S
`REQUEST FOR ORAL ARGUMENT
`___________________________________
`
`
`1
`
`
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.70(a) and in accordance with the Scheduling Order of
`
`April 27, 2017 (Paper 11), Patent Owner hereby requests oral argument in this
`
`proceeding. Patent Owner requests that each side be given forty-five (45) minutes to
`
`present all arguments related to IPR2016-01842, IPR2016-01860, IPR2016-01863 and
`
`IPR2016-01864 which involve United States Patent No. 9,189,437 (“’437 Patent”),
`
`United States Patent No. 8,966,144 (“’144 Patent”), United States Patent No. 8,504,746
`
`(“’746 Patent”) and United States Patent No. 6,470,399 (“’399 Patent”), respectively.
`
`Because all of these patents have similar limitations and a common specification and
`
`because the same primary reference (“Pucci”) has been applied in all of these
`
`proceedings, Patent Owner submits that these proceedings should be argued together.
`
`Patent Owner believes oral argument would be beneficial to discuss whether the
`
`claims of the ‘437 Patent, ‘144 Patent, ‘746 Patent and ‘399 Patent would have been
`
`obvious over the cited prior art and proper claim construction of disputed terms of these
`
`patents. Patent Owner further believes oral argument would be beneficial to respond to
`
`any arguments raised in Petitioner’s original petitions and replies and to discuss any
`
`other issues or matters that arise during Petitioner’s presentation at oral argument or that
`
`have arisen previously during this proceeding.
`
`
`
`
`
`
`
`
`
`
`2
`
`

`

`Date: December 5, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`/s/ Gregory S. Donahue
`Gregory S. Donahue
`Reg. No. 47,531
`DiNovo Price LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, TX 78731
`Telephone: (512) 539-2625
`Facsimile: (512) 539-2627
`
`Lead Counsel for Patent Owner Papst
`Licensing GMBH & Co., KG
`
`Michael R. Fleming
`Reg. No. 67,933
`mfleming@irell.com
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`
`Back-Up Counsel for Patent Owner
`Papst Licensing GMBH & Co., KG
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`

`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 5th day of December 2017, a true and correct copy
`
`of the foregoing NOTICE OF PATENT OWNER PAPST LICENSING GMBH &
`
`CO. KG’S REQUEST FOR ORAL ARGUMENT was served by electronic mail
`
`upon the following counsel of record for Apple, Inc.:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Lori A. Gordon
`Steven W. Peters
`Tyler J. Dutton
`STERNE, KESSLER, GOLDSTEIN & FOX
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`tdutton-ptab@skgf.com
`ptab@skgf.com
`
`/s/ Gregory S. Donahue
`
`Gregory S. Donahue
`Reg. No. 47,531
`DiNovo Price LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, Texas 78731
`
`
`
`
`4
`
`

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