`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`
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`APPLE INC. and FITBIT, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`___________________
`
`Case IPR2017-003171
`U.S. Patent No. 8,989,830
`___________________
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`
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`
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`PETITIONER APPLE INC.’S REQUEST FOR ORAL ARGUMENT
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`
`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2017-01553 has been joined with this proceeding.
`
`
`
`
`
`
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`Pursuant to 37 C.F.R. § 42.70 and the Board’s November 28, 2017
`
`Amended Scheduling Order (Paper 25), Petitioner Apple Inc. respectfully requests
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`oral argument, which is currently scheduled for February 27, 2018.
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`The IPR2017-003172 (U.S. Patent No. 8,989,830) proceeding is one of five
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`proceedings—including IPR2017-003153 (U.S. Patent No. 8,929,965), IPR2017-
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`003184 (U.S. Patent No. 8,886,269), and IPR2017-003195 and IPR2017-003216
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`(U.S. Patent No. 8,923,941)—between Petitioner and Patent Owner that are
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`scheduled for oral argument on the same day and before the same panel, Judges
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`Brian J. McNamara, James B. Arpin, and Sheila F. McShane.
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`Petitioner believes judicial economy would be served by the Board
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`conducting three separate oral hearings for the five Inter Partes Review
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`proceedings as outlined below. While all five proceedings involve a family of
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`related patents, only certain proceedings share arguments, asserted prior art,
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`declarants, and other evidence. Specifically, the -00317 and -00318 proceedings
`
`
`2 IPR2017-01553 has been joined with this proceeding.
`
`3 IPR2017-01552 has been joined with this proceeding.
`
`4 IPR2017-01554 has been joined with this proceeding.
`
`5 IPR2017-01555 has been joined with this proceeding.
`
`6 IPR2017-01556 has been joined with this proceeding.
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`
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` 1
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`
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`share many prior art references and issues for the instituted grounds. The -00319
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`and -00321 proceedings also share some prior art and issues, particularly with
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`respect to Patent Owner’s Contingent Motion to Amend in the -00321 case and
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`instituted grounds of the -00319 case.
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`Accordingly, Petitioner respectfully requests that the Board schedule oral
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`hearings across IPR2017-00315 (U.S. Patent No. 8,929,965), IPR2017-00317
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`(U.S. Patent No. 8,989,830), IPR2017-00318 (U.S. Patent No. 8,886,269), and
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`IPR2017-00319 and IPR2017-00321 (U.S. Patent No. 8,923,941) as follows:
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`• Argument of the proceedings in order:
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`1. IPR2017-00315 (9 AM to 9:50 AM)
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`2. IPR2017-00317 and IPR2017-00318 (10 AM to 11:30 AM)
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`Break for lunch
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`3. IPR2017-00319 and IPR2017-00321 (1 PM to 2:30 PM)
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`• 20 minutes (total) per side for the oral argument per proceeding–to
`
`address the instituted grounds and the contingent Motion to Amend (if
`
`applicable)–with Petitioner presenting first, Patent Owner responding,
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`and Petitioner rebutting, with approximately a 5-minute break
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`between each side’s presentation (e.g., to set up projector for
`
`presentation);
`
`
`
` 2
`
`
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`• A single oral hearing transcript for each of the shared arguments (3
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`transcripts);
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`• The parties may assign different attorneys to argue different cases and
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`different issues during the allotted time; and
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`• The argument take place in Conference Room A, as assigned, due to
`
`the expected number of attendees (e.g., Petitioner expects to bring 6-7
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`attendees).
`
`Petitioner specifies the following issues to be argued:
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`1. [IPR2017-00315]: Whether Claims 1-12 of U.S. Patent No. 8,929,965
`
`(’965 Patent) are unpatentable under 35 U.S.C. § 103(a) and 35
`
`U.S.C. § 102(b) over the applied references (alone or in combination
`
`as instituted) Numaga, Vetter, Dekker, Debreczeny, Rafert, Negley,
`
`Miao, Fraden, Verjus, and Fricke;
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`2. [IPR2017-00317]: Whether Claims 1-6, 8-16, and 18-20 of U.S. Patent
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`No. 8,989,830 (’830 Patent) are unpatentable under 35 U.S.C. §
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`103(a) over the applied combinations of Goodman, Hicks, Hannula,
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`Asada, and Delonzor;
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`3. [IPR2017-00318]: Whether Claims 1–10 of U.S. Patent No. 8,886,269
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`(’269 Patent) are unpatentable under 35 U.S.C. § 103(a) over the
`
`
`
` 3
`
`
`
`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`applied combinations of Asada, Hicks, Hannula, Delonzor, Al-Ali, and
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`Goodman;
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`4. [IPR2017-00319]: Whether Claims 1, 2, and 6-13 of U.S.
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`Patent No. 8,923,941 (’941 Patent) are unpatentable under 35 U.S.C.
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`§ 103(a) over the applied combinations of Luo, Craw, Fricke,
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`Comtois, Aceti, Mault, Al-Ali, Han, Numaga, and Ali;
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`5. [IPR2017-00321]: Whether Claims 14-21 of the ’941 Patent are
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`unpatentable under 35 U.S.C. § 103(a) over the applied combinations
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`of Kosuda, Maekawa, Han, Aceti, Fricke, and Comtois;
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`6. Any issues relating to Patent Owner’s Contingent Motion to Amend,
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`as applicable, for the respective proceedings;
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`7. Any issues relating to Motions to Exclude, as applicable, for the
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`respective proceedings;
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`8. Any other outstanding motions, pleadings, and other issues that the
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`Board deems necessary for issuing a Final Written Decision.
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`Petitioner also requests the ability to use audio visual equipment to display
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`possible demonstratives and exhibits, including the use of a computer, projector,
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`and screen.
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` 4
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`
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
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`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
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`
`
`
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`
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`Date: February 9, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
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` 5
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`
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`CERTIFICATION OF SERVICE (37 C.F.R. § 42.6(e))
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`Case IPR2017-00317
`U.S. Patent No. 8,989,830
`
`
`The undersigned hereby certifies that a true and correct copy of the above-
`
`captioned PETITIONER APPLE
`
`INC.’S REQUEST FOR ORAL
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`ARGUMENT was served electronically via email in its entirety on February 9,
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`2018 on the following:
`
`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (Back-up Counsel)
`R. Scott Rhoades (Back-up Counsel)
`Sanford E. Warren, Jr. (Back-up Counsel)
`
`Harper Batts (Counsel for Fitbit, Inc.)
`Jeremy Taylor (Counsel for Fitbit, Inc.)
`
`JKimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
`bherrmann@bcpc-law.com
`mbenavides@bcpc-law.com
`srhoades@wriplaw.com
`swarren@wriplaw.com
`
`harper.batts@bakerbotts.com
`jeremy.taylor@bakerbotts.com
`dlfitbit-valencell@bakerbotts.com
`
`
`
`
`
`
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`
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`Date: February 9, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Michelle K. Holoubek, Reg. # 54,179/
`
`Michelle K. Holoubek
`Registration No. 54,179
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
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