`571-272-7822
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`
`
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`Paper No. 16
`Entered: January 7, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2018-00294
`Patent 6,736,759 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, JOHN F. HORVATH, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`IPR2018-00294
`Patent 6,736,759 B1
`
`Petitioner and Patent Owner each request oral hearing pursuant to 37
`
`C.F.R. § 42.70. Papers 13, 14. Upon consideration, the requests for oral
`hearing are granted.
`
`The hearing will commence at 1:30 PM EASTERN TIME on January
`23, 2019, on the ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia. The hearing will be open to the public for in-person
`attendance that will be accommodated on a first-come, first-served basis.
`The Board will provide a court reporter for the hearing and the reporter’s
`transcript will constitute the official record of the hearing.
`
`Each party will have forty-five (45) minutes of total time to present
`arguments. As the party with the burden of proof and persuasion, Petitioner
`will proceed first to present its case with regard to the challenged claims and
`grounds set forth in the Petition. Thereafter, Patent Owner may respond to
`Petitioner’s case. Thereafter, Petitioner may use any of its remaining time
`for rebuttal regarding Patent Owner’s arguments regarding the challenged
`claims. And, thereafter, Patent Owner may use any of its remaining time for
`sur-rebuttal, to respond to Petitioner’s rebuttal arguments. The parties are
`reminded that arguments made during rebuttal and sur-rebuttal periods must
`be responsive to arguments the opposing party made in its immediately
`preceding presentation.
`
`At least seven (7) business days prior to the hearing, each party shall
`serve on the other party any demonstrative exhibit(s) it intends to use during
`the hearing. See 37 C.F.R. § 42.70(b). At least three (3) business days prior
`to the hearing, the parties shall provide the demonstrative exhibits to the
`Board by emailing them to Trials@uspto.gov. The parties shall not file any
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`IPR2018-00294
`Patent 6,736,759 B1
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`demonstrative exhibits in this case without prior authorization from the
`Board.
`
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. For
`example, each slide of a demonstrative exhibit may be marked with the
`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
`Demonstrative exhibits cannot be used to advance arguments or introduce
`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
`first time during oral argument”).
`
`The parties should attempt to work out any objections to
`demonstratives prior to involving the Board. Should either party disagree
`with the propriety of any of the opposing party’s demonstratives, the party
`may send, contemporaneously with their own slides three (3) business days
`prior to the hearing, an email to Trials@uspto.gov including a paper limited
`to identifying the opposing party’s slide(s) objected to and a brief sentence
`as to the general basis of the objection(s). No further argument is permitted
`in that paper. The Board will then take the objections under advisement, and
`if the content is inappropriate, it will not be considered. Any objection to
`demonstrative exhibits that is not timely presented will be considered
`waived. The Board asks the parties to confine demonstrative exhibit
`objections to those identifying egregious violations that are prejudicial to the
`administration of justice. The parties are directed to St. Jude Med.,
`Cardiology Div., Inc. v. The Board of Regents of the Univ. of Mich., Case
`IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding
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`IPR2018-00294
`Patent 6,736,759 B1
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`the appropriate content of demonstrative exhibits. In general, if the content
`on a slide cannot be readily associated with an argument made, or evidence
`referenced, in a substantive paper, it is inappropriate. The best practice is to
`indicate on each slide where support may be found in a substantive paper
`and/or an exhibit of record in this proceeding.
`
`The parties are reminded that each presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that at least one member
`of the panel may be attending the hearing electronically from a remote
`location, and that if a demonstrative is not made fully available or visible to
`all judges at the hearing, that demonstrative will not be considered. If the
`parties have questions as to whether demonstrative exhibits would be
`sufficiently visible and available to all of the judges, the parties are invited
`to contact the Board at 571-272-9797.
`
`The Board expects lead counsel for each party to be present in person
`at the hearing. If a party anticipates that its lead counsel will not be
`attending the oral argument, the parties should initiate a joint telephone
`conference with the Board no later than two (2) business days prior to the
`oral hearing to discuss the matter. Any counsel of record, however, may
`present the party’s arguments.
`
`Per the recent update to the Office Patent Trial Practice Guide, either
`party may request a pre-hearing conference. Office Patent Trial Practice
`Guide, August 2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at
`the following link to the USPTO website: https://go.usa.gov/xU7GP).
`Requests for a pre-hearing conference must be made by January 14, 2019.
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`IPR2018-00294
`Patent 6,736,759 B1
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`To request such a conference, an email should be sent to Trials@uspto.gov
`including several dates and times of availability for both parties that are
`generally no later than three (3) business days prior to the oral hearing.
`Please refer to the Guide for more information on the pre-hearing
`conference.
`
`Requests for audio-visual equipment are to be made at least five (5)
`business days in advance of the date of the hearing by sending the request to
`Trials@uspto.gov. If the request is not received timely, the equipment may
`not be available on the day of the hearing.
`
`
`It is
`ORDERED that oral argument will commence at 1:30 PM EASTERN
`
`TIME on January 23, 2019.
`
`
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`IPR2018-00294
`Patent 6,736,759 B1
`
`For PETITIONER:
`Adam P. Seitz
`Paul R. Hart
`Chris R. Schmidt
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`chris.schmidt@eriseip.com
`
`For PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean D. Burdick
`Uniloc USA, Inc.
`sean.burdick@unilocusa.com
`
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