`571-272-7822
`
`
`
`
`
`
`Paper 18
`Entered: March 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., LG ELECTRONICS, INC., HTC CORP., HTC AMERICA,
`INC., and SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00387 (Patent 7,653,508 B1),1,2
` Case IPR2018-00389 (Patent 8,712,723 B1),3
` Case IPR2018-00424 (Patent 7,881,902 B1),4
` Case IPR2018-01028 (Patent 7,881,902 B1)
`____________
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, JOHN F. HORVATH,
`and SEAN P. O’HANLON, Administrative Patent Judges.5
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion
`to issue one Order to be docketed in each case. The parties, however, are
`
`
`
`
`
`IPR2018-00387 (Patent 7,653,508 B1)
`IPR2018-00389 (Patent 8,712,723 B1)
`IPR2018-00424 (Patent 7,881,902 B1)
`IPR2018-01028 (Patent 7,881,902 B1)
`
`Petitioner and Patent Owner each request oral hearing pursuant to 37
`
`C.F.R. § 42.70 in each of the above four proceedings. IPR2018-00387,
`Papers 15, 16; IPR2018-00389, Papers 15, 16; IPR2018-00424, Papers 16,
`17; IPR2018-01028, Papers 13, 14. The parties’ requests are granted.
`Although these cases are not consolidated, the hearings for the captioned
`cases will be consolidated for efficiency and a single transcript will be
`provided for all cases.
`
`The hearing will commence at 9:00 AM Central Time (10:00 AM
`Eastern Time) on Tuesday, April 2, 2019. The oral hearing will be open to
`the public for in-person attendance, on the first floor of USPTO Texas
`Regional Office, 207 South Houston St., Dallas, Texas 75202. The Board
`will provide a court reporter for the hearing and the reporter’s transcript will
`constitute the official record of the hearing.
`
`
`not authorized to use this caption for any subsequent papers absent prior
`authorization from the Board.
`2 LG Electronics, Inc., who filed a petition in IPR2018-01577, and HTC
`Corp. and HTC America, Inc., who filed a petition in IPR2018-01589, have
`been joined as Petitioners in IPR2018-00387.
`3 LG Electronics, Inc., HTC Corp., and HTC America, Inc., who filed a
`petition in IPR2018-01458, have been joined as Petitioners in IPR2018-
`00389.
`4 LG Electronics, Inc., HTC Corp., and HTC America, Inc., who filed a
`petition in IPR2018-01631, and Samsung Electronics America, Inc., who
`filed a petition in IPR2018-01653, have been joined as Petitioners in
`IPR2018-00424.
`5 This is not an expanded panel. The panel for IPR2018-00389 consists of
`Judges Medley, Quinn, and O’Hanlon. The panels for the other proceedings
`consist of Judges Medley, Horvath, and O’Hanlon.
`
`2
`
`
`
`IPR2018-00387 (Patent 7,653,508 B1)
`IPR2018-00389 (Patent 8,712,723 B1)
`IPR2018-00424 (Patent 7,881,902 B1)
`IPR2018-01028 (Patent 7,881,902 B1)
`
`Each party will have sixty (60) minutes of total time to present
`
`arguments in the consolidated hearing. Each side will present arguments for
`the four proceedings during the allotted time. 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 Petitions.
`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
`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
`
`3
`
`
`
`IPR2018-00387 (Patent 7,653,508 B1)
`IPR2018-00389 (Patent 8,712,723 B1)
`IPR2018-00424 (Patent 7,881,902 B1)
`IPR2018-01028 (Patent 7,881,902 B1)
`
`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, and 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 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.
`
`4
`
`
`
`IPR2018-00387 (Patent 7,653,508 B1)
`IPR2018-00389 (Patent 8,712,723 B1)
`IPR2018-00424 (Patent 7,881,902 B1)
`IPR2018-01028 (Patent 7,881,902 B1)
`
`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 March 22, 2019. 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.
`
`5
`
`
`
`IPR2018-00387 (Patent 7,653,508 B1)
`IPR2018-00389 (Patent 8,712,723 B1)
`IPR2018-00424 (Patent 7,881,902 B1)
`IPR2018-01028 (Patent 7,881,902 B1)
`
`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 for these proceedings shall take place
`
`beginning at 9:00 AM Central Time on Tuesday, April 2, 2019, at the
`USPTO Texas Regional Office, 207 South Houston St., Dallas, Texas
`75202.
`
`6
`
`
`
`IPR2018-00387 (Patent 7,653,508 B1)
`IPR2018-00389 (Patent 8,712,723 B1)
`IPR2018-00424 (Patent 7,881,902 B1)
`IPR2018-01028 (Patent 7,881,902 B1)
`
`For PETITIONER:
`Andrew S. Ehmke
`Michael S. Parsons
`Dina Blikshteyn
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`michael.parsons.ipr@haynsboone.com
`dina.blikshteyn.ipr@haynesboone.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
`
`7
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`