Trials@uspto.gov
`571-272-7822
`
`
` Paper 32
`
`Entered: May 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SONOS, INC.,
`Petitioner,
`
`v.
`
`IMPLICIT, LLC,
`Patent Owner.
`
`
` IPR2018-00766 (Patent 7,391,791 B2)1
`IPR2018-00767 (Patent 8,942,252 B2)
`
`
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`NABEEL U. KHAN, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`1 This Order addresses issues that are identical in each of these cases.
`Therefore, we exercise our discretion to issue one order to be filed in each
`case. The parties, however, are not authorized to use this style heading in
`any subsequent papers without prior authorization.
`
`
`
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`
`Petitioner and Patent Owner request oral hearings in both these proceedings
`pursuant to 37 C.F.R. § 42.70(a). ’766 IPR, Papers 35, 37; ’767 IPR, Papers 29,
`31.2 Given the overlap in issues in both cases, Petitioner and Patent Owner both
`request that the cases be addressed in a combined hearing with 30 minutes per case
`allocated for each party, that is, 60 minutes total per side. See Papers 35, 37.
`We have reviewed the issues that the parties intend to address and agree that
`given the overlap in issues it would be more efficient to hear the cases in a
`combined hearing. Each party will be permitted 60 minutes total to present its
`arguments for both cases in a combined hearing.
`The hearing will commence at 1:00 PM Eastern Time on Monday, June 17,
`2019. The oral hearing will be open to the public for in-person attendance on the
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`Space in the hearing room is limited, and any attendees beyond six per party
`(including any attorneys who may be appearing) will be accommodated on a first-
`come, first-served basis.
`Petitioner will first present its case as to the challenged claims and grounds
`with respect to which we instituted trials. Petitioner may reserve rebuttal time.
`Thereafter, Patent Owner will argue its opposition to Petitioner’s case. Petitioner
`then may use any time it reserved for rebuttal, responding to Patent Owner’s
`specific arguments presented at the oral hearing. Patent Owner will be permitted
`the opportunity to present a brief sur-rebuttal, if requested, and if a brief time
`period has been reserved.
`At least seven (7) business days prior to the oral arguments, each party shall
`serve on the other party any demonstrative exhibit(s) it intends to use during the
`
`
`2 Hereafter, we refer to the papers and exhibits filed in Case IPR2018-00766 as
`representative.
`
`
`
`2
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`oral arguments. See 37 C.F.R. § 42.70(b). The parties shall confer with each other
`regarding any objections to demonstrative exhibits, and file demonstrative exhibits
`with the Board, as a separate exhibit in accordance with 37 C.F.R. § 42.63, at least
`five business days prior to the hearing.
`Demonstrative exhibits are not evidence, but merely are a visual aid at the
`oral arguments. Demonstrative exhibits may not introduce new evidence or raise
`new arguments, but instead should cite to evidence in the record. The parties are
`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of
`the University of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65)
`and CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033,
`(PTAB Oct. 23, 2013) (Paper 118), for guidance regarding the appropriate content
`of demonstrative exhibits.
`The parties should attempt to resolve any objections to demonstratives prior
`to involving the Board. For any issue that cannot be resolved after conferring with
`the opposing party, the parties may email jointly to Trials@uspto.gov a one-page
`list of objections at least five business days prior to the hearing. The list should
`identify with particularity which demonstrative exhibits are subject to objection
`and include a short statement (no more than one short sentence) of the reason for
`each objection. No argument or further explanation is permitted. We will consider
`the objections and schedule a conference call, if necessary. Otherwise, we may
`consider the objections at or after the hearing. Any unresolved objections to
`demonstrative exhibits not timely presented will be considered waived.
`To aid in the preparation of an accurate transcript, each party shall provide
`paper copies of its demonstratives to the court reporter on the day of the oral
`arguments. Such paper copies shall not become part of the record of this
`proceeding. The parties are reminded that each presenter must identify clearly and
`
`
`
`3
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`specifically each demonstrative exhibit (e.g., by slide or screen number), paper, or
`exhibit referenced during the oral arguments to ensure the clarity and accuracy of
`the reporter’s transcript.
`We expect lead counsel for each party to be present at oral hearing, although
`any backup counsel may make the actual presentation, in whole or in part. If lead
`counsel for either party will not be in attendance at the oral hearing, we should be
`notified via email communications no later than two (2) business days prior to the
`oral hearing.
`Lead counsel and back-up counsel may use portable computers in the
`hearing room at the counsel tables and at the hearing room lectern. The parties are
`reminded to direct any requests for specialized audio-visual equipment to
`Trials@uspto.gov. Requests for special equipment will not be honored unless
`presented in a separate communication directed to the above e-mail address not
`less than five (5) days before the oral arguments. If the request is not received
`timely, the equipment may not be available on the day of the oral arguments.
`
`ORDER
`It is ORDERED that oral argument for these proceedings shall take place
`beginning at 1:00 PM EST, on Monday, June 17, 2019 on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`4
`
`

`

`IPR2018-00766 (Patent 7,391,791 B2)
`IPR2018-00767 (Patent 8,942,252 B2)
`
`
`PETITIONER:
`
`Rory P. Shea
`Cole B. Richter
`George I. Lee
`Michael P. Boyea
`LEE SULLIVAN SHEA & SMITH LLP
`shea@ls3ip.com
`richter@ls3ip.com
`lee@leesullivanlaw.com
`boyea@ls3ip.com
`
`PATENT OWNER:
`
`James Hopenfeld
`SINGER BEA, LLP
`jhopenfeld@singerbea.com
`
`Christian Hurt
`THE DAVIS FIRM, PC
`churt@davisfirm.com
`
`
`
`
`5
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`