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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`APPLE INC.
`
`Petitioner,
`
`v.
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`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`
`___________________
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
`
`___________________
`
`PATENT OWNER’S REQUEST FOR ORAL HEARING
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`
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`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
`
`Pursuant to 37 C.F.R. § 42.70(a), Scheduling Order (Paper No. 10), and
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`Notice of Joint Stipulation (Paper No. 20), Patent Owner Universal Secure Registry
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`LLC (“Patent Owner”) hereby respectfully requests that the Board grant oral
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`argument, currently scheduled for August 27, 2019. Id. at 3.
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`I.
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`TIME REQUESTED AND ISSUES TO BE ARGUED
`Given the overlap of issues between IPR2018-00812, CBM2018-00024, and
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`CBM2018-00025 (“the Proceedings”), Patent Owner requests that the Board
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`authorize the parties to present their arguments for the Proceedings in a single
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`hearing, and that each side be allotted one (1) hour total for oral argument for all
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`three consolidated Proceedings.1
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`The principal issues to be argued for IPR2018-00812 include:
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`1. Any issues properly raised by Petitioner, including in the Petition and
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`Reply, such as whether any of the challenged claims of U.S. Patent No.
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`8,856,539 are patentable under 35 U.S.C. §§ 102, 103;
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`2. Any issues raised by Patent Owner, including in Patent Owner’s
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`Response and Sur-reply;
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`1 Patent Owner has conferred with Petitioner, who has indicated that it
`opposes Patent Owner’s request.
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`1
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`
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`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
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`3. Any issues concerning the patentability of the proposed substitute
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`claims in Patent Owner’s Conditional Motion to Amend
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`4. Any procedural or evidentiary issues raised;
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`5. Any additional issues raised in any motion or paper filed before oral
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`argument, or any other additional issues on which the Board seeks
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`clarification.
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`Patent Owner respectfully reserves the right to supplement and/or amend the
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`foregoing statement of issues to the extent permitted by the Rules and the Board.
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`II.
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`LOGISTICS
`Subject to the Board’s approval, Patent Owner intends to use demonstrative
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`exhibits during the oral argument. Such demonstrative exhibits will be served in due
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`course according to 37 C.F.R. § 42.70(b). Patent Owner also intends to request the
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`use of audio-visual equipment during its presentation, including a computer,
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`projector, and screen on which to display demonstrative exhibits.
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`DATED: July 19, 2019
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`Respectfully submitted,
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`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`
`/s/ James M. Glass
`
`2
`
`
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`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
`
`James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`jimglass@quinnemanuel.com
`Lead Attorney for Patent Owner –
`Universal Secure Registry LLC
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`3
`
`
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`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
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`PATENT OWNER’S REQUEST FOR ORAL HEARING was served on July 19,
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`2019 by e-mailing copies to:
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`Monica Grewal (Reg. No. 40,056)
`monica.grewal@wilmerhale.com
`Ben Fernandez (Reg. No. 55,172)
`ben.fernandez@wilmerhale.com
`WH-Apple Distribution List
`wh-apple-usr-ipr@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`60 State Street
`Boston, MA 02109
`
`Mark Selwyn (Pro Hac Vice granted)
`mark.selwyn@wilmerhale.com
`WILMER CUTLER PICKERING HALE AND DORR LLP
`950 Page Mill Road
`Palo Alto, CA 94304-1050
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`DATED: July 19, 2019
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`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`/s/ Nima Hefazi
`Nima Hefazi (Reg. No. 63658)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`985 S. Figueroa St., 10th Floor
`Los Angeles, CA 90017
`nimahefazi@quinnemanuel.com
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`4
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