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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE INC.
`
`Petitioner,
`
`v.
`
`UNIVERSAL SECURE REGISTRY LLC,
`Patent Owner.
`
`___________________
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
`
`___________________
`
`PATENT OWNER’S REQUEST FOR ORAL HEARING
`
`

`

`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
`
`Notice of Joint Stipulation (Paper No. 20), Patent Owner Universal Secure Registry
`
`LLC (“Patent Owner”) hereby respectfully requests that the Board grant oral
`
`argument, currently scheduled for August 27, 2019. Id. at 3.
`
`I.
`
`TIME REQUESTED AND ISSUES TO BE ARGUED
`Given the overlap of issues between IPR2018-00812, CBM2018-00024, and
`
`CBM2018-00025 (“the Proceedings”), Patent Owner requests that the Board
`
`authorize the parties to present their arguments for the Proceedings in a single
`
`hearing, and that each side be allotted one (1) hour total for oral argument for all
`
`three consolidated Proceedings.1
`
`The principal issues to be argued for IPR2018-00812 include:
`
`1. Any issues properly raised by Petitioner, including in the Petition and
`
`Reply, such as whether any of the challenged claims of U.S. Patent No.
`
`8,856,539 are patentable under 35 U.S.C. §§ 102, 103;
`
`2. Any issues raised by Patent Owner, including in Patent Owner’s
`
`Response and Sur-reply;
`
`1 Patent Owner has conferred with Petitioner, who has indicated that it
`opposes Patent Owner’s request.
`
`1
`
`

`

`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
`
`3. Any issues concerning the patentability of the proposed substitute
`
`claims in Patent Owner’s Conditional Motion to Amend
`
`4. Any procedural or evidentiary issues raised;
`
`5. Any additional issues raised in any motion or paper filed before oral
`
`argument, or any other additional issues on which the Board seeks
`
`clarification.
`
`Patent Owner respectfully reserves the right to supplement and/or amend the
`
`foregoing statement of issues to the extent permitted by the Rules and the Board.
`
`II.
`
`LOGISTICS
`Subject to the Board’s approval, Patent Owner intends to use demonstrative
`
`exhibits during the oral argument. Such demonstrative exhibits will be served in due
`
`course according to 37 C.F.R. § 42.70(b). Patent Owner also intends to request the
`
`use of audio-visual equipment during its presentation, including a computer,
`
`projector, and screen on which to display demonstrative exhibits.
`
`DATED: July 19, 2019
`
`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`By
`
`/s/ James M. Glass
`
`2
`
`

`

`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
`
`3
`
`

`

`Patent Owner’s Request for Oral Hearing
`
`Case IPR2018-00812
`U.S. Patent 8,856,539
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
`
`PATENT OWNER’S REQUEST FOR ORAL HEARING was served on July 19,
`
`2019 by e-mailing copies to:
`
`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
`
`DATED: July 19, 2019
`
`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
`
`4
`
`

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