throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 18
`Entered: June 11, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and SEAN P. O’HANLON,
`Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`____________
`
`Case IPR2018-008841
`Patent 8,539,552 B1
`____________
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent owner.
`
`
`
`

`

`IPR2018-00884
`Patent 8,539,552 B1
`
`Petitioner and Patent Owner each request oral hearing pursuant to 37 C.F.R.
`
`§ 42.70. Papers 16, 17. Upon consideration, the requests for oral hearing are
`granted.
`
`The hearing will commence at 1:00 PM EASTERN TIME Monday, July 15,
`2019, on the ninth floor of Madison Building East of the USPTO headquarters in
`Alexandria, Virginia, 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 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 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 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.
`
`2
`
`

`

`IPR2018-00884
`Patent 8,539,552 B1
`
`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 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.
`
`3
`
`

`

`IPR2018-00884
`Patent 8,539,552 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 business days prior to the oral hearing to discuss the matter. Any
`counsel of record, however, may present the party’s arguments.
`
`A party may request remote video attendance for one or more of its other
`attendees to view the hearing from any USPTO location. The available locations
`include the Texas Regional Office in Dallas, Texas; the Rocky Mountain Regional
`Office in Denver, Colorado; the Elijah J. McCoy Midwest Regional Office in
`Detroit, Michigan; and the Silicon Valley Office in San Jose, CA. To request
`remote video viewing, a party must send an email message to Trials@uspto.gov
`ten business days prior to the hearing, indicating the requested location and the
`number planning to view the hearing from the remote location. The Board will
`notify the parties if the request for video viewing is granted. Note that it may not
`be possible to grant the request due to the availability of resources.
`
`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
`
`4
`
`

`

`IPR2018-00884
`Patent 8,539,552 B1
`
`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 Monday, July 1, 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 business days
`prior to the oral hearing. Please refer to the Guide for more information on the pre-
`hearing conference.
`
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. A party may also indicate any special requests related to
`appearing at an in-person oral hearing, such as a request to accommodate physical
`needs that limit mobility or visual or hearing impairments, and indicate how the
`PTAB may accommodate the special request. Any special requests must be
`presented in a separate communication not less than five days before the hearing.
`
`
`It is
`ORDERED that oral argument will commence at 1:00 PM EASTERN TIME
`
`on Monday, July 15, 2019.
`
`5
`
`

`

`IPR2018-00884
`Patent 8,539,552 B1
`
`For PETITIONER:
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`PTAB@eriseip.com
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Ray A. King
`Uniloc USA, Inc.
`ray.king@unilocusa.com
`
`6
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket