`571-272-7822
`
`Paper 22
`Entered: September 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`Case IPR2018-01315
`Case IPR2018-01316
`Patent 8,063,674 B21
`
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`ORDER
`Oral Hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified cases. Accordingly, we exercise our discretion to issue one order
`to be filed in each case. The parties, however, are not authorized to use this
`sytle heading in any subsequent papers without prior authorization.
`
`
`
`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`
`Both parties have requested oral argument in these matters pursuant to
`37 C.F.R. § 42.70. See IPR2018-01315, Papers 20, 21; IPR2018-01316
`Papers 20, 21. Petitioner requests 60 minutes total for its argument in both
`proceedings. See IPR2018-01315, Paper 20, 1; IPR2018-01316 Paper 20, 1.
`Patent Owner does not request any particular amount of time. We determine
`that two hours of total argument time will be sufficient for these
`proceedings. Therefore, each party will be allocated 60 minutes for
`argument.
`The hearing for these proceedings will commence at 10:00 AM
`Eastern Time on October 11, 2019. The hearing will be conducted on the
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia. The hearing will be open to the public for in-person attendance,
`which will be accommodated on a first-come, first-served basis. If the
`parties have concerns about disclosing confidential information, they are
`requested to contact the Board at least ten business days in advance of the
`hearing to discuss the matter.
`Petitioner will proceed first to present its case with regard to the
`challenged claims. Petitioner may reserve some, but not more than one half,
`of its argument time for rebuttal. Thereafter, Patent Owner will respond to
`Petitioner’s case and may reserve some of its argument time, for sur-rebuttal.
`Next, Petitioner may use any time it has reserved for rebuttal to respond to
`Patent Owner’s specific arguments presented at the hearing. Then, Patent
`Owner may present a brief sur-rebuttal if it has reserved time. No live
`testimony from any witness will be taken at the oral argument.
`Any demonstrative exhibits shall be served at least five (5) business
`days before the hearing. The parties shall confer regarding any objections to
`
`2
`
`
`
`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`demonstrative exhibits, and file demonstrative exhibits with the Board, as a
`separate exhibit, at least three (3) business days prior to the hearing. The
`parties are reminded that the demonstrative exhibits presented in this case
`are not evidence and are intended only to assist the parties in presenting their
`oral argument to the panel. The parties are directed to St. Jude Medical,
`Cardiology Division, Inc. v. Board of Regents of the University of Michigan,
`Case IPR2013-00041, slip op. 2–5 (PTAB Jan. 27, 2014) (Paper 65), for
`guidance regarding the appropriate content of demonstrative exhibits. For
`any issue regarding the proposed demonstrative exhibits that cannot be
`resolved after conferring with the opposing party, the parties may file jointly
`a one-page list of objections at least two (2) 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 concise sentence) of the reason for each objection. No argument or
`further explanation is permitted. We will consider the objections and may
`schedule a conference call, if necessary, to discuss them. Typically,
`however, we reserve ruling on the objections until the hearing or until a
`ruling is necessary to resolve the dispute. Any objection to demonstrative
`exhibits that is not presented timely will be considered waived. Each party
`also shall provide a hard copy of its demonstrative exhibits to the court
`reporter at the hearing.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number and
`by content) referenced during the hearing to ensure the clarity and accuracy
`of the reporter’s transcript. The parties also should note that one or more
`judges on the panel will be attending electronically and will only have
`
`3
`
`
`
`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`access to the filed copy of the demonstratives provided in advance, as
`referenced above. If a demonstrative is not made available to the Board in
`the manner indicated above, that demonstrative may not be available to each
`of the judges during the hearing and may not be considered. Further, images
`projected using audio-visual equipment in the hearing room will not be
`visible to judges participating remotely. Because of limitations on the audio
`transmission systems in our hearing rooms, the presenter may speak only
`when standing at the hearing room podium. 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 will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`reporter’s transcript will be entered in the record of the proceedings.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, any counsel of record may present the party’s
`argument as long as that counsel is present in person. If either party expects
`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.
`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 Rocky Mountain Regional Office in Denver,
`Colorado; the Texas Regional Office in Dallas, Texas; the Elijah J. McCoy
`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
`in San Jose, California. To request remote video viewing, a party must send
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`4
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`
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`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`an email message to Trials@uspto.gov ten (10) 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.
`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
`(5) days before the hearing.
`
`
`
`5
`
`
`
`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`David L. Holt
`Whitney A. Reichel
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`tar@fr.com
`riffe@fr.com
`holt2@fr.com
`wreichel@fr.com
`
`PATENT OWNER:
`
`Joseph M. Sauer
`Matthew W. Johnson
`David B. Cochran
`Joshua R. Nightingale
`Richard A. Graham
`David M. Maiorana
`JONES DAY
`jmsauer@jonesday.com
`mwjohnson@jonesday.com
`dcochran@jonesday.com
`jrnightingale@jonesday.com
`ragraham@jonesday.com
`dmaiorana@jonesday.com
`
`6
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`