Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 24
`Entered: November 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`HTC CORPORATION, HTC AMERICA, INC.,
`AND ZTE (USA) INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`1 This Order addresses issues that are the same in each identified case. 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 subsequent papers.
`
`
`
`
`
`
`
`Case IPR2018-01473
`Patent 6,611,676 B2
`and
`Case IPR2018-01475
`Patent 7,760,815 B21
`____________
`
`
`Tel: 571-272-7822
`
`
`
`Paper 24
`Entered: November 25, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`HTC CORPORATION, HTC AMERICA, INC.,
`AND ZTE (USA) INC.,
`Petitioner,
`v.
`INVT SPE LLC,
`Patent Owner.
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and
`BARBARA A. BENOIT, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`1 This Order addresses issues that are the same in each identified case. 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 subsequent papers.
`
`
`
`
`
`
`
`Case IPR2018-01473
`Patent 6,611,676 B2
`and
`Case IPR2018-01475
`Patent 7,760,815 B21
`____________
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`
`On March 29, 2019, we entered a Decision to Institute a trial in each
`of IPR2018-01473 (Paper 10) and IPR2018-01475 (Paper 9). A Scheduling
`Order issued in these cases set the date for oral argument, if requested by
`either party, as January 8, 2020. IPR2018-01473 (Paper 11); IPR2018-
`01475 (Paper 10). Pursuant to 37 C.F.R. § 42.70, Apple Inc., HTC
`Corporation, HTC America, Inc., and ZTE (USA) Inc. (collectively,
`“Petitioner”) and INVT SPE LLC (“Patent Owner”) each requested oral
`argument in each of these proceedings. IPR2018-01473 (Papers 22, 23);
`IPR2018-01475 (Papers 21, 22). Petitioner requests forty-five minutes of
`argument time and that the hearing take place in Alexandria, Virginia.
`IPR2018-01473 (Paper 22); IPR2018-01475 (Paper 21). Patent Owner
`requests sixty minutes of argument time. IPR2018-01473 (Paper 23);
`IPR2018-01475 (Paper 22).
`These requests are GRANTED according to the terms set forth in this
`Order.
`Oral argument for each of IPR2018-01473 and IPR2018-01475 will
`be held on Wednesday, January 8, 2020, on the ninth floor of Madison
`Building East, 600 Dulany Street, Alexandria, Virginia. Oral argument for
`IPR2018-01473 will commence at 1:00 PM ET and, after a short break, oral
`argument for IPR2018-01475 will commence. Each party will be allocated
`sixty (60) minutes of total argument time to present its arguments for each
`of IPR2018-01473 and IPR2018-01475.
`Petitioner bears the ultimate burden of proof that the claims at issue
`are unpatentable. Therefore, for each of IPR2018-01473 and IPR2018-
`01475, Petitioner will proceed first to present its case with regard to the
`challenged claims and grounds on which we instituted trial in this
`
`2
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`proceeding, as well as any motions for which it bears the ultimate burden of
`proof. Petitioner may reserve some of its allotted argument time for rebuttal
`to respond to Patent Owner’s arguments.
`After Petitioner’s initial presentation, Patent Owner will argue its
`opposition to Petitioner’s case and present any issues for which it bears the
`ultimate burden, including argument on any of Patent Owner’s pending
`motions. Patent Owner may reserve some of its allotted argument time for
`sur-rebuttal.
`Petitioner may use any reserved time to respond to Patent Owner’s
`presentation. Patent Owner may use any reserved time 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 side made in
`its immediately preceding presentation. The parties also are reminded that,
`during the hearing, the parties “may only present arguments relied upon in
`the papers previously submitted.” Office Trial Practice Guide, August 2018
`Update,2 p. 23. New arguments not previously raised will be disregarded.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a
`proponent of deposition testimony must file such testimony as an exhibit.
`The Board will not consider any deposition testimony that has not been so
`filed.
`
`No live testimony from any witness will be permitted at the hearing
`without prior authorization from the Board. A party requesting authorization
`to present live testimony at the hearing shall initiate a joint telephone
`
`
`2 available at www.uspto.gov/sites/default/files/documents/2018_Revised_
`Trial_Practice_Guide.pdf.
`
`3
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`conference with the other party and the panel as soon as possible, and in any
`event no later than ten (10) business days prior to the hearing to discuss the
`matter. The parties are directed to the Board’s decision in K-40 Electronics,
`LLC v. Escort, Inc., IPR2013-00203, Paper 34 (PTAB May 21, 2014)
`(precedential) for guidance as to the circumstances in which live testimony
`may be authorized.
`Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must
`be served on opposing counsel at least seven (7) business days before the
`hearing. The parties shall provide a courtesy copy of any demonstrative
`exhibits to the Board at least three (3) business days prior to the hearing by
`emailing them to Trials@uspto.gov.
`The parties are reminded that demonstratives are visual aids to oral
`argument, not evidence, and are intended only to assist the parties in
`presenting their oral argument to the panel. Demonstratives may not 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”). Each
`demonstrative must include a citation to the briefs and/or evidence in the
`record indicating the source(s) of its content.
`The parties shall meet and confer to discuss any objections to the
`demonstratives. If any issues regarding demonstratives remain unresolved
`after the parties meet and confer, the parties shall jointly submit (by email to
`Trials@uspto.gov) a one-page list of objections to the demonstratives at
`least three (3) business days before the hearing, if no pre-hearing
`conference was requested. Any objection to the demonstrative exhibits that
`
`4
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`is not presented timely will be considered waived. The objections should
`identify with particularity which demonstratives are subject to objection, and
`include a short (one sentence or less) statement of the reason for each
`objection. No argument or further explanation is permitted. The Board will
`consider the objections and schedule a conference if deemed necessary.
`Otherwise, the Board will reserve ruling on the objections until after the oral
`argument. The parties are directed to St. Jude Medical, Cardiology Division,
`Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041
`(PTAB January 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits.
`
`The Board expects 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
`oral hearing, the Board should be notified via a joint telephone conference
`call no later than seven (7) business days prior to the oral hearing to discuss
`the matter.
`At least one judge will be participating remotely via a
`videoconferencing device and will not be able to view the projection screen
`in the hearing room. The parties are reminded that the presenter must
`identify clearly and specifically each demonstrative exhibit (e.g., by slide or
`screen number) referenced during the hearing to avoid confusion, and to
`ensure the clarity and accuracy of the reporter’s transcript.
`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
`Elijah J. McCoy Midwest Regional Office in Detroit, Michigan; and the
`
`5
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`Silicon Valley Office in San Jose, California. To request remote video
`viewing, a party must send an email message to Trials@uspto.gov at least
`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. Examples of
`such needs include additional space for a wheelchair, an easel for posters, or
`an overhead projector (“Elmo”). Any special requests must be presented in
`a separate communication at least seven (7) business days before the
`hearing. Parties should not make assumptions about the equipment the
`Board may have on hand.
`Either side may request a pre-hearing conference. Office Patent Trial
`Practice Guide, August 2018 Update, p. 19. Requests for a pre-hearing
`conference must be made no later than December 18, 2019, as indicated in
`the Scheduling Order. See, e.g., IPR2018-01473 (Paper 11, 9). Prior to
`making a request, the parties should meet and confer and send a joint request
`to the Board with an agreed upon set of limited issues for discussion in the
`pre-hearing conference. Issues appropriate for discussion in a pre-hearing
`conference may include pending motions (particularly motions to exclude),
`and any other issue that may affect the ability of a party to present its
`
`6
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`arguments at the hearing. To request a pre-hearing conference, a joint email
`request should be sent to Trials@uspto.gov, including several dates and
`times of availability for both parties. If the parties are unable to agree on the
`issues to be addressed at the pre-hearing conference, the joint request shall
`specify which issues are disputed and provide a brief statement (not to
`exceed one sentence) of the opposing party’s objection to each issue.
`The panel may, at its discretion, indicate certain issues during the pre-
`hearing conference that it wishes parties to emphasize at the oral hearing.
`Although the parties and the panel may discuss issues for the oral hearing at
`the pre-hearing conference, the issues discussed at the pre-hearing
`conference do not limit the scope of the oral hearing. Instead, the parties
`remain free to address at the oral hearing any issue properly raised during
`the trial, and the panel may ask questions on issues other than those
`identified at the pre-hearing conference.
`The prehearing conference is not required and, absent a timely
`request, no call will be held.
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the hearing. The
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis.
`There is a strong public policy interest in making all information
`presented in above-captioned proceedings public, as the review determines
`the patentability of claims in an issued patent and, thus, affects the rights of
`the public. This policy is reflected in part, for example, in 35 U.S.C.
`§ 316(a)(1) and 35 U.S.C. § 326(a)(1), which provide that the file of any
`inter partes review or post grant review be made available to the public,
`
`7
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`except that any petition or document filed with the intent that it be sealed
`shall, if accompanied by a motion to seal, be treated as sealed pending the
`outcome of the ruling on the motion. If any party expects that any
`information subject to a motion to seal will be raised at the hearing, that
`party shall initiate a joint telephone conference with the other party and the
`panel no later than seven (7) business days prior to the hearing to discuss
`the matter.
`
`It is so ORDERED.
`
`
`
`
`
`8
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`
`
`PETITIONER:
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`
`Stephen S. Korniczky
`Martin R. Bader
`Nam H. Kim
`Ericka Jacobs Schulz
`Eric K. Gill
`SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`nkim@sheppardmullin.com
`eschulz@sheppardmullin.com
`egill@sheppardmullin.com
`
`Bing Ai
`Vinay P. Sathe
`Babak Tehranchi
`Kevin J. Patariu
`John P. Schnurer
`PERKINS COIE LLP
`ai-ptab@perkinscoie.com
`vsathe@perkinscoie.com
`btehranchi@perkinscoie.com
`kpatariu@perkinscoie.com
`jschnurer@perkinscoie.com
`
`
`
`
`
`
`9
`
`
`
`IPR2018-01473 and IPR2018-01475
`Patents 6,611,676 B2 and 7,760,815 B2
`
`PATENT OWNER:
`Cyrus A. Morton
`Bryan J. Vogel
`Derrick J. Carman
`Stephanie A. Diehl
`Li Zhu
`Shui Li
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`sdiehl@robinskaplan.com
`lzhu@robinskaplan.com
`sli@robinskaplan.com
`
`
`
`
`
`10
`
`
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