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` Paper 23
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` Entered: November 21, 2019
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`Tials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION,
`HTC AMERICA, INC. and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01476
`Patent 7,764,711 B2
`____________
`
`
`Before THU A. DANG, BARBARA A. BENOIT, and J. JOHN LEE,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
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`IPR2018-01476
`Patent 7,764,711 B2
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`Patent Owner requested oral argument pursuant to 37 C.F.R. § 42.70.
`Paper 22. Patent Owner proposes that it be allocated one hour of argument
`time to present its arguments. Id. at 1. The request is GRANTED according
`to the terms set forth in this Order. Oral argument for the proceeding will
`commence at 1:00 PM Eastern Time on Tuesday, January 14, 2020, on
`the ninth floor of USPTO Headquarters, Madison Building East, 600 Dulany
`Street, Alexandria, Virginia 22314. We allocate each side forty-five (45)
`minutes of total argument time to present its arguments.
`
`Pre-Hearing Conference
`Either side may request a pre-hearing conference. Office Patent Trial
`Practice Guide, August 2018 Update, p. 19, available at
`www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_Practice_
`Guide.pdf. Requests for a pre-hearing conference must be made no later
`than January 3, 2020. 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
`objections to demonstratives, pending motions (particularly motions to
`exclude), and any other issue that may affect the ability of a party to present
`its 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.
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`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 request, no
`call will be held.
`
`Order of Argument and Attending/Viewing Hearing
`Petitioners bear the ultimate burden of proof that the challenged
`claims are unpatentable. Therefore, at the hearing, Petitioners will proceed
`first to present their arguments with regard to the challenged claims and
`grounds on which we instituted trial in this proceeding, as well as any
`motions for which they bear the ultimate burden of proof. Petitioners may
`reserve some of their allotted argument time for rebuttal to respond to Patent
`Owner’s arguments.
`After Petitioners’ initial presentation, Patent Owner will argue its
`opposition to Petitioners’ 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. Thereafter, Petitioners may use any reserved time to respond to
`Patent Owner’s presentation. Finally, Patent Owner may use any reserved
`time to respond to Petitioners’ rebuttal arguments.
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`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, p. 23. New arguments not previously raised will be disregarded.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. Lead or backup counsel, however, may present the
`party’s argument. If either party anticipates that its lead counsel will not be
`attending the hearing, that party should 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.
`The hearing will be open to the public for in-person attendance, and
`in-person attendance will be accommodated on a first-come, first-served
`basis. Please be advised that available seating is limited. 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 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 remote video viewing is granted. Note that it may not be
`possible to grant the request due to the availability of resources.
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`Demonstratives
`Under 37 C.F.R. § 42.70(b), each side’s demonstratives must be
`served on opposing counsel at least seven (7) business days before the
`hearing. Each side also shall file a courtesy copy of its demonstratives with
`the Board at least three (3) business days prior to the hearing as a separate
`paper (not as an exhibit). Each side shall provide a hard copy of its
`demonstratives to the court reporter at the hearing. 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. The parties are directed to St. Jude Medical, Cardiology Division,
`Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041,
`Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the appropriate
`content of demonstratives. 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. For each objection, the list must identify with
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`particularity the demonstratives subject to the objection and include a short,
`one-sentence statement explaining the objection. The panel will consider the
`objections and may schedule a conference call if deemed necessary.
`Otherwise, rulings on the objections will be reserved until the hearing or
`after the hearing. Any objection to the demonstratives not timely presented
`will be considered waived.
`During the oral hearing, the presenter must identify clearly and
`specifically each demonstrative (e.g., by slide or screen number) referenced
`during the hearing to ensure the clarity and accuracy of the reporter’s
`transcript. Similarly, to ensure presenters may be heard by all judges,
`presenters are reminded to speak into the provided microphone(s).
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`Official Transcript and Audio-Visual Equipment
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`Hearing rooms are equipped with projectors for PowerPoint
`presentations, and the parties may request the use of audio-visual equipment
`during the oral hearing. Such requests should be directed to
`Trials@uspto.gov at least seven (7) business days in advance of the hearing
`date. If the request is not timely received, the equipment may not be
`available on the day of the hearing.
`A party should advise the Board as soon as possible before an oral
`argument of any special needs. Any special requests for audio-visual
`equipment or other accommodations should be directed to Trials@uspto.gov
`at least seven (7) business days before the hearing. If the request is not
`timely received, the equipment or accommodation may not be available on
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`the day of the hearing. Examples of such needs include additional space for
`a wheelchair, an easel for posters, or an overhead projector (“Elmo”). A
`party may 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. Parties should not make assumptions
`about the equipment the Board may have on hand.
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`Live Testimony
`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
`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.
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`Confidential Information
`There is a strong public policy interest in making all information
`presented in above-captioned proceeding 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,
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`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.
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`
`ORDER
`
`
`
`It is
`ORDERED that oral argument will commence at 1:00 PM Eastern
`Time on Tuesday, January 14, 2020, at USPTO Headquarters in Alexandria,
`Virginia; and
`ORDERED that the measures set forth above shall govern the oral
`hearing in the above-captioned proceeding.
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`IPR2018-01476
`Patent 7,764,711 B2
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`For PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Callie A. Pendergrass
`ERISE IP, P.A.
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
`Callie.Pendergrass@eriseip.com
`Stephen Korniczky
`Martin Bader
`Nam Kim
`Ericka Schulz
`SHEPPARD MULLIN RICHTER & HAMPTON LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`nkim@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`Bing Ai
`Vinay Sathe
`Babak Tehranchi
`Kevin Patariu
`John Schnurer
`PERKINS COIE LLP
`Ai-ptab@perkinscoie.com
`VSathe@perkinscoie.com
`BTehranchi@perkinscoie.com
`KPatariu@perkinscoie.com
`JSchnurer@perkinscoie.com
`
`
`For PATENT OWNER:
`Cyrus A. Morton
`Bryan J. Vogel
`Derrick J. Carman
`
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`Patent 7,764,711 B2
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`Li Zhu
`Shui Li
`Stephanie A. Diehl
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`bvogel@robinskaplan.com
`dcarman@robinskaplan.com
`lzhu@robinskaplan.com
`sli@robinskaplan.com
`sdiehl@robinskaplan.com
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