Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
` Paper: 29
`
`
`
`
`
` Entered: November 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, AND HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`IPR2018-015551 and IPR2018-015812
`Patent 7,848,439 B23
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 Apple Inc., who filed a petition in IPR2018-00958, has been joined as a
`petitioner in IPR2018-01555. Paper 15.
`2 Apple Inc., who filed a petition in IPR2018-00959, has been joined as a
`petitioner in IPR2018-01581. Paper 13.
`3 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.
`
`
`571-272-7822
`
`
`
`
`
`
`
` Paper: 29
`
`
`
`
`
` Entered: November 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., HTC CORPORATION, AND HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`INVT SPE LLC,
`Patent Owner.
`____________
`
`IPR2018-015551 and IPR2018-015812
`Patent 7,848,439 B23
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and BARBARA A. BENOIT,
`Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`1 Apple Inc., who filed a petition in IPR2018-00958, has been joined as a
`petitioner in IPR2018-01555. Paper 15.
`2 Apple Inc., who filed a petition in IPR2018-00959, has been joined as a
`petitioner in IPR2018-01581. Paper 13.
`3 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.
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`
`A consolidated oral argument for IPR2018-01555 and IPR2018-01581
`was scheduled for January 8, 2020 if requested by at least one of the parties.
`IPR2018-01555 Paper 12 (Revised Scheduling Order); IPR2018-01581
`Paper 8 (Scheduling Order). Apple Inc., HTC Corporation, and HTC
`America, Inc. (collectively, “Petitioner”) and INVT SPE LLC, Inc. (“Patent
`Owner”) each requested oral argument for each of the cases. IPR2018-
`01555 Papers 27, 28; IPR2018-01581 Papers 25, 26. Petitioner requests
`seventy-five minutes of argument time and that the hearing take place in
`Alexandria, Virginia. IPR2018-01555 Paper 27; IPR2018-01581 Paper 25.
`Patent Owner requests sixty minutes of argument time. IPR2018-01555
`Paper 28; IPR2018-01581 Paper 26.
`The requests are GRANTED according to the terms set forth in this
`Order. Our scheduling orders indicated that oral argument, if requested,
`would be held at USPTO Headquarters, absent request that the oral
`argument be held elsewhere. See, e.g., IPR2018-01581, Paper 8. No such
`request has been received.
`Oral argument for the proceedings will commence at 10:00 AM
`Eastern Time on Wednesday, January 8, 2020, on the ninth floor of
`USPTO Headquarters, Madison Building East, 600 Dulany Street,
`Alexandria, Virginia 22314. We allocate each side sixty (60) minutes of
`total argument time to present its arguments for both IPR2018-01555 and
`IPR2018-01581.
`
`
`
`
`
`2
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`Pre-Hearing Conference
`Either side may request a pre-hearing conference. Office Patent Trial
`Practice Guide, August 2018 Update,4 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., IPR2018-01581 Paper 25, 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
`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
`
`
`4 available at www.uspto.gov/sites/default/files/documents/2018_Revised_
`Trial_Practice_Guide.pdf.
`
`
`
`
`3
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`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.
`Order of Argument and Attending/Viewing Hearing
`Petitioner bears the ultimate burden of proof that the challenged
`claims are unpatentable. Therefore, at the hearing, Petitioner will proceed
`first to present arguments with regard to the challenged claims and grounds
`on which we instituted trial in these proceedings, 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. Thereafter, Petitioner may use any reserved time to respond to
`Patent Owner’s presentation. Finally, 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, p. 23. New arguments not previously raised will be disregarded.
`
`
`
`
`
`4
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`
`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, 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 remote video viewing is granted. Note that it may not be
`possible to grant the request due to the availability of resources.
`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
`
`5
`
`
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`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
`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.
`
`
`
`
`
`6
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`
`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).
`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
`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.
`
`7
`
`
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`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.
`Confidential Information
`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,
`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
`
`
`
`IPR2018-01555 and IPR2018-01581
`Patent 7,848,439 B2
`
`
`PETITIONER:
`Stephen Korniczky
`skorniczky@sheppardmullin.com
`
`Martin Bader
`mbader@sheppardmullin.com
`
`Nam Kim
`nkim@sheppardmullin.com
`
`Darren Franklin
`dfranklin@sheppardmullin.com
`
`Ericka Schulz
`eschulz@sheppardmullin.com
`
`PATENT OWNER:
`Cyrus Morton
`cmorton@robinskaplan.com
`
`Bryan Vogel
`bvogel@robinskaplan.com
`
`Derrick Carman
`dcarman@robinskaplan.com
`
`Li Zhu
`lzhu@robinskaplan.com
`
`Shui Li
`sli@robinskaplan.com
`
`Stephanie Diehl
`sdiehl@robinskaplan.com
`
`
`
`
`
`9
`
`
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