UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`
`Patent Owner.
`_______________________
`
`IPR2018-01605, IPR2018-01606, and IPR2018-01607
`Patent No. 7,620,800
`__________________________
`
`PATENT OWNER DIRECTSTREAM, LLC’S
`REQUEST FOR ORAL ARGUMENT
`
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`MICROSOFT CORPORATION,
`
`Petitioner,
`
`v.
`
`DIRECTSTREAM, LLC,
`
`Patent Owner.
`_______________________
`
`IPR2018-01605, IPR2018-01606, and IPR2018-01607
`Patent No. 7,620,800
`__________________________
`
`PATENT OWNER DIRECTSTREAM, LLC’S
`REQUEST FOR ORAL ARGUMENT
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`Patent Owner’s Request for Oral Argument
`
`
`
`PATENT OWNER’S REQUEST FOR ORAL ARUGMENT
`
`Pursuant to 37 C.F.R. § 42.70(a), Patent Owner DirectStream, LLC
`
`respectfully requests oral argument on all issues raised in each of the following
`
`Inter Partes Review (“IPR”) cases: IPR2018-01594; IPR2018-01599; IPR2018-
`
`01600; IPR2018-1601; IPR2018-1602; IPR2018-1603; IPR2018-1604; IPR2018-
`
`1605; IPR2018-1606; IPR2018-1607.
`
`Patent Owner’s request for oral argument includes, in each respective case,
`
`all issues raised in the relevant: Petition for Inter Partes Review; Patent Owner’s
`
`Preliminary Response; Patent Owner’s Response; Petitioner’s Reply to Patent
`
`Owner’s Response; Patent Owner’s Sur-Reply to the Petitioner’s Reply; Motions
`
`to Exclude Evidence (if any); and any other pending motions or issues related to
`
`each respective case.
`
`Oral arguments in these IPR cases were originally scheduled to take place
`
`January 14-15, 2020. For reasons discussed during a Board call on October 22,
`
`2019, the oral argument dates were rescheduled for February 3-4, 2020. See
`
`IPR2018-01605, Exhibit 2177 (transcript of Board Call); see also e.g., IPR2018-
`
`01594, -1601, -1605, Paper 46; IPR2018-01599, -1600, Paper 48; IPR2018-01604,
`
`
`
`2
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`Paper 49 (stipulations regarding modification of schedule, including oral argument
`
`Patent Owner’s Request for Oral Argument
`
`dates).1
`
`Patent Owner requests that oral argument be consolidated for cases
`
`IPR2018-01599 and IPR2018-01600. The ’110 Patent challenged in the -1600 case
`
`is a continuation of the ’152 Patent challenged in the -1599 case. The ’152 and
`
`’110 Patents share an identical specification and have a common priority date. The
`
`respective IPR Petitions for the -1599 and -1600 cases rely upon the same prior art
`
`references, assert essentially identical grounds of invalidity, and make essentially
`
`identical legal and factual arguments. Patent Owner filed a single consolidated
`
`Patent Owner Response in the -1599 and -1600 cases. Thus, the disputed factual
`
`
`1 To Patent Owner’s knowledge, the Board has not memorialized the new oral
`
`argument dates in a formal Order. Following the October 22 Board Call, the Board
`
`sent the parties an email October 24, 2019 indicating that the oral argument dates for
`
`these IPR cases would be reset to February 3-4, 2020; and the Parties then agreed to
`
`other schedule revisions based upon these new oral argument dates. In each case, the
`
`Parties jointly filed a stipulation setting forth the agreed revised case schedule,
`
`including memorialization of February 3-4, 2020 as the new oral argument dates. See
`
`e.g., IPR2018-01594, -1601, -1605, Paper 46; IPR2018-01599, -1600, Paper 48;
`
`IPR2018-01604, Paper 49.
`
`
`
`3
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`and legal issues are essentially identical in the -1599 and -1600 cases, and the cases
`
`Patent Owner’s Request for Oral Argument
`
`should be argued together.2
`
`Patent Owner also requests that the consolidated argument for the -01599, -
`
`1600, and -1604 IPRs be scheduled to take place first on February 3, 2020. The
`
`’152 and ’110 Patents challenged in the -1599 and -1600 cases have a priority date
`
`of December, 1997. By considering the -1599, -1600, and -1604 cases first, the
`
`Board can best focus its attention on the state of the art in December 1997 before
`
`turning to the subsequent, separate patents in the other IPR cases.
`
`Moreover, the oral argument in the -1599 and -1600 cases will involve a
`
`discussion of technical issues that will provide an important technological context
`
`for all of the other IPR cases. Broadly speaking, Patent Owner believes it will be
`
`useful for the Board to proceed over the two days of oral argument by considering
`
`the challenged DirectStream patents chronologically by priority date. Apart from
`
`the -1599 and -1600 cases, each respective patent challenged in the other IPRs is a
`
`continuation-in-part patent application or subsequent technological improvement
`
`developed after the ’152 Patent that is challenged in IPR -1599. By considering the
`
`
`2 The following cases have been formally consolidated, and will be addressed in a
`
`single, consolidated oral argument: IPR2018-1601; IPR2018-1602; IPR2018-1603;
`
`IPR2018-1605; IPR2018-1606; and IPR2018-1607.
`
`
`
`4
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`DirectStream patents chronologically by priority date, the Board will best be able
`
`Patent Owner’s Request for Oral Argument
`
`to understand the way that DirectStream’s technological efforts and patent
`
`applications unfolded over time.
`
`Thus, to consider the patents chronologically, Patent Owner respectfully
`
`requests the following order for the various oral arguments:
`
`Monday, February 3, 2020
`
`• Morning: IPR2018-01599 and IPR2018-01600 (consolidated).
`
`• Afternoon: IPR2018-01604.
`
`Tuesday, February 4, 2020
`
`• Morning: IPR2018-01601; IPR2018-1602; IPR2018-1603; IPR2018-
`
`1605; IPR2018-1606; and IPR2018-1607 (consolidated).
`
`• Afternoon: IPR2018-01594.
`
`If set as the first oral argument, the -1599/-1600 argument will be the
`
`Parties’ first discussion of the technology background and other issues that may be
`
`common to other IPRs (or that will set the context for the other IPRs).
`
`Accordingly, Patent Owner requests more oral argument time for the -1599/-1600
`
`cases as compared to the other oral arguments.
`
`Patent Owner requests 90 minutes of total presentation time per side for oral
`
`argument of the consolidated -1599 and -1600 cases. Patent Owner requests 60
`
`minutes of total presentation time per side for each of the other IPR oral
`
`
`
`5
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`arguments. Patent Owner seeks permission to revise this request in the event the
`
`Patent Owner’s Request for Oral Argument
`
`Board does not schedule a consolidated -1599/-1600 argument as the first oral
`
`argument on February 3, 2020.
`
`For each oral argument, Patent Owner requests that the argument begin with
`
`each party having the option to provide an opening statement, not to exceed 10
`
`minutes per side, with time used for the opening statement deducted from the
`
`party’s total presentation time. After opening statements, Patent Owner requests
`
`the following order of presentation: Petitioner argues first, and after using at least
`
`half its presentation time Petitioner may pass the argument to Patent Owner when
`
`it chooses; Patent Owner argues next, and after using at least half its presentation
`
`time Patent Owner may pass the argument back to Petitioner when it chooses; with
`
`the parties then continuing to argue and pass the argument in turn until each side
`
`has exhausted its total presentation time (or has otherwise concluded its
`
`presentation). Under this framework, Patent Owner will agree to allow Petitioner to
`
`reserve up to 5 minutes of its presentation time to have the “last word,” in
`
`recognition of the fact that Petitioner bears the burden of proof in these IPRs.
`
`Under any framework, Patent Owner objects to being required to use all of its
`
`presentation time in one block. Patent Owner believes that having more back-and-
`
`forth in the argument will be beneficial to the Board for facilitating the argument
`
`and crystalizing the disputed issues.
`
`
`
`6
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`
`Patent Owner’s Request for Oral Argument
`
`Patent Owner requests that the Board provide audio-visual equipment to
`
`display demonstrative exhibits, including a projector to be connected to a laptop,
`
`and a document camera for displaying evidence and documents of record. In
`
`accordance with the Trial Practice Guide, Patent Owner will contact the Board
`
`Trial Division paralegal to discuss this request and make logistical arrangements.
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`Date: November 27, 2019
`
`
`
`Patent Owner’s Request for Oral Argument
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Alfonso Chan/
`Alfonso Chan, Reg. No. 45, 964
`achan@shorechan.com
`Joseph F. DePumpo, Reg. No. 38,124
`jdepumpo@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Tel: (214) 593-9110
`Fax: (214) 593-9111
`
`Sean Hsu, Reg. No. 69,477
`shsu@jvllp.com
`Rajkumar Vinnakota *
`kvinnakota@jvllp.com
`G. Donald Puckett *
`dpuckett@jvllp.com
`JANIK VINNAKOTA LLP
`8111 Lyndon B. Johnson Frwy #790
`Dallas, TX 75251
`Tel: (214) 390-9999
`Fax: (214) 888-0219
`* Admitted Pro Hac Vice
`
`Attorneys for Patent Owner
`DirectStream, LLC
`
`
`
`
`
`
`
`8
`
`
`
`IPR2018-01605, -1606, -1607
`Patent No. 7,620,800
`
`
`Patent Owner’s Request for Oral Argument
`
`CERTIFICATION OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(1), the undersigned hereby certifies that the
`
`foregoing PATENT OWNER DIRECTSTREAM, LLC’S REQUEST FOR
`
`ORAL ARGUMENT was served electronically via e-mail on November 27, 2019 to
`
`the following counsel of record for Petitioner:
`
`Joseph A. Micallef
`jmicallef@sidley.com
`Scott M. Border
`sborder@sidley.com
`SIDLEY AUSTIN LLP
`1501 K Street N.W.
`Washington, DC 20005
`
`
`Jason P. Greenhut
`jgreenhut@sidley.com
`SIDLEY AUSTIN LLP
`1 South Dearborn
`Chicago, IL 60603
`
`Date: November 27, 2019
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`/Alfonso Chan/
`Alfonso Chan
`Reg. No. 45,964
`Phone: (214) 593-9118
`
`
`9
`
`
`
`
`
`
`
`
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