Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 22
`Date: April 14, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`_________
`
`Cases1
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)2
`IPR2019-00614 (Patent 9,779,419 B2)3
`____________
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`TRIAL HEARING ORDER
`37 C.F.R. § 42.70
`
`
`1 Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`America, Inc. are the petitioner in Case IPR2019-00612. Apple Inc. is the
`petitioner in Cases IPR2019-00613 and IPR2019-00614. We refer herein to
`the petitioner in each respective proceeding as “Petitioner.” This Order
`applies to each of the listed cases. The parties are not authorized to use a
`multiple case caption.
`2 Case IPR2019-01011 has been consolidated with this proceeding.
`3 Case IPR2019-01012 has been consolidated with this proceeding.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper No. 22
`Date: April 14, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`FIRSTFACE CO., LTD.,
`Patent Owner.
`_________
`
`Cases1
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)2
`IPR2019-00614 (Patent 9,779,419 B2)3
`____________
`
`
`Before JUSTIN T. ARBES, MELISSA A. HAAPALA, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`HAAPALA, Administrative Patent Judge.
`
`TRIAL HEARING ORDER
`37 C.F.R. § 42.70
`
`
`1 Apple Inc., Samsung Electronics Co., Ltd., and Samsung Electronics
`America, Inc. are the petitioner in Case IPR2019-00612. Apple Inc. is the
`petitioner in Cases IPR2019-00613 and IPR2019-00614. We refer herein to
`the petitioner in each respective proceeding as “Petitioner.” This Order
`applies to each of the listed cases. The parties are not authorized to use a
`multiple case caption.
`2 Case IPR2019-01011 has been consolidated with this proceeding.
`3 Case IPR2019-01012 has been consolidated with this proceeding.
`
`
`
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)
`IPR2019-00614 (Patent 9,779,419 B2)
`
`
`Petitioner and Patent Owner each filed requests for oral hearing in the
`
`above-captioned proceedings. Papers 18, 19. 4 The requests for oral hearing
`
`for these proceedings are granted.
`
`Oral arguments for IPR2019-00612 will commence at 10 AM Eastern
`
`Time on May 5, 2020. Following a break, a combined hearing will be held
`
`for IPR2019-00613 and IPR2019-00614, which will commence at 1 PM
`
`Eastern Time. The hearings will be conducted by video.
`
`The parties are directed to contact the Board at least 10 days in
`
`advance of the hearing if there are any concerns about disclosing
`
`confidential information. The Board will provide a court reporter for each
`
`hearing, and the reporter’s transcript will constitute the official record of the
`
`hearing. A combined transcript will be provided for IPR2019-00613 and
`
`IPR2019-00614.
`
`If at any time during the hearing counsel encounters technical or other
`
`difficulties that fundamentally undermine counsel’s ability to adequately
`
`represent its client, please let the panel know immediately, and adjustments
`
`will be made.
`
`To facilitate planning, each party must contact PTAB Hearings at
`
`(571) 272-9797 five business days prior to the oral hearing date to receive
`
`video set-up information. As a reminder, all arrangements and the expenses
`
`involved with appearing by video, such as the selection of the facility to be
`
`used from which a party will attend by video, must be borne by that party. If
`
`a video connection cannot be established, the parties will be provided with
`
`
`4 Our citations to Papers will be to those filed in IPR2019-00612. Similar
`Papers were filed in IPR2019-00613 and IPR2019-00614.
`
`2
`
`
`
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)
`IPR2019-00614 (Patent 9,779,419 B2)
`
`dial-in connection information, and the oral hearing will be conducted
`
`telephonically.
`
`If one or both parties would prefer to participate in the oral hearing
`
`telephonically, they should notify PTAB Hearings at the above telephone
`
`number five business days prior to the hearing to receive dial-in connection
`
`information.
`
`Each side will have 60 minutes to present its arguments for IPR2019-
`
`00612. For the combined hearing of IPR2019-00613 and IPR2019-00614,
`
`each side will have 60 minutes, total, to present its arguments for these
`
`proceedings. Petitioner bears the ultimate burden of proof that Patent
`
`Owner’s claims at issue in these reviews are unpatentable. Accordingly,
`
`Petitioner will open each hearing by presenting its case regarding the
`
`challenged claims and grounds set forth in the Petition(s). After Petitioner’s
`
`presentation, Patent Owner will respond to Petitioner’s arguments.
`
`Petitioner may reserve up to half of its time for rebuttal to respond to Patent
`
`Owner’s arguments. Thereafter, Patent Owner may use any of its remaining
`
`time for sur-rebuttal, to respond to Petitioner’s rebuttal arguments.
`
`Per the Office Patent Trial Practice Guide, either party may request a
`
`pre-hearing conference. Office Patent Trial Practice Guide, August 2018
`
`Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at the following link to
`
`the USPTO website: https://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 DUE DATE 6.
`
`Prior to such a request, the parties shall meet and confer to discuss potential
`
`issues for the pre-hearing conference. To request such a conference, an
`
`3
`
`
`
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)
`IPR2019-00614 (Patent 9,779,419 B2)
`
`email should be sent to Trials@uspto.gov including a brief list of items the
`
`parties would like to discuss with the panel and several dates and times of
`
`availability for one or both parties, as appropriate, that are generally no later
`
`than three (3) business days prior to the oral hearing. Please refer to the
`
`Guide for more information on the pre-hearing conference.
`
`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.
`
`Notwithstanding 37 C.F.R. § 42.70(b), the parties may agree on a date
`
`for service of demonstrative exhibits. The parties shall confer with each
`
`other regarding any objections to demonstrative exhibits and file
`
`demonstrative exhibits with the Board at least two (2) business days prior to
`
`the hearing if no pre-hearing conference is requested or two (2) business
`
`days before a pre-hearing conference if one is scheduled. For any issue that
`
`cannot be resolved after conferring with the opposing party, the parties may
`
`file jointly a one-page list of objections at least two 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 sentence) of the reason for each objection. No argument or further
`
`explanation is permitted. We will consider the objections and schedule a
`
`conference call, if necessary. Otherwise, we will reserve ruling on the
`
`objections until the hearing or after the hearing. Any objection to
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`demonstrative exhibits that is not presented timely will be considered
`
`waived.
`
`4
`
`
`
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)
`IPR2019-00614 (Patent 9,779,419 B2)
`
`
`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, 2015) (Paper 65), for guidance regarding the appropriate
`
`content of demonstrative exhibits. Demonstrative exhibits used at the oral
`
`hearing are aids to oral argument and not evidence, and should be clearly
`
`marked as such. For example, each slide of a demonstrative exhibit may be
`
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`
`EVIDENCE” in the footer. 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 ensure the clarity and
`
`accuracy of the reporter’s transcript. Demonstrative exhibits cannot 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”).
`
`Instead, demonstrative exhibits should cite to evidence in the record.
`
`The Board generally expects lead counsel for each party to be present
`
`by video at the oral hearing. Any counsel of record may present the party’s
`
`argument as long as that counsel is present by video.
`
`Any special requests for audio-visual equipment should be directed to
`
`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`related to appearing at a video oral hearing, such as a request to
`
`accommodate visual or hearing impairments, and indicate how the PTAB
`
`may accommodate the special request. Any special requests must be
`
`5
`
`
`
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)
`IPR2019-00614 (Patent 9,779,419 B2)
`
`presented in a separate communication not less than five (5) days before the
`
`hearing.
`
`Counsel should unmute only when speaking. The panel will have
`
`access to all papers filed with the Board, including demonstratives. During
`
`the oral hearing, the parties are advised to identify clearly and specifically
`
`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`
`are advised to identify themselves each time they speak. Furthermore, the
`
`remote nature of the oral hearing may also result in an audio lag, and so the
`
`parties are advised to observe a pause prior to speaking, so as to avoid
`
`speaking over others.
`
`Members of the public may request to listen in on this oral hearing. If
`
`resources are available, the Board generally expects to grant such requests.
`
`If either party objects to the Board granting such requests, for example,
`
`because confidential information may be discussed, the party must notify the
`
`Board by contacting PTABHearings@uspto.gov at least five business days
`
`prior to the oral hearing date.
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`
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`
`
`6
`
`
`
`IPR2019-00612 (Patent 8,831,557 B2)
`IPR2019-00613 (Patent 9,633,373 B2)
`IPR2019-00614 (Patent 9,779,419 B2)
`
`
`For PETITIONER:
`
`Gabrielle E. Higgins
`Scott McKeown
`Victor Cheung
`Christopher Bonny
`gabrielle.higgins@ropesgray.com
`scott.mckeown@ropesgray.com
`victor.cheung@ropesgray.com
`christopher.bonny@ropesgray.com
`
`
`
`
`For PATENT OWNER:
`
`Barry Bumgardner
`Matthew Juren
`Thomas Cecil
`barry@nelbum.com
`matthew@nelbum.com
`tom@nelbum.com
`
`
`
`
`
`
`
`
`
`
`7
`
`
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