`571-272-7822
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`
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`Paper: 33
`Entered: July 1, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI INC.,
`Patent Owner.
`____________
`
`IPR2019-00916
`Patent 9,651,533 B2
`____________
`
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`
`HORVATH, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
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`IPR2019-00916
`Patent 9,651,533 B2
`
`
`On June 5, 2020, Petitioner and Patent Owner filed requests for oral
`argument in this proceeding. See Papers 30, 31. Petitioner requested 45
`minutes of argument per side with no time for sur-rebuttal allocated to
`Patent Owner, and Patent Owner requested “no more than one hour per
`side.” Paper 30, 1; Paper 31, 1.
`The parties’ requests for oral argument are granted, and oral argument
`will be held by video conference on July 16, 2020, commencing at 1:00 p.m.
`Eastern Time. The Board expects lead counsel for each party to be present.
`However, lead or backup counsel may put forward a party’s arguments. If
`either party anticipates that its lead counsel will not be present, the parties
`should initiate a joint telephone conference with the Board no later than two
`business days prior to the oral hearing to discuss the matter.
`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 the
`hearing, and the reporter’s transcript will constitute the official record of the
`hearing.
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov 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 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
`dial-in connection information, and the oral hearing will be conducted
`telephonically. No party may attend the hearing at any USPTO location.
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`IPR2019-00916
`Patent 9,651,533 B2
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`If one or both parties would prefer to participate in the oral hearing
`telephonically, they should notify PTAB Hearings at the above email
`address five business days prior to the hearing to receive dial-in connection
`information.
`Each party will have forty five (45) minutes of total argument time for
`the hearing. Petitioner bears the ultimate burden of proof that the challenged
`claims are unpatentable. Therefore, Petitioner will proceed first, and will
`present its arguments with regard to the challenged claims and grounds on
`which we instituted trial. Petitioner may reserve some of its time for
`rebuttal. Patent Owner may respond to Petitioner’s arguments, and may also
`reserve some of its time for rebuttal. Petitioner may then use its rebuttal
`time to respond to Patent Owner’s arguments, and Patent Owner may use its
`rebuttal time to respond to Petitioner’s arguments.
`Under 37 C.F.R. § 42.70(b), any demonstrative exhibits to be
`presented at the hearing must be served seven business days before the
`hearing. They shall be filed with the Board no later than three business
`days before the hearing. Any objection to demonstrative exhibits should be
`resolved at least two business days prior to the hearing by way of a joint
`telephone conference call to the Board. Any objection to demonstrative
`exhibits that is not timely presented will be considered waived. For
`guidance on appropriate content in demonstrative exhibits, the parties are
`directed to CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`IPR2013-00033, Paper 118 (Oct. 23, 2013).
`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
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`IPR2019-00916
`Patent 9,651,533 B2
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`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
`result in an audio lag, and the parties are advised to observe a pause prior to
`speaking to avoid speaking over others.
`If the parties have any questions not specifically addressed above,
`they may contact the Board at PTABHearings@uspto.gov.
`
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`IPR2019-00916
`Patent 9,651,533 B2
`
`PETITIONER:
`Jeffrey P. Kushan
`Ching-Lee Fukuda
`Thomas A. Broughan III
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`clfukuda@sidley.com
`tbroughan@sidley.com
`
`
`PATENT OWNER:
`Thomas A. Lewry
`John S. LeRoy
`Robert C.J. Tuttle
`John M. Halan
`Christopher C. Smith
`Andrew B. Turner
`BROOKS KUSHMAN P.C.
`tlewry@brookskushman.com
`jleroy@brookskushman.com
`rtuttle@brookskushman.com
`jhalan@brookskushman.com
`csmith@brookskushman.com
`OMSC0110IPR1@brookskushman.com
`
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