Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 17
`Entered: September 3, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 17
`Entered: September 3, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`
`
`Before SALLY C. MEDLEY, JEFFREY S. SMITH, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`
`
`We instituted trial in this proceeding. Paper 7. A Scheduling Order
`set the oral hearing for September 10, 2020, if requested by the parties and
`granted by the Board. Paper 8. Both parties have requested oral hearing.
`Papers 13, 14. The requests are granted according to the terms set forth
`below.
`Oral arguments will commence at 1:00 PM Eastern Time, on
`September 10, 2020, by video. The parties are directed to contact the Board
`as soon as possible 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 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 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 email
`address five business days prior to the hearing to receive dial-in connection
`information.
`Each party will have forty five (45) minutes total time to present its
`arguments per proceeding. Petitioner bears the ultimate burden of
`persuasion that the claims at issue are unpatentable. 35 U.S.C. § 316(e).
`Petitioner will therefore open the hearing by presenting its arguments
`2
`
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`IPR2019-01026
`Patent 6,993,049 B2
`
`regarding patentability. Patent Owner may then respond to Petitioner’s
`arguments. Each party may reserve up to half of its allocated time to
`respond to arguments presented by the opposing party, with Petitioner
`replying first, followed by Patent Owner.
`Under 37 C.F.R. § 42.70(b), any demonstrative exhibits should have
`been served on opposing counsel at least seven (7) business days before the
`hearing. The parties are directed to St. Jude Medical, Cardiology Division,
`Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate
`content of demonstrative exhibits. The parties shall file demonstrative
`exhibits with the Board at least three business days prior to the hearing.
`The Board expects that the parties will meet and confer in good faith
`to resolve any objections to demonstrative exhibits, but if any such
`objections cannot be resolved, the parties must file any objections to the
`demonstratives with the Board at least two business days before the hearing.
`The objections should identify with particularity which portions of the
`demonstratives are subject to objection, include a copy of the objected-to
`portions, and include a short, one-sentence statement 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 that is not timely presented will be considered
`waived.
`We note that demonstrative exhibits are only an aid to oral argument
`and are not evidence of record in the proceeding, and should be clearly
`marked as such. For example, each slide may be marked with the words
`3
`
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer. The
`parties also are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number) or
`page of the record referenced during the hearing to ensure the clarity and
`accuracy of the reporter’s transcript.
`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.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`their skills and to aid in succession planning for the next generation. The
`Board defines a LEAP practitioner as a patent agent or attorney having three
`(3) or fewer “substantive” oral hearing arguments in any federal tribunal,
`including PTAB, and seven (7) or fewer years of experience as a licensed
`attorney or patent agent.
`Parties are encouraged to participate in the Board’s LEAP program.
`Either party may request that a LEAP practitioner participate in the program
`and conduct at least a portion of the party’s oral argument. In exchange, the
`Board will grant up to fifteen (15) minutes of additional oral argument time
`to that party, depending on the length of the proceeding and the PTAB’s
`hearing schedule. A party should submit a request no later than five (5)
`business days before the hearing, by email to the Board at
`PTABHearings@uspto.gov.1
`
`
`1 Additionally, a LEAP Verification Form shall be filed by the LEAP
`practitioner prior to the hearing, confirming eligibility for the program. The
`LEAP practitioner should file the completed form into the record.
`4
`
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`IPR2019-01026
`Patent 6,993,049 B2
`
`
`A LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`a meaningful and substantive opportunity to argue before the Board. The
`party has the discretion as to the type and quantity of oral argument that will
`be conducted by the LEAP practitioner.2 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`more experienced counsel to provide some assistance to the LEAP
`practitioner, if necessary, during oral argument, and to clarify any statements
`on the record before the conclusion of the oral argument. Importantly, the
`Board does not draw any inference about the importance of a particular issue
`or issues, or the merits of the party’s arguments regarding that issue, from
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`In instances where an advocate does not meet the LEAP eligibility
`requirements, either due to the years of experience as a licensed
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`but nonetheless has a basis for considering themselves to be in the category
`of advocates that this program is intended to assist, the Board encourages
`argument by such advocates during oral hearings. Even though additional
`argument time will not be provided in such circumstances, as with LEAP, a
`party may request to share time with counsel and the Board will permit more
`experienced counsel to provide some assistance, if necessary, during oral
`
`
`2 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`5
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`IPR2019-01026
`Patent 6,993,049 B2
`
`argument, and to clarify any statements on the record before the conclusion
`of the oral argument.
`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
`presented in a separate communication not less than five (5) days before the
`hearing.
`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
`It is:
`ORDERED that oral argument will commence at 1:00 PM ET, on
`September 10, 2020.
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`IPR2019-01026
`Patent 6,993,049 B2
`
`For PETITIONER:
`
`Andrew M. Mason
`Todd M. Siegel
`Joseph T. Jakubek
`John M. Lunsford
`Sarah E. Jelsema
`KLARQUIST SPARKMAN, LLP
`andrew.mason@klarquist.com
`todd.siegel@klarquist.com
`joseph.jakubek@klarquist.com
`john.lunsford@klarquist.com
`sarah.jelsema@klarquist.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`Jeffrey Huang
`James Etheridge
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jeff@etheridgelaw.com
`jim@etheridgelaw.com
`
`
`7
`
`
`
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