`Tel: 571-272-7822
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`
`
`Paper 15
`Entered: October 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MICROSOFT CORPORATION, APPLE INC.,
`and MOTOROLA MOBILITY LLC,
`
`Petitioners,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
`
`IPR2019-014711
`Patent 6,836,654 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK and JOHN D. HAMANN, Administrative
`Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`1 Apple Inc. (“Apple”) and Motorola Mobility LLC (“Motorola), having
`filed a petition in IPR2020-00701, have been joined as petitioners in this
`proceeding.
`
`
`
`IPR2019-01471
`Patent 6,836,654 B1
`
`
`
`We instituted inter partes review in the above-referenced proceeding
`
`with Microsoft Corporation as the sole petitioner. Paper 7. We instituted
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`inter partes review in IPR2020-00701, and granted Apple’s and Motorola’s
`
`Motion for Joinder, joining them as petitioners in this proceeding. The
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`Scheduling Order set November 11, 2020 as the date for oral argument, if
`
`requested. Paper 8. Pursuant to 37 C.F.R. § 42.70, each party filed a request
`
`for oral argument. Papers 13, 14. The requests are granted.
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`
`
`Oral arguments will commence at 10:00 AM ET on November 10,
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`2020, by video. The parties are directed to contact the Board at least seven
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`(7) days in advance of the hearing if there are any concerns about disclosing
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`confidential information. The Board will provide a court reporter for the
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`hearing, and the reporter’s transcript will be the official hearing record.
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`
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`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
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`adjustments will be made.2
`
`
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`To facilitate planning and receive video set-up information, each
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`party must contact PTABHearings@uspto.gov at least five (5) business days
`
`prior to the oral hearing date. As a reminder, all arrangements and the
`
`expenses involved with appearing by video, such as the selection of the
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`facility to be used from which a party will attend by video, must be borne by
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`that party. If a video connection cannot be established, the parties will be
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`provided with dial-in connection information, and the oral hearing will be
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`conducted telephonically.
`
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`2 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`IPR2019-01471
`Patent 6,836,654 B1
`
`
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`If one or both parties would prefer to participate in the oral hearing
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`telephonically, they should notify PTAB Hearings at the above email
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`address five (5) business days prior to the hearing to receive dial-in
`
`connection information.
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`
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`Each party will have a total of sixty (60) minutes for oral argument.
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`Petitioners will argue first and may present arguments regarding the issues
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`identified in the parties’ requests for oral argument (Papers 13, 14). Patent
`
`Owner will then have the opportunity to respond to Petitioners’ arguments
`
`and address the issues identified in the parties’ requests for oral argument.
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`Next, Petitioners may use any time reserved for rebuttal to respond to Patent
`
`Owner’s arguments. Lastly, Patent Owner may use any time it has reserved
`
`for sur-rebuttal to respond to Petitioners’ rebuttal arguments. No other
`
`arguments will be heard.
`
`
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`Under 37 C.F.R. § 42.70(b), demonstrative exhibits, if any, must be
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`served at least (7) seven business days before the hearing. The parties also
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`shall provide the demonstrative exhibits to the Board at least two (2)
`
`business days prior to the hearing by emailing them to
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`PTABHearings@uspto.gov. The parties shall not file any demonstrative
`
`exhibits on the dockets without prior authorization. The parties are
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`directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of
`
`Regents of the University of Michigan, Case IPR2013-00041, (PTAB
`
`Jan. 27, 2014) (Paper 65), for guidance regarding appropriate content of
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`demonstrative exhibits.
`
`
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`The parties are reminded that demonstrative exhibits are visual aids to
`
`oral argument and not evidence, and should be clearly marked as such. For
`
`example, each slide may be marked with the words “DEMONSTRATIVE
`
`3
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`IPR2019-01471
`Patent 6,836,654 B1
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`EXHIBIT – NOT EVIDENCE” in the footer. Demonstrative exhibits may
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`not be used to advance arguments or introduce evidence not previously
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`presented in the record. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
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`1369 (Fed. Cir. 2018) (noting that the “Board was obligated to dismiss [the
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`petitioner’s] untimely argument . . . raised for the first time during oral
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`argument”). Instead, demonstrative exhibits should cite to the briefs and
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`evidence in the record.
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`
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`The Board expects that the parties will meet and confer in good faith
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`to resolve any objections to demonstrative exhibits, but if any objections
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`cannot be resolved, the unresolved objections must be filed with the Board at
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`least (2) two business days before the hearing. Any objection to
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`demonstrative exhibits that is not timely presented will be considered
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`waived. The objections should identify with particularity which
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`demonstratives and portions thereof are subject to objection, and include a
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`short (one sentence or less) statement of the reason for each objection. No
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`argument or further explanation is permitted. The Board will consider the
`
`objections and schedule a conference if the Board deems necessary.
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`Otherwise, the Board will rule on the objections at the hearing.
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`
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`Any requests for a pre-hearing conference must be made by
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`November 2, 2020. To request such a conference, an email should be sent to
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`Trials@uspto.gov including 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.
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`The Board 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.
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`4
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`IPR2019-01471
`Patent 6,836,654 B1
`
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`Any special requests for audio-visual equipment should be directed to
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`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`related to appearing at a video oral hearing, such as a request to
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`accommodate visual or hearing impairments, and indicate how the PTAB
`
`may accommodate the special request. Any special requests must be
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`presented in a separate communication not less than five (5) business days
`
`before the hearing.
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`Counsel should unmute only when speaking. The panel will have
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`access to all papers filed with the Board, including demonstratives. During
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`the oral hearing, the parties are advised to identify clearly and specifically
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`each demonstrative referenced (e.g., by slide or screen number) to ensure the
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`clarity and accuracy of the court reporter’s transcript. In addition, the parties
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`are advised to identify themselves each time they speak. Furthermore, the
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`remote nature of the oral hearing may also result in an audio lag, and thus
`
`the parties are advised to observe a pause prior to speaking, so as to avoid
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`speaking over others.
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`Members of the public may request to listen to this oral hearing. If
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`resources are available, the Board generally expects to grant such requests.
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`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 (5) business
`
`days prior to the oral hearing date.
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`
`
`It is
`
`ORDERED that oral argument will commence at 10:00 AM ET on
`
`November 10, 2020.
`
`
`
`5
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`
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`IPR2019-01471
`Patent 6,836,654 B1
`
`FOR PETITIONERS:
`
`Todd M. Siegel
`Andrew M. Mason
`John M. Lunsford
`Joseph T. Jakubek
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`john.lunsford@klarquist.com
`joseph.jakubek@klarquist.com
`
`Tiffany C. Miller
`James M. Heintz
`DLA PIPER LLP (US)
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`FOR PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Brian Koide
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`brian@etheridgelaw.com
`
`
`6
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