Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 24
`Entered: December 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`___________
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
` IPR2019-01614 (Patent 9,911,325 B2)1
`___________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`The date set for oral hearing in these proceedings is December 22,
`2020, if hearings are requested by either party and granted by the Board.
`
`
`1 The parties are not authorized to use this form of caption.
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 24
`Entered: December 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner.
`___________
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
` IPR2019-01614 (Patent 9,911,325 B2)1
`___________
`
`
`Before PATRICK M. BOUCHER, MINN CHUNG, and
`SHARON FENICK, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`The date set for oral hearing in these proceedings is December 22,
`2020, if hearings are requested by either party and granted by the Board.
`
`
`1 The parties are not authorized to use this form of caption.
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`Paper 8.2 Both parties request oral hearing. Papers 21, 22. The requests are
`granted.
`A consolidated oral argument will be held. Each party will have a
`total of 90 minutes to present its argument, and may allocate its time among
`the three proceedings as it wishes. Any representation made by counsel at
`the consolidated oral argument is applicable to and useable in all
`proceedings that have the same or similar underlying basis for the
`representation.
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue in these reviews are unpatentable. Accordingly, Petitioner
`will open the hearing by presenting its case regarding the challenged claims
`for which the Board instituted trial. After Petitioner’s presentation, Patent
`Owner will respond to Petitioner’s argument. Petitioner may reserve time to
`respond to Patent Owner’s argument. Patent Owner may request a brief sur-
`rebuttal as set forth in the Board’s Consolidated Trial Practice Guide.
` Oral arguments will commence at 1:00 PM Eastern Standard Time on
`Tuesday, December 22, 2020, 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 the hearing, and the reporter’s transcript will constitute the
`official record of the hearing. If at any time during the proceeding, a party
`encounters technical or other difficulties that fundamentally undermine the
`ability to adequately represent the party, the panel should be notified
`
`
`2 Citations are to IPR2019-01612. Similar papers have been filed in each of
`the proceedings.
`
`2
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`immediately, and adjustments will be made.3
`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.
`The parties may request a pre-hearing conference in advance of the
`hearing. See Consolidated Trial Practice Guide 82. “The purpose of the pre-
`hearing conference is to afford the parties the opportunity to preview (but
`not argue) the issues to be discussed at the hearing, and to seek the Board’s
`guidance as to particular issues that the panel would like addressed by the
`parties.” Id. If either party desires a pre-hearing conference, the parties
`should jointly contact the Board at Trials@uspto.gov at least seven (7)
`business days before the hearing date to request a conference call for that
`purpose.
`The parties shall serve on opposing counsel any demonstrative
`exhibits at least seven business days prior to the hearing. The parties also
`
`
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternative dial-in information.
`
`3
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`shall file the demonstrative exhibits with the Board at least five business
`days prior to the hearing. The parties are also requested to email their
`demonstrative exhibits to PTABHearings@uspto.gov. We remind the
`parties that demonstrative exhibits are not evidence, but are intended to
`assist the parties in presenting their oral arguments to the Board. We also
`remind the parties that demonstrative exhibits are not a mechanism for
`making arguments not previously addressed in the papers. The parties are
`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 the appropriate content of
`demonstrative exhibits, which must include citations to the record.
`To the extent that the parties object to any demonstrative exhibits, the
`parties will meet and confer in good faith to resolve any objections to
`demonstrative exhibits. If such objections cannot be resolved, the parties
`shall file jointly a one-page list of objections to demonstratives with the
`Board at least two business days before the hearing. The objections should
`identify with particularity the portions of each demonstrative exhibit subject
`to objection, include a copy of the objected-to portions, and include a one-
`sentence statement of the reason for each objection. No further argument or
`explanation is permitted. We will consider any objections and schedule a
`conference call if deemed necessary. Otherwise, we will reserve ruling on
`the objections. Any objection to demonstrative exhibits that is not timely
`presented will be considered waived.
`
`4
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`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
`presented in a separate communication not less than five days before the
`hearing.
`The panel will have access to all papers filed with the Board,
`including demonstrative exhibits. During the oral hearing, anyone who is
`not speaking is asked to mute himself or herself. The parties are requested
`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 requested 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 requested 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.
`
`5
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`Legal Experience and Advancement Program
`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 arguments in any federal tribunal,
`including PTAB, and seven (7) or fewer years of experience as a licensed
`attorney or agent.4
`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 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 at least
`five (5) business days before the hearing, by email to the Board at
`PTABHearings@uspto.gov.5
`A LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`
`
`4 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`5 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`
`6
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`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.6 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
`argument, and to clarify any statements on the record before the conclusion
`of the oral argument.
`
`
`6 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.
`
`7
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`As always, all practitioners appearing before the Board shall
`demonstrate the highest professional standards. All practitioners are
`expected to have a command of the factual record, the applicable law, and
`Board procedures, as well as the authority to commit the party they
`represent. The Board discerns that it is often LEAP practitioners who have
`the best understanding of the facts of the case and the evidence of record,
`and the Board encourages their participation.7
`
`
`It is
`ORDERED that the parties’ requests for oral hearing are granted
`subject to the conditions set forth above in this Order; and
`FURTHER ORDERED that a video oral hearing, conducted pursuant
`to the procedures outlined above, shall commence at 1:00 PM Eastern
`Standard Time on Tuesday, December 22, 2020.
`
`
`
`
`
`
`
`7 The Board encourages the participation of LEAP practitioners throughout
`this proceeding, including in Board conference calls, pre-hearing
`conferences, and depositions.
`
`
`8
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`
`For PETITIONER:
`
`Lestin Kenton
`lkenton-ptab@sternekessler.com
`
`Jon Wright
`jwright-ptab@sternekessler.com
`
`Daniel Block
`dblock-ptab@sternekessler.com
`
`Tim Tang
`ttang-ptab@sternekessler.com
`
`
`For PATENT OWNER:
`
`Benjamin Pleune
`ben.pleune@alston.com
`
`Ryan Koppelman
`ryan.koppelman@alston.com
`
`Thomas Davison
`tom.davison@alston.com
`
`James Abe
`james.abe@alston.com
`
`Caleb Bean
`caleb.bean@alston.com
`
`
`
`
`
`
`9
`
`
`
`IPR2019-01612 (Patent 7,589,642 B1)
`IPR2019-01613 (Patent 8,004,389 B1)
`IPR2019-01614 (Patent 9,911,325 B2)
`
`
`Derek Neilson
`derek.neilson@alston.com
`
`Nicholas Tsui
`nck.tsui@alston.com
`
`
`10
`
`
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