`U.S. Patent No. 9,849,061B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
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`EIS GMBH,
`Petitioner,
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`v.
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`NOVOLUTO GMBH,
`Patent Owner.
`_________________
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`Case No. IPR2020-00007
`U.S. Patent No. 9,849,061B2
`___________________
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`JOINT NOTICE REGARDING ORAL ARGUMENT
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`IPR2020-00007
`U.S. Patent No. 9,849,061B2
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`Petitioner and Patent Owner respectfully submit that there are no issues in
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`this proceeding necessitating oral argument. Petitioner and Patent Owner have met
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`and conferred, and jointly agree that oral argument is not necessary.
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`To the extent the Board feels oral argument would be helpful and orders oral
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`argument, Petitioner and Patent Owner respectfully request one hour per side of
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`argument time, and specifies the following issues to be argued:
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`I. Anticipation of claims 1-3, 5, 7, 11, 14-15, 17-19, 21, and 23-26
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`under 35 U.S.C. § 102 over Taylor;
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`II. Obviousness of claims 1-3, 5, 7-8, 11, 14-15, 17-19, and 21-26 under
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`35 U.S.C. § 103 over the combination of Taylor and Hovland;
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`III. Obviousness of claim 20 under 35 U.S.C. § 103 over the combination
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`of Taylor and Zipper;
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`IV. Obviousness of claim 20 under 35 U.S.C. § 103 over the combination
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`of Taylor, Zipper, and Hovland;
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`V. Rebuttal to Petitioner’s and Patent Owner’s presentation on all
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`matters;
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`VI. Any other issues raised in papers filed in this proceeding, including
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`issues raised in papers yet to be filed, such as any Motions to Exclude
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`and Oppositions to Motions to Exclude; and
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`VII. Any other outstanding motions and pleadings, and other issues that
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`IPR2020-00007
`U.S. Patent No. 9,849,061B2
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`the Board deems necessary for issuing a Final Written Decision.
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`Petitioner and Patent Owner recognize that circumstances may require a
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`telephonic hearing or video conference in light of the COVID-19 pandemic, as set
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`forth in the USPTO update on in-person hearings. If an oral hearing is conducted
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`remotely, Petitioner and Patent Owner respectfully request that it be conducted by
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`video. If an oral hearing is conducted in person, Petitioner respectfully requests
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`that it be held at the United States Patent and Trademark Office headquarters in
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`Alexandria, Virginia while Patent Owner respectfully requests that it be held at the
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`Dallas, Texas, USPTO Regional Office pursuant to the Scheduling Order (Paper
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`16).
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`Dated: May 14, 2021
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`Respectfully submitted,
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`Dinesh N. Melwani (Reg. No. 60,670)
`Counsel for Petitioner
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`IPR2020-00007
`U.S. Patent No. 9,849,061B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that the
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`foregoing document was served via e-mail to the following attorneys of record for
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`the Patent Owner listed below:
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`Lead Counsel
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`Back-up Counsel
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`Service Email
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`Dated: May 14, 2021
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`Tammy J. Dunn (Reg. No. 69,167)
`Osha Bergman Watanabe & Burton LLP
`909 Fannin Street, Suite 3500
`Houston, TX 77010
`Telephone: (713) 228-8600
`Email: terry@obwbip.com
`Lisa E. Margonis (Reg. No. 57,123)
`Peter C. Schechter (Reg. No. 31,662)
`Califf T. Cooper (admitted Pro Hac Vice)
`Osha Bergman Watanabe & Burton LLP
`909 Fannin Street, Suite 3500
`Houston, TX 77010
`Tel. | Fax: 713.228.8600 | 713.228.8778
`Email: margonis@obwbip.com,
`schechter@obwbip.com, and
`cooper@obwbip.com
`OLNovoluto0007@obwbip.com
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`Respectfully submitted,
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`Dinesh N. Melwani (Reg. No. 60,670)
`Attorney for Petitioner
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