Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 32
`Date: January 14, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`LENOVO (UNITED STATES) INC., MOTOROLA MOBILITY LLC,
`DELL TECHNOLOGIES INC., AND HP INC. 1,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-00192
`Patent 8,502,547 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 The petitioners to IPR2020-00682 have been joined as parties to this
`proceeding.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 32
`Date: January 14, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`LENOVO (UNITED STATES) INC., MOTOROLA MOBILITY LLC,
`DELL TECHNOLOGIES INC., AND HP INC. 1,
`Petitioner,
`
`v.
`
`NEODRON LTD.,
`Patent Owner.
`____________
`
`IPR2020-00192
`Patent 8,502,547 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`BOUCHER, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 The petitioners to IPR2020-00682 have been joined as parties to this
`proceeding.
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`
`I. ORAL ARGUMENT
`
`A. Time and Format
`The date set for oral hearing in this proceeding is February 11, 2021,
`if a hearing is requested by either party and granted by the Board. Paper 9,
`10. Patent Owner requests oral hearing. Paper 31. The request is granted.
`Oral argument will commence at 12:00 noon Eastern Time on
`February 11, 2021, by video.2 The Board will provide a court reporter for
`the hearing, and the reporter’s transcript will constitute the official record of
`the hearing.
`Petitioner will have a total of 45 minutes to present argument in this
`case and Patent Owner will have a total of 45 minutes to respond. Petitioner
`will open the hearing by presenting its case regarding the challenged claims
`for which the Board instituted trial. Thereafter, Patent Owner will respond
`to Petitioner’s argument. Petitioner may reserve rebuttal time to respond to
`arguments presented by Patent Owner. In accordance with the Consolidated
`Trial Practice Guide3 (“CTPG”), issued in November 2019, Patent Owner
`may request to reserve time for a brief sur-rebuttal. See CTPG 83.
`The parties may request a pre-hearing conference in advance of the
`hearing. See Id. at 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
`
`2 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least seven (7)
`business days before the hearing date.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`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.
`
`B. Demonstrative Exhibits
`As set forth in 37 C.F.R. § 42.70(b), demonstrative exhibits shall be
`served on opposing counsel at least seven (7) business days before the
`hearing date and filed no later than the time of the hearing.
`Demonstrative exhibits are not a mechanism for making new
`arguments. Demonstrative exhibits also are not evidence, and will not be
`relied upon as evidence. Rather, demonstrative exhibits are visual aids to a
`party’s oral presentation regarding arguments and evidence previously
`presented and discussed in the papers. Accordingly, demonstrative exhibits
`shall be clearly marked with the words “DEMONSTRATIVE EXHIBIT –
`NOT EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d
`1364, 1369 (Fed. Cir. 2018) (holding that the Board is obligated under its
`own regulations to dismiss untimely argument “raised for the first time
`during oral argument”). “[N]o new evidence may be presented at the oral
`argument.” CTPG 86; see also St. Jude Med., Cardiology Div., Inc. v. The
`Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB
`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
`record but not previously discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative exhibit include a citation to a paper in the record, which
`allows the Board to easily ascertain whether a given demonstrative exhibit
`
`3
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`contains “new” argument or evidence or, instead, contains only that which is
`developed in the existing record.
`Due to the nature of the Board’s consideration of demonstrative
`exhibits and the opportunity afforded for the parties to reach an agreement
`without involving the Board, the Board does not anticipate that objections to
`demonstrative exhibits are likely to be sustained. Nevertheless, to the extent
`that a party objects to the propriety of any demonstrative exhibit, the parties
`shall meet and confer in good faith to resolve any objections to
`demonstrative exhibits prior to filing the objections with the Board. If such
`objections cannot be resolved, the parties may file any objections to
`demonstrative exhibits with the Board no later than the time of the hearing.
`The objections shall identify with particularity which portions of the
`demonstrative exhibits are subject to objection (and should include a copy of
`the objected-to portions) and include a one-sentence statement of the reason
`for each objection. No argument or further explanation is permitted. The
`Board will consider any objections, and may reserve ruling on the
`objections.4 Any objection to demonstrative exhibits that is not timely
`presented will be considered waived.
`Finally, the parties are reminded that each presenter should identify
`clearly and specifically each paper (e.g., by slide or screen number for a
`demonstrative) referenced during the hearing to ensure the clarity and
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`
`4 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`4
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. See CTPG 11. Any counsel of record may present the
`party’s argument as long as that counsel is present by video.
`
`D. Video Hearing Details5
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five business days prior to the 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 hearing will be
`conducted telephonically.
`If one or both parties would prefer to participate in the hearing
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`least five business days prior to the hearing date to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board, including demonstrative exhibits.
`During the hearing, the parties are reminded to identify clearly and
`specifically each paper referenced (e.g., by slide or screen number for a
`
`
`5 USPTO facilities remain closed to the public. If and when conditions
`allow in-person hearing attendance, the parties will be notified and will be
`permitted to submit a joint request to convert the current video hearing to an
`in-person hearing. The requests will be considered on a case-by-case basis,
`and subject to resource availability.
`
`5
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`demonstrative exhibit) to ensure the clarity and accuracy of the court
`reporter’s transcript and for the benefit of all participants appearing
`electronically. In addition, the parties are advised to identify themselves
`each time they speak. Furthermore, the remote nature of the 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 speaking over others.
`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
`adjustments will be made.6
`
`E. Remote Attendance Requests
`Members of the public may request to listen to this 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 at PTABHearings@uspto.gov at least seven business days prior to the
`hearing date.
`
`F. Audio/Visual Equipment Requests
`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 hearing, such as a request to accommodate
`visual or hearing impairments, and indicate how the PTAB may
`
`
`6 For example, if a party is experiencing poor video quality, the Board may
`provide alternative dial-in information.
`6
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five business days before the hearing date.
`
`G. Legal Experience and Advancement Program
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`argue before the Board to develop their skills. The Board defines a LEAP
`practitioner as a patent agent or attorney having three or fewer substantive
`oral arguments in any federal tribunal, including PTAB, and seven or fewer
`years of experience as a licensed attorney or agent.7
`The parties are encouraged to participate in the Board’s LEAP
`program. Either party may request that a qualifying LEAP practitioner
`participate in the program and conduct at least a portion of the party’s oral
`argument. The Board will grant up to fifteen 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 business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov.8
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`
`7 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.
`8 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.
`7
`
`
`
`IPR2020-00192
`Patent 8,502,547 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.9 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 when the advocate does not qualify for
`LEAP, a party may share argument time among counsel and the Board will
`permit the 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.
`
`
`9 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.
`
`8
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`
`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.
`
`II. ORDER
`
`Accordingly, 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 12:00 noon Eastern
`Standard Time on Thursday, February 11, 2021.
`
`
`
`9
`
`
`
`IPR2020-00192
`Patent 8,502,547 B2
`
`For PETITIONER:
`
`Marc Pensabene
`Nicholas J. Whilt
`Laura Bayne
`O’Melveny & Myers LLP
`mpensabene@omm.com
`nwhilt@omm.com
`lbayne@omm.com
`
`Aliza Carrano
`Robert High
`Finnegan, Henderson, Farabow, Garrett and Dunner, LLP
`aliza.carrano@finnegan.com
`robert.high@finnegan.com
`
`James Heintz
`Robert Buergi
`DLA Piper LLP
`jim.heintz@dlapiper.com
`robert.buergi@dlapiper.com
`
`Christopher Douglas
`Lauren Bolcar
`Alston & Bird LLP
`christopher.douglas@alston.com
`lauren.bolcar@alston.com
`
`For PATENT OWNER:
`
`Kent Shum
`Neil Rubin
`Reza Mirzaie
`Philip X. Wang
`Russ August & Kabat
`kshum@raklaw.com
`nrubin@raklaw.com
`rmirzaie@raklaw.com
`pwang@raklaw.com
`
`10
`
`
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