`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`__________________
`
`Case No. IPR2020-01139
`Patent No. 8,382,186
`––––––––––
`
`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`Pursuant to the Board’s January 13, 2021 Case Management and Scheduling
`
`Order (Paper 18), the Board’s April 29, 2021 Revised Scheduling Order (Paper 26),
`
`and 37 C.F.R. § 42.70, Patent Owner respectfully requests oral argument.
`
`There is substantial overlap between issues in the above-captioned proceeding
`
`(IPR2020-01139) and a related proceeding between the parties in which Patent
`
`Owner has also submitted a request for oral argument (IPR2020-01142). The
`
`Petitions in this proceeding and IPR2020-01142 were filed on the same date, and are
`
`proceeding according to the same procedural schedule, with oral argument currently
`
`scheduled to occur in both proceedings on October 12, 2021. See Paper 26.
`
`Accordingly, Patent Owner respectfully requests that both this proceeding and
`
`IPR2020-01142 be covered in a single hearing, with 60 minutes for each side (120
`
`minutes total). To the extent that separate hearings are scheduled for both above-
`
`identified proceedings, Patent Owner respectfully requests that this proceeding
`
`(IPR2020-01139) be covered with 45 minutes for each side (90 minutes total).
`
`Patent Owner further requests that it be allowed to reserve time for rebuttal
`
`following any rebuttal arguments presented by Petitioner.
`
`1
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`With regard to this proceeding,1 Patent Owner specifies the following issues
`
`(without waiving consideration of any issue not listed below) to be argued:
`
`1.
`
`Ground 1: Whether the combination of Rabbe, Yung, and Gruenwald
`
`set forth in Ground 1 of the Petition renders obvious Claims 1-7 of U.S.
`
`Patent No. 8,382,186 (the “’186 Patent”) under 35 U.S.C. § 103.
`
`Objective evidence of nonobviousness of Claims 1-7 of the ’186 Patent.
`
`Arguments regarding any motion to exclude or motion to strike filed by
`
`a party.
`
`Arguments regarding any pending motion to seal filed by a party.
`
`Any issues specified by Petitioner in its request for oral argument.
`
`Any additional issues on which the Board seeks clarification.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Patent Owner understands that until further notice, oral arguments scheduled
`
`on or after Friday, March 13, 2020 will be conducted remotely by video or telephone.
`
`See https://www.uspto.gov/coronavirus. To the extent the oral argument is
`
`conducted in accordance with the USPTO’s March 13, 2020 update on in-person
`
`meetings, Patent Owner requests that it be conducted via video-conference with the
`
`1 Patent Owner acknowledges that the Board may not grant Patent Owner’s request
`to conduct a single hearing for this case and IPR2020-01142. Patent Owner
`therefore identifies only the issues to be argued with respect to this proceeding in
`this submission.
`
`2
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`capability to display documents, including demonstratives and exhibits, to the
`
`Board. To the extent the oral argument is conducted in-person at USPTO offices,
`
`Patent Owner requests that the Board provide audio-visual equipment to display
`
`demonstrative exhibits during the oral argument, including a projector for
`
`connecting a laptop and a screen for displaying documents. Any demonstrative
`
`exhibits will be served before the oral argument as required by 37 C.F.R. § 42.70(b).
`
`This filing is timely, being submitted no later than DUE DATE 4 (September
`
`1, 2021), according to the Scheduling Order (Paper 18).
`
`CONCLUSION
`
`Patent Owner respectfully requests the opportunity to have an oral argument
`
`before the Board. If the Board has any questions, comments, or suggestions, the
`
`undersigned attorney requests a telephone conference to discuss.
`
`Dated: September 1, 2021
`
`Respectfully submitted,
`
`BAKER BOTTS L.L.P.
`
`By: /David G. Wille/
`David G. Wille
`Reg. No. 38,363
`
`Lead Counsel for Patent Owner MacNeil IP
`LLC
`
`3
`
`
`
`IPR2020-01139
`U.S. Patent No. 8,382,186
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September
`
`1, 2021, a copy of PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
`
`was filed electronically and served on Petitioner via electronic mail:
`
`Mark P. Walters (Reg. No. 46,050)
`walters@LoweGrahamJones.com
`
`Ralph W. Powers III, Reg. No. 63,504
`tpowers-PTAB@sternekessler.com
`
`Jason A. Fitzsimmons, Reg. No. 65,367
`jfitzsimmons-PTAB@sternekessler.com
`
`Stephen A. Merrill, Reg. No. 72,955
`smerrill-PTAB@sternekessler.com
`
`John J. Bamert, Reg. No. 74,859
`bamert@LoweGrahamJones.com
`
`PTAB@sternekessler.com
`
`Date: September 1, 2021
`
`
`/David G. Wille/
`David G. Wille (Reg. No. 38,363)
`BAKER BOTTS L.L.P.
`(214) 953-6595
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`
`Attorneys for Patent Owner, MacNeil
`IP LLC
`
`4
`
`
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