Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 35
`Entered: November 9, 2021
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`LBT IP I LLC,
`Patent Owner.
`____________
`
`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
` IPR2020-01192 (Patent 8,421,618 B2)1
`____________
`
`
`
`Before JOHN A. HUDALLA, SHEILA F. McSHANE, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70(a)
`
`
`
`
`
`
`
`1 We exercise our discretion to issue a single Order, to be filed in each case.
`The parties are not authorized to use this caption for subsequent papers.
`
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`
`
`The Scheduling Orders (Paper 102) for these proceedings provided
`that an oral argument would be conducted on December 9, 2021, if
`requested by the parties and granted by the Board. Under 37 C.F.R.
`§ 42.70(a), both parties requested consolidated oral argument in these cases.
`Papers 32, 34. The parties’ requests for consolidated oral argument are
`granted.
`Oral arguments will commence at 10:00 AM ET on Thursday,
`December 9, 2021, by video. The parties are directed to contact the Board at
`least ten business 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 consolidated transcript will
`constitute the official record of the hearing.
`If at any time during the proceedings, an attorney encounters technical
`or other difficulties that fundamentally undermine the attorney’s ability to
`adequately represent the attorney’s client, please inform the panel
`immediately, and adjustments will be made. 3
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov at least 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
`
`
`2 For purposes of expediency, we cite to papers filed in IPR2020-01189.
`Similar papers are filed in each of the above-identified proceedings.
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`
`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.
`At the consolidated hearing, each party will have 120 minutes of total
`argument time. Petitioner bears the ultimate burden of proof that Patent
`Owner’s claims at issue in these proceedings are unpatentable by a
`preponderance of the evidence. 35 U.S.C. § 316(e). Therefore, 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 and present the issues for
`which it bears the ultimate burden. Next, Petitioner may reserve rebuttal
`time to respond to arguments presented by Patent Owner. Lastly, Patent
`Owner may reserve sur-rebuttal time; however, Patent Owner’s sur-rebuttal
`must be limited in scope to the issues Petitioner raises during its rebuttal
`time. The parties may also address any pending motions during their
`respective presentations. No live testimony from any witness will be taken
`at the hearing.
`The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041,
`Paper 65 at 2–5 (PTAB Jan. 27, 2014) (Order – Conduct of the Proceeding),
`for guidance regarding the appropriate content of demonstrative exhibits.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at least
`
`3
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`
`seven (7) business days before the hearing. The parties also shall provide a
`courtesy copy of any demonstrative exhibits to the Board at least five (5)
`business days before the hearing by emailing them to
`PTABHearings@uspto.gov.
`The parties shall meet and confer to discuss and resolve any
`objections to demonstrative exhibits. Any party with unresolved objections
`must file a list of those objections with the Board at least two business days
`before the hearing. For each objection, the list must identify with
`particularity which portions of the demonstrative exhibits are subject to the
`objection and may include a short, one-sentence statement explaining the
`objection. No argument or further explanation is permitted. The Board will
`consider any objections and schedule a conference call if deemed necessary.
`Otherwise, the Board will reserve ruling on the objections. Any objection to
`demonstrative exhibits not timely presented may be considered waived. The
`Board may reserve ruling on the objections until after the hearing.
`If desired, a request for a pre-hearing conference must be made by
`November 23, 2021. To request such a conference, an email message should
`be sent to 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 before the hearing.
`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, in whole or in part, as long as that counsel is present by video.
`Any special requests for audio-visual equipment must be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`4
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`
`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 (5) days before the
`hearing.
`Attorneys will unmute themselves only when speaking. The panel
`will have access to all papers filed with the Board, including demonstratives.
`During the oral hearing, attorneys must 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, attorneys
`must identify themselves at the beginning of their presentation or after
`another attorney speaks. Furthermore, the remote nature of the oral hearing
`may also result in an audio lag, so attorneys must observe a pause prior to
`speaking 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.
`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 (3) or fewer
`
`5
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`
`substantive4 oral arguments in any federal tribunal, including PTAB, and
`seven (7) or fewer years of experience as a licensed attorney or agent.
`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 (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 oral hearing, by email to the Board
`at PTABHearings@uspto.gov. 5
`The LEAP practitioner may conduct the entire oral argument or may
`share time with other counsel, provided that the LEAP practitioner is offered
`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
`
`
`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 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.
`
`6
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`
`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.
`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.
`
`Accordingly, it is
`ORDERED that the parties’ requests for a consolidated oral hearing
`are granted subject to the conditions set forth above in this Order; and
`
`7
`
`

`

`IPR2020-01189 (Patent 8,497,774 B2)
`IPR2020-01191 (Patent 8,102,256 B2)
`IPR2020-01192 (Patent 8,421,618 B2)
`
`
`FURTHER ORDERED that a video oral hearing, conducted pursuant
`to the procedures outlined above, shall commence at 10:00 AM ET on
`Thursday, December 9, 2021.
`
`
`
`For PETITIONER:
`
`Jennifer Bailey
`Adam Seitz
`Robin Snader
`Jocelyn Ram
`Kelly Hughes
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`robin.snader@eriseip.com
`jocelyn.ram@eriseip.com
`kelly.hughes@eriseip.com
`
`For PATENT OWNER:
`
`Mitchell S. Zajac
`BUTZEL LONG, PC
`zajac@butzel.com
`
`8
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`