Trials@uspto.gov
`571-272-7822
`
` Paper 33
`Date: October 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01265
`Patent 7,110,444 B1
`____________
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`ORDER
`Granting the Parties’ Requests for Oral Hearing
`37 C.F.R. § 42.70
`
`
`571-272-7822
`
` Paper 33
`Date: October 7, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`INTEL CORPORATION,
`Petitioner,
`v.
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2020-01265
`Patent 7,110,444 B1
`____________
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`ORDER
`Granting the Parties’ Requests for Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`IPR2020-01265
`Patent 7,110,444 B1
`
`
`Each of the parties in the above-captioned proceeding filed a request
`for oral hearing, pursuant to 37 C.F.R. § 42.70. Papers 28 (Petitioner’s
`request), 30 (Patent Owner’s corrected request). Petitioner requests
`60 minutes of argument time for each side (Paper 28, 1), while Patent Owner
`requests 75 minutes per side (Paper 30, 2). The parties’ requests for oral
`hearing are granted in accordance with the terms set forth in this Order.
`The oral hearing will commence at 9:00 AM Eastern Time on
`November 1, 2021, by video.1 Based on the issues raised in this proceeding
`that involves only three challenged claims, each party will have 60 minutes
`of total time to present arguments, and a transcript will be prepared.
`Petitioner will proceed first to present its case with regard to the challenged
`claims and grounds set forth in the Petition. Petitioner may reserve time for
`rebuttal. Thereafter, Patent Owner may respond to Petitioner’s argument
`and may reserve time for sur-rebuttal. Petitioner may then present its
`rebuttal followed by Patent Owner’s sur-rebuttal. See Consolidated Trial
`Practice Guide 83 (“CTPG”).2 The parties are reminded that arguments
`made in rebuttal and sur-rebuttal must be responsive to arguments the
`opposing party made in its immediately preceding presentation.
`The parties may only rely upon evidence that has been previously
`submitted in the proceeding and may only present arguments that have been
`previously made in the submitted papers. No new evidence or arguments
`
`
`1 U.S. Patent and Trademark Office facilities remain closed to the public. If
`and when conditions allow in-person hearing attendance, the parties will be
`notified and may 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.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
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`IPR2020-01265
`Patent 7,110,444 B1
`
`may be presented at the hearing. The parties have not requested to present
`live testimony during the hearing; thus, live testimony will not be permitted.
`Official Record
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`Conducting the Hearing by Video
`As mentioned above, the oral hearing will be conducted by video.
`The Board generally expects lead counsel for each party to be present at the
`hearing via video. See CTPG 11. If either party expects that its lead counsel
`will not be attending the oral argument, the parties should initiate a joint
`telephone conference with the Board no later than three (3) business days
`prior to the oral hearing to discuss the matter. Any counsel of record may
`present the party’s argument as long as that counsel is also present by video.
`During the hearing, if 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.3
`To facilitate planning, each party must contact the Board at
`PTABHearings@uspto.gov at least five (5) 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
`
`
`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`3
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`IPR2020-01265
`Patent 7,110,444 B1
`
`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 (5) 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 demonstratives. During
`the hearing, the parties are reminded to identify clearly and specifically each
`paper referenced (e.g., by slide or screen number for a demonstrative) 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.
`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 ten (10) business days prior to
`the hearing date.
`Pre-Hearing Conference
`Either party may request a pre-hearing conference. See CTPG 82; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019). Requests must be made by
`October 21, 2021. See Paper 11 (Scheduling Order), 10 (Due Date 7). To
`
`4
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`IPR2020-01265
`Patent 7,110,444 B1
`
`request such a conference, the parties should jointly contact the Board at
`Trials@uspto.gov and include several dates and times of availability that are
`generally no later than three (3) business days prior to the hearing.
`Demonstrative Exhibits
`At least seven (7) business days prior to the hearing, each party shall
`serve on the other party any demonstrative exhibit(s) it intends to use during
`the hearing. See 37 C.F.R. § 42.70(b). At least five (5) business days prior
`to the hearing, the parties shall file any demonstrative exhibits in this case.
`Demonstratives are not a mechanism for making new arguments.
`Demonstrative exhibits used at the hearing are not evidence, nor will they be
`relied upon as evidence. Rather, demonstratives are visual aids to a party’s
`oral presentation regarding arguments and evidence previously presented
`and discussed in the papers. Accordingly, demonstratives 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 85; see also St. Jude Med., Cardiology Div., Inc. v. Bd. of
`Regents of the Univ. of Mich., IPR2013-00041, Paper 65 at 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 include a citation to the record, which allows the Board
`
`5
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`IPR2020-01265
`Patent 7,110,444 B1
`
`to easily ascertain whether a given demonstrative contains “new” argument
`or evidence.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the Board expects the
`parties will meet and confer in good faith to resolve any objections prior to
`raising the objections with the Board. For any objection to a demonstrative
`that cannot be resolved after conferring with the opposing party, the parties
`may email jointly to Trials@uspto.gov a one-page list of objections at least
`four (4) business days prior to the hearing. The list should identify with
`particularity which demonstrative exhibits are subject to objection and
`include a short statement (no more than one short sentence) 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 until
`at or after the hearing.4 Any objection to demonstratives that is not timely
`presented will be considered waived.
`The 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,
`
`
`4 If time permits, the Board may schedule a conference call with the parties
`to discuss any objections raised prior to the hearing.
`
`6
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`IPR2020-01265
`Patent 7,110,444 B1
`
`including the PTAB, and seven (7) or fewer years of experience as a
`licensed attorney or agent.5
`The 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.6
`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.7 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`
`
`5 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.
`6 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 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., analysis of prior art or objective indicia of
`non-obviousness.
`
`7
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`IPR2020-01265
`Patent 7,110,444 B1
`
`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 the issue(s), from
`a 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 the
`LEAP, a party may share argument time among 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.
`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.
`Special Equipment or Needs
`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
`
`8
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`IPR2020-01265
`Patent 7,110,444 B1
`
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five (5) business days before the hearing
`date.
`
`Accordingly, it is
`ORDERED that an oral hearing, conducted in accordance with the
`procedures set forth above, shall commence at 9:00 AM Eastern Time on
`November 1, 2021.
`
`
`
`
`
`
`
`9
`
`
`
`IPR2020-01265
`Patent 7,110,444 B1
`
`For PETITIONER:
`
`Grant K. Rowan
`Haixia Lin
`Brian Lambson
`WILMER CUTLER PICKERING HALE AND DORR LLP
`grant.rowan@wilmerhale.com
`haixia.lin@wilmerhale.com
`brian.lambson@wilmerhale.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`GOLDBERG SEGALLA LLP
`jason.s.charkow@gmail.com
`cbiyer@goldbergsegalla.com
`smandir@goldbergsegalla.com
`
`10
`
`
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