`
`
`
`
`Paper 48
`Date: July 27, 2022
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. and APPLE, INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`
`
`
`
`
`
`
`Before KARA L. SZPONDOWSKI, CHRISTOPHER L. OGDEN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`OGDEN, Administrative Patent Judge.
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70(a)
`
`
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`
`
`
`ORAL ARGUMENT
`
`A.
`
`TIME AND FORMAT1
`
`Oral arguments will commence at 1:00 p.m. Eastern Time on
`September 6, 2022, 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 sixty (60) minutes to present argument
`in this case and Patent Owner will have a total of sixty (60) minutes to
`respond. Having the burden of persuasion (see 35 U.S.C. § 316(e)),
`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 arguments. 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-
`
`
`1 If a party is no longer able to appear in-person for the hearing, the party
`must contact PTABHearings@uspto.gov as soon as possible.
`2 According to guidance issued on June 23, 2022, at least in this initial phase
`of re-establishing in-person hearings, the Board will only conduct in-person
`hearings when requested by all parties. See https://www.uspto.gov/patents/
`ptab/hearings. Petitioner has requested that the oral argument take place
`virtually via remote video conference. See Paper 47, 2.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`
`
`2
`
`
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`IPR2021-00144
`Patent 8,095,879 B2
`
`rebuttal, which will be limited to issues raised during Petitioner’s rebuttal.
`See CTPG 83.4
`The parties may request a pre-hearing conference in advance of the
`hearing. See CTPG 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
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov by August 19, 2022 (DUE DATE 6 of the Scheduling
`Order, Paper 27) to request a conference call for that purpose.
`
`B. DEMONSTRATIVES
`
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven (7) business days before the hearing date and
`filed no later than three (3) business days before the hearing.5
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and the Board will not consider them
`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 must be clearly marked
`
`
`4 Patent Owner requests the opportunity to provide a closing statement.
`Paper 46, 2 (citing Mangrove Partners Master Fund, Ltd. v. VirnetX, Inc.,
`IPR2015-01046, Paper 60, 2 (PTAB June 2, 2016)). Each party may provide
`a closing statement as part of its rebuttal or sur-rebuttal time.
`5 The parties may jointly request, at least seven (7) business days before the
`hearing date, that the Board modify the schedule for filing and serving
`demonstratives.
`
`
`
`3
`
`
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`IPR2021-00144
`Patent 8,095,879 B2
`
`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. 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, the Board strongly recommends
`that each demonstrative include a citation to a paper in the record, which
`allows the Board to easily ascertain whether a given demonstrative 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 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 parties must meet
`and confer in good faith to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than two (2) business days before the hearing. The objections must identify
`with particularity which portions of the demonstratives are subject to
`objection (and should include a copy of the objected-to portions) and include
`
`
`
`4
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`IPR2021-00144
`Patent 8,095,879 B2
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`a one (1) 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.6 Any objection to demonstratives
`that is not timely presented will be considered waived.
`Finally, 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.
`
`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, in whole or in part, as long as that counsel is present by video.
`
`D. VIDEO OR TELEPHONIC HEARING DETAILS
`
`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
`will be provided with dial-in connection information, and the hearing will be
`conducted telephonically.
`
`
`6 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`
`
`5
`
`
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`IPR2021-00144
`Patent 8,095,879 B2
`
`
`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. In
`addition, the parties should identify themselves each time they begin
`speaking. 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.7
`
`E.
`
`REMOTE ATTENDANCE REQUESTS
`
`Members of the public may request to listen to or view this hearing. If
`resources are available, the Board generally expects to grant such requests. If
`either party has concerns about the presence of public observers, 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.
`
`
`7 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`
`
`6
`
`
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`IPR2021-00144
`Patent 8,095,879 B2
`
`
`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
`deaf, hard-of-hearing, blind, or low-vision individuals, and indicate how the
`PTAB may accommodate the special request. Any special requests must be
`presented in a separate communication at least five (5) 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 (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB.8
`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
`
`
`8 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.
`
`
`
`
`7
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`IPR2021-00144
`Patent 8,095,879 B2
`
`five (5) business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov.9
`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.10 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 due to 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
`
`
`9 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.
`10 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
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`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.
`
` ORDER
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding will commence at
`1:00 p.m. Eastern Time on September 6, 2022 by video, and proceed in the
`manner set forth herein.
`
`
`
`
`
`
`
`9
`
`
`
`IPR2021-00144
`Patent 8,095,879 B2
`
`For PETITIONER:
`Walter Renner
`David Holt
`Tiffany Miller
`James Heintz
`axf-ptab@fr.com
`holt2@fr.com
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`For PATENT OWNER:
`Kenneth Weatherwax
`Parham Hendifar
`Patrick Maloney
`Vinson Lin
`Philip Graves
`weatherwax@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`lin@lowensteinweatherwax.com
`philipg@hbsslaw.com
`
`
`
`
`10
`
`
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