`571-272-7822
`
`Paper 50
`Entered: April 26, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`QUALCOMM INCORPORATED and
`ZYXEL COMMUNICATIONS CORPORATION1
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)2
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`ORDER
`Changing Due Date 8 and Setting Oral Argument
`37 C.F.R. §§ 42.5, 42.70
`
`
`
`1 ZyXEL Communications Corporation was joined as a petitioner in these
`proceedings based on petitions and motions for joinder filed in IPR2021-
`00734, IPR2021-00739, and IPR2021-00741, respectively.
`2 This Order addresses overlapping issues in the cases listed above.
`Therefore, we issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style of filing.
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`The Third Revised Scheduling Order (Paper 473), entered on April 14,
`2022, and responsive to Patent Owner’s Revised Motion to Amend, set Due
`Date 8 (oral argument) for May 20, 2022, to accommodate the revised
`schedule for additional briefing. In an e-mail to the Board on April 21,
`2022, counsel for Patent Owner indicated that lead counsel has scheduling
`conflicts with Due Date 8, and requested that Due Date 8 be moved by two
`weeks. Due to scheduling conflicts, the panel is unable to move Due Date 8
`to the week of May 31, 2022, through June 3, 2022. Accordingly, we reset
`Due Date 8 to May 12, 2022, the prior Due Date 8 set in the Second Revised
`Scheduling Order (Paper 29). No other Due Dates are changed, and, in
`particular, we note that Due Date 7B for filing a reply to an opposition to a
`motion to exclude remains May 13, 2022.
`
`I. ORAL ARGUMENT
`The parties filed separate requests for oral argument in each of these
`proceedings. See Papers 45, 46. Petitioner requested a consolidated
`argument for all three proceedings listed in the caption, with two hours
`argument time allotted for each party for a total of four hours of argument
`time. Petitioner further requests, that if a consolidated argument is not held,
`that each party be allotted 45 minutes of argument time for a total of 90
`minutes for each inter partes review listed in the caption. See Paper 46, 1.
`Patent Owner requests a total of 30 minutes to present its arguments in each
`proceeding listed in the caption. See Paper 45, 1.
`
`
`3 Unless otherwise noted, we cite to the papers filed in IPR2021-00375.
`Similar Papers were filed in IPR2021-00377 and IPR2021-00582.
`2
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`A. Time and Format
`Oral arguments will commence at 12:00 pm ET on May 12, 2022, by
`video.4 The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing.
`For each inter partes review, Petitioner will have a total of 45 minutes to
`present its arguments, and Patent Owner will have a total of 45 minutes to
`respond. The hearing for IPR2021-00375 will commence at 12:00 pm ET,
`the hearing for IPR2021-00377 will commence at approximately 1:30 pm
`ET, and the hearing for IPR2021-00582 will commence at approximately
`3:00 pm ET. Upon agreement, however, the parties may present arguments
`for each inter partes review in a different agreed-upon order. For each inter
`partes review, Petitioner will open the hearing by presenting its case
`regarding the challenged claims for which the Board instituted trial and
`Patent Owner’s Motion to Amend. 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 Guide5 (“CTPG”), 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 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
`
`
`4 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10)
`business days before the hearing date.
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`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 at least seven (7) business days before the hearing date
`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 five (5) business days before the hearing.6
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not 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. The
`
`
`6 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives, and request that the Board modify the schedule for filing
`and serving demonstratives at least seven (7) business days before the
`hearing date.
`
`4
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`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 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 shall 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 shall identify
`with particularity which portions of the demonstratives are subject to
`objection (and should include a copy of the objected-to portions) and include
`a one (1) sentence statement of the reason for each objection. No argument
`or further explanation is permitted. The Board will consider any objections,
`
`
`
`5
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`and may reserve ruling on the objections.7 Any objection to demonstratives
`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.
`
`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 Details8
`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
`
`
`7 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`8 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.
`6
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`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 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.9
`
`
`9 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`7
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`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 ten (10) 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 Board 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.10
`
`
`10 Whether an argument is “substantive” for purposes of determining
`whether an advocate qualifies as a LEAP practitioner will be made on a
`
`
`
`
`
`8
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`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 Board’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.11
`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.12 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
`
`
`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.
`11 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.
`12 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.
`
`9
`
`
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`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 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.
`
`
`
`10
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that DUE DATE 8 is changed to May 12, 2022, and the
`oral argument, will be held on that date;
`FURTHER ORDERED that all other aspects of the Scheduling Order
`remain unchanged, as outlined in the Scheduling Order;
`FURTHER ORDERED that oral argument for the proceedings listed
`in the caption shall commence at 12:00 pm ET on May 12, 2022, by video,
`and proceed in the manner set forth herein.
`
`
`
`
`
`11
`
`
`
`IPR2021-00375 (Patent 8,265,096 B2)
`IPR2021-00377 (Patent 8,249,204 B2)
`IPR2021-00582 (Patent 8,565,326 B2)
`
`PETITIONER:
`
`Jonathan Detrixhe
`Peter Chassman
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`pchassman@reedsmith.com
`
`PATENT OWNER:
`
`Jay Kesan
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`jay@jaykesan.com
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`
`
`
`
`12
`
`