`571-272-7822
`
` Paper 28
`
` Entered: April 27, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD., D/B/A GWEE,
`Patent Owner.
`____________
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
` IPR2021-00473 (Patent 10,589,320 B1)1
`____________
`
`
`
`Before SALLY C. MEDLEY, SHEILA F. McSHANE, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 We exercise our discretion to issue one combined Order to be filed in each
`case. The parties, however, are not authorized to use this filing style in
`subsequent papers.
`
`
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`Petitioner and Patent Owner have each filed requests for an oral
`hearing in the above captioned proceedings, pursuant to 37 C.F.R. § 42.70.
`IPR2021-00470, Papers 27, 28; IPR2021-00471, Papers 25, 26.2 Petitioner
`proposes a consolidated hearing for IPR2021-00471, IPR2021-00472, and
`IPR2021-00473 with one hour of argument time per party. IPR2021-00471,
`Paper 26, 1. Petitioner proposes a separate hearing for IPR2021-00470 with
`one hour of argument time per party. IPR2021-00470, Paper 28, 1. Patent
`Owner proposes one consolidated hearing for all four of the proceedings
`with ninety minutes of argument time per party. IPR2021-00470, Paper 27,
`1. Upon consideration, a consolidated oral hearing for IPR2021-00471,
`IPR2021-00472, and IPR2021-00473 will be held first, followed by an oral
`hearing for IPR2021-00470. The requests for an oral hearing are granted
`according to the terms set forth in this Order.
`
`The consolidated oral hearing for IPR2021-00471, IPR2021-00472,
`and IPR2021-00473 will commence at 10:00 AM Eastern Time on May 19,
`2022, by video. The oral hearing for IPR2021-00470 will commence at
`approximately 1:00 PM Eastern Time the same day, by video.3 The parties
`are directed to contact the Board at least ten (10) 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
`transcript will constitute the official record of the hearing.
`
`
`2 For convenience we refer to papers in IPR2021-00470 and
`IPR2021-00471.
`3 There will be an hour break between the two oral hearings.
`
`2
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`If at any time during the proceeding, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made.4
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov five (5) 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 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 (5) business days prior to the hearing to receive dial-in
`connection information.
`
`Each party will have sixty (60) minutes of total time to present
`arguments in the combined hearing for IPR2021-00471, IPR2021-00472,
`and IPR2021-00473 for a total hearing time of two (2) hours. Each party
`will have sixty (60) minutes of total time to present arguments for
`IPR2021-00470 for a total hearing time of two (2) hours. In each oral
`hearing, Petitioner will proceed first to present its case with regard to the
`challenged claims and grounds set forth in the Petition. Thereafter, Patent
`
`
`4 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`3
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`Owner may respond to Petitioner’s case. Petitioner may use any of its
`remaining time for rebuttal regarding Patent Owner’s arguments regarding
`the challenged claims. And, thereafter, Patent Owner may use any of its
`remaining time for sur-rebuttal, to respond to Petitioner’s rebuttal
`arguments. The parties are reminded that arguments made during rebuttal
`and sur-rebuttal periods must be responsive to arguments the opposing party
`made in its immediately preceding presentation.
`
`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.
`
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and not evidence. The Board expects the parties will meet and
`confer in good faith to resolve any objections to demonstrative exhibits. For
`any issue 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 five (5) 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.
`We will consider the objections and schedule a conference call, if
`necessary. Otherwise, we will reserve ruling on the objections until the
`hearing or after the hearing. Any objection to demonstrative exhibits that is
`not presented timely will be considered waived.
`
`4
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`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 as long as that counsel is present by video.
`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,
`including PTAB, and seven (7) or fewer years of experience as a licensed
`attorney or agent.5
`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
`
`
`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.
`
`5
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`A 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
`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 in such circumstances, as with LEAP, a
`party may request to share time with counsel and the Board will permit more
`experienced counsel to provide some assistance, if necessary, during oral
`
`
`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., analyses of prior art or objective indicia of
`non-obviousness.
`
`6
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`argument, and to clarify any statements on the record before the conclusion
`of the oral argument.
`As always, 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. The Board discerns that it is often LEAP practitioners who have
`the best understanding of the facts of the case and the evidence of record,
`and the Board encourages their participation.8
`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 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.
`The panel will have access to all papers filed with the Board,
`including demonstratives. During the oral hearing, the parties are advised to
`unmute yourself only when speaking, and 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, the parties
`are advised to identify themselves each time they speak. Furthermore, the
`
`
`8 The Board encourages the participation of LEAP practitioners throughout
`this proceeding, including in Board conference calls, pre-hearing
`conferences, and depositions.
`
`
`7
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`remote nature of the oral hearing may also result in an audio lag, and so 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 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 ten (10) business
`days prior to the oral hearing date.
`It is
`ORDERED that oral argument for IPR2021-00471, IPR20211-00472,
`and IPR2021-00473 will commence at 10:00 AM Eastern Time on May 19,
`2022; and
`FURTHER ORDERED that oral argument for IPR2021-00470 will
`commence at approximately 1:00 PM Eastern Time on May 19, 2022.
`
`8
`
`
`
`IPR2021-00470 (Patent 10,259,020 B2)
`IPR2021-00471 (Patent 10,259,021 B2)
`IPR2021-00472 (Patent 10,562,077 B2)
`IPR2021-00473 (Patent 10,589,320 B1)
`
`
`PETITIONER:
`Walter Renner
`Roberto Devoto
`Andrew Patrick
`Kim Leung
`Kenneth Darby
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`devoto@fr.com
`Patrick@fr.com
`leung@fr.com
`kdarby@fr.com
`
`
`PATENT OWNER:
`Joh Edmonds
`Stephen Schlather
`EDMONDS & SCHLATHER, PLLC
`Pto-edmonds@ip-lit.com
`sschlather@ip-lit.com
`Tarek Fahmi
`ASCENDA LAW GROUP, PC
`Tarek.fahmi@ascendalaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`9
`
`