`571-272-7822
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`
`
`
`
`Paper 32
`Entered: June 7, 2022
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BOSE CORP.,
`Petitioner,
`
`v.
`
`KOSS CORP.,
`Patent Owner.
`____________
`
`IPR2021-00680
`Patent 10,469,934 B2
`____________
`
`Before KARL D. EASTHOM, PATRICK R. SCANLON, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
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`IPR2021-00680
`Patent 10,469,934 B2
`
`
`I. ORAL ARGUMENT
`
`A. Time and Format
`Patent Owner and Petitioner request an oral hearing in these
`proceedings pursuant to 37 C.F.R. § 42.70(a). Paper 30; Paper 31. Each
`party requests one hour per side to present arguments. Paper 30; Paper 31.
`We grant the parties’ requests for oral hearing. The oral hearing will
`commence at 10:00 AM Eastern Time on June 30, 2022, by video.
`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.
`Petitioner will open the oral hearing with its presentation regarding the
`unpatentability of the challenged claims. Patent Owner then will respond to
`Petitioner’s presentation. Petitioner may reserve rebuttal time (of no more
`than half its total presentation time) to reply to Patent Owner’s arguments.
`Patent Owner may reserve time for a brief sur-rebuttal to respond to
`Petitioner’s rebuttal. See Office Consolidated Trial Practice Guide
`(“CTPG”), November 2019 Edition, 83.1
`The parties must contact the Board at least ten (10) business days by
`email (Trials@uspto.gov) prior to the hearing date regarding any concerns
`about disclosing confidential information, and the email must include at least
`two potential dates/times for a telephone call concerning confidentiality
`issues, if there are concerns.
`The parties may request a pre-hearing conference in advance of the
`hearing. 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
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`IPR2021-00680
`Patent 10,469,934 B2
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`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 must 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. Any request must include an
`agreed-upon set of issues for discussion and several proposed times for the
`conference. Any prehearing conference must take place at least three
`business days before the hearing date.
`
`B. Demonstratives
`At least seven (7) business days prior to the oral arguments, each
`party shall serve on the other party any demonstrative exhibit(s) it intends to
`use during the oral arguments. See 37 C.F.R. § 42.70(b). The parties shall
`confer with each other regarding any objections to demonstrative exhibits,
`and file demonstrative exhibits with the Board, as a separate exhibit in
`accordance with 37 C.F.R. § 42.63, no later than five (5) business days
`before the hearing date.
`Demonstratives are not a mechanism for 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 marked
`clearly 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”). St. Jude Medical, Cardiology Division, Inc. v. The Board
`
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`IPR2021-00680
`Patent 10,469,934 B2
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`of Regents of the University of Michigan, Case IPR2013-00041 (PTAB Jan.
`27, 2014) (Paper 65) provides further guidance regarding the appropriate
`content of demonstrative exhibits. Furthermore, because of the strict
`prohibition against the presentation of new evidence or arguments at a
`hearing, each demonstrative must 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.
`The parties must attempt to resolve any objections to demonstratives
`prior to involving the Board. 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 must 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. We will
`consider the objections and may schedule a conference call, if necessary.
`Otherwise, we may consider the objections at or after the hearing. Any
`unresolved objections to demonstrative exhibits not timely presented will be
`considered waived.
`
`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.
`
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`IPR2021-00680
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`D. Video Hearing Details2
`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.
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcripts will constitute the official record of the hearing.
`If one or both parties prefers 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 must 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 must
`
`
`2 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.
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`Patent 10,469,934 B2
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`identify themselves before they begin a presentation. Furthermore, the
`remote nature of the hearing may result in an audio lag. Therefore, the
`parties must pause prior to speaking, 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, immediately inform the panel, and
`adjustments will be made.3
`
`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 to request a telephone call to discuss confidentiality issues.
`
`F. Audio/Visual Equipment Requests
`Any special requests for audio-visual equipment must 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
`accommodate the special request. Any special requests must be presented in
`a separate communication at least five (5) business days before the hearing
`date.
`
`
`3 For example, if a party experiences poor video quality, the Board may
`provide alternate dial-in information.
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`IPR2021-00680
`Patent 10,469,934 B2
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`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, and
`seven (7) or fewer years of experience as a licensed attorney or agent.4
`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 party offers the LEAP
`practitioner a meaningful and substantive opportunity to argue before the
`
`
`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.
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`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 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.
`
`
`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.
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`IPR2021-00680
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`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. The Board expects all practitioners to have a
`command of the factual record, the applicable law, and Board procedures,
`and assumes that each practitioner has the authority to commit the
`represented party.
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for these proceedings shall commence
`at 10:00 AM ET on June 30, 2022, by video, and proceed in the manner set
`forth herein.
`
`
`For PETITIONER:
`Michael Rader
`Gregory Nieberg
`WOLF, GREENFIELD & SACKS, P.C.
`mrader-ptab@wolfgreenfield.com
`gnieberg-ptab@wolfgreenfield.com
`
`For PATENT OWNER:
`Mark G. Knedeisen
`Laurén Shuttleworth Murray
`Brian P. Bozzo
`K&L GATES LLP
`mark.knedeisen@klgates.com
`lauren.murray@klgates.com
`brian.bozzo@klgates.com
`
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