Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 32
`Entered: June 7, 2022
`
`
`
`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
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 32
`Entered: June 7, 2022
`
`
`
`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
`
`
`
`
`
`
`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.
`2
`
`
`
`IPR2021-00680
`Patent 10,469,934 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 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
`
`3
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`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.
`
`4
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`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.
`
`5
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`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.
`
`6
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`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.
`
`7
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`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.
`
`8
`
`
`
`IPR2021-00680
`Patent 10,469,934 B2
`
`
`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
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
