Trials@uspto.gov
`571-272-7822
`
` Paper 39
`
` Entered: June 30, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`DAEDALUS BLUE, LLC,
`Patent Owner.
`____________
`
`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)1
`____________
`
`
`
`Before SALLY C. MEDLEY, HYUN J. JUNG, and ARTHUR M. PESLAK,
`Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 This Order applies to each of the above-listed proceedings. 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.
`
`
`
`

`

`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)
`
`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.
`IPR2021-00830, Papers 26, 27; IPR2021-00831, Papers 36, 37. The parties’
`request to hold the hearings in the two proceedings on the same day (August
`10, 2022) was granted. Ex. 3001. The requests for an oral hearing are
`granted according to the terms set forth in this Order.
`Time and Format
`The oral hearing for IPR2021-00830 will commence at 9:00 AM
`
`Eastern Time on August 10, 2022 in Hearing Room A on the ninth floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia.2,3 The oral
`hearing for IPR2021-00831 will commence at approximately 10:00 AM
`Eastern Time the same day.4 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.
`
`Each party will have thirty (30) minutes of total time to present
`arguments in the hearing for IPR2021-00830 for a total hearing time of sixty
`(60) minutes. Each party will have forty-five (45) minutes of total time to
`present arguments for IPR2021-00831 for a total hearing time of ninety (90)
`
`
`2 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.
`3 The U.S. Patent and Trademark Office (“USPTO”) is concerned with the
`health and safety of all of its stakeholders, and will continue to follow all
`applicable health guidance. Prior to arriving at any USPTO office location,
`please consult the following to verify entry requirements:
`https://www.uspto.gov/coronavirus.
`4 There will be a brief break between the two oral hearings.
`
`2
`
`

`

`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)
`
`minutes. 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 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. In accordance with the
`Consolidated Trial Practice Guide5 (“CTPG”), issued in November 2019,
`Patent Owner may request to reserve time for a brief sur-rebuttal. See
`CTPG 83. 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.
`The parties may request a pre-hearing conference in advance of the
`hearing. See id. at 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 at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`Demonstratives
`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.
`
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`
`
`5 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`

`

`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)
`
`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
`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).
`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.
`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
`
`4
`
`

`

`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)
`
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`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 lead counsel is present in person.
`Remote Attendance Requests
`Members of the public may request to listen to and/or view 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.
`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 an in-person hearing, such as a request to
`accommodate deaf or hard-of-hearing individuals and 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.
`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
`
`5
`
`

`

`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)
`
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB.6
`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.7
`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.8 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
`
`
`6 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 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.
`8 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
`
`

`

`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)
`
`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
`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.
`It is
`ORDERED that oral argument for IPR2021-00830 will commence at
`9:00 AM Eastern Time on August 10, 2022; and
`FURTHER ORDERED that oral argument for IPR2021-00831 will
`commence at approximately 10:00 AM Eastern Time on August 10, 2022.
`
`7
`
`

`

`IPR2021-00830 (Patent 8,572,612 B2)
`IPR2021-00831 (Patent 8,671,132 B2)
`
`
`PETITIONER:
`
`Donald Daybell
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`d2dptabdocket@orrick.com
`
`PATENT OWNER:
`Kevin K. McNish
`MCNISH PLLC
`kkm-ptab@mcnishpllc.com
`
`Lauren Robinson
`Brenda Entzminger
`BUNSOW DE MORY LLP
`lrobinson@bdiplaw.com
`bentzminger@bdiplaw.com
`
`
`
`
`
`
`
`
`8
`
`