`Tel: 571-272-7822
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`Paper 13
`Date: July 1, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`ELASTIC N.V., OHIO FARMERS INSURANCE COMPANY,
`and PREGIS LLC,
`Petitioner,
`
`v.
`
`GUADA TECHNOLOGIES LLC,
`Patent Owner.
`
`
`IPR2021-008751
`Patent 7,231,379 B2
`
`
`
`Before MIRIAM L. QUINN, KIMBERLY McGRAW, and
`MATTHEW J. McNEILL, Administrative Patent Judges.
`
`McNEILL, Administrative Patent Judge.
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`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
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`1 Ohio Farmers Insurance Company and Pregis LLC, who filed a petition in
`IPR2022-00217, have been joined as petitioners in this proceeding.
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`
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`IPR2021-00875
`Patent 7,231,379 B2
`
`
`A. Time and Format
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`I. ORAL ARGUMENT
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`Oral arguments will commence at 1:00pm Central Time on July 26,
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`2022 by video.2 The Board will provide a court reporter for the hearing, and
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`the reporter’s transcript will constitute the official record of the hearing.
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`Petitioner will have thirty (30) minutes to present argument in this
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`case and Patent Owner will have thirty (30) minutes to respond. Petitioner
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`will open the hearing by presenting its case regarding the challenged claims
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`for which the Board instituted trial. Thereafter, Patent Owner will respond to
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`Petitioner’s argument. Petitioner may reserve rebuttal time to respond to
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`arguments presented by Patent Owner. In accordance with the Consolidated
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`Trial Practice Guide3 (“CTPG”), issued in November 2019, Patent Owner
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`may request to reserve time for a brief sur-rebuttal. See CTPG 83.
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`The parties may request a pre-hearing conference in advance of the
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`hearing. See Id. at 82. “The purpose of the pre-hearing conference is to
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`afford the parties the opportunity to preview (but not argue) the issues to be
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`discussed at the hearing, and to seek the Board’s guidance as to particular
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`issues that the panel would like addressed by the parties.” Id. If either party
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`desires a pre-hearing conference, the parties should jointly contact the Board
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`at Trials@uspto.gov at least seven (7) business days before the hearing date
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`to request a conference call for that purpose.
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`2 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.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`
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`IPR2021-00875
`Patent 7,231,379 B2
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`B. Demonstratives
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`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
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`opposing counsel at least seven (7) business days before the hearing date and
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`filed no later than the time of the hearing.4
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`Demonstratives are not a mechanism for making new arguments.
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`Demonstratives also are not evidence, and will not be relied upon as
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`evidence. Rather, demonstratives are visual aids to a party’s oral
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`presentation regarding arguments and evidence previously presented and
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`discussed in the papers. Accordingly, demonstratives shall be clearly marked
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`with the words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the
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`footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir.
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`2018) (holding that the Board is obligated under its own regulations to
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`dismiss untimely argument “raised for the first time during oral argument”).
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`“[N]o new evidence may be presented at the oral argument.” CTPG 85; see
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`also St. Jude Med., Cardiology Div., Inc. v. The Bd. of Regents of the Univ.
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`of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB Jan. 27, 2014) (explaining
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`that “new” evidence includes evidence already of record but not previously
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`discussed in any paper of record).
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`Furthermore, because of the strict prohibition against the presentation
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`of new evidence or arguments at a hearing, it is strongly recommended that
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`each demonstrative include a citation to a paper in the record, which allows
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`the Board to easily ascertain whether a given demonstrative contains “new”
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`4 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.
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`3
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`IPR2021-00875
`Patent 7,231,379 B2
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`argument or evidence or, instead, contains only that which is developed in
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`the existing record.
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`Due to the nature of the Board’s consideration of demonstratives and
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`the opportunity afforded for the parties to reach an agreement without
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`involving the Board, the Board does not anticipate that objections to
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`demonstratives are likely to be sustained. Nevertheless, to the extent that a
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`party objects to the propriety of any demonstrative, the parties shall meet
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`and confer in good faith to resolve any objections to demonstratives prior to
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`filing the objections with the Board. If such objections cannot be resolved,
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`the parties may file any objections to demonstratives with the Board no later
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`than the time of the hearing. The objections shall identify with particularity
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`which portions of the demonstratives are subject to objection (and should
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`include a copy of the objected-to portions) and include a one (1) sentence
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`statement of the reason for each objection. No argument or further
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`explanation is permitted. The Board will consider any objections, and may
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`reserve ruling on the objections.5 Any objection to demonstratives that is not
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`timely presented will be considered waived.
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`Finally, the parties are reminded that each presenter should identify
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`clearly and specifically each paper (e.g., by slide or screen number for a
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`demonstrative) referenced during the hearing to ensure the clarity and
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`accuracy of the court reporter’s transcript and for the benefit of all
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`participants appearing electronically.
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`5 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
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`4
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`IPR2021-00875
`Patent 7,231,379 B2
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`C. Presenting Counsel
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`The Board generally expects lead counsel for each party to be present
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`at the hearing. See CTPG 11. Any counsel of record may present the party’s
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`argument as long as that counsel is present in person or by video.
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`D. Video or Telephonic Hearing Details
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`To facilitate planning, each party must contact the Board at
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`PTABHearings@uspto.gov at least five (5) business days prior to the
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`hearing date to receive video set-up information. As a reminder, all
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`arrangements and the expenses involved with appearing by video, such as
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`the selection of the facility from which a party will attend by video, must be
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`borne by that party. If a video connection cannot be established, the parties
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`will be provided with dial-in connection information, and the hearing will be
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`conducted telephonically.
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`If one or both parties would prefer to participate in the hearing
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`telephonically, they must contact the Board at PTABHearings@uspto.gov at
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`least five (5) business days prior to the hearing date to receive dial-in
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`connection information.
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`Counsel should unmute only when speaking. The panel will have
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`access to all papers filed with the Board, including demonstratives. During
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`the hearing, the parties are reminded to identify clearly and specifically each
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`paper referenced (e.g., by slide or screen number for a demonstrative) to
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`ensure the clarity and accuracy of the court reporter’s transcript and for the
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`benefit of all participants appearing electronically. In addition, the parties
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`are advised to identify themselves each time they speak. Furthermore, the
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`remote nature of the hearing may also result in an audio lag, and thus the
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`5
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`IPR2021-00875
`Patent 7,231,379 B2
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`parties are advised to observe a pause prior to speaking, so as to avoid
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`speaking over others.
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`If at any time during the hearing, counsel encounters technical or
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`other difficulties that fundamentally undermine counsel’s ability to
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`adequately represent its client, please let the panel know immediately, and
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`adjustments will be made.6
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`E. Remote Attendance Requests
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`Members of the public may request to listen to and/or view this
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`hearing. If resources are available, the Board generally expects to grant such
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`requests. If either party objects to the Board granting such requests, for
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`example, because confidential information may be discussed, the party must
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`notify the Board at PTABHearings@uspto.gov at least ten (10) business
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`days prior to the hearing date.
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`F. Audio/Visual Equipment Requests
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`Any special requests for audio-visual equipment should be directed to
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`PTABHearings@uspto.gov. A party may also indicate any special requests
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`related to appearing at a video hearing, such as a request to accommodate
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`deaf or hard-of-hearing individuals and blind or low vision individuals, and
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`indicate how the PTAB may accommodate the special request. Any special
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`requests must be presented in a separate communication at least five (5)
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`business days before the hearing date.
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`
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`6 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
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`6
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`IPR2021-00875
`Patent 7,231,379 B2
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`G. Legal Experience and Advancement Program
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`The Board has established the “Legal Experience and Advancement
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`Program,” or “LEAP,” to encourage advocates with less legal experience to
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`argue before the Board to develop their skills. The Board defines a LEAP
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`practitioner as a patent agent or attorney having three (3) or fewer
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`substantive oral arguments in any federal tribunal, including PTAB. 7
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`The parties are encouraged to participate in the Board’s LEAP
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`program. Either party may request that a qualifying LEAP practitioner
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`participate in the program and conduct at least a portion of the party’s oral
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`argument. The Board will grant up to fifteen (15) minutes of additional
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`argument time to that party, depending on the length of the proceeding and
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`the PTAB’s hearing schedule. A party should submit a request, no later than
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`at least five (5) business days before the oral hearing, by email to the Board
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`at PTABHearings@uspto.gov.8
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`The LEAP practitioner may conduct the entire oral argument or may
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`share time with other counsel, provided that the LEAP practitioner is offered
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`a meaningful and substantive opportunity to argue before the Board. The
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`party has the discretion as to the type and quantity of oral argument that will
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`7 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.
`8 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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`7
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`IPR2021-00875
`Patent 7,231,379 B2
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`be conducted by the LEAP practitioner.9 Moreover, whether the LEAP
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`practitioner conducts the argument in whole or in part, the Board will permit
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`more experienced counsel to provide some assistance to the LEAP
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`practitioner, if necessary, during oral argument, and to clarify any statements
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`on the record before the conclusion of the oral argument. Importantly, the
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`Board does not draw any inference about the importance of a particular issue
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`or issues, or the merits of the party’s arguments regarding that issue, from
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`the party’s decision to have (or not to have) a LEAP practitioner argue.
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`In instances where an advocate does not meet the LEAP eligibility
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`requirements due to the number of “substantive” oral hearing arguments, but
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`nonetheless has a basis for considering themselves to be in the category of
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`advocates that this program is intended to assist, the Board encourages
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`argument by such advocates during oral hearings. Even though additional
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`argument time will not be provided when the advocate does not qualify for
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`LEAP, a party may share argument time among counsel and the Board will
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`permit the more experienced counsel to provide some assistance, if
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`necessary, during oral argument, and to clarify any statements on the record
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`before the conclusion of the oral argument.
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`All practitioners appearing before the Board shall demonstrate the
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`highest professional standards. All practitioners are expected to have a
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`command of the factual record, the applicable law, and Board procedures, as
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`well as the authority to commit the party they represent.
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`9 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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`8
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`IPR2021-00875
`Patent 7,231,379 B2
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`Accordingly, it is
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`II. ORDER
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`ORDERED that oral argument for this proceeding shall commence at
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`1:00pm Central Time on July 26, 2022 by video, and proceed in the manner
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`set forth herein.
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`9
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`IPR2021-00875
`Patent 7,231,379 B2
`
`FOR PETITIONER:
`
`Jeff E. Schwartz
`Ryan N. Miller
`FOX ROTHSCHILD LLP
`jeschwartz@foxrothschild.com
`rmiller@foxrothschild.com
`
`Matthew Argenti
`Michael Rosato
`WILSON SONSINI GOODRICH & ROSATI
`margenti@wsgr.com
`mrosato@wsgr.com
`
`
`FOR PATENT OWNER:
`
`Sanjay Pant
`PRA Law
`spant@pralawllc.com
`
`Gautham Bodepudi
`gbodepudi@outlook.com
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`10
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