Trials@uspto.gov
`571-272-7822
`
`
` Paper 30
`
`Entered: August 22, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD., and
`LG ELECTRONICS INC.,
`Petitioners,
`
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-00990 (Patent 7,110,444 B1)1
`____________
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`ORDER
`Granting the Parties’ Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in IPR2021-00990.
`
`
`571-272-7822
`
`
` Paper 30
`
`Entered: August 22, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TCL INDUSTRIES HOLDINGS CO., LTD., HISENSE CO., LTD., and
`LG ELECTRONICS INC.,
`Petitioners,
`
`v.
`
`PARKERVISION, INC.,
`Patent Owner.
`____________
`
`IPR2021-00990 (Patent 7,110,444 B1)1
`____________
`
`Before MICHAEL R. ZECHER, BART A. GERSTENBLITH, and
`IFTIKHAR AHMED, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`ORDER
`Granting the Parties’ Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 LG Electronics Inc., who filed a petition in IPR2022-00245, is joined as
`petitioner in IPR2021-00990.
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`I. ORAL ARGUMENT
`
`A. Time and Format
`Each of the parties in the above-captioned proceeding filed a request
`for oral argument, pursuant to 37 C.F.R. § 42.70(a). Papers 28 (Patent
`Owner’s request), 29 (Petitioner’s request). The parties request 60 minutes
`of argument time for each side. See Paper 28 at 1; Paper 29 at 1. The
`parties’ requests for oral argument are granted.
`Oral arguments will commence at 1:00 PM Eastern Time on
`September 8, 2022, by video.2 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 60 minutes of total time to present arguments,
`and a transcript will be prepared. Petitioner will proceed first to present its
`case with regard to the challenged claims and grounds set forth in the
`Petition. Petitioner may reserve time for rebuttal. Thereafter, Patent Owner
`may respond to Petitioner’s argument and may reserve time for sur-rebuttal.
`Petitioner may then present its rebuttal followed by Patent Owner’s
`
`
`2 The U.S. Patent and Trademark Office resumed the opportunity for
`in-person hearings while also maintaining the option for hearings to be
`conducted virtually by video conference. At this time, if either party
`requests a virtual hearing by video conference, the hearing will be conducted
`virtually for all parties. In this case, Patent Owner’s counsel indicates that
`they are appearing at an in-person hearing in Texas the day before the oral
`hearing in this proceeding and thus requests a virtual hearing in this
`proceeding. See Ex. 3006 (Email from T. Mayle on behalf of both parties,
`dated Aug. 18, 2022). Accordingly, we grant that request, as indicated
`above.
`
`2
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`sur-rebuttal. See Patent Trial and Appeal Board Consolidated Trial Practice
`Guide (Nov. 2019), at 83 (“CTPG”).3
`The parties are reminded that arguments made in rebuttal and
`sur-rebuttal must be responsive to arguments the opposing party made in its
`immediately preceding presentation. Additionally, the parties may only rely
`upon evidence that has been previously submitted in the proceeding and may
`only present arguments that have been previously made in the submitted
`papers. No new evidence or arguments may be presented at the hearing.
`The parties have not requested to present live testimony during the hearing;
`thus, live testimony will not be permitted.
`
`B. Pre-Hearing Conference
`Either party may request a pre-hearing conference. See CTPG 82; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019). “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.”
`CTPG 82. Requests must be made by August 26, 2022.4 To request such a
`conference, the parties should jointly contact the Board at Trials@uspto.gov
`and include several dates and times of availability that are generally no later
`than three (3) business days prior to the hearing.
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`4 This date is later than the August 12, 2022, date provided in the Scheduling
`Order to provide additional time to the parties. See Paper 10 (Scheduling
`Order) at 10 (DUE DATE 7).
`
`3
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`C. Demonstrative Exhibits
`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.
`Demonstrative exhibits used at the hearing are not evidence, nor will they 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 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. Bd. of
`Regents of the Univ. of Mich., IPR2013-00041, Paper 65 at 2–3 (PTAB
`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
`record but not previously discussed in any paper of record).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, it is strongly recommended that
`each demonstrative include a citation to the record, which allows the Board
`to easily ascertain whether a given demonstrative contains “new” argument
`or evidence.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`
`4
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`involving the Board, the Board does not anticipate that objections to
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`party objects to the propriety of any demonstrative, the Board expects the
`parties will meet and confer in good faith to resolve any objections prior to
`raising the objections with the Board. For any objection to a demonstrative
`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
`four (4) 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. The Board
`will consider any objections, and may reserve ruling on the objections until
`at or after the hearing.5 Any objection to demonstratives that is not timely
`presented will be considered waived.
`
`D. 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. If either party
`expects that its lead counsel will not be attending the oral argument, the
`parties should initiate a joint telephone conference with the Board no later
`than three (3) business days prior to the oral hearing to discuss the matter.
`
`
`5 If time permits, the Board may schedule a conference call with the parties
`to discuss any objections raised prior to the hearing.
`
`5
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`
`E. Conducting the Hearing by Video or Telephone
`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.
`If one or both parties would prefer 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 are reminded to 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
`are advised to identify themselves each time they speak. Furthermore, the
`remote nature of the hearing may also result in an audio lag, and thus the
`parties are advised to observe a pause prior to speaking, so as to avoid
`speaking over others.
`During the hearing, if counsel encounters technical or other
`difficulties that fundamentally undermine counsel’s ability to adequately
`
`6
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`represent its client, please let the panel know immediately, and adjustments
`will be made.6
`
`F. 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.
`
`G. Audio and 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 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.
`
`H. 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
`
`
`6 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`7
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including the PTAB.7
`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 hearing, by email to the Board at
`PTABHearings@uspto.gov.8
`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.9 Moreover, whether the LEAP
`
`
`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.
`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., analysis of prior art or objective indicia of
`non-obviousness.
`
`8
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`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 the issue(s), from
`a 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 in such circumstances, as with the
`LEAP, a party may share argument time among counsel and the Board will
`permit 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.
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for this proceeding shall commence at
`1:00 PM Eastern Time on September 8, 2022, by video, and shall proceed
`in the manner set forth herein.
`
`9
`
`
`
`IPR2021-00990
`Patent 7,110,444 B1
`
`For PETITIONERS TCL Industries Holdings Co., Ltd. and Hisense Co.,
`Ltd.:
`
`Kristopher L. Reed
`Edward J. Mayle
`Matias Ferrario
`KILPATRICK TOWNSEND & STOCKTON LLP
`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`mferrario@kilpatricktownsend.com
`
`
`For PETITIONER LG Electronics Inc.:
`
`Scott A. McKeown
`Steven Pepe
`Scott Taylor
`Matthew R. Shapiro
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`steven.pepe@ropesgray.com
`scott.taylor@ropesgray.com
`matthew.shapiro@ropesgray.com
`
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Chandran B. Iyer
`Stephanie R. Mandir
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`ciyer@daignaultiyer.com
`smandir@daignaultiyer.com
`
`
`10
`
`
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