Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`Paper 40
`Date: September 7, 2022
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC. and VIZIO, INC.,
`Petitioner,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`IPR2021-01406
`Patent 6,411,941 B1
`____________
`
`
`
`Before THU A. DANG, KEVIN W. CHERRY, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`

`

`IPR2021-01338
`Patent 6,411,941 B1
`
`
`
`
`I. ORAL ARGUMENT
`We instituted inter partes review in the instant proceeding on
`February 22, 2022. Paper 10. The Scheduling Order for this proceeding sets
`the date for oral arguments as November 10, 2022, if requested by the
`parties and granted by the Board. Paper 11, 12. On April 1, 2022, Patent
`Owner filed a Joint Motion to Consolidate IPR2021-01338 and IPR2021-
`01406. Paper 17. On May 5, 2022, we dismissed the Joint Motion to
`Consolidate as moot, however, we authorized changing the oral argument
`date in IPR2021-01406 to October 3, 2022, to align the trial schedule with
`IPR2021-01338. Paper 23, 5. On September 2, 2022, Patent Owner and
`Petitioner respectively filed a request for an in-person oral argument.
`Papers 38, 39. The requests for oral argument are granted.
`
`A. Time and Format
`In its request, Patent Owner repeats its request to consolidate the oral
`arguments. Paper 38, 2. However, Petitioners in IPR2021-01338
`(Nintendo) and in IPR2021-01406 (Roku) do not agree to consolidated
`filings or oral arguments for the proposed consolidated proceeding. See
`Paper 17, 4.
`Oral arguments will commence at 2:30 PM Eastern Time on
`October 3, 2022. The Board will provide a court reporter for the hearing,
`and the reporter’s transcript will constitute the official record of the hearing.
`Under current policy, the Board does not conduct an in-person hearing
`unless requested by all parties. As both parties have requested an in-person
`hearing, the hearing will be held at the USPTO Headquarters in Hearing
`
`1
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`

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`IPR2021-01338
`Patent 6,411,941 B1
`
`Room A, located on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia.1
`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 hearing by presenting its case regarding
`the challenged claims for which the Board instituted trial. Thereafter, Patent
`Owner will respond to Petitioner’s argument. Petitioner may reserve
`rebuttal time to respond to arguments presented by Patent Owner. In
`accordance with the Consolidated Trial Practice Guide2 (“CTPG”), issued in
`November 2019, Patent Owner may request to reserve time for a brief sur-
`rebuttal. See CTPG 83.
`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. To request a
`pre-hearing conference, the parties should jointly contact the Board at
`Trials@uspto.gov by September 12, 2022. The request should include
`several dates and times of availability that are generally no later than three
`(3) business days prior to the oral hearing. Further, any request should state
`the issues that the parties intend to raise at the conference.
`
`
`1 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.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
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`IPR2021-01338
`Patent 6,411,941 B1
`
`
`The parties are directed to the Office’s notices regarding COVID-19
`and the requirement for all visitors to USPTO facilities to review a health
`questionnaire and self-certify that they will not pose a health risk at the time
`of their visit.3 Any attendee at the hearing exhibiting symptoms of illness
`may be required to wear a mask or leave the facilities.
`
`B. Demonstratives
`Notwithstanding 37 C.F.R. § 42.70(b), demonstratives shall be served
`on opposing counsel at least seven (7) business days before the hearing date
`and filed at least five (5) days before the hearing date. Like final oral
`argument generally, demonstratives are not a mechanism for making 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 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).
`
`
`3 See information provided at https://www.uspto.gov/coronavirus.
`3
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`IPR2021-01338
`Patent 6,411,941 B1
`
`
`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 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.
`To the extent that a party objects to the propriety of any
`demonstrative, the parties shall meet and confer in good faith and are
`strongly encouraged to resolve any objections to demonstratives prior to
`filing the objections with the Board. If such objections cannot be resolved,
`the parties may file any objections to demonstratives with the Board no later
`than the time of the hearing. The objections shall identify with particularity
`which portions of the demonstratives are subject to objection (and should
`include a copy of the objected-to portions) and include a one (1) sentence
`statement 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.4 Any objection to demonstratives that is
`not timely presented will be considered forfeited.
`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
`accuracy of the court reporter’s transcript and for the benefit of all
`participants appearing electronically.
`
`
`4 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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`IPR2021-01338
`Patent 6,411,941 B1
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`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 in person.
`
`D. 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.
`
`E. 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 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.
`
`F. 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
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`

`IPR2021-01338
`Patent 6,411,941 B1
`
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB.5
`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.6
`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.7 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`
`
`5 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.
`6 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 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
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`IPR2021-01338
`Patent 6,411,941 B1
`
`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, 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 may,
`at its discretion, 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.
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s request for oral argument is granted
`subject to the conditions set forth in this Order; and
`FURTHER ORDERED that oral argument for this proceeding shall
`take place beginning at 2:30 PM, Eastern Time on October 3, 2022, at the
`
`7
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`

`IPR2021-01338
`Patent 6,411,941 B1
`
`USPTO Headquarters in Hearing Room A, located on the 9th floor of
`Madison Building East, 600 Dulany Street, Alexandria, Virginia.
`
`
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`

`IPR2021-01338
`Patent 6,411,941 B1
`
`PETITIONER:
`Jon Wright
`Lestin Kenton
`Dohm Chankong
`Richard Crudo
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jwright-ptab@sternekessler.com
`lkenton-ptab@sternekessler.com
`dchankong-ptab@sternekessler.com
`rcrudo-ptab@sternekessler.com
`
`PATENT OWNER:
`David Gosse
`Nicholas Peters
`Karen Wang
`FITCH, EVEN, TABIN & FLANNERY LLP
`dgosse@fitcheven.com
`ntpete@fitcheven.com
`kwang@fitcheven.com
`
`9
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`