`Patent Owner’s Request for Oral Argument
`IPR2021-01413
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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS, LLC
`Petitioner
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,621,228
`
`Inter Partes Review No. IPR2021-01413
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`PATENT OWNER’S REQUEST FOR ORAL ARGUMENT
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`1
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`U.S. Patent No. 10,621,228
`Patent Owner’s Request for Oral Argument
`IPR2021-01413
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`Patent Owner hereby requests an oral argument pursuant to 37 C.F.R. §
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`42.70. As indicated in the Scheduling Order, the requested oral argument will be
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`held at the USPTO headquarters in Alexandria on December 16, 2022. Paper 16.
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`The issues to be addressed at oral argument include:
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` The proper construction of terms at issue in this proceeding;
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` Whether claims 1-7 are invalid over Okamura, Flora, Wagner, and/or
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`Gilley as set forth in Grounds 1-4 of the Petition;
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` Whether Apple and Samsung are Unnamed Real Parties in Interest;
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` Any timely-filed motion to exclude; and
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` Any other matters presented in the briefing by the parties to the
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`proceeding.
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`Patent Owner respectfully requests one hour per side of oral argument time
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`in this proceeding.
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`Patent Owner requests the services of a court reporter to transcribe the
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`proceeding.
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`Patent Owner requests the use of audio-visual equipment to assist its
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`arguments and to display demonstrative exhibits.
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`The Scheduling Order states that “oral argument, if requested, will be held at
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`the USPTO headquarters in Alexandria.” Paper 16, 6. The Scheduling Order also
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`2
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`U.S. Patent No. 10,621,228
`Patent Owner’s Request for Oral Argument
`IPR2021-01413
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`invited the parties to jointly confer and file a request for an alternative location
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`“within one month” of the Scheduling Order. Id.
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`Petitioner requests that oral argument be conducted remotely, but did not
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`communicate this preference within one month of the scheduling order (dated March
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`14, 2022). Instead, Petitioner first stated its preference via email on October 31, 2022
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`(one-day before the deadline for oral argument requests) by asking if Patent Owner
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`would oppose a request to change oral argument to a remote hearing. Petitioner has
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`not stated why it has requested this change. On November 1, 2022 (the date of this
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`submission), Patent Owner responded that it would oppose this request.
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`Roughly two hours later, and without further communication, Petitioner
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`submitted a request for oral argument seeking a remote hearing indicating that Patent
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`Owner had not indicated “why” Patent Owner opposed the change. Paper 40, 1.
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`Notably, Petitioner did not present a reason why it desired a change in its initial
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`communication.
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`Patent Owner respectfully submits that the issues can be presented and
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`understood more effectively in a live format.
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`Further, lead counsel for Patent Owner has already made arrangements to
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`travel to Alexandria the week of oral argument and present live at USPTO
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`headquarters, as indicted in the Scheduling Order. Lead counsel also has a hearing
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`3
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`U.S. Patent No. 10,621,228
`Patent Owner’s Request for Oral Argument
`IPR2021-01413
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`scheduled at the USPTO for the previous day (December 15) for another matter. A
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`remote hearing would be inconvenient for MemoryWeb’s counsel.
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`Petitioner also argues that a remote hearing is “consistent with the [USPTO’s]
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`current practice,” but the Scheduling Order (discussed above) and relevant website
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`page states otherwise. Paper 40, 1; www.uspto.gov/patents/ptab/hearings (“The
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`Patent Trial and Appeal Board (PTAB) plans to re-establish in-person hearings
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`starting July 11, 2022”).
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`***
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`For these reasons, Patent Owner respectfully requests that oral argument
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`proceed as previously scheduled at the USPTO headquarters in Alexandria.
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`Respectfully submitted,
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`Dated: November 1, 2022
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`By:
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`4
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`/s/ Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 213-629-6001
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`
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`U.S. Patent No. 10,621,228
`Patent Owner’s Notice of Deposition
`IPR2021-01413
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent
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`Owner’s Request for Oral Argument was served on November 1, 2022, by
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`email:
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`ellyar@unifiedpatents.com
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`michelle@unifiedpatents.com
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`roshan@unifiedpatents.com
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`Counsel for Petitioner, Unified Patents, LLC
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`By: /s/ Jennifer Hayes
`Counsel for Patent Owner
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`5
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