`Tel: 571-272-7822
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`Paper 26
`Date: January 12, 2023
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`
`
`
`
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`AARON W. MOORE, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`
`IPR2022-00120
`Patent 9,997,962 B2
`
`
`I. ORAL ARGUMENT
`Apple Inc. (“Petitioner”) and Scramoge Technology Ltd. (“Patent
`Owner”) each request oral argument pursuant to 37 C.F.R. § 42.70(a).
`Papers 23, 24. We grant the requests subject to the procedures set forth
`below.
`
`A. Time and Format
`The Board’s current policy is to conduct an in-person hearing only if
`both parties request an in-person hearing. See Patent Trial and Appeal
`Board Hearings updated June 23, 2022, available at
`https://www.uspto.gov/patents/ptab/hearings. Petitioner requests a hearing
`via videoconference. Paper 24. Accordingly, oral argument shall begin at
`10:00 am Eastern Time on February 2, 2023 via videoconference.
`The Board will provide a court reporter and the reporter’s transcript
`will constitute the official records of the hearing. Petitioner will have a total
`of sixty (60) minutes to present argument 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 Guide (“CTPG”), issued in November 2019, Patent Owner may
`request to reserve time for a brief sur-rebuttal.1 See CTPG 83.
`The parties may request a pre-hearing conference in advance of the
`hearing. See CTPG 82. “The purpose of the pre-hearing conference is to
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
`
`
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`IPR2022-00120
`Patent 9,997,962 B2
`
`afford the parties the opportunity to preview (but not argue) the issues to be
`discussed at the oral 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 on or before January 17, 2023, to
`request a conference call for that purpose.
`
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), any demonstratives shall be
`served on opposing counsel at least seven (7) business days before the
`hearing date and filed with the Board, as a separate Exhibit in accordance
`with 37 C.F.R. § 42.63, at least three (3) business day before the hearing
`date.2 The parties should consider the information regarding demonstrative
`materials discussed in the CTPG.
`Demonstratives are not a mechanism for new arguments and are not
`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 86; see also St. Jude Med., Cardiology Div., Inc. v. The
`
`
`2 The parties may stipulate to an alternative schedule for serving and filing
`demonstratives.
`
`3
`
`
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`IPR2022-00120
`Patent 9,997,962 B2
`
`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).
`Furthermore, because of the strict prohibition against the presentation
`of new evidence or arguments at a hearing, each demonstrative must 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.
`Due to the nature of the Board’s consideration of demonstratives and
`the opportunity afforded for the parties to reach an agreement without
`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 parties shall meet
`and confer in good faith 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 one business day before 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.3 Any objection to demonstratives that is
`not timely presented will be considered waived.
`
`
`3 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`4
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`IPR2022-00120
`Patent 9,997,962 B2
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`Finally, 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.
`
`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 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.
`
`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
`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.
`
`5
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`IPR2022-00120
`Patent 9,997,962 B2
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`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
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB.4
`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.5
`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
`
`
`4 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.
`5 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.
`6
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`IPR2022-00120
`Patent 9,997,962 B2
`
`be conducted by the LEAP practitioner.6 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
`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.
`
`
`6 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.
`
`7
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`IPR2022-00120
`Patent 9,997,962 B2
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that oral argument for IPR2022-00120 shall begin at
`10:00 am Eastern Time on February 2, 2023 by videoconference and
`proceed in the manner set forth above.
`
`FOR PETITIONER:
`
`Scott T. Jarratt
`Andrew S. Ehmke
`Calmann J. Clements
`Haynes and Boone, LLP
`scott.jarratt.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`calmann.clements.ipr@haynesboone.com
`
`For PATENT OWNER:
`
`Brett Cooper
`John Petrsoric
`BC Law Group,
`bcooper@bc-lawgroup.com
`jpetrsoric@bc-lawgroup.com
`
`
`8
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