Trials@uspto.gov
`571.272.7822
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` Paper No. 31
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` Date: January 20, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)1
`____________
`
`
`Before LYNNE H. BROWNE, STACEY G. WHITE, and GARTH D.
`BAER, Administrative Patent Judges.
`
`
`BAER, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`1 This Order addresses a panel change pertaining to the above-referenced
`proceedings. The parties are not permitted to use this caption unless
`authorized by the Board.
`
`
`
`
`571.272.7822
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`
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` Paper No. 31
`
` Date: January 20, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)1
`____________
`
`
`Before LYNNE H. BROWNE, STACEY G. WHITE, and GARTH D.
`BAER, Administrative Patent Judges.
`
`
`BAER, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`
`1 This Order addresses a panel change pertaining to the above-referenced
`proceedings. The parties are not permitted to use this caption unless
`authorized by the Board.
`
`
`
`
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`
`Petitioner and Patent Owner each request an oral hearing pursuant to
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`37 C.F.R. § 42.70. IPR2022-00129, Papers 29, 30; IPR2022-00131,
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`Papers 28, 29. Upon consideration, the requests for an oral hearing are
`
`granted.
`
`A combined oral argument for both IPR2022-00129 and IPR2022-
`
`00131 will commence at 3:40 PM MOUNTAIN TIME on February 23,
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`2023, in person at The Great Hall, Sandra Day O’Connor College of Law,
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`Arizona State University, 111 E. Taylor Street, Phoenix, AZ 85004. The
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`hearing will be part of a special PTAB/TTAB Stadium Tour program. The
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`parties are welcome to attend the entire program and do not need to register
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`for the program.
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`Each party will have sixty (60) minutes of total time to present
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`arguments for both cases. Because Petitioner has the burden of proof and
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`persuasion, Petitioner will proceed first to present its case in both IPR2022-
`
`00129 and IPR2022-00131 with regard to the challenged claims and grounds
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`set forth in the Petitions. Thereafter, Patent Owner may respond to
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`Petitioner’s cases. Petitioner and Patent Owner may reserve some, but no
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`more than half, of the allotted time for rebuttal and sur-rebuttal, respectively.
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`The parties are reminded that arguments made during rebuttal and sur-
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`rebuttal periods must be responsive to arguments the opposing party made in
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`its immediately preceding presentation. The parties also are reminded that
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`during the hearing, the parties “may only present arguments relied upon in
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`the papers previously submitted.” Patent Trial and Appeal Board
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`Consolidated Trial Practice Guide (“CTPG”) 86 (Nov. 2019).2
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`
`At least three (3) business days prior to the hearing, each party shall
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`serve on the other party any demonstrative exhibit(s) it intends to use during
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`the hearing. See 37 C.F.R. § 42.70(b). At least two (2) business days prior
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`to the hearing, each party shall file any demonstrative exhibits it intends to
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`use during the hearing as exhibits.
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`Demonstrative exhibits used at the oral hearing are aids to oral
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`argument and not evidence, and should be clearly marked as such. For
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`example, each slide of a demonstrative exhibit may be marked with the
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`words “DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in the footer.
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`Demonstrative exhibits cannot be used to advance arguments or introduce
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`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
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`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
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`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
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`first time during oral argument”).
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`The parties shall attempt to work out any objections to demonstratives
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`prior to involving the Board. Should either party disagree with the propriety
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`of any of the opposing party’s demonstratives, the party may send,
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`contemporaneously with submitting their own slides two (2) business days
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`prior to the hearing, an email to Trials@uspto.gov including a paper limited
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`to identifying the opposing party’s slide(s) objected to and a brief sentence
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`as to the general basis of the objection(s). No further argument is permitted
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`in that paper. The Board will then take the objections under advisement, and
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`if the content is inappropriate, it will not be considered. Any objection to
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`demonstrative exhibits that is not timely presented will be considered
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`waived. The Board asks the parties to confine demonstrative exhibit
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`objections to those identifying egregious violations that are prejudicial to the
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`3
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`
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
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`administration of justice. The parties are directed to St. Jude Med.,
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`Cardiology Div., Inc. v. The Board of Regents of the Univ. of Mich.,
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`IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the
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`appropriate content of demonstrative exhibits. In general, if the content on a
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`slide cannot be readily associated with an argument made, or evidence
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`referenced, in a substantive paper, it is inappropriate. The best practice is to
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`indicate on each slide where support may be found in a substantive paper
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`and/or exhibit or record in this proceeding.
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`The panel will have access to all papers filed with the Board,
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`including demonstratives. During the hearing, the parties are reminded to
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`identify clearly and specifically each paper referenced (e.g., by slide or
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`screen number for a demonstrative) to ensure the clarity and accuracy of the
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`court reporter’s transcript and for the benefit of all participants.
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`Members of the public will be attending this hearing. The parties are
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`directed to contact the Board at least three (3) days in advance of the hearing
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`if there are any concerns about disclosing confidential information. The
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`Board will provide a court reporter for the hearing, and the reporter’s
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`transcript will constitute the official record of the hearing.
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`As always, all practitioners appearing before the Board must
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`demonstrate the highest professional standards. The Board expects all
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`practitioners to have a command of the factual record, the applicable law,
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`and Board procedures, as well as the authority to commit the party they
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`represent. The Board generally expects lead counsel for each party to be
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`present at the virtual hearing. See CTPG 11.
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`4
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`
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`
`Accordingly, it is
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`ORDERED that an in-person combined oral hearing, conducted
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`pursuant to the procedures outlined above, will commence at 3:40 PM
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`MOUNTAIN TIME on February 23, 2023, in person at The Great Hall,
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`Sandra Day O’Connor College of Law, Arizona State University, 111 E.
`
`Taylor Street, Phoenix, AZ 85004.
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`
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`5
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`
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`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`
`For PETITIONER:
`
`Larissa S. Bifano
`Joseph Wolfe
`DLA PIPER LLP
`larissa.bifano@dlapiper.com
`joseph.wolfe@us.dlapiper.com
`
`
`For PATENT OWNER:
`
`Brian R. Michalek
`Joseph M. Kuo
`Brian R. Landry
`SAUL EWING ARNSTEIN & LEHR LLP
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`
`6
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`
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