`571-272-7822
`
`
`
`Paper 32
`Entered: March 1, 2023
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`____________
`
`IPR2022-00222
`Patent 10,621,228 B2
`____________
`
`
`
`
`Before LYNNE H. BROWNE, NORMAN H. BEAMER, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2022-00222
`Patent 10,641,228 B2
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`
`I. ORAL ARGUMENT
`
`A. Time and Format
`Oral arguments will commence in this proceeding, beginning at 1:00
`
`PM EASTERN TIME on March 16, 2023, by video. The parties are
`directed to contact the Board at least ten days in advance of the hearing if
`there are any concerns about disclosing confidential information. The Board
`will provide a court reporter for the hearing, and the reporter’s transcript will
`constitute the official record of the hearing.
`
`Patent Owner and Petitioner each requested 60 minutes per side of
`argument time. Paper 28, 1; Paper 29, 2. Upon consideration of the parties’
`requests, and the issues presented in this proceeding, we grant each party
`45 minutes of total time to present argument. As the party with the burden
`of proof and persuasion, Petitioner will proceed first to present its case with
`regard to the challenged claims and grounds set forth in the Petition.
`Thereafter, Patent Owner may respond to Petitioner’s argument. Petitioner
`and Patent Owner may reserve some, but no more than half, of the allotted
`time for rebuttal and sur-rebuttal, respectively. The parties are reminded that
`arguments made during rebuttal and sur-rebuttal periods must be responsive
`to arguments the opposing party made in its immediately preceding
`presentation. The parties are also reminded that during the hearing, the
`parties “may only present arguments relied upon in the papers previously
`submitted.” Patent Trial and Appeal Board Consolidated Trial Practice
`Guide (“CTPG”) 86 (Nov. 2019).1
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`IPR2022-00222
`Patent 10,641,228 B2
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`The parties may request a pre-hearing conference in advance of the
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`hearing. See CTPG 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. If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`at Trials@uspto.gov by March 6, 2023, to request a conference call for that
`purpose.
`
`B. Demonstratives
`At least seven 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 business days prior to
`the hearing, each party shall file any demonstrative exhibits it intends to use
`during the hearing as exhibits.
`
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and are not evidence. Accordingly, demonstrative exhibits shall
`be clearly marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`EVIDENCE” in the footer. Demonstrative exhibits cannot be used to
`advance arguments or introduce evidence not previously presented in the
`record. 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 Bd. of Regents of the Univ.
`of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB Jan. 27, 2014) (explaining
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`IPR2022-00222
`Patent 10,641,228 B2
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`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 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 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 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.2 Any objection to demonstratives that is
`not timely presented will be considered waived.
`
`
`2 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
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`IPR2022-00222
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`Finally, the parties are reminded that each presenter should identify
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`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 via video. See CTPG 11. Any counsel of record may present
`the party’s argument as long as that counsel is present by video.
`
`D. Video Hearing Details
`To facilitate planning, each party must contact the Board at
`
`PTABHearings@uspto.gov at least five 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 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
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`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.
`
`If at any time during the hearing, counsel encounters technical or
`other difficulties that fundamentally undermine counsel’s ability to
`adequately represent its client, please let the panel know immediately, and
`adjustments will be made.3
`
`E. Remote Attendance Requests
`Members of the public may request to listen to and/or view this
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`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 business days
`prior to the hearing date.
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`F. Audio/Visual Equipment Requests
`Any special requests for audio-visual equipment should be directed to
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`PTABHearings@uspto.gov. A party may also indicate any special requests
`
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`3 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
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`IPR2022-00222
`Patent 10,641,228 B2
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`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 business days before the hearing date.
`
`G. 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 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 minutes of additional argument
`time to that party, depending on the length of the proceeding and the Board’s
`hearing schedule. A party should submit a request, no later than at least five
`business days before the oral hearing, by email to the Board at
`PTABHearings@uspto.gov.5
`
`
`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.
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`IPR2022-00222
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`The LEAP practitioner may conduct the entire oral argument or may
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`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.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.
`
`
`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.
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`IPR2022-00222
`Patent 10,641,228 B2
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`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
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`1:00 PM EASTERN TIME on March 16, 2023, and proceed in the manner
`set forth herein.
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`9
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`IPR2022-00222
`Patent 10,641,228 B2
`
`
`FOR PETITIONER:
`
`Walter Renner
`Jeremy Monaldo
`Hyun Jin In
`FISH & RICHARDSON P.C.
`Axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`
`FOR PATENT OWNER:
`
`Jennifer Hayes
`George Dandalides
`JENNIFER HAYES
`jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
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`10
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