Trials@uspto.gov
`571.272.7822
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` Paper No. 28
`
` Date: March 6, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)1
`____________
`
`
`Before THU A. DANG, LYNNE H. BROWNE, and GARTH D. BAER,
`Administrative Patent Judges.
`
`
`
`BAER, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 These cases have not been joined or consolidated. Rather, this Scheduling
`Order governs each case. The parties are not authorized to use this heading
`style.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 28
`
` Date: March 6, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)1
`____________
`
`
`Before THU A. DANG, LYNNE H. BROWNE, and GARTH D. BAER,
`Administrative Patent Judges.
`
`
`
`BAER, Administrative Patent Judge.
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 These cases have not been joined or consolidated. Rather, this Scheduling
`Order governs each case. The parties are not authorized to use this heading
`style.
`
`
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)
`
`Petitioner and Patent Owner each request an oral hearing for the
`above captioned cases pursuant to 37 C.F.R. § 42.70. The requests for an
`oral hearing are granted.
`
` Time and Format
`A combined oral argument for IPR2022-00420, IPR2022-00426,
`IPR2022-00427, and IPR2022-00310 will commence at 9:00 AM
`EASTERN TIME on April 14, 2023, at the USPTO Headquarters in
`Alexandria, Virginia.
`During the first session, each party will have forty-five (45) minutes
`of total time to present arguments for both IPR2022-00420 and IPR2022-
`00427. After a short break, each party will then have forty-five (45) minutes
`of total time to present arguments for both IPR2022-00426 and IPR2022-
`00310. Because Petitioner has the burden of proof and persuasion, Petitioner
`will proceed first to present its cases with regard to the challenged claims
`and grounds set forth in the Petitions. Thereafter, Patent Owner may respond
`to Petitioner’s arguments. 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 also are
`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).2
`
`
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)
`
`
` Demonstratives
`At least three (3) 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 two (2) business days prior to
`the hearing, each party shall file any demonstrative exhibits it intends to use
`during the hearing as exhibits. The parties should file the same set of
`demonstrative exhibits for all four cases.
`Demonstrative exhibits used at the oral hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. For
`example, each slide of a demonstrative exhibit may be 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) (noting that the “Board was
`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
`first time during oral argument”).
`The parties shall attempt to work out any objections to demonstratives
`prior to involving the Board. Should either party disagree with the propriety
`of any of the opposing party’s demonstratives, the party may send,
`contemporaneously with submitting their own slides two (2) business days
`prior to the hearing, an email to Trials@uspto.gov including a paper limited
`to identifying the opposing party’s slide(s) objected to and a brief sentence
`as to the general basis of the objection(s). No further argument is permitted
`in that paper. The Board will then take the objections under advisement, and
`if the content is inappropriate, it will not be considered. Any objection to
`
`3
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)
`
`demonstrative exhibits that is not timely presented will be considered
`waived. The Board asks the parties to confine demonstrative exhibit
`objections to those identifying egregious violations that are prejudicial to the
`administration of justice. The parties are directed to St. Jude Med.,
`Cardiology Div., Inc. v. The Board of Regents of the Univ. of Mich.,
`IPR2013-00041, Paper 65 (PTAB Jan. 27, 2014), for guidance regarding the
`appropriate content of demonstrative exhibits. In general, if the content on a
`slide cannot be readily associated with an argument made, or evidence
`referenced, in a substantive paper, it is inappropriate. The best practice is to
`indicate on each slide where support may be found in a substantive paper
`and/or exhibit or record in this proceeding.
`The panel will have access to all papers filed with the Board,
`including demonstratives. During 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.
`Members of the public will be attending this hearing. The parties are
`directed to contact the Board at least three (3) 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.
`
` 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.
`
`4
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)
`
`As always, all practitioners appearing before the Board must
`demonstrate the highest professional standards. The Board expects all
`practitioners 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.
`
` 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.3
`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 for each set of cases, depending on the length of
`the proceeding and the PTAB’s hearing schedule. A party should submit a
`
`
`3 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
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)
`
`request, no later than at least five (5) business days before the oral hearing,
`by email to the Board at PTABHearings@uspto.gov.4
`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.5 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
`
`
`4 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.
`5 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
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)
`
`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.
`Accordingly, it is
`ORDERED that an in-person combined oral hearing, conducted
`pursuant to the procedures outlined above, will commence at 9:00 AM
`EASTERN TIME on April 14, 2023, at the USPTO Headquarters in
`Alexandria, Virginia.
`
`
`7
`
`
`
`IPR2022-00420 (Patent 10,477,994 B2)
`IPR2022-00426 (Patent 8,761,804 B2)
`IPR2022-00427 (Patent 10,292,011 B2)
`IPR2022-00310 (Patent 9,088,868 B2)
`
`For PETITIONER:
`
`Larissa S. Bifano
`Jonathan Hicks
`Zachary Conrad
`DL PIPPER (US)
`larissa.bifano@dlapiper.com
`jonathan.hicks@dlapiper.com
`zack.conrad@dlapiper.com
`
`
`
`For PATENT OWNER:
`
`Brian R. Michalek
`Joseph M. Kuo
`Brian R. Landry
`Courtland C. Merrrill
`SAUL EWING ARNSTEIN & LEHR LLP
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`courtland.merrill@saul.com
`
`8
`
`
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