Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 23
`Date: September 29, 2023
`
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THE WALT DISNEY COMPANY, DISNEY STREAMING
`SERVICES LLC, HULU LLC, and NETFLIX INC.,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`Patent Owner.
`____________
`
`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`____________
`
`
`
`
`Before HUBERT C. LORIN, JOHN A. HUDALLA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.1
`
`AMUNDSON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`1 This Order addresses the same issues in each proceeding. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`proceedings have not been consolidated, and the parties are not permitted
`to use this caption.
`
`
`
`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`
`I. ORAL ARGUMENT
`The Scheduling Orders for these proceedings provide that an oral
`argument would be conducted if requested by either party and granted by the
`Board. Under 37 C.F.R. § 42.70, each party requested an oral argument in
`each proceeding. Paper 21, 2; Paper 22, 2. 2 Additionally, a September 25,
`2023, email to the Board states, “Petitioner and Patent Owner jointly request
`to consolidate to a single hearing on November 13, 2023.” Ex. 3002; see
`Paper 22, 2–3. The requests for oral argument and a consolidated hearing
`are granted subject to the conditions set forth in this Order.
`A. Time and Format
`Please note the time and format of the oral argument. The
`oral argument will commence at 10:00 AM (Eastern) on Monday,
`November 13, 2023, at the USPTO headquarters in Alexandria,
`Virginia. The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`Board will enter the transcript into the record in each proceeding. The
`parties are directed to contact the Board at least ten (10) business days
`before the hearing if there are any concerns about disclosing confidential
`information.
`Each party will have sixty (60) minutes of total argument time at the
`hearing.
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue in these proceedings are unpatentable by a preponderance of
`
`
`2 Unless otherwise indicated, this Order cites to papers filed in IPR2022-
`01227. The parties filed substantially the same papers in IPR2022-00202
`and IPR2022-01228.
`
`2
`
`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`the evidence. 35 U.S.C. § 316(e) (2018). Hence, Petitioner will open the
`hearing by presenting its case regarding the challenged claims. After
`Petitioner’s presentation, Patent Owner will respond to Petitioner’s
`arguments and present the issues for which it bears the ultimate burden.
`Petitioner may reserve rebuttal time to respond to arguments presented by
`Patent Owner. Likewise, Patent Owner may reserve sur-rebuttal time;
`however, Patent Owner’s sur-rebuttal must be limited in scope to the issues
`Petitioner raises during its rebuttal. The parties may also address any
`pending motions during their respective presentations.
`According to the Board’s Trial Practice Guide and the Scheduling
`Orders for these proceedings, either party may request a pre-hearing
`conference. Consolidated Trial Practice Guide at 82. 3 “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.
`Requests for a pre-hearing conference must be made by October 24,
`2023. Paper 12, 11. To request a pre-hearing conference, an email should
`be sent to Trials@uspto.gov providing several dates and times of availability
`for the parties that are generally no later than three (3) business days before
`the hearing. Please refer to the Trial Practice Guide for more information
`about a pre-hearing conference. See Consolidated Trial Practice Guide
`§ II.M.
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`3
`
`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`
`B. Demonstrative Exhibits
`Under 37 C.F.R. § 42.70(b), the parties must serve their respective
`demonstrative exhibits on opposing counsel at least seven (7) business days
`before the hearing.4 Also, the parties must file their respective
`demonstrative exhibits with the Board at least three (3) business days before
`the hearing.
`Demonstrative exhibits used at the hearing are visual 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 [a party’s] untimely argument . . . raised for the first
`time during oral argument”). “[N]o new evidence may be presented at the
`oral argument.” Consolidated Trial Practice Guide at 85. Accordingly, each
`demonstrative exhibit must include a citation to the page number(s) of the
`paper(s) where the argument or evidence that is the subject of the
`demonstrative exhibit was advanced by a party.
`The parties are directed to St. Jude Medical, Cardiology Division,
`Inc. v. The Board of Regents of the University of Michigan, IPR2013-00041,
`Paper 65 (PTAB Jan. 27, 2014), regarding the appropriate content of
`demonstrative exhibits.
`
`
`4 The parties may stipulate to an alternative schedule for serving their
`respective demonstrative exhibits that is no later than three (3) business
`days before the hearing.
`
`4
`
`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`
`Due to the nature of the Board’s consideration of demonstrative
`exhibits and the opportunity afforded for the parties to reach an agreement
`without involving the Board, the Board does not anticipate that objections to
`demonstrative exhibits are likely to be sustained. Nevertheless, to the extent
`that a party objects to the propriety of any demonstrative exhibit, the parties
`must meet and confer in good faith to resolve any objections. If such
`objections cannot be resolved, the parties may jointly file any objections to
`demonstrative exhibits with the Board at least three (3) business days before
`the hearing. The objections must identify with particularity which portions
`of the demonstrative exhibits are subject to objection 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
`schedule a conference call if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections. Any objection to demonstrative exhibits
`that is not timely presented will be considered waived.
`During the hearing, a presenter must identify clearly and specifically
`each item referenced (e.g., by slide number for a demonstrative exhibit) to
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`benefit of all participants.
`A presenter may use a computer and presentation software to permit
`the electronic presentation of demonstrative exhibits or use a projector and
`screen to permit the display of demonstrative exhibits. Additionally, as
`requested by Petitioner, counsel may use other computers at the hearing “to
`avoid the need for the parties to bring entire paper copies of the record into
`the hearing room and to facilitate efficient answering of panel questions.”
`See Paper 22, 3.
`
`5
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`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`at the hearing. Consolidated Trial Practice Guide at 11. But any counsel of
`record may present a party’s argument, in whole or in part, as long as that
`counsel is present at the hearing.
`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 by contacting PTABHearings@uspto.gov at least ten (10)
`business days before the hearing.
`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 an in-person hearing, such as a request to
`accommodate physical needs that limit mobility or visual or hearing
`impairments, and indicate how the Board may accommodate any special
`requests. Any special requests must be presented in a separate
`communication at least five (5) business days before the hearing.
`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
`
`6
`
`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including the Board.5
`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
`five (5) business days before the oral argument, by email to the Board at
`PTABHearings@uspto.gov.6
`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.7 Moreover, whether the LEAP
`practitioner conducts the argument in whole or in part, the Board will permit
`
`
`5 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.
`6 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.
`7 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
`nonobviousness.
`
`7
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`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`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.
`II. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s and Patent Owner’s requests for oral
`argument are granted subject to the conditions set forth in this Order; and
`
`8
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`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`
`FURTHER ORDERED that the oral argument for these proceedings
`will commence at 10:00 AM (Eastern) on Monday, November 13, 2023,
`at the USPTO headquarters in Alexandria, Virginia, and proceed in the
`manner set forth herein.
`
`
`
`
`9
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`

`

`IPR2022-01227 (Patent 9,762,636 B2)
`IPR2022-01228 (Patent 9,742,824 B2)
`
`For PETITIONER:
`
`Larissa S. Bifano
`Thomas J. Fuller
`DLA PIPER LLP (US)
`larissa.bifano@dlapiper.com
`thomas.fuller@dlapiper.com
`DLA-Disney-IPR@us.dlapiper.com
`
`
`For PATENT OWNER:
`
`Ronald Abramson
`M. Michael Lewis
`Ari J. Jaffess
`Gina K. Kim
`LISTON ABRAMSON LLP
`ron.abramson@listonabramson.com
`michael.lewis@listonabramson.com
`ari.jaffess@listonabramson.com
`gina.kim@listonabramson.com
`
`
`
`10
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`