Trials@uspto.gov
`571-272-7822
`
`Paper 23
`Entered: November 15, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, L.L.C.,
`Patent Owner.
`____________
`
`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)1
`____________
`
`Before HUBERT C. LORIN, JOHN A. HUDALLA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`LORIN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
` 
`1 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.
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`
`ORAL ARGUMENT
`I.
`We instituted trial in each of the above-identified proceedings on
`March 23, 2023. IPR2022-01412, Paper 8; IPR2022-01413, Paper 7.
`Petitioner (Google LLC) and Patent Owner (WAG Acquisition,
`L.L.C.) have requested oral argument pursuant to 37 C.F.R. § 42.70(a).
`IPR2022-01412, Papers 18 and 19; IPR2022-01413, Papers 17 and 18.
`Petitioner and Patent Owner have requested in-person hearings.
`IPR2022-01412 (Papers 18, 1 and 19, 1), IPR2022-01413 (Papers 17, 1 and
`18, 1).
`Petitioner requested “30 minutes of argument time [for each
`proceeding], for a total of 1 hour for the session.” IPR2022-01412 (Papers
`18, 1), IPR2022-01413 (Paper 17, 1). Patent Owner did not request a
`specific argument time.
`Upon consideration, the requests for oral argument are granted subject
`to the conditions set forth in this Order.
`A.
`Time and Format
`
`Oral arguments for IPR2022-01412 and IPR2022-01413 will be
`consolidated, and the consolidated oral argument will commence at
`10:00 AM Eastern Time on January 4, 2024, at the USPTO
`headquarters in Alexandria, Virginia.2
`
`The Board will provide a court reporter for the hearings, and the
`reporter’s transcript will constitute the official record of the hearings. The
`hearings will be governed by the guidelines below.
`
` 
`2 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`
` 
`
`2 
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`
`Regarding the consolidated oral argument for IPR2022-01412 and
`IPR2022-01413, Petitioner will have a total of sixty (60) minutes to present
`its arguments, and Patent Owner will have a total of sixty (60) minutes to
`respond. The 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 Guide3
`(“CTPG”), issued in November 2019, Patent Owner may request to reserve
`time for a brief sur-rebuttal. See CTPG 83. Petitioner’s rebuttal must be
`limited in scope to the issues Patent Owner raises during its presentation,
`and Patent Owner’s sur-rebuttal must be limited in scope to the issues
`Petitioner raises during its rebuttal. In addition, no new evidence or
`arguments may be presented at the hearing.
`
`The parties may request a pre-hearing conference in advance of the
`hearing. See CTPG 82; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). “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 oral hearing, and
`to seek the Board’s guidance as to particular issues that the panel would like
`addressed by the parties.” CTPG 82. Requests must be made by
`December 7, 2023. See Scheduling Orders4 (DUE DATE 6). If either party
`desires a pre-hearing conference, the parties should jointly contact the Board
`
` 
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. 
`4 The same Scheduling Order was entered in both proceedings. IPR2022-
`01412 (Paper 9); IPR2022-01413 (Paper 8).
`3 
`
` 
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`at Trials@uspto.gov at least seven (7) business days before the hearing date
`to request a conference call for that purpose.
`B. Demonstratives
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`opposing counsel at least seven (7) business days before the hearing date and
`filed with the Board no later than December 28, 2023.5
`Demonstratives are not a mechanism for making new arguments.
`Demonstratives also are not evidence, and will not be relied upon as
`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
`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, it is strongly recommended that
`each demonstrative include a citation to a paper in the record, which allows
`
` 
`5 The parties may stipulate to an alternative schedule for serving
`demonstratives, and request that the Board modify the schedule for filing
`demonstratives at least seven (7) business days before the hearing date.   
`4 
`
` 
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`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 December 29, 2024. 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.6 Any objection to demonstratives that is
`not timely presented will be considered waived.
`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 at the hearing.
`Presenting counsel may use a computer and presentation software to
`permit the electronic presentation of demonstrative exhibits or use a
`
` 
`6 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
` 
`
`5 
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`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 IPR2022-01412 Paper 18 at 2; IPR2022-01413 Paper 17
`at 2.
`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.
`Special Requests
`A party may indicate any special requests related to appearing at an
`in-person 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.   Any special requests for audio-visual equipment should be
`directed to PTABHearings@uspto.gov.
`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 
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`practitioner as a patent agent or attorney having three (3) or fewer
`substantive oral arguments in any federal tribunal, including PTAB.7
`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 hearing, by email to the Board at
`PTABHearings@uspto.gov.8
`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.9 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
` 
`7 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.
`8 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.
`9 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 
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`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 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 oral arguments for IPR2022-01412 and IPR2022-01413
`will be consolidated,10 and the consolidated oral argument shall commence
`at 10:00 AM Eastern Time on January 4, 2024, at the USPTO
` 
`10 The proceedings, however, have not been consolidated.
`8 
`
` 
`
`

`

`IPR2022-01412 (Patent 9,742,824 B2)
`IPR2022-01413 (Patent 9,762,636 B2)
`
`headquarters in Alexandria, Virginia, and proceed in the manner set forth
`herein; and
`FURTHER ORDERED that the parties should note that arguments
`made at the consolidated oral hearing shall have application only in the
`record of the proceeding(s) which supports the argument.
`
`FOR PETITIONER:
`
`Eamonn Gardner
`Orion Armon
`COOLEY LLP
`egardner@cooley.com
`oarmon@cooley.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
`
` 
`
`9 
`
`