`571-272-7822
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`
` Paper 33
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`
` Entered: Jan. 3, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VERANCE CORP.,
`Petitioner,
`
`v.
`
`MZ AUDIO SCIENCES, LLC,
`Patent Owner.
`
`IPR2022-01544
`Patent 7,289,961 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before KARL D. EASTHOM and IFTIKHAR AHMED, Administrative
`Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
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`ORAL ARGUMENT
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`
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`Petitioner requests an oral argument pursuant to 37 C.F.R. § 42.70(a)
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`via remote video conference. Paper 31. Patent Owner also requests an oral
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`
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`IPR2022-01544
`Patent 7,289,961 B2
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`argument via remote video conference. Paper 30. In accordance with the
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`terms set forth in this Order, we grant the request for an oral argument via
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`remote video conference.
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`Time and Format
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`Oral arguments will commence at 10:00 AM EST on January 25,
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`2024, by video conference. The Board will provide a court reporter for the
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`hearing, and the reporter’s transcript will constitute the official record of the
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`hearing.1
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`Each party will have a total of forty-five (45) minutes to present
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`arguments at the hearing. See Paper 30, 1 (proposing same); Paper 31, 1
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`(requesting Board to exercise discretion in setting length of argument time).
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`Petitioner will open the hearing by presenting its case regarding the
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`challenged claims for which the Board instituted trial. Thereafter, Patent
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`Owner will respond to Petitioner’s argument. Petitioner may reserve
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`rebuttal time to respond to arguments presented by Patent Owner. In
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`accordance with the Consolidated Trial Practice Guide2 (“CTPG”), issued in
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`November 2019, Patent Owner may request to reserve time for a brief sur-
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`rebuttal. See CTPG 83.
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`Rebuttal and sur-rebuttal must be responsive to arguments by the
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`opposing party in its immediately preceding presentation. In addition, the
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`parties may only rely upon evidence and present arguments already of record
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`1 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 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`IPR2022-01544
`Patent 7,289,961 B2
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`in this proceeding, and may not present new arguments or evidence at the
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`hearing.
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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
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`afford the parties the opportunity to preview (but not argue) the issues to be
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`discussed at the hearing, and to seek the Board’s guidance as to particular
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`issues that the panel would like addressed by the parties.” Id. If either party
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`desires a pre-hearing conference, the parties should jointly contact the Board
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`at Trials@uspto.gov at least seven (7) business days before the hearing date
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`to request a conference call for that purpose.
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`Demonstratives
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`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
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`opposing counsel at least seven (7) business days before the hearing date.
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`Demonstratives shall be filed with the Board no later than three (3) business
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`days before the hearing.3
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`Demonstratives are not a mechanism for making new arguments.
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`Demonstratives also are not evidence, and will not be relied upon as
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`evidence. Rather, demonstratives are visual aids to a party’s oral
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`presentation regarding arguments and evidence previously presented and
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`discussed in the papers. Accordingly, demonstratives shall be clearly
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`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
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`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
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`
`3 The parties may stipulate to an alternative schedule for serving
`demonstratives. The parties may not alter the time for filing demonstratives
`with the Board.
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`3
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`
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`IPR2022-01544
`Patent 7,289,961 B2
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`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
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`regulations to dismiss untimely argument “raised for the first time during
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`oral argument”). “[N]o new evidence may be presented at the oral
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`argument.” CTPG 85; see also St. Jude Med., Cardiology Div., Inc. v. The
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`Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65, 2–3 (PTAB
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`Jan. 27, 2014) (explaining that “new” evidence includes evidence already of
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`record but not previously discussed in any paper of record).
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`Furthermore, because of the strict prohibition against the presentation
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`of new evidence or arguments at a hearing, it is strongly recommended that
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`each demonstrative include a citation to a paper in the record, which allows
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`the Board to easily ascertain whether a given demonstrative contains “new”
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`argument or evidence or, instead, contains only that which is developed in
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`the existing record.
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`To the extent that a party objects to the propriety of any
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`demonstrative, the parties shall meet and confer in good faith to resolve any
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`objections to demonstratives prior to filing the objections with the Board. If
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`such objections cannot be resolved, the parties may file any objections to
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`demonstratives with the Board no later than the time of the hearing. The
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`objections shall identify with particularity which portions of the
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`demonstratives are subject to objection (and should include a copy of the
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`objected-to portions) and include a one (1) sentence statement of the reason
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`for each objection. No argument or further explanation is permitted. The
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`Board will consider any objections, and may reserve ruling on the
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`4
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`IPR2022-01544
`Patent 7,289,961 B2
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`objections.4 Any objection to demonstratives that is not timely presented
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`will be considered waived.
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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
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`demonstrative) referenced during the hearing to ensure the clarity and
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`accuracy of the court reporter’s transcript and for the benefit of all
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`participants appearing electronically.
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`Presenting Counsel
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`The Board generally expects lead counsel for each party to be present
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`at the hearing. See CTPG 11. Any counsel of record may present the
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`party’s argument as long as that counsel is present.
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`Remote Attendance Requests
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`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
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`requests. If either party objects to the Board granting such requests, for
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`example, because confidential information may be discussed, the party must
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`notify the Board at PTABHearings@uspto.gov at least ten (10) business
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`days prior to the hearing date as noted above (note 2).
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`Audio/Visual Equipment Requests
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`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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`related to appearing at a video hearing, such as a request to accommodate
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`4 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
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`5
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`deaf or hard-of-hearing individuals and blind or low vision individuals, and
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`indicate how the PTAB may accommodate the special request. Any special
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`requests must be presented in a separate communication at least five (5)
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`business days before the hearing date.
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`Legal Experience and Advancement Program
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`The Board has established the “Legal Experience and Advancement
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`Program,” or “LEAP,” to encourage advocates with less legal experience to
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`argue before the Board to develop their skills. The Board defines a LEAP
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`practitioner as a patent agent or attorney having three (3) or fewer
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`substantive oral arguments in any federal tribunal, including PTAB.5
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`The parties are encouraged to participate in the Board’s LEAP
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`program. Either party may request that a qualifying LEAP practitioner
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`participate in the program and conduct at least a portion of the party’s oral
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`argument. The Board will grant up to fifteen (15) minutes of additional
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`argument time to that party, depending on the length of the proceeding and
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`the PTAB’s hearing schedule. A party should submit a request, no later than
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`at least five (5) business days before the oral hearing, by email to the Board
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`at PTABHearings@uspto.gov.6
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`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.
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`6
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`IPR2022-01544
`Patent 7,289,961 B2
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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
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`a meaningful and substantive opportunity to argue before the Board. The
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`party has the discretion as to the type and quantity of oral argument that will
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`be conducted by the LEAP practitioner.7 Moreover, whether the LEAP
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`practitioner conducts the argument in whole or in part, the Board will permit
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`more experienced counsel to provide some assistance to the LEAP
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`practitioner, if necessary, during oral argument, and to clarify any statements
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`on the record before the conclusion of the oral argument. Importantly, the
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`Board does not draw any inference about the importance of a particular issue
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`or issues, or the merits of the party’s arguments regarding that issue, from
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`the party’s decision to have (or not to have) a LEAP practitioner argue.
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`In instances where an advocate does not meet the LEAP eligibility
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`requirements due to the number of “substantive” oral hearing arguments, but
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`nonetheless has a basis for considering themselves to be in the category of
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`advocates that this program is intended to assist, the Board encourages
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`argument by such advocates during oral hearings. Even though additional
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`argument time will not be provided when the advocate does not qualify for
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`LEAP, a party may share argument time among counsel and the Board will
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`permit the more experienced counsel to provide some assistance, if
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`necessary, during oral argument, and to clarify any statements on the record
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`before the conclusion of the oral argument.
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`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 non-
`obviousness.
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`7
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`IPR2022-01544
`Patent 7,289,961 B2
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`All practitioners appearing before the Board shall demonstrate the
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`highest professional standards. All practitioners are expected to have a
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`command of the factual record, the applicable law, and Board procedures, as
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`well as the authority to commit the party they represent.
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`Accordingly, it is
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`ORDER
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`ORDERED that oral argument for this proceeding shall commence at
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`10:00 AM EST on January 25, 2024 by video, and proceed in the manner
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`set forth herein.
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`8
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`IPR2022-01544
`Patent 7,289,961 B2
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`FOR PETITIONER:
`
`Richard Giunta
`Michael Rader
`Babak Tehranchi
`Thomas Millikan
`Thomas Franklin
`rgiunta-ptab@wolfgreenfield.com
`mrader-ptab@wolfgreenfield.com
`tehranchi-ptab@perkinscoie.com
`millikan-ptab@perkinscoie.com
`tfranklin-ptab@wolfgreenfield.com
`
`
`
`
`
`FOR PATENT OWNER:
`
`Sarah Spires
`Steven Hartsell
`sspires@skiermontderby.com
`shartsell@skiermontderby.com
`
`
`
`
`
`9
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