Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 30
`Entered: July 10, 2024
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)1
`____________
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This combined caption is for administrative convenience only and does not
`indicate that IPR2023-00757, IPR2023-00758, and IPR2023-00759 have
`been joined. The parties are not authorized to use this caption without
`express permission from the Board.
`
`
`
`
`Tel: 571-272-7822
`
`Paper 30
`Entered: July 10, 2024
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`GOTV STREAMING, LLC,
`Patent Owner.
`____________
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)1
`____________
`
`
`
`Before RICHARD M. LEBOVITZ, BRIAN J. McNAMARA, and
`STEVEN M. AMUNDSON, Administrative Patent Judges.
`
`PER CURIAM.
`
`
`
`ORDER
`Granting Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`
`
`1 This combined caption is for administrative convenience only and does not
`indicate that IPR2023-00757, IPR2023-00758, and IPR2023-00759 have
`been joined. The parties are not authorized to use this caption without
`express permission from the Board.
`
`
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`
`I. INTRODUCTION
`The Scheduling Orders for these proceedings provide that an oral
`argument would be conducted if requested by either party and granted by the
`Board. Paper 12, 10. 2 Under 37 C.F.R. § 42.70, each party requested an
`oral argument in each proceeding. Paper 28 (Patent Owner’s request);
`Paper 29 (Petitioner’s request). Specifically, each party requested (1) a
`consolidated oral argument for IPR2023-00757 and IPR2023-00758 with
`each side allotted 45 minutes of argument time for both proceedings
`(90 minutes total) and (2) an oral argument for IPR2023-00759 with each
`side allotted 45 minutes of argument time for the proceeding (90 minutes
`total). Paper 28, 2; Paper 29, 1–2.
`Patent Owner requested that the arguments be held virtually by
`videoconference. Paper 28, 2. Petitioner requested the arguments be held in
`person. Paper 29, 1. The Scheduling Orders explain that the Board “will
`conduct an in-person hearing only when requested by all parties.”
`Paper 12, 6.
`The requests for oral argument are granted subject to the conditions
`set forth in this Order.
`
`II. ORAL ARGUMENTS
`A. Time and Format
`Please note the time and format of the oral arguments. The oral
`arguments will commence at 9:00 AM (Eastern) on Tuesday, August 6,
`
`
`2 For purposes of expediency, we cite to the order and papers filed in
`IPR2023-00757. Substantially the same order and papers were filed in
`IPR2023-00758 and IPR2023-00759.
`2
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`2024, by video. The Board will initially hear arguments for IPR2023-00757
`and IPR2023-00758 and after a short break hear arguments for IPR2023-
`00759.
`The Board will provide a court reporter for the hearing, and the
`reporter’s transcript will constitute the official record of the hearing. 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.
`As requested by each party, each party will have 45 minutes of total
`argument time for the arguments in IPR2023-00757 and IPR2023-00758 and
`45 minutes of total argument time for the arguments in IPR2023-00759.
`Paper 28, 2; Paper 29, 2.
`Petitioner bears the ultimate burden of proof that Patent Owner’s
`claims at issue in the proceeding are unpatentable by a preponderance of the
`evidence. 35 U.S.C. § 316(e) (2018). Hence, Petitioner will start each oral
`argument 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 PTAB Consolidated Trial Practice Guide (“CTPG”)
`and the Scheduling Orders for these proceedings, either party may request a
`
`3
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`prehearing conference. CTPG at 82;3 Paper 12, 10. “The purpose of the
`prehearing 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.” CTPG at 82.
`Requests for a prehearing conference must be made by July 23, 2024.
`Paper 12, 11. To request a prehearing conference, an email should be sent to
`Trials@uspto.gov including several dates and times of availability for one
`or both parties, as appropriate, that are generally no later than three (3)
`business days before the hearing. Please refer to the Consolidated Trial
`Practice Guide for more information about a prehearing conference. See
`CTPG § II.M.
`
`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.
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`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
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`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.” CTPG at 85. Accordingly, each demonstrative 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 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.
`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
`
`5
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`reserve ruling on the objections. Any objection to a demonstrative exhibit
`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 appearing electronically. A presenter may use
`video-conferencing or other presentation software to permit the presentation
`of demonstrative exhibits by video.
`C. Presenting Counsel
`The Board generally expects lead counsel for each party to be present
`by video at the hearing. CTPG 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 by video.
`
`D. Video Hearing Details
`To facilitate planning, each party must contact PTAB Hearings at
`PTABHearings@uspto.gov at least five (5) business days before the hearing
`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 PTAB Hearings at the above email address
`
`6
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`at least five (5) business days before the hearing to receive dial-in
`connection information.
`Counsel should unmute only when speaking. The panel will have
`access to all papers filed with the Board as well as demonstrative exhibits
`submitted according to the above instructions. As noted above, the Board
`requests identification for all papers and exhibits discussed during the
`hearing in the interest of providing a clear record. In addition, the parties are
`requested to identify themselves each time they speak. Further, the remote
`nature of the hearing may also result in some transmission lag. Accordingly,
`counsel should observe a pause prior to speaking, so as to avoid speaking
`over others.
`If at any time during the hearing, you encounter technical or other
`difficulties that fundamentally undermine your ability to adequately
`represent your client, please let the panel know immediately, and
`adjustments will be made. For example, if a party experiences poor video
`quality, the Board may provide alternate dial-in information. The Board
`contemplates adjusting argument time to account for technical or other
`difficulties.
`
`E. Remote Attendance Requests
`Members of the public may request to listen to the 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.
`
`7
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`
`F. 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 a hearing by video, such as a request to accommodate
`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.
`
`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 (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 Board’s hearing schedule. A party should submit a request, no later than
`
`
`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.
`8
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`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
`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 an 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 intends to assist, the Board encourages argument
`by such advocates during hearings. Even though additional argument time
`
`
`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.
`
`9
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`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.
`III. 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
`FURTHER ORDERED that the oral arguments for these proceedings
`will commence at 9:00 AM (Eastern) on Tuesday, August 6, 2024, by
`video, and proceed in the manner set forth herein.
`
`
`
`10
`
`
`
`IPR2023-00757 (Patent 8,989,715 B2)
`IPR2023-00758 (Patent 8,478,245 B2)
`IPR2023-00759 (Patent 8,103,865 B2)
`
`For PETITIONER:
`
`Aliza George Carrano
`Indranil Mukerji
`J. Christopher Moulder
`Stephen A. Marshall
`WILLKIE FARR & GALLAGHER LLP
`acarrano@willkie.com
`imukerji@willkie.com
`cmoulder@willkie.com
`smarshall@willkie.com
`
`
`For PATENT OWNER:
`
`Joshua S. Wyde
`Steven T. Jugle
`ALAVI & ANAIPAKOS PLLC
`jwyde@aatriallaw.com
`sjugle@aatriallaw.com
`
`
`
`11
`
`
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