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61 Hearing Transcript: Hearing Transcript

Document IPR2016-01259, No. 61 Hearing Transcript - Hearing Transcript (P.T.A.B. Nov. 6, 2017)
Let's just take a look at this first sentence: With respect to Grounds 1 and 2, petitioner argues that Archer teaches and renders obvious a web-enabled processing system configured as a tandem access controller in the form of its server processor 128 and database 138 and converter gateways 126-32.
If you continue on at the bottom of this, it says: Conversely, available products, such as Web Phone Gateway Exchange Server by Netspeak can be used to act as the bridge between the conventional circuit switch telephone systems and IP data networks.
And the problem with their position on this point is that secure access platform is just a web server that receives user inputs from the Internet and passes them on to an SCP.
Thus, they make a strategic decision to advance their theories on multiple prior art references and user pay just like that, and they chose to take the risk of following these claim charts and not doing a proper claim-by-claim limitation for Archer, for Lewis, or for Lapeer.
And then in their opposition to the motion to amend, possibly even the reply, they make these damning statements that Mr. Bates acknowledged in his deposition that Archer taught connecting to a tandem switch.
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47 Hearing Transcript: Hearing Transcript

Document IPR2016-01256, No. 47 Hearing Transcript - Hearing Transcript (P.T.A.B. Nov. 6, 2017)
As you know from our oral hearing order of September 1st, 2017, each of petitioner YMAX Corporation and patent owner Focal, IP, LLC, will have one hour to present its arguments for inter partes reviews IPR2016-01256, IPR2016-01258, and IPR2016-01260.
Cisco Systems, Incorporated, Bright House Networks Group and patent owner Focal IP were authorized and elected not to file revised demonstratives in those proceedings.
So just on this slide quickly, and, again, patent owner, at least in their responses, has not disputed, that under our constructions at least -- and they are the ones adopted by the Board for switching facility and coupled to -- that both of these disclose all of those limitations across the challenged claims.
But the court also established a fully independent grounded disclaimer and said, similarly, an inventor may disavow claims lacking a particular feature when the specification distinguishes or disparages prior art.
But what's, to me, very interesting and clearly makes a distinction between the two embodiments just in column 3, is that the last sentence is saying when you connect it directly to the PSTN tandem switch, that will eliminate the single degradation problem previously described.
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63 Order Conduct of Proceeding: Conduct of the Proceeding

Document IPR2016-01263, No. 63 Order Conduct of Proceeding - Conduct of the Proceeding (P.T.A.B. Sep. 15, 2017)
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59 Order Conduct of Proceeding: Order Conduct of Proceeding

Document IPR2016-01259, No. 59 Order Conduct of Proceeding - Order Conduct of Proceeding (P.T.A.B. Sep. 15, 2017)
Patent 8,457,113 B2 requested the conference call to raise objections to demonstrative slides filed by Petitioner Cisco Systems Inc. in IPR2016-01254 and -01257, and demonstrative slides filed by Petitioner Bright House Networks, LLC, WideOpenWest Finance, LLC, Knology of Florida, Inc., and Birch Communications (herein “Bright House Networks Group”) in IPR2016- 01259, 01261, -01262, and -01263.
Cisco Systems Inc. and Bright House Networks Group, however, argue that such annotations are not new argument, but instead useful in facilitating the presentation to the Board.
During the call, we asked Cisco Systems Inc., Bright House Networks Group, and Patent Owner to provide input regarding possible remedies to this dispute, as follows: (1) we expunge demonstrative slides after the hearing; or (2) the parties present their arguments using only papers in the record and ELMO audio visual equipment, instead of demonstrative slides.
We are not persuaded by Cisco Systems Inc. and Bright House Networks Group that their currently filed demonstrative slides present arguments consistently with the guidance given in the Orders Granting the Parties’ Requests for an Oral Hearing in each of the proceedings (see, e.g.,
Wayne Stacy Sarah Guske BAKER BOTTS L.L.P. Patrick McPherson Christopher Tyson DUANE MORRIS LLP
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55 Order: Order Request for Oral Hearing 37 CFR 4270

Document IPR2016-01263, No. 55 Order - Order Request for Oral Hearing 37 CFR 4270 (P.T.A.B. Sep. 1, 2017)
We instituted inter partes review (Paper 15)2 in the proceedings listed in the Appendix and issued a consolidated Scheduling Order (Paper 16), 1 This Order addresses the same issues in the inter partes reviews listed in the Appendix.
The parties requested an oral hearing pursuant to 37 C.F.R. § 42.70 in each of the inter partes review proceedings listed in the Appendix.
The hearing will commence at 10:00 AM Eastern Time, on September 19, 2017, and will be conducted at the UPSTO Headquarters, Ninth Floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia, 22314.3 The parties will be given a one hour break at 12:00 PM Eastern Time.
The parties must initiate a conference call with the Board at least three business days prior to the hearing to resolve any dispute over the propriety of each party’s demonstrative exhibits.
The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.
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51 Order: Order Request for Oral Hearing 37 CFR 4270

Document IPR2016-01259, No. 51 Order - Order Request for Oral Hearing 37 CFR 4270 (P.T.A.B. Sep. 1, 2017)
We instituted inter partes review (Paper 15)2 in the proceedings listed in the Appendix and issued a consolidated Scheduling Order (Paper 16), 1 This Order addresses the same issues in the inter partes reviews listed in the Appendix.
The parties requested an oral hearing pursuant to 37 C.F.R. § 42.70 in each of the inter partes review proceedings listed in the Appendix.
The hearing will commence at 10:00 AM Eastern Time, on September 19, 2017, and will be conducted at the UPSTO Headquarters, Ninth Floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia, 22314.3 The parties will be given a one hour break at 12:00 PM Eastern Time.
The parties must initiate a conference call with the Board at least three business days prior to the hearing to resolve any dispute over the propriety of each party’s demonstrative exhibits.
The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.
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40 Order: Order Request for Oral Hearing 37 CFR 4270

Document IPR2016-01256, No. 40 Order - Order Request for Oral Hearing 37 CFR 4270 (P.T.A.B. Sep. 1, 2017)
We instituted inter partes review (Paper 15)2 in the proceedings listed in the Appendix and issued a consolidated Scheduling Order (Paper 16), 1 This Order addresses the same issues in the inter partes reviews listed in the Appendix.
The parties requested an oral hearing pursuant to 37 C.F.R. § 42.70 in each of the inter partes review proceedings listed in the Appendix.
The hearing will commence at 10:00 AM Eastern Time, on September 19, 2017, and will be conducted at the UPSTO Headquarters, Ninth Floor of Madison Building East, 600 Dulany Street, Alexandria, Virginia, 22314.3 The parties will be given a one hour break at 12:00 PM Eastern Time.
The parties must initiate a conference call with the Board at least three business days prior to the hearing to resolve any dispute over the propriety of each party’s demonstrative exhibits.
The parties are directed to St. Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the University of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of demonstrative exhibits.
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48 Order: Decision Granting Patent Owners Motions for Admission Pro Hac Vice of Thomas C Cecil

Document IPR2016-01263, No. 48 Order - Decision Granting Patent Owners Motions for Admission Pro Hac Vice of Thomas C Cecil (P.T.A.B. Aug. 18, 2017)
Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS, Administrative Patent Judges.
Granting Patent Owner’s Motions for Admission Pro Hac Vice of Thomas C. Cecil
Accordingly, Patent Owner has established good cause for Mr. Cecil pro hac vice admission.
For the foregoing reasons, it is hereby: ORDERED that Patent Owner’s Motions for pro hac vice admission of Mr. Thomas C. Cecil are granted, and Mr. Cecil is authorized to represent Patent Owner as back-up counsel in the proceedings listed in the Appendix; FURTHER ORDERED that Patent Owner continue to have a registered practitioner as lead counsel in these proceedings; FURTHER ORDERED that a power of attorney must be filed with the designation of counsel for Mr. Cecil, in accordance with 37 C.F.R. § 42.10(b); FURTHER ORDERED that Mr. Cecil comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations; and
FURTHER ORDERED that Mr. Cecil is subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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44 Order: Decision Granting Patent Owners Motions for Admission Pro Hac Vice of Thomas C Cecil

Document IPR2016-01259, No. 44 Order - Decision Granting Patent Owners Motions for Admission Pro Hac Vice of Thomas C Cecil (P.T.A.B. Aug. 18, 2017)
Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS, Administrative Patent Judges.
Granting Patent Owner’s Motions for Admission Pro Hac Vice of Thomas C. Cecil
Accordingly, Patent Owner has established good cause for Mr. Cecil pro hac vice admission.
For the foregoing reasons, it is hereby: ORDERED that Patent Owner’s Motions for pro hac vice admission of Mr. Thomas C. Cecil are granted, and Mr. Cecil is authorized to represent Patent Owner as back-up counsel in the proceedings listed in the Appendix; FURTHER ORDERED that Patent Owner continue to have a registered practitioner as lead counsel in these proceedings; FURTHER ORDERED that a power of attorney must be filed with the designation of counsel for Mr. Cecil, in accordance with 37 C.F.R. § 42.10(b); FURTHER ORDERED that Mr. Cecil comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations; and
FURTHER ORDERED that Mr. Cecil is subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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36 Decision on Motion: Decision Granting Petitioners Motion for Pro Hac Vice Admission

Document IPR2016-01256, No. 36 Decision on Motion - Decision Granting Petitioners Motion for Pro Hac Vice Admission (P.T.A.B. Aug. 18, 2017)
Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS, Administrative Patent Judges.
Granting Petitioner’s Motion for Admission Pro Hac Vice of Alexander Walden
Accordingly, Petitioner has established good cause for Mr. Walden pro hac vice admission.
In consideration of the foregoing, it is hereby: ORDERED that Petitioner’s Motions for pro hac vice admission of Mr. Alexander Walden are granted, and Mr. Walden is authorized to represent Petitioner as back-up counsel in the above-identified proceedings; FURTHER ORDERED that Petitioner continue to have a registered practitioner as lead counsel in these proceedings; FURTHER ORDERED that a power of attorney must be filed with the designation of counsel for Mr. Walden, in accordance with 37 C.F.R. § 42.10(b); FURTHER ORDERED that Mr. Walden comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations; and
FURTHER ORDERED that Mr. Walden is subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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37 Order: Decision Granting Patent Owners Motions for Admission Pro Hac Vice of Thomas C Cecil

Document IPR2016-01256, No. 37 Order - Decision Granting Patent Owners Motions for Admission Pro Hac Vice of Thomas C Cecil (P.T.A.B. Aug. 18, 2017)
Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS, Administrative Patent Judges.
Granting Patent Owner’s Motions for Admission Pro Hac Vice of Thomas C. Cecil
Accordingly, Patent Owner has established good cause for Mr. Cecil pro hac vice admission.
For the foregoing reasons, it is hereby: ORDERED that Patent Owner’s Motions for pro hac vice admission of Mr. Thomas C. Cecil are granted, and Mr. Cecil is authorized to represent Patent Owner as back-up counsel in the proceedings listed in the Appendix; FURTHER ORDERED that Patent Owner continue to have a registered practitioner as lead counsel in these proceedings; FURTHER ORDERED that a power of attorney must be filed with the designation of counsel for Mr. Cecil, in accordance with 37 C.F.R. § 42.10(b); FURTHER ORDERED that Mr. Cecil comply with the Office Patent Trial Practice Guide and the Board’s Rules of Practice for Trials, as set forth in Title 37, Part 42 of the Code of Federal Regulations; and
FURTHER ORDERED that Mr. Cecil is subject to the Office’s disciplinary jurisdiction under 37 C.F.R. § 11.19(a), and to the USPTO Rules of Professional Conduct set forth in 37 C.F.R. §§ 11.101 et seq.
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44 Order Conduct of Proceeding: Conduct of the Proceeding

Document IPR2016-01263, No. 44 Order Conduct of Proceeding - Conduct of the Proceeding (P.T.A.B. Jul. 7, 2017)
On July 6, 2017, a conference call was held with Judges Chang and Parvis and counsel for the parties in attendance.
During the call, Petitioner Cisco Systems Inc. requested re-filing its Replies in two proceedings, and Patent Owner opposed.
Patent Owner, more specifically, contends that in IPR2016-01258, -01260, -01261, and -01262, Petitioners filed element-by-element analyses in the form of claim charts that exceed the scope of Petitioners’ Oppositions.
We authorize Petitioner, YMax Corporation, to refile the Declarations in each of IPR2016-01258 and IPR 2016-01260 without claim charts on or before July 12, 2017.
More specifically, we authorize Patent Owner to file a paper in each of IPR2016-01254, -01257, -01259, -01261, -01262, and -01263, limited to two pages, that provides an itemized listing, by page and line number, of what statements and evidence in Petitioner’s Reply are deemed by Patent Owner to be beyond the proper scope of a reply.
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40 Order Conduct of Proceeding: Conduct of the Proceeding

Document IPR2016-01259, No. 40 Order Conduct of Proceeding - Conduct of the Proceeding (P.T.A.B. Jul. 7, 2017)
On July 6, 2017, a conference call was held with Judges Chang and Parvis and counsel for the parties in attendance.
During the call, Petitioner Cisco Systems Inc. requested re-filing its Replies in two proceedings, and Patent Owner opposed.
Patent Owner, more specifically, contends that in IPR2016-01258, -01260, -01261, and -01262, Petitioners filed element-by-element analyses in the form of claim charts that exceed the scope of Petitioners’ Oppositions.
We authorize Petitioner, YMax Corporation, to refile the Declarations in each of IPR2016-01258 and IPR 2016-01260 without claim charts on or before July 12, 2017.
More specifically, we authorize Patent Owner to file a paper in each of IPR2016-01254, -01257, -01259, -01261, -01262, and -01263, limited to two pages, that provides an itemized listing, by page and line number, of what statements and evidence in Petitioner’s Reply are deemed by Patent Owner to be beyond the proper scope of a reply.
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34 Order Conduct of Proceeding: Conduct of Proceeding

Document IPR2016-01256, No. 34 Order Conduct of Proceeding - Conduct of Proceeding (P.T.A.B. Jul. 7, 2017)
On July 6, 2017, a conference call was held with Judges Chang and Parvis and counsel for the parties in attendance.
During the call, Petitioner Cisco Systems Inc. requested re-filing its Replies in two proceedings, and Patent Owner opposed.
Patent Owner, more specifically, contends that in IPR2016-01258, -01260, -01261, and -01262, Petitioners filed element-by-element analyses in the form of claim charts that exceed the scope of Petitioners’ Oppositions.
We authorize Petitioner, YMax Corporation, to refile the Declarations in each of IPR2016-01258 and IPR 2016-01260 without claim charts on or before July 12, 2017.
More specifically, we authorize Patent Owner to file a paper in each of IPR2016-01254, -01257, -01259, -01261, -01262, and -01263, limited to two pages, that provides an itemized listing, by page and line number, of what statements and evidence in Petitioner’s Reply are deemed by Patent Owner to be beyond the proper scope of a reply.
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12 Dismissed Before Institution: Decision Granting Petitioners Unopposed Motion to Dismiss Petition

Document IPR2016-01252, No. 12 Dismissed Before Institution - Decision Granting Petitioners Unopposed Motion to Dismiss Petition (P.T.A.B. Oct. 6, 2016)
Before SALLY C. MEDLEY, JONI Y. CHANG, and BARBARA A. PARVIS, Administrative Patent Judges.
On June 23, 2016, Petitioner filed the instant Petition requesting an inter partes review of claim 1 of U.S. Patent No. 8,155,298 B2 (“the ’298 patent”).
Paper 1, “Pet.” Pursuant to our prior authorization, Petitioner filed a Motion to Dismiss the Petition on October 4, 2016.
Petitioner contends that, upon determination that incorrect real party-in-interest identification1 was submitted in the instant Petition, Petitioner filed another Petition for inter partes review, challenging the patentability of the same claim—namely, claim 1 of the ’298 patent—based on the same arguments and supporting evidence, but with the correct real party-in-interest identification, in Case IPR2016-01263.
Petitioner alleges there is good cause for granting Petitioner’s request to dismiss the instant Petition.
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