Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Entered: October 20, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE US, INC., T-MOBILE USA, INC., TELECOMMUNICATION
`SYSTEMS, INC., ERICSSON INC., AND
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`
`v.
`
`TRACBEAM, LLC,
`Patent Owner.
`_______________
`
`IPR2015-01681 (Patent 7,764,231 B1), IPR2015-01687 (Patent 7,764,231 B1),
`IPR2015-01708 (Patent 7,525,484 B2), IPR2015-01712 (Patent 7,298,327 B2)1
`____________
`
`Before KEVIN F. TURNER, DAVID C. MCKONE, and BARBARA A. PARVIS,
`Administrative Patent Judges.
`
`TURNER, Administrative Patent Judge.
`
`
`ORDER
`Requests for Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 We use this caption in this paper to indicate that this Order applies to, and is
`entered in, all of the indicated cases. The parties are not authorized to use this
`caption.
`
`

`
`Cases IPR2015-01681, IPR2015-01687, IPR2015-01708, and IPR2015-01712
`Patents 7,764,231 B1, 7,525,484 B2, and 7,298,327 B2
`
`According to the Scheduling Orders the above-indicated cases, oral hearings
`would be conducted on November 8, 9, and 10, 2016, for these proceedings if the
`hearings are requested by the parties and granted by the Board. See, e.g., IPR2015-
`01681, Paper 13; IPR2015-01708, Paper 11. Due to subsequent settlement of some
`of the instituted cases, the hearing dates on November 10, 2016, were dropped.
`IPR2015-01681, Paper 15. Petitioner requested oral hearing pursuant to 37 C.F.R.
`§ 42.70 in each of the above-cited proceedings. See, e.g., IPR2015-01681, Paper
`18. The requests are granted.
`The hearings will commence on November 8, 2016, according to the table
`below, on the ninth floor of Madison Building East, 600 Dulany Street,
`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
`hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. Members of the panel will be
`attending the oral argument remotely by use of two-way audiovisual
`communication equipment and will not be able to view the projection screen in the
`hearing room.
`The oral arguments for all of the post-grant proceedings will be performed in
`seriatim. The schedule of oral arguments is provided in the table below:
`Trial Number
`Patent No.
`Hearing Time
`(minutes of argument)
`1:00PM – 1:45PM (45 minutes)
`1:45PM – 2:30PM (45 minutes)
`2:45PM – 3:30PM (45 minutes)
`3:30PM – 4:15PM (45 minutes)
`
`IPR2015-01681
`IPR2015-01687
`IPR2015-01708
`IPR2015-01712
`
`The panel reserves the right to alter the listed minutes of argument if less or
`more time is needed for the issues arising in particular proceedings. Additionally,
`
`7,764,231 B1
`7,764,231 B1
`7,525,484 B2
`7,298,327 B2
`
`2
`
`

`
`Cases IPR2015-01681, IPR2015-01687, IPR2015-01708, and IPR2015-01712
`Patents 7,764,231 B1, 7,525,484 B2, and 7,298,327 B2
`
`the start and/or end times listed may be altered based on the less or more time
`allotted in the proceedings.
`Each party will have half the total number of minutes of total oral argument
`time allotted in the table above. Petitioner bears the ultimate burden of proof that
`Patent Owner’s claims at issue in each review are unpatentable. Therefore,
`Petitioner will open each hearing by presenting its case regarding the challenged
`claim(s) for which the Board instituted trial. Patent Owner may thereafter respond
`and Petitioner may reply to Patent Owner using any reserved rebuttal time.
`The parties are reminded that under 37 C.F.R. § 42.53(f)(7), a proponent of
`deposition testimony must file such testimony as an exhibit. The Board will not
`consider any deposition testimony that has not been so filed. If the parties have
`any concern about disclosing confidential information, they are to contact the
`Board at least 10 days in advance of the hearing to discuss the matter.
`Furthermore, under 37 C.F.R. § 42.70(b), demonstrative exhibits must be
`served at least seven business days before the hearing date. The parties also shall
`provide a courtesy copy of any demonstrative exhibits to the Board at least five
`business days prior to the hearing by emailing them to Trials@uspto.gov. Contrary
`to 37 C.F.R. § 42.70(b), the parties shall not file any demonstrative exhibits in this
`proceeding without prior authorization from the Board.
`The parties must file any objections to the demonstratives with the Board at
`least two business days before the hearing. Any objection to demonstrative
`exhibits that is not timely presented will be considered waived. The objections
`should identify with particularity which demonstratives are subject to objection
`and include a short (one sentence or less) statement of the reason for each
`objection. No argument or further explanation is permitted. The Board will
`consider the objections and schedule a conference if deemed necessary.
`
`3
`
`

`
`Cases IPR2015-01681, IPR2015-01687, IPR2015-01708, and IPR2015-01712
`Patents 7,764,231 B1, 7,525,484 B2, and 7,298,327 B2
`
`Otherwise, the Board will reserve ruling on the objections until after the oral
`argument. The parties are directed to St. Jude Medical, Cardiology Division, Inc.
`v. The Board of Regents of the University of Michigan, IPR2013-00041 (PTAB
`January 27, 2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits. Parties should use care in referring to specific
`demonstrative slides during the hearing for the benefit of judges attending
`remotely. No live testimony from any witness will be taken at the oral argument.
`The Board expects lead counsel for each party to be present in person at the
`oral hearing. However, any counsel of record may present the party’s argument. If
`either party expects that its lead counsel will not be attending the oral argument,
`the parties should initiate a joint telephone conference with the Board no later than
`two business days prior to the oral hearing to discuss the matter.
`Any special requests for audiovisual equipment should be directed
`to Trials@uspto.gov. Requests for special equipment will not be honored unless
`presented in a separate communication not less than five days before the hearing,
`directed to the above email address.
`
`
`
`
`
`4
`
`

`
`Cases IPR2015-01681, IPR2015-01687, IPR2015-01708, and IPR2015-01712
`Patents 7,764,231 B1, 7,525,484 B2, and 7,298,327 B2
`
`
`FOR PETITIONER:
`Brian W. Oaks
`Douglas M. Kubehl
`Chad C. Walters
`Ross G. Culpepper
`BAKER BOTTS LLP
`brian.oaks@bakerbotts.com
`doug.kubehl@bakerbotts.com
`chad.walters@bakerbotts.com
`ross.culpepper@bakerbotts.com
`
`FOR PATENT OWNER:
`Sean A. Luner
`DOVEL AND LUNER, LLP
`sean@dovellaw.com
`
`Steven C. Sereboff
`SOCAL IP LAW GROUP LLP
`ssereboff@socalip.com
`
`
`
`5