Trials@uspto.gov Paper No. 10 IPR2014-01412, Paper 32
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`571-272-7822
`IPR2014-01471, Paper 29
`Date Entered: December 2, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ERICSSON INC. and
` TELEFONAKTIEBOLAGET LM ERICSSON
`Petitioner
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`v.
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`INTELLECTUAL VENTURES II LLC,
`Patent Owner
`____________
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`Case IPR2014-01412
`Patent 5,963,557
`Case IPR2014-01471
`Patent 6,370,153 B11
`____________
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`
`
`BRIAN J. McNAMARA, Administrative Patent Judge.
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`
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`ORDER
`Consolidated Trial Hearing
`37C.F.R. § 42.70
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`
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`1 This Order addresses issues that are identical in related cases. Therefore, we
`exercise our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
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`
`

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`Case IPR2014-01412; IPR2014-01471
`Patent 5,963,557; 6,370,153 B1
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`A trial in each of these proceedings was instituted on March 18, 2104.
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`IPR2014-01412, Paper 8; IPR2014-01471, Paper 10. A Scheduling Order, also
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`issued on March 18, 2014, set the date for oral hearing to December 15, 2015, if
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`hearing is requested by the parties and granted by the Board. IPR2014-01412,
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`Paper 9; IPR2014-01471, Paper 11. Both parties have requested oral hearing
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`pursuant to 37 C.F.R. § 42.70. The request is GRANTED.
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`We will conduct a consolidated hearing for these proceedings. Each party
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`will have 60 minutes of total argument time. Ericsson Inc. and
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`Telefonaktiebolaget LM Ericsson (collectively, “Petitioner”) bears the ultimate
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`burden of proof that the claims at issue in these reviews are unpatentable.
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`Therefore, at oral hearing Petitioner will proceed first to present its case with
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`regard to the challenged claims on which basis we instituted trial. Thereafter,
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`Intellectual Ventures II LLC (“Patent Owner”) will argue its opposition to
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`Petitioner’s case. Petitioner may then use any time Petitioner reserved to rebut
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`Patent Owner’s opposition. There are no motions to amend or exclude to be
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`argued at this hearing.
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`There is a strong public policy interest in making all information presented
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`in these proceedings public, as the review determines the patentability of claims in
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`an issued patent and thus affects the rights of the public. This policy is reflected in
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`part, for example, in 35 U.S.C. § 316(a)(1) and 35 U.S. C. § 326(a)(1) which
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`provide that the file of any inter partes review or post grant review be made
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`available to the public, except that any petition or document filed with the intent
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`that it be sealed shall, if accompanied by a motion to seal, be treated as sealed
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`pending the outcome of the ruling on the motion. There are no motions to seal in
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`the present proceeding. Accordingly, the Board exercises its discretion to make
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`the oral hearing publically available via in-person attendance.
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`2
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`

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`Case IPR2014-01412; IPR2014-01471
`Patent 5,963,557; 6,370,153 B1
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`Specifically, the hearing will commence at 1:30 PM ET on December 15,
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`2015, on the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
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`Virginia. The hearing will be open to the public for in-person attendance on a first
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`come first serve basis.
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`The Board will provide a court reporter for the hearing and the reporter’s
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`transcript will constitute the official record of the hearing. Under 37 C.F.R. §
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`42.70(b), demonstrative exhibits must be served five business days before the
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`hearing. The parties are directed to CBS Interactive Inc. v. Helferich Patent
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`Licensing, LLC, IPR2013-00033, Paper 118 (Oct. 23, 2013), regarding the
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`appropriate content of demonstrative exhibits. Any issue regarding demonstrative
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`exhibits should be resolved at least two days prior to the hearing by way of a joint
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`telephone conference call to the Board. The parties are responsible for requesting
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`such a conference sufficiently in advance of the hearing to accommodate this
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`requirement. Any objection to demonstrative exhibits that is not timely presented
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`will be considered waived. Demonstratives should be filed at the Board no later
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`than two days before the hearing. A hard copy of the demonstratives should be
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`provided to the court reporter at the hearing.
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`Questions regarding specific audio-visual equipment should be directed to
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`the Board at (571) 272-9797. Requests for audio-visual equipment are to be
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`made 5 days in advance of the hearing date. The request is to be sent to
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`Trials@uspto.gov. If the request is not received timely, the equipment may
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`not be available on the day of the hearing. The parties are reminded that the
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`presenter must identify clearly and specifically each demonstrative exhibit (e.g., by
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`slide or screen number) referenced during the hearing to ensure the clarity and
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`accuracy of the reporter’s transcript. The parties also should note that at least one
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`member of the panel will be attending the hearing electronically from a remote
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`3
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`

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`Case IPR2014-01412; IPR2014-01471
`Patent 5,963,557; 6,370,153 B1
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`location and that if a demonstrative is not filed or otherwise made fully available or
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`visible to the judge(s) presiding over the hearing remotely, that demonstrative will
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`not be considered. If the parties have questions as to whether demonstrative
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`exhibits would be sufficiently visible and available to all of the judges, the parties
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`are invited to contact the Board at 571-272-9797.
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`The Board expects lead counsel for each party to be present in person at the
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`oral hearing. However, lead or backup counsel may present the party’s argument.
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`If either party anticipates that its lead counsel will not be attending the oral
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`argument, the parties should initiate a joint telephone conference with the Board no
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`later than two business days prior to the oral hearing to discuss the matter.
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`PETITIONER: (via electronic transmission)
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`Steven Spears
`sspears@mwe.com
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`Matthew McCloskey
`mmccloskey@mwe.com
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`PATENT OWNER: (via electronic transmission)
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`Lori Gordon
`lgordon-PTAB@skgf.com
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`Michael Specht
`mspecht-PTAB@skgf.com
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`James Hietala
`jhietala@intven.com
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`Tim Seeley
`tim@intven.com
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`4