PTAB Case No. IPR2016-00216
`Patent No. RE42,196
`Petitioner’s Request for Oral Argument (Paper 32)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MCAFEE, INC.,
`
`Petitioner,
`
`v.
`
`CAP CO., LTD.,
`
`Patent Owner.
`
`Case IPR2016-00216
`Patent RE42,196
`
`Paper 32
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`
`November 2, 2016
`_____________
`
`
`Patent No. RE42,196
`Petitioner’s Request for Oral Argument (Paper 32)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MCAFEE, INC.,
`
`Petitioner,
`
`v.
`
`CAP CO., LTD.,
`
`Patent Owner.
`
`Case IPR2016-00216
`Patent RE42,196
`
`Paper 32
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT
`
`November 2, 2016
`_____________
`
`
`
`PTAB Case No. IPR2016-00216
`Patent No. RE42,196
`Petitioner’s Request for Oral Argument (Paper 32)
`
`Petitioner McAfee, Inc. hereby requests an oral hearing pursuant to 37
`
`C.F.R. § 42.70 and the Board’s Scheduling Order dated May 6, 2016 (Paper 9),
`
`providing for an oral argument, if requested, on December 7, 2016. Petitioner
`
`requests the oral argument to discuss the issues raised in the parties’ filings under
`
`the on-going review, including but not limited to, the following items:
`
`1. Whether claim 2 of U.S. Patent No. RE42,196 (the “’196 Patent”) is
`
`obvious over the disclosures of Hodges in view of Butt and Kephart under 35
`
`U.S.C. § 103(a);
`
`2. Whether claim 7 of the ’196 Patent is obvious over the disclosures of
`
`Hodges in view of Butt under 35 U.S.C. § 103(a);
`
`3.
`
`If claim(s) 2 and/or 7 is/are held to be invalid, whether the
`
`corresponding proposed substitute claim(s) 37 and 38 in Patent Owner’s
`
`Conditional Motion to Amend satisfies the written description and enablement
`
`requirements under 35 U.S.C. § 112 and the requirements under 37 C.F.R. §
`
`42.121(b).
`
`4.
`
`If claim 1 of the ’196 Patent is held to be invalid and proposed
`
`substitute claim 36 is held to satisfy the written description and enablement
`
`requirements under 35 U.S.C. § 112 and the requirements under 37 C.F.R. §
`
`42.121(b), whether substitute claim 36 in Patent Owner’s Conditional Motion to
`
`Amend is obvious over the disclosures of Hodges in view of Butt, Hodges in view
`1
`
`
`
`PTAB Case No. IPR2016-00216
`Patent No. RE42,196
`Petitioner’s Request for Oral Argument (Paper 32)
`
`of Butt and Kephart, Lee in view of Butt, or Lee in view of Butt and Kephart III.
`
`5.
`
`If claim 2 of the ’196 Patent is held to be invalid and substitute claim
`
`37 is held to satisfy the written description and enablement requirements under 35
`
`U.S.C. § 112 and the requirements under 37 C.F.R. § 42.121(b), whether proposed
`
`substitute claim 37 in Patent Owner’s Conditional Motion to Amend is obvious
`
`over the disclosures of Hodges in view of Butt and Kephart or Lee in view of Butt
`
`and Kephart under 35 U.S.C. § 103(a);
`
`6.
`
`If claim 7 of the ’196 Patent is held to be invalid and substitute claim
`
`38 is held to satisfy the written description and enablement requirements under 35
`
`U.S.C. § 112 and the requirements under 37 C.F.R. § 42.121(b), whether proposed
`
`substitute claim 38 in Patent Owner’s Conditional Motion to Amend is obvious
`
`over the disclosures of Hodges in view of Butt, Hodges in view of Butt and
`
`Kephart, Hodges in view of Butt, Kephart, and Kephart III, Lee in view of Butt,
`
`Lee in view of Butt and Kephart, or Lee in view of Butt, Kephart, and Kephart III
`
`under 35 U.S.C. § 103(a);
`
`7.
`
`Rebuttal to the Patent Owner’s presentation on all issues or arguments
`
`raised by it in its Response (Paper 16), Conditional Motion to Amend (Paper 15),
`
`or that may be raised by it before the Board; and
`
`8.
`
`Any other issues related to invalidity that the Board deems necessary
`
`for issuing a final written decision.
`
`2
`
`
`
`PTAB Case No. IPR2016-00216
`Patent No. RE42,196
`Petitioner’s Request for Oral Argument (Paper 32)
`
`Additionally, Petitioner requests permission to use audio/visual equipment to
`
`display demonstratives and exhibits.
`
`Petitioner asks the Board to decide the length of time needed for requested
`
`oral argument for each party, and suggests that 75 minutes per side should be
`
`adequate to cover all the arguments in this case and the related matter of PTAB
`
`Case No. IPR2015-01855, IPR2015-01877 and IPR2016-00222 regarding
`
`additional but related claims (1, 3-5, 8-12, and 14-15) in the ’196 Patent.
`
`Petitioner currently plans to bring 5 individuals to the hearing.
`
`This request is timely filed by Due Date 4 pursuant to the Scheduling Order
`
`dated May 6, 2016 (Paper 9).
`
`Dated: November 2, 2016
`
`PERKINS COIE LLP
`3150 Porter Drive
`Palo Alto, California 94304
`(650) 838-4300 (phone)
`(650) 838-4350 (fax)
`Intel-CAP-IPR@perkinscoie.com
`
`Respectfully submitted,
` /s/ James F. Valentine
`Lead Counsel
`James F. Valentine, Reg. No. 39,053
`
`Back-up Counsel
`Ryan McBrayer, Reg. No. 54,299
`Nancy Cheng, admitted pro hac vice
`
`Attorneys for Petitioner McAfee, Inc.
`
`3
`
`
`
`PTAB Case No. IPR2016-00216
`Patent No. RE42,196
`Petitioner’s Request for Oral Argument (Paper 32)
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true copy of the foregoing
`
`PETITIONER’S REQUEST FOR ORAL ARGUMENT was served in their
`
`entirety this 2nd day of November 2016 by electronic mail on the Patent Owner via
`
`its attorneys of record:
`
`Keith Kline:
`
`kkline@carrferrell.com
`
`Bruce J. Wecker: bwecker@hausfeldllp.com
`
` /s/ James F. Valentine
`Lead Counsel
`James F. Valentine, Reg. No. 39,053
`
`Back-up Counsel
`Ryan McBrayer, Reg. No. 54,299
`Nancy Cheng, admitted pro hac vice
`
`Attorneys for Petitioner McAfee, Inc.
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