Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper No. 33
`Date Entered: August 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON, AND
`AT&T MOBILITY, LLC
`Petitioners
`
`v.
`
`
` INTELLECTUAL VENTURES I LLC,
`Patent Owner
`____________
`
`Case IPR2016-01169
`Case IPR2017-00681
`Patent 5,960,032
`____________
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37C.F.R. § 42.70
`
`
`
`571-272-7822
`
`
`
`
`Paper No. 33
`Date Entered: August 23, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` ERICSSON INC. AND TELEFONAKTIEBOLAGET
`LM ERICSSON, AND
`AT&T MOBILITY, LLC
`Petitioners
`
`v.
`
`
` INTELLECTUAL VENTURES I LLC,
`Patent Owner
`____________
`
`Case IPR2016-01169
`Case IPR2017-00681
`Patent 5,960,032
`____________
`
`
`Before KRISTEN L. DROESCH, BRIAN J. McNAMARA, and
`DAVID C. McKONE, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37C.F.R. § 42.70
`
`
`
`
`Case IPR2016-01169; IPR2017-00681
`Patent 5,960,032
`
`
`Based on a petition filed by Ericsson Inc. and Telefonaktiebolaget LM
`Ericsson, a trial in IPR2016-001169 was instituted on December 14, 2016.
`(Paper 9, “Decision to Institute”). A contemporaneously entered Scheduling
`Order set the date for oral hearing to September 11, 2017, if hearing is
`requested by the parties and granted by the Board. Paper 10 (“Scheduling
`Order”). On March 16, 2017, based on a petition filed by AT&T Mobility
`LLC we entered an order instituting inter partes review in IPR2017-00681
`and joining that proceeding to IPR2016-01169. Paper 18. The Scheduling
`Order was not changed by the joinder. Ericsson Inc. and
`Telefonaktiebolaget LM Ericsson and AT&T Mobility (“Petitioner”) and
`Intellectual Ventures I LLC (“Patent Owner”) have requested oral hearing
`pursuant to 37 C.F.R. § 42.70. The request is GRANTED.
`Each party will have 45 minutes of total argument time. Petitioner
`bears the ultimate burden of proof that the claims at issue in this review are
`unpatentable. Therefore, at oral hearing Petitioner will proceed first to
`present its case with regard to the challenged claims on which basis we
`instituted trial. Thereafter, Patent Owner will argue its opposition to
`Petitioner’s case. Petitioner may use any time Petitioner reserved to rebut to
`Patent Owner’s opposition. No other argument will be heard.
`There is a strong public policy interest in making all information
`presented in these proceedings public, as the review determines the
`patentability of claims in an issued patent and thus affects the rights of the
`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
`and 35 U.S. C. § 326(a)(1) which provide that the file of any inter partes
`review or post grant review be made available to the public, except that any
`petition or document filed with the intent that it be sealed shall, if
`
`
`
`2
`
`
`
`Case IPR2016-01169; IPR2017-00681
`Patent 5,960,032
`
`accompanied by a motion to seal, be treated as sealed pending the outcome
`of the ruling on the motion. There are no motions to seal in the present
`proceeding. Accordingly, the Board exercises its discretion to make the oral
`hearing publically available via in-person attendance.
`The hearing will commence at 1:30 PM, on September 11, 2017, on
`the ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia. In-person attendance will be accommodated on a first come first
`serve basis.
`The Board will provide a court reporter for the hearing and the
`reporter’s transcript will constitute the official record of the hearing. Any
`demonstrative exhibits must be served seven business days before the
`hearing. 37 C.F.R. § 42.70(b). Demonstrative exhibits are not evidence and
`may not introduce new evidence or arguments. Instead, demonstrative
`exhibits should cite to evidence in the record. The parties are directed to St.
`Jude Medical, Cardiology Division, Inc. v. The Board of Regents of the
`University of Michigan, Case No. IPR2013-00041 (PTAB Jan. 27, 2014)
`(Paper 65), and CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`IPR2013-00033, Paper 118 (Oct. 23, 2013), regarding the appropriate
`content of demonstrative exhibits. Any issue regarding demonstrative
`exhibits should be resolved at least three days prior to the hearing by way of
`a joint telephone conference call to the Board. The parties are responsible
`for requesting such a conference sufficiently in advance of the hearing to
`accommodate this requirement. Any objection to demonstrative exhibits
`that is not timely presented will be considered waived. Demonstratives
`should be filed at the Board no later than two days before the hearing. A
`
`
`
`3
`
`
`
`Case IPR2016-01169; IPR2017-00681
`Patent 5,960,032
`
`hard copy of the demonstratives should be provided to the court reporter at
`the hearing.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment are to be made 5 days in advance of the hearing date. The
`request is to be sent to Trials@uspto.gov. If the request is not received
`timely, the equipment may not be available on the day of the hearing.
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number)
`referenced during the hearing to ensure the clarity and accuracy of the
`reporter’s transcript. The parties also should note that at least one member
`of the panel will be attending the hearings electronically from a remote
`location and that if a demonstrative is not filed or otherwise made fully
`available or visible to the judge presiding over the hearing remotely, that
`demonstrative will not be considered. If the parties have questions as to
`whether demonstrative exhibits would be sufficiently visible and available to
`all of the judges, the parties are invited to contact the Board at 571-272-
`9797.
`
`The Board expects lead counsel for Petitioner and Patent Owner to be
`present in person at the oral hearing. However, lead or backup counsel may
`present the party’s argument. If either party anticipates 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.
`
`
`
`
`
`
`4
`
`
`
`Case IPR2016-01169; IPR2017-00681
`Patent 5,960,032
`
`PETITIONER:
`
`J. Andrew Lowes
`John Russell Emerson
`Clint Wilkins
`Adam C. Fowles
`HAYNES AND BOONE, LLP
`andrew.lowes.ipr@haynesboone.com
`russell.emerson.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
`adam.fowles.ipr@haynesboone.com
`
`PATENT OWNER:
`
`Lori A. Gordon
`Byron L. Pickard
`Steven W. Peters
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`lgordon-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`speters-PTAB@skgf.com
`
`James R. Hietala
`Tim R. Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tim@intven.com
`
`
`
`5
`
`
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