Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper 23
`Entered: December 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)1
`____________
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses the same issues for the above-identified cases. We,
`therefore, exercise our discretion to issue one order to be filed in each case.
`
`
`Tel: 571.272.7822
`
`Paper 23
`Entered: December 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)1
`____________
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`1 This Order addresses the same issues for the above-identified cases. We,
`therefore, exercise our discretion to issue one order to be filed in each case.
`
`
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`
`In each of the above-identified proceedings, we instituted inter partes
`review (Paper 102) and issued a Scheduling Order (Paper 11), which sets an
`oral hearing date for January 16, 2018,3 if oral hearing is requested by either
`party and granted by the Board. Pursuant to 37 C.F.R. § 42.70, the parties
`requested an oral hearing in each case. Papers 20 and 22. The requests are
`granted.
`The consolidated hearing for IPR2016-01842, IPR2016-01863, and
`IPR2016-01864 will commence at 10:00 AM Eastern Time, on January 16,
`2018. Each party will have forty five (45) minutes of total time to present
`arguments for these proceedings. As to IPR2016-01839, the hearing will
`commence following a break after the morning hearings session, and each
`party will have thirty (30) minutes of total time to present arguments.
`These hearings will be conducted at the USPTO Headquarters,
`Ninth Floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia, 22314.4 The hearings will be open to the public for in-person
`attendance that will be accommodated on a first-come, first-serve basis.
`For each oral hearing, because Petitioner bears the ultimate burden of
`proof that the challenged claims are unpatentable, Petitioner will proceed
`first to present its case as to the challenged claims and instituted grounds of
`
`
`2 Citations refer to IPR2016-01842, as representative, unless otherwise
`noted.
`3 In IPR2016-01839, we issued a Revised Scheduling Order resetting the
`oral argument date to January 16, 2018 for efficiency. IPR2016-01839,
`Paper 24.
`4 See https://www.uspto.gov/about-us/uspto-locations/alexandria-virginia-
`headquarters for additional information.
`
`2
`
`
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`unpatentability in the proceedings, and may reserve a small portion of its
`time for rebuttal. Thereafter, Patent Owner will respond to Petitioner’s case.
`After that, Petitioner may use the rest of its time for its rebuttal, responding
`to Patent Owner’s specific arguments presented at the oral hearing. No live
`testimony from any witness will be taken at the oral argument.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served at
`least seven business days prior to the hearing. The parties shall confer
`regarding any objections to demonstrative exhibits, and file demonstrative
`exhibits with the Board, as a separate exhibit in accordance with 37 C.F.R.
`§ 42.63, at least five business days prior to the hearing.
`Demonstrative exhibits are not evidence, but merely visual aids for
`use at the oral hearing. For any issue regarding the proposed demonstrative
`exhibits that cannot be resolved after conferring with the opposing party, the
`parties may file jointly a one-page list of objections at least five business
`days prior to the hearing. The list should identify with particularity which
`demonstrative exhibits are subject to objection and include a short statement
`(no more than one concise sentence) of the reason for each objection. No
`argument or further explanation is permitted.
`We will consider the objections and schedule a conference call, if
`necessary, to discuss them. Otherwise, we may strike demonstratives that
`we find objectionable or reserve ruling on the objections until the hearing or
`after the hearing. Any objection to demonstrative exhibits that is not
`presented timely will be considered waived. Each party also shall provide a
`hard copy of its demonstrative exhibits to the court reporter at the hearing.
`
`3
`
`
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`
`The parties are reminded that the presenter must identify clearly and
`specifically each demonstrative exhibit (e.g., by slide or screen number and
`by content) referenced during each hearing to ensure the clarity and accuracy
`of the reporter’s transcript. Further, because a consolidated hearing will be
`conducted for IPR2016-01842, IPR2016-01839, IPR2016-01863, and
`IPR2016-01864, if an argument and/or evidence applies only to a particular
`proceeding or proceedings, the presenter must identify the proceeding or
`proceedings, to which that argument and/or evidence applies. The parties
`also should note that Judge Miriam Quinn (Dallas) and Judge James Arpin
`(Denver) will be attending each hearing electronically and will only have
`access to the courtesy copy of the demonstratives provided in advance, as
`referenced above. If a demonstrative is not made available to the Board in
`the manner indicated above, that demonstrative may not be available to each
`of the judges during the hearing and may not be considered. Further, images
`projected, using audio visual equipment in Alexandria, will not be visible to
`Judges Quinn and Arpin. Because of limitations on the audio transmission
`systems in our hearing rooms, the presenter may speak only when standing
`at the hearing room podium. 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 each party to be present at oral
`hearing, although any backup counsel may make the actual presentation, in
`whole or in part. If lead counsel for either party is unable to attend the oral
`argument, the Board should be notified via a joint telephone conference call
`
`4
`
`
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`no later than five business days prior to the oral hearing to discuss the
`matter.
`The Board will provide a court reporter for each hearing, and the
`reporter’s transcript will constitute the official record of the hearing. The
`reporter’s transcript will be entered in the record of the proceedings.
`Requests for audio-visual equipment or special accommodations at the
`hearing are to be made five days in advance of the hearing date. The
`requests must be sent to Trials@uspto.gov. If the requests are not received
`timely, equipment or accommodations may not be available on the day of
`the hearing.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`Case IPR2016-01839 (Patent 6,470,399 B1)
`Case IPR2016-01842 (Patent 9,189,437 B2)
`Case IPR2016-01863 (Patent 8,504,746 B2)
`Case IPR2016-01864 (Patent 6,470,399 B1)
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`Tyler Dutton
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`tdutton-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Michael R. Fleming
`mfleming@irell.com
`IRELL & MANELLA LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`
`6
`
`
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