`571.272.7822
`
`
`Paper 9
`Entered: November 16, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ERICSSON INC. AND
`TELEFONAKTIELBOLAGET LM ERICSSON,
`Petitioner,
`
`
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)1
`_______________
`
`Before KRISTEN L. DROESCH, MINN CHUNG, and AMBER L. HAGY,
`Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`
`
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. The
`parties are not authorized to use this heading style in any subsequent
`papers.
`
`
`
`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
`
`A. GENERAL INSTRUCTIONS
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`1. Initial Conference Call
`
`The parties are directed to contact the Board within a month of this
`
`Order if there is a need to discuss proposed changes to this Scheduling Order
`
`or proposed motions that have not been authorized in this Order or other
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`prior Order or Notice. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
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`preparing for the initial conference call). A request for an initial conference
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`call shall include a list of proposed motions, if any, to be discussed during
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`the call.
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`2. Patent Owner must confer with us before filing any Motion to
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`Amend. See 37 C.F.R. § 42.121(a). Patent Owner should arrange for a
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`conference call with the panel and opposing counsel at least 10 business
`
`days before DUE DATE 1 in order to satisfy the conferral requirement.
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`3. Protective Order
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`No protective order shall apply to this proceeding until the Board
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`enters one. If either party files a motion to seal before entry of a protective
`
`order, a jointly proposed protective order shall be filed as an exhibit with the
`
`motion. The Board encourages the parties to adopt the Board’s default
`
`protective order if they conclude that a protective order is necessary. See
`
`Practice Guide, App’x B (Default Protective Order). If the parties choose to
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`propose a protective order deviating from the default protective order, they
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`must submit the proposed protective order jointly along with a marked-up
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`comparison of the proposed and default protective orders showing the
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`differences between the two and explain why good cause exists to deviate
`
`from the default protective order.
`
`2
`
`
`
`
`
`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
`
`
`The Board has a strong interest in the public availability of trial
`
`proceedings. Redactions to documents filed in this proceeding should be
`
`limited to the minimum amount necessary to protect confidential
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`information, and the thrust of the underlying argument or evidence must be
`
`clearly discernible from the redacted versions. We also advise the parties
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`that information subject to a protective order may become public if
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`identified in a final written decision in this proceeding, and that a motion to
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`expunge the information will not necessarily prevail over the public interest
`
`in maintaining a complete and understandable file history. See Practice
`
`Guide 48,761.
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`4. Discovery Disputes
`
`The Board encourages parties to resolve disputes relating to discovery
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`on their own. To the extent that a dispute arises between the parties relating
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`to discovery, the parties must meet and confer to resolve such a dispute
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`before contacting the Board. If attempts to resolve the dispute fail, a party
`
`may request a conference call with the Board. In any request for a
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`conference call with the Board to resolve a discovery dispute, the requesting
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`party shall: (a) certify that it has conferred with the other party in an effort to
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`resolve the dispute; (b) identify with specificity the issues for which
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`agreement has not been reached; (c) identify the precise relief to be sought;
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`and (d) propose specific dates and times at which both parties are available
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`for the conference call.
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`5. Testimony
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`The parties are reminded that the Testimony Guidelines appended to
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`the Trial Practice Guide, Appendix D, apply to this proceeding. The Board
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`may impose an appropriate sanction for failure to adhere to the Testimony
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`
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`3
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`
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`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
`
`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
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`attorneys’ fees incurred by any party may be levied on a person who
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`impedes, delays, or frustrates the fair examination of a witness. Whenever a
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`party submits a deposition transcript as an exhibit in this proceeding, the
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`submitting party shall file the full transcript of the deposition rather than
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`excerpts of only those portions being cited. After a deposition transcript has
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`been submitted as an exhibit, all parties who subsequently cite to portions of
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`the transcript shall cite to the first-filed exhibit rather than submitting
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`another copy of the same transcript.
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`6. Cross-Examination
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`Except as the parties might otherwise agree, for each due date: Cross-
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`examination ordinarily takes place after any supplemental evidence is due.
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`37 C.F.R. § 42.53(d)(2). Cross-examination ordinarily ends no later than a
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`week before the filing date for any paper in which the cross-examination
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`testimony is expected to be used. Id.
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`7. Oral Argument
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`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
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`To permit the Board sufficient time to schedule the oral argument, the
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`parties may not stipulate to an extension of the request for oral argument
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`beyond the date set forth in the Due Date Appendix. Unless the Board
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`notifies the parties otherwise, oral argument, if requested, will be held at the
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`USPTO Headquarters in Alexandria, VA. The parties may request that the
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`oral argument instead be held at the Dallas, Texas, USPTO Regional Office.
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`The parties should meet and confer, and jointly propose the parties’
`
`preference at the initial conference call, if requested. Alternatively, the
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`parties may jointly file a paper stating their preference for the hearing
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`
`
`4
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`
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`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
`
`location within one month of this order. Note that the Board may not be
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`able to honor the parties’ preference of hearing location due to, among other
`
`things, the availability of hearing room resources and the needs of the panel.
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`The Board will consider the location request and notify the parties
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`accordingly if a request for change in location is granted.
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`Seating in the Board’s hearing rooms may be limited, and will be
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`available on a first-come, first-served basis. If either party anticipates that
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`more than five (5) individuals will attend the argument on its behalf, the
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`party should notify the Board as soon as possible, and no later than the
`
`request for oral argument. Parties should note that the earlier a request for
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`accommodation is made, the more likely the Board will be able to
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`accommodate additional individuals.
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`B. DUE DATES
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`This order sets due dates for the parties to take action after institution
`
`of the proceeding. The parties may stipulate different dates for DUE
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`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
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`notice of the stipulation, specifically identifying the changed due dates, must
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`be promptly filed. The parties may not stipulate an extension of DUE
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`DATES 6 and 7, or to the requests for oral hearing. In stipulating different
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`times, the parties should consider the effect of the stipulation on times to
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`object to evidence (37 C.F.R. § 42.64(b)(1)), to supplement evidence
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`(§ 42.64(b)(2)), to conduct cross-examination (§ 42.53(d)(2)), and to draft
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`papers depending on the evidence and cross-examination testimony.
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`
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`5
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`
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`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
`
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`1. DUE DATE 1
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`Patent Owner may file—
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`a. A response to the petition (37 C.F.R. § 42.120). If Patent Owner
`
`elects not to file a response, Patent Owner must arrange a conference call
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`with the parties and the Board. Patent Owner is cautioned that any
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`arguments for patentability not raised in the response may be deemed
`
`waived.
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`b. A motion to amend the patent (37 C.F.R. § 42.121). Patent Owner
`
`may file a motion to amend without prior authorization from the Board.
`
`Nevertheless, Patent Owner must confer with the Board before filing such a
`
`motion. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent Owner
`
`should request a conference call with the Board no later than two weeks
`
`prior to DUE DATE 1. The parties are directed to the Board’s Guidance on
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`Motions to Amend in view of Aqua Products
`
`(https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_
`
`to_amend_11_2017.pdf), and Western Digital Corp. v. SPEX Techs., Inc.,
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`Case IPR2018-00082 (PTAB April 25, 2018) (Paper 13) (providing
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`information and guidance on motions to amend).
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`2. DUE DATE 2
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`Petitioner may file a reply to the Patent Owner’s response.
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`Petitioner may file an opposition to the motion to amend.
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`3. DUE DATE 3
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`Patent Owner may file a sur-reply to Petitioner’s reply.
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`Patent Owner may file a reply to the opposition to the motion to amend.
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`6
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`
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`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
`
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`4. DUE DATE 4
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`Petitioner may file a sur-reply to Patent Owner’s reply to the opposition
`
`to the motion to amend. Either party may file a motion to exclude evidence
`
`(37 C.F.R. § 42.64(c)).
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`5. DUE DATE 5
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`Either party may file an opposition to a motion to exclude evidence.
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`6. DUE DATE 6
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`Either party may file a reply to an opposition to a motion to exclude
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`evidence. Either party may request that the Board hold a pre-hearing
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`conference.
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`7. DUE DATE 7
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`The oral argument (if requested by either party) shall be held on this date.
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`Approximately one month prior to the argument, the Board will issue an
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`order setting the start time of the hearing and the procedures that will govern
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`the parties’ arguments.
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`7
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`
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`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
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`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL……………………………. Upon Request
`
`DUE DATE 1 ............................................................ February 15, 2019
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`Patent Owner’s response to the petition
`
`Patent Owner’s motion to amend the patent
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`DUE DATE 2 .................................................................. May 15, 2019
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`Petitioner’s reply to Patent Owner’s response to the petition
`
`Petitioner’s opposition to Patent Owner’s motion to amend
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`DUE DATE 3 .................................................................. June 17, 2019
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`Patent Owner’s sur-reply to Petitioner’s reply to the response to the petition
`
`Patent Owner’s reply to Petitioner’s opposition to the motion to amend
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`DUE DATE 4 ................................................................... July 15, 2019
`
`Petitioner’s sur-reply to Patent Owner’s reply to the opposition to the motion
`to amend
`
`Motion to exclude evidence
`
`Request for oral argument (parties may not stipulate to an extension for the
`request for oral argument)
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`DUE DATE 5 ................................................................... July 22, 2019
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`Opposition to motion to exclude
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`DUE DATE 6 ................................................................... July 29, 2019
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`Reply to opposition to motion to exclude
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`Request for pre-hearing conference
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`DUE DATE 7 .................................................................August 8, 2019
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`Oral argument (if requested)
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`
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`
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`8
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`
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`Case IPR2018-01007 (Patent 7,412,517 B2)
`Case IPR2018-01058 (Patent 7,359,971 B2)
`
`
`PETITIONER:
`
`Brian W. Oaks
`Harrison Rich
`Jeffrey S. Becker
`BAKER BOTTS L.L.P.
`Brian.oaks@bakerbotts.com
`Harrison.rich@bakerbotts.com
`Jeff.becker@bakerbotts.com
`
`
`
`PATENT OWNER:
`
`Peter J. McAndrews
`Sharon A. Hwang
`Andrew B. Karp
`McANDREWS, HELD & MALLOY. Ltd.
`pmcandrews@mcandrews-ip.com
`shwan@mcandrews-ip.com
`akarp@mcandrews-ip.com
`
`Tim R. Seeley
`Russ Rigby
`INTELLECTUAL VENTRUES MANAGEMENT
`tm@intven.com
`rrgby@intven.com
`
`
`
`
`9
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`