Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper No. 18
`Entered: July 22, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,1
`Patent Owner.
`
`____________
`
`Case IPR2018-01093
`Patent 7,944,353 B2
`____________
`
`
`
`
`Before SALLY C. MEDLEY, GARTH D. BAER, and SEAN P. O’HANLON,
`Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`1 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent owner.
`
`
`
`

`

`IPR2018-01093
`Patent 7,944,353 B2
`
`Petitioner and Patent Owner each request oral hearing pursuant to 37 C.F.R.
`
`§ 42.70. Papers 14, 15. Upon consideration, the requests for oral hearing are
`granted.
`
`The hearing will commence at 9:00 AM EASTERN TIME on Tuesday,
`August 20, 2019, on the ninth floor of Madison Building East of the USPTO
`headquarters in Alexandria, Virginia, 600 Dulany Street, Alexandria, Virginia.
`The hearing will be open to the public for in-person attendance that will be
`accommodated on a first-come, first-served basis. The Board will provide a court
`reporter for the hearing and the reporter’s transcript will constitute the official
`record of the hearing.
`
`Each party will have forty-five minutes of total time to present arguments.
`As the party with the burden of proof and persuasion, Petitioner will proceed first
`to present its case with regard to the challenged claims and grounds set forth in the
`Petition. Thereafter, Patent Owner may respond to Petitioner’s case. Thereafter,
`Petitioner may use any of its remaining time for rebuttal regarding Patent Owner’s
`arguments regarding the challenged claims. And, thereafter, Patent Owner may
`use any of its remaining time for sur-rebuttal, to respond to Petitioner’s rebuttal
`arguments. The parties are reminded that arguments made during rebuttal and sur-
`rebuttal periods must be responsive to arguments the opposing party made in its
`immediately preceding presentation.
`
`At least seven business days prior to the hearing, each party shall serve on
`the other party any demonstrative exhibit(s) it intends to use during the hearing.
`See 37 C.F.R. § 42.70(b). At least three business days prior to the hearing, the
`parties shall provide the demonstrative exhibits to the Board by emailing them to
`Trials@uspto.gov. The parties shall not file any demonstrative exhibits in this case
`without prior authorization from the Board.
`
`2
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`

`

`IPR2018-01093
`Patent 7,944,353 B2
`
`Demonstrative exhibits used at the oral hearing are aids to oral argument and
`
`not evidence, and should be clearly marked as such. For example, each slide of a
`demonstrative exhibit may be marked with the words “DEMONSTRATIVE
`EXHIBIT – NOT EVIDENCE” in the footer. Demonstrative exhibits cannot be
`used to advance arguments or introduce evidence not previously presented in the
`record. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018)
`(noting that the “Board was obligated to dismiss [the petitioner’s] untimely
`argument . . . raised for the first time during oral argument”).
`
`The parties should attempt to work out any objections to demonstratives
`prior to involving the Board. Should either party disagree with the propriety of any
`of the opposing party’s demonstratives, the party may send, contemporaneously
`with their own slides three business days prior to the hearing, an email to
`Trials@uspto.gov including a paper limited to identifying the opposing party’s
`slide(s) objected to and a brief sentence as to the general basis of the objection(s).
`No further argument is permitted in that paper. The Board will then take the
`objections under advisement, and if the content is inappropriate, it will not be
`considered. Any objection to demonstrative exhibits that is not timely presented
`will be considered waived. The Board asks the parties to confine demonstrative
`exhibit objections to those identifying egregious violations that are prejudicial to
`the administration of justice. The parties are directed to St. Jude Med., Cardiology
`Div., Inc. v. The Board of Regents of the Univ. of Mich., Case IPR2013-00041
`(PTAB Jan. 27, 2014) (Paper 65), for guidance regarding the appropriate content of
`demonstrative exhibits. In general, if the content on a slide cannot be readily
`associated with an argument made, or evidence referenced, in a substantive paper,
`it is inappropriate. The best practice is to indicate on each slide where support may
`be found in a substantive paper and/or an exhibit of record in this proceeding.
`
`3
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`IPR2018-01093
`Patent 7,944,353 B2
`
`The parties are reminded that each 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 may be attending
`the hearing electronically from a remote location, and that if a demonstrative is not
`made fully available or visible to all judges at the hearing, 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 each party to be present in person at the
`hearing. If a 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. Any
`counsel of record, however, may present the party’s arguments.
`
`A party may request remote video attendance for one or more of its other
`attendees to view the hearing from any USPTO location. The available locations
`include the Texas Regional Office in Dallas, Texas; the Rocky Mountain Regional
`Office in Denver, Colorado; the Elijah J. McCoy Midwest Regional Office in
`Detroit, Michigan; and the Silicon Valley Office in San Jose, California. To
`request remote video viewing, a party must send an email message to
`Trials@uspto.gov ten business days prior to the hearing, indicating the requested
`location and the number planning to view the hearing from the remote location.
`The Board will notify the parties if the request for video viewing is granted. Note
`that it may not be possible to grant the request due to the availability of resources.
`
`Per the 2018 update to the Office Patent Trial Practice Guide, either party
`may request a pre-hearing conference. Office Patent Trial Practice Guide, August
`
`4
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`IPR2018-01093
`Patent 7,944,353 B2
`
`2018 Update, 83 Fed. Reg. 39,989 (Aug. 13, 2018) (found at the following link to
`the USPTO website: https://go.usa.gov/xU7GP). Requests for a pre-hearing
`conference must be made by Tuesday, August 6, 2019. To request such a
`conference, an email should be sent to Trials@uspto.gov including several dates
`and times of availability for both parties that are generally no later than three
`business days prior to the oral hearing. Please refer to the Guide for more
`information on the pre-hearing conference.
`
`Any special requests for audio-visual equipment should be directed to
`Trials@uspto.gov. A party may also indicate any special requests related to
`appearing at an in-person oral hearing, such as a request to accommodate physical
`needs that limit mobility or visual or hearing impairments, and indicate how the
`PTAB may accommodate the special request. Any special requests must be
`presented in a separate communication not less than five days before the hearing.
`
`
`It is
`ORDERED that oral argument will commence at 9:00 AM EASTERN
`
`TIME on Tuesday, August 20, 2019.
`
`5
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`

`

`IPR2018-01093
`Patent 7,944,353 B2
`
`For PETITIONER:
`Adam P. Seitz
`Paul R. Hart
`Erise IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`ptab@eriseip.com
`For PATENT OWNER:
`Brett Mangrum
`Ryan Loveless
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Ray A. King
`Uniloc USA, Inc.
`ray.king@unilocusa.com
`
`6
`
`