Trials@uspto.gov
`571-272-7822
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`Paper 40
`Date: October 31, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`
`
`Case IPR2018-01279
`Patent 7,844,037 B2
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`571-272-7822
`
`Paper 40
`Date: October 31, 2019
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`
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`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`
`
`Case IPR2018-01279
`Patent 7,844,037 B2
`
`
`
`Before DANIEL N. FISHMAN, MICHELLE N. WORMMEESTER, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`ORDER
`Oral Hearing
`35 U.S.C. § 316(a)(10) and 37 C.F.R. § 42.70
`
`
`
`IPR2018-01279
`Patent 7,844,037 B2
`
`
`Both parties have requested oral argument in this matter pursuant to
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`37 C.F.R. § 42.70. See Papers 36, 37. Patent Owner requests sixty (60)
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`minutes for each side while Petitioner requests ninety (90) minutes per side.
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`See Paper 36, 1; Paper 37, 1. We determine that two hours of total argument
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`time will be sufficient for these proceedings. Therefore, each party will be
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`allocated sixty (60) minutes for argument.
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`The hearing for these proceedings will commence at 9:30 AM
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`Eastern Time on November 20, 2019. The hearing will be conducted on
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`the ninth floor of Madison Building East, 600 Dulany Street,
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`Alexandria, Virginia. The hearing will be open to the public for in-person
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`attendance, which will be accommodated on a first-come, first-served basis.
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`If the parties have concerns about disclosing confidential information, they
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`are requested to contact the Board at least ten (10) business days in advance
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`of the hearing to discuss the matter.
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`Petitioner bears the ultimate burden of proof that the challenged
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`claims are unpatentable and Patent Owner does not have the burden of
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`persuasion with respect to the patentability of substitute claims presented in
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`the Motion to Amend. Therefore, Petitioner will proceed first to present its
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`case as to the challenged and substitute claims. Petitioner may reserve
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`some, but not more than one half, of its argument time for rebuttal.
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`Thereafter, Patent Owner will respond to Petitioner’s arguments and may
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`reserve some of its argument time, for sur-rebuttal. Next, Petitioner may use
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`any time it has reserved for rebuttal to respond to Patent Owner’s specific
`
`arguments presented at the hearing. Then, Patent Owner may present a brief
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`sur-rebuttal, limited to responding to arguments presented in Petitioner’s
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`2
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`IPR2018-01279
`Patent 7,844,037 B2
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`evidence, if it has reserved time. No live testimony from any witness will be
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`taken at the oral argument.
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`Any demonstrative exhibits shall be served at least five (5) business
`
`days before the hearing. The parties shall confer regarding any objections to
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`demonstrative exhibits, and file demonstrative exhibits with the Board, as a
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`separate exhibit, at least three (3) business days prior to the hearing. The
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`parties are reminded that the demonstrative exhibits presented in this case
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`are not evidence and are intended only to assist the parties in presenting their
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`oral argument to the panel. The parties are directed to St. Jude Medical,
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`Cardiology Division, Inc. v. Board of Regents of the University of Michigan,
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`IPR2013-00041, Paper 65 at 2–5 (PTAB Jan. 27, 2014), for guidance
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`regarding the appropriate content of demonstrative exhibits. For any issue
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`regarding the proposed demonstrative exhibits that cannot be resolved after
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`conferring with the opposing party, the parties may file jointly a one-page
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`list of objections at least two (2) business days prior to the hearing. The list
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`should identify with particularity which demonstrative exhibits are subject to
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`objection and include a short statement (no more than one concise sentence)
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`of the reason for each objection. No argument or further explanation is
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`permitted. We will consider the objections and may schedule a conference
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`call, if necessary, to discuss them. Typically, however, we reserve ruling on
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`the objections until the hearing or until a ruling is necessary to resolve the
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`dispute. Any objection to demonstrative exhibits that is not presented timely
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`will be considered waived. Each party also shall provide a hard copy of its
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`demonstrative exhibits to the court reporter at the hearing.
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`The parties are reminded that the presenter must identify clearly and
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`specifically each demonstrative exhibit (e.g., by slide or screen number and
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`3
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`IPR2018-01279
`Patent 7,844,037 B2
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`by content) referenced during the hearing to ensure the clarity and accuracy
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`of the reporter’s transcript. The parties also should note that one or more
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`judges on the panel will be attending electronically and will only have
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`access to the filed copy of the demonstratives provided in advance, as
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`referenced above. If a demonstrative is not made available to the Board in
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`the manner indicated above, that demonstrative may not be available to each
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`of the judges during the hearing and may not be considered. Further, images
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`projected using audio-visual equipment in the hearing room will not be
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`visible to judges participating remotely. Because of limitations on the audio
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`transmission systems in our hearing rooms, the presenter may speak only
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`when standing at the hearing room podium. If the parties have questions as
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`to whether demonstrative exhibits would be sufficiently visible and available
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`to all of the judges, the parties are invited to contact the Board at (571) 272-
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`9797.
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`The Board will provide a court reporter for the hearing, and the
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`reporter’s transcript will constitute the official record of the hearing. The
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`reporter’s transcript will be entered in the record of the proceedings.
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`The Board expects lead counsel for each party to be present in person
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`at the oral hearing. However, any counsel of record may present the party’s
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`argument as long as that counsel is present in person. If either party expects
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`that its lead counsel will not be attending the oral argument, the parties
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`should initiate a joint telephone conference with the Board no later than
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`two (2) business days prior to the oral hearing to discuss the matter.
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`A party may request remote video attendance for one or more of its
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`other attendees to view the hearing from any USPTO location. The
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`available locations include the Rocky Mountain Regional Office in Denver,
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`4
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`IPR2018-01279
`Patent 7,844,037 B2
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`Colorado; the Texas Regional Office in Dallas, Texas; the Elijah J. McCoy
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`Midwest Regional Office in Detroit, Michigan; and the Silicon Valley Office
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`in San Jose, California. To request remote video viewing, a party must send
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`an email message to Trials@uspto.gov ten (10) business days prior to the
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`hearing, indicating the requested location and the number planning to view
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`the hearing from the remote location. The Board will notify the parties if the
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`request for video viewing is granted. Note that it may not be possible to
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`grant the request due to the availability of resources.
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`Any special requests for audio-visual equipment should be directed to
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`Trials@uspto.gov. A party may also indicate any special requests related to
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`appearing at an in-person oral hearing, such as a request to accommodate
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`physical needs that limit mobility or visual or hearing impairments, and
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`indicate how the PTAB may accommodate the special request. Any special
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`requests must be presented in a separate communication not less than
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`five (5) days before the hearing.
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`5
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`IPR2018-01279
`Patent 7,844,037 B2
`
`PETITIONER:
`
`Walter Renner
`axf-ptab@fr.com
`
`Thomas Rozylowicz
`tar@fr.com
`
`Timothy Riffe
`riffe@fr.com
`
`Thad C. Kodish
`tkodish@fr.com
`
`Dan Smith
`dsmith@fr.com
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`6
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`IPR2018-01279
`Patent 7,844,037 B2
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`PATENT OWNER:
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`Brian Oaks
`brian.oaks@bakerbotts.com
`
`Chad Walters
`chad.walters@bakerbotts.com
`
`Charles Yeh
`charlesyyeh@gmail.com
`
`Eliot Williams
`eliot.williams@bakerbotts.com
`
`Joseph Akalski
`joseph.akalski@bakerbotts.com
`
`Jessica Lin
`jessica.lin@bakerbotts.com
`
`Puneet Kohli
`puneet.kohli@bakerbotts.com
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`7
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