`571-272-7822
`
`Paper 43
`Date: November 8, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC.,
`ZTE (USA) INC.,
`AND
`ZTE CORPORATION,
`Petitioner,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`
`
`
`
`
`
`
`
`
`Before TERRENCE W. MCMILLIN, AMANDA F. WIEKER,
`MONICA S. ULLAGADDI, and RUSSELL E. CASS,
`Administrative Patent Judges.1
`
`WIEKER, Administrative Patent Judge.
`
`
`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
`
`
`
`
`1 This is not an expanded panel. A three-judge panel is assigned to each
`proceeding. The parties are not authorized to use this caption.
`
`
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`A. Time and Format
`
`ORAL ARGUMENT
`
`Pursuant to Petitioner’s and Patent Owner’s requests (see, e.g.,
`
`IPR2020-01162,2 Papers 39, 40), oral argument will commence at 1:00 pm
`
`Eastern Time on December 15, 2021, by videoconference. The Board will
`
`provide a court reporter for the hearing, and the reporter’s transcript will
`
`constitute the official record of the hearing.
`
`Each of Petitioner’s requests seek a combined hearing for all
`
`captioned proceedings, with each party allocated ninety (90) minutes of time
`
`to present arguments. IPR2020-01162, Paper 40, 2. Patent Owner’s
`
`requests also seek a combined hearing for all captioned proceedings, with
`
`each party allocated sixty (60) minutes of time to present arguments.
`
`IPR2020-01162, Paper 39, 2–3.
`
`Upon considering these requests, we will conduct a combined hearing
`
`for all captioned proceedings, with each party granted a total of ninety (90)
`
`minutes to present argument addressing all six captioned proceedings.
`
`However, the hearing will proceed in two segments, to accommodate the
`
`different panels for these proceedings. Namely, the hearing will proceed
`
`first with respect to IPR2020-01158, IPR2020-01159, IPR2020-01160, and
`
`IPR2020-01161, with Administrative Judges Wieker, Ullagaddi, and Cass
`
`
`2 Similar papers appear in each captioned proceeding.
`
`2
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`presiding.3 Sixty (60) minutes is allocated for arguments directed to these
`
`four proceedings. Then, after a short break, the hearing will proceed with
`
`respect to IPR2020-01157 and IPR2020-01162, with Administrative Judges
`
`McMillin, Wieker, and Cass presiding. Thirty (30) minutes is allocated for
`
`arguments directed to these two proceedings.4
`
`In each segment of the hearing, Petitioner will open by presenting its
`
`case regarding the challenged claims for which the Board instituted trial, and
`
`Patent Owner’s proposed substitute claims. Thereafter, Patent Owner will
`
`respond to Petitioner’s argument. Petitioner may reserve rebuttal time to
`
`respond to arguments presented by Patent Owner. In accordance with the
`
`Consolidated Trial Practice Guide (“CTPG”), issued in November 2019,
`
`Patent Owner may request to reserve time for a brief sur rebuttal. See CTPG
`
`83. Given the overlap in these proceedings, statements made during the
`
`hearing are applicable to all captioned proceedings, unless it is explicitly
`
`noted that a statement applies to a specific proceeding only.
`
`The parties may request a pre hearing conference in advance of the
`
`hearing. See id. at 82. “The purpose of the pre hearing conference is to
`
`afford the parties the opportunity to preview (but not argue) the issues to be
`
`discussed at the oral hearing, and to seek the Board’s guidance as to
`
`
`3 Administrative Patent Judge McMillin will observe this segment of the
`hearing, but is not a member of the panel in IPR2020-01158, IPR2020-
`01159, IPR2020-01160, or IPR2020-01161.
`4 Administrative Patent Judge Ullagaddi will observe this segment of the
`hearing, but is not a member of the panel in IPR2020-01157 or IPR2020-
`01162.
`
`3
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`particular issues that the panel would like addressed by the parties.” Id. If
`
`either party desires a pre hearing conference, the parties should jointly
`
`contact the Board at Trials@uspto.gov at least seven (7) business days
`
`before the hearing date to request a conference call for that purpose.
`
`B. Demonstratives
`
`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
`
`opposing counsel at least seven (7) business days before the hearing date and
`
`filed no later than December 10, 2021.
`
`Demonstratives are not a mechanism for making new arguments.
`
`Demonstratives are also not evidence, and will not be relied upon as
`
`evidence. Rather, demonstratives are visual aids to a party’s oral
`
`presentation regarding arguments and evidence previously presented and
`
`discussed in the papers. Accordingly, demonstratives shall be clearly
`
`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
`
`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
`
`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
`
`regulations to dismiss untimely argument “raised for the first time during
`
`oral argument”). “[N]o new evidence may be presented at the oral
`
`argument.” CTPG 85–86; see also St. Jude Med., Cardiology Div., Inc. v.
`
`The Bd. of Regents of the Univ. of Mich., IPR2013 00041, Paper 65, 2–3
`
`(PTAB Jan. 27, 2014) (explaining that “new” evidence includes evidence
`
`already of record but not previously discussed in any paper of record).
`
`Furthermore, because of the strict prohibition against the presentation
`
`of new evidence or arguments at a hearing, it is strongly recommended that
`
`4
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`each demonstrative includes a citation to a paper in the record, which allows
`
`the Board to easily ascertain whether a given demonstrative contains “new”
`
`argument or evidence or, instead, contains only that which is developed in
`
`the existing record.
`
`Due to the nature of the Board’s consideration of demonstratives and
`
`the opportunity afforded for the parties to reach an agreement without
`
`involving the Board, the Board does not anticipate that objections to
`
`demonstratives are likely to be sustained. Nevertheless, to the extent that a
`
`party objects to the propriety of any demonstrative, the parties shall meet
`
`and confer in good faith to resolve any objections to demonstratives prior to
`
`filing the objections with the Board. If such objections cannot be resolved,
`
`the parties may file any objections to demonstratives with the Board no later
`
`than the time of the hearing. The objections shall identify with particularity
`
`which portions of the demonstratives are subject to objection and include a
`
`one (1) sentence statement of the reason for each objection. No argument or
`
`further explanation is permitted. The Board will consider any objections,
`
`and may reserve ruling on the objections.5 Any objection to demonstratives
`
`that is not timely presented will be considered waived.
`
`Finally, the parties are reminded that each presenter should identify
`
`clearly and specifically each paper (e.g., by slide or screen number for a
`
`demonstrative) referenced during the hearing to ensure the clarity and
`
`
`5 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
`
`5
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`accuracy of the court reporter’s transcript and for the benefit of all
`
`participants appearing electronically.
`
`C. Presenting Counsel
`
`The Board generally expects lead counsel for each party to be present
`
`at the hearing. See CTPG 11. Any counsel of record may present the
`
`party’s argument as long as that counsel is present by video.
`
`D. Video Hearing Details6
`
`To facilitate planning, each party must contact the Board at
`
`PTABHearings@uspto.gov at least five (5) business days prior to the
`
`hearing date to receive video set up information. As a reminder, all
`
`arrangements and the expenses involved with appearing by video, such as
`
`the selection of the facility from which a party will attend by video, must be
`
`borne by that party. If a video connection cannot be established, the parties
`
`will be provided with dial in connection information, and the hearing will be
`
`conducted telephonically.
`
`If one or both parties would prefer to participate in the hearing
`
`telephonically, they must contact the Board at PTABHearings@uspto.gov at
`
`least five (5) business days prior to the hearing date to receive dial in
`
`connection information.
`
`
`6 USPTO facilities remain closed to the public. If and when conditions
`allow in-person hearing attendance, the parties will be notified and will be
`permitted to submit a joint request to convert the current video hearing to an
`in-person hearing. The requests will be considered on a case-by-case basis,
`and subject to resource availability.
`
`6
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`
`Counsel should unmute only when speaking. The panel will have
`
`access to all papers filed with the Board, including demonstratives. During
`
`the hearing, the parties are reminded to identify clearly and specifically each
`
`paper referenced (e.g., by slide or screen number for a demonstrative) to
`
`ensure the clarity and accuracy of the court reporter’s transcript and for the
`
`benefit of all participants appearing electronically. In addition, the parties
`
`are advised to identify themselves each time they speak. Furthermore, the
`
`remote nature of the hearing may also result in an audio lag, and thus the
`
`parties are advised to observe a pause prior to speaking, so as to avoid
`
`speaking over others.
`
`If at any time during the hearing, counsel encounters technical or
`
`other difficulties that fundamentally undermine counsel’s ability to
`
`adequately represent its client, please let the panel know immediately, and
`
`adjustments will be made.
`
`E. Remote Attendance Requests
`
`Members of the public may request to listen to this hearing. If
`
`resources are available, the Board generally expects to grant such requests.
`
`If either party objects to the Board granting such requests, for example,
`
`because confidential information may be discussed, the party must notify the
`
`Board at PTABHearings@uspto.gov at least ten (10) business days prior to
`
`the hearing date.
`
`F. Audio / Visual Equipment Requests
`
`Any special requests for audio visual equipment should be directed to
`
`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`7
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`related to appearing at a video hearing, such as a request to accommodate
`
`visual or hearing impairments, and indicate how the PTAB may
`
`accommodate the special request. Any special requests must be presented in
`
`a separate communication at least five (5) business days before the hearing
`
`date.
`
`G. Legal Experience and Advancement Program (LEAP)
`
`The Board has established the “Legal Experience and Advancement
`
`Program,” or “LEAP,” to encourage advocates with less legal experience to
`
`argue before the Board to develop their skills. The Board defines a LEAP
`
`practitioner as a patent agent or attorney having three (3) or fewer
`
`substantive oral arguments in any federal tribunal, including PTAB, and
`
`seven (7) or fewer years of experience as a licensed attorney or agent. 7
`
`The parties are encouraged to participate in the Board’s LEAP
`
`program. Either party may request that a qualifying LEAP practitioner
`
`participate in the program and conduct at least a portion of the party’s oral
`
`argument. The Board will grant up to fifteen (15) minutes of additional
`
`argument time to that party, depending on the length of the proceeding and
`
`the PTAB’s hearing schedule. A party should submit a request, no later than
`
`
`7 Whether an argument is “substantive” for purposes of determining whether
`an advocate qualifies as a LEAP practitioner will be made on a case-by-case
`basis with considerations to include, for example, the amount of time that
`the practitioner argued, the circumstances of the argument, and whether the
`argument concerned the merits or ancillary issues.
`
`8
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`at least five (5) business days before the oral hearing, by email to the Board
`
`at PTABHearings@uspto.gov.8
`
`The LEAP practitioner may conduct the entire oral argument or may
`
`share time with other counsel, provided that the LEAP practitioner is offered
`
`a meaningful and substantive opportunity to argue before the Board. The
`
`party has the discretion as to the type and quantity of oral argument that will
`
`be conducted by the LEAP practitioner.9 Moreover, whether the LEAP
`
`practitioner conducts the argument in whole or in part, the Board will permit
`
`more experienced counsel to provide some assistance to the LEAP
`
`practitioner, if necessary, during oral argument, and to clarify any statements
`
`on the record before the conclusion of the oral argument. Importantly, the
`
`Board does not draw any inference about the importance of a particular issue
`
`or issues, or the merits of the party’s arguments regarding that issue, from
`
`the party’s decision to have (or not to have) a LEAP practitioner argue.
`
`In instances where an advocate does not meet the LEAP eligibility
`
`requirements, either due to the years of experience as a licensed
`
`attorney/patent agent or the number of “substantive” oral hearing arguments,
`
`
`8 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available on the LEAP website, www.uspto.gov/leap.
`9 Examples of the issues that a LEAP practitioner may argue include claim
`construction argument(s), motion(s) to exclude evidence, or patentability
`argument(s) including, e.g., analyses of prior art or objective indicia of non-
`obviousness.
`
`9
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`but nonetheless has a basis for considering themselves to be in the category
`
`of advocates that this program is intended to assist, the Board encourages
`
`argument by such advocates during oral hearings. Even though additional
`
`argument time will not be provided when the advocate does not qualify for
`
`LEAP, a party may share argument time among counsel and the Board will
`
`permit the more experienced counsel to provide some assistance, if
`
`necessary, during oral argument, and to clarify any statements on the record
`
`before the conclusion of the oral argument.
`
`All practitioners appearing before the Board shall demonstrate the
`
`highest professional standards. All practitioners are expected to have a
`
`command of the factual record, the applicable law, and Board procedures, as
`
`well as the authority to commit the party they represent.
`
`
`
`Accordingly, it is:
`
`ORDER
`
`ORDERED that oral argument for this proceeding shall commence at
`
`1:00 pm Eastern Time on December 15, 2021, by videoconference, and
`
`proceed in the manner set forth herein.
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`IPR2020-01157 (Patent 7,274,933 B2)
`IPR2020-01158 (Patent 7,460,868 B2)
`IPR2020-01159 (Patent 7,596,375 B2)
`IPR2020-01160 (Patent 8,275,374 B2)
`IPR2020-01161 (Patent 8,472,955 B2)
`IPR2020-01162 (Patent 8,948,756 B2)
`
`PETITIONER:
`
`Brian Buroker
`Paul Torchia
`Nathan R. Curtis
`GIBSON, DUNN & CRUTCHER LLP
`bburoker@gibsondunn.com
`ptorchia@gibsondunn.com
`ncurtis@gibsondunn.com
`
`John R. Hutchins
`C. Andy Mu
`Wesley W. Jones
`BANNER & WITCOFF, LTD.
`jhutchins@bannerwitcoff.com
`amu@bannerwitcoff.com
`wjones@bannerwitcoff.com
`
`
`PATENT OWNER:
`
`Timothy Devlin
`Neil Benchell
`Stephanie Berger
`DEVLIN LAW FIRM LLC
`td-ptab@devlinlawfirm.com
`nbenchell@devlinlawfirm.com
`sberger@devlinlawfirm.com
`
`11
`
`