Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 23
`Date: October 1, 2021
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LENOVA HOLDING COMPANY, INC., LENOVA (UNITED STATES)
`INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTERDIGITAL TECHNOLOGY CORPORATION,
`Patent Owner.
`
`
`IPR2020-01413
`Patent 8,199,726 B2
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 23
`Date: October 1, 2021
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LENOVA HOLDING COMPANY, INC., LENOVA (UNITED STATES)
`INC., and MOTOROLA MOBILITY LLC,
`Petitioner,
`
`v.
`
`INTERDIGITAL TECHNOLOGY CORPORATION,
`Patent Owner.
`
`
`IPR2020-01413
`Patent 8,199,726 B2
`
`
`
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Oral Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`IPR2020-01413
`Patent 8,199,726 B2
`
`
`Petitioner and Patent Owner have each filed requests for an oral
`
`hearing in the above captioned proceeding, pursuant to 37 C.F.R. § 42.70.
`
`Papers 21, 22. The requests for an oral hearing are granted according to the
`
`terms set forth in this Order.
`
`
`
`The oral hearing will commence at 1:00 PM Eastern Time on
`
`November 3, 2021, by video. The parties are directed to contact the Board
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`at least ten (10) days in advance of the hearing if there are any concerns
`
`about disclosing confidential information. The Board will provide a court
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`reporter for the hearing, and the reporter’s transcript will constitute the
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`official record of the hearing.
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`If at any time during the proceeding, you encounter technical or other
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`difficulties that fundamentally undermine your ability to adequately
`
`represent your client, please let the panel know immediately, and
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`adjustments will be made.1
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`To facilitate planning, each party must contact PTAB Hearings at
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`PTABHearings@uspto.gov five (5) business days prior to the oral hearing
`
`date to receive video set-up information. As a reminder, all arrangements
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`and the expenses involved with appearing by video, such as the selection of
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`the facility to be used from which a party will attend by video, must be
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`borne by that party. If a video connection cannot be established, the parties
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`will be provided with dial-in connection information, and the oral hearing
`
`will be conducted telephonically.
`
`If one or both parties would prefer to participate in the oral hearing
`
`telephonically, they should notify PTAB Hearings at the above email
`
`
`1 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
`
`2
`
`
`
`IPR2020-01413
`Patent 8,199,726 B2
`
`address five (5) business days prior to the hearing to receive dial-in
`
`connection information.
`
`
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`Each party will have sixty (60) minutes of total time to present
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`arguments. Petitioner will proceed first to present its case with regard to the
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`challenged claims and grounds set forth in the Petition. Thereafter, Patent
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`Owner may respond to Petitioner’s case. Petitioner may use any of its
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`remaining time for rebuttal regarding Patent Owner’s arguments regarding
`
`the challenged claims. And, thereafter, Patent Owner may use any of its
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`remaining time for sur-rebuttal, to respond to Petitioner’s rebuttal
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`arguments. The parties are reminded that arguments made during rebuttal
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`and sur-rebuttal periods must be responsive to arguments the opposing party
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`made in its immediately preceding presentation.
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`
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`At least seven (7) business days prior to the hearing, each party shall
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`serve on the other party any demonstrative exhibit(s) it intends to use during
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`the hearing. See 37 C.F.R. § 42.70(b). At least five (5) business days prior
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`to the hearing, the parties shall file any demonstrative exhibits in this case.
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`
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`Demonstrative exhibits used at the oral hearing are aids to oral
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`argument and not evidence. The Board expects the parties will meet and
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`confer in good faith to resolve any objections to demonstrative exhibits. For
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`any issue that cannot be resolved after conferring with the opposing party,
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`the parties may email jointly to Trials@uspto.gov a one-page list of
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`objections at least five (5) business days prior to the hearing. The list should
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`identify with particularity which demonstrative exhibits are subject to
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`objection and include a short statement (no more than one short sentence) of
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`the reason for each objection. No argument or further explanation is
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`permitted.
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`3
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`
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`IPR2020-01413
`Patent 8,199,726 B2
`
`
`We will consider the objections and schedule a conference call, if
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`necessary. Otherwise, we will reserve ruling on the objections until the
`
`hearing or after the hearing. Any objection to demonstrative exhibits that is
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`not presented timely will be considered waived.
`
`The Board generally expects lead counsel for each party to be present
`
`by video at the oral hearing. Any counsel of record may present the party’s
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`argument as long as that counsel is present by video.
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`The Board has established the “Legal Experience and Advancement
`
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`
`their skills and to aid in succession planning for the next generation. The
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`Board defines a LEAP practitioner as a patent agent or attorney having
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`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.2
`
`Parties are encouraged to participate in the Board’s LEAP program.
`
`Either party may request that a LEAP practitioner participate in the program
`
`and conduct at least a portion of the party’s oral argument. In exchange, the
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`Board will grant up to fifteen (15) minutes of additional argument time to
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`that party, depending on the length of the proceeding and the PTAB’s
`
`hearing schedule. A party should submit a request no later than at least
`
`
`2 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.
`
`4
`
`
`
`IPR2020-01413
`Patent 8,199,726 B2
`
`five (5) business days before the hearing, by email to the Board at
`
`PTABHearings@uspto.gov.3
`
`A LEAP practitioner may conduct the entire oral argument or may
`
`share time with other counsel, provided that the LEAP practitioner is offered
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`a meaningful and substantive opportunity to argue before the Board. The
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`party has the discretion as to the type and quantity of oral argument that will
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`be conducted by the LEAP practitioner.4 Moreover, whether the LEAP
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`practitioner conducts the argument in whole or in part, the Board will permit
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`more experienced counsel to provide some assistance to the LEAP
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`practitioner, if necessary, during oral argument, and to clarify any statements
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`on the record before the conclusion of the oral argument. Importantly, the
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`Board does not draw any inference about the importance of a particular issue
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`or issues, or the merits of the party’s arguments regarding that issue, from
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`the party’s decision to have (or not to have) a LEAP practitioner argue.
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`In instances where an advocate does not meet the LEAP eligibility
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`requirements, either due to the years of experience as a licensed
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`attorney/patent agent or the number of “substantive” oral hearing arguments,
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`but nonetheless has a basis for considering themselves to be in the category
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`of advocates that this program is intended to assist, the Board encourages
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`argument by such advocates during oral hearings. Even though additional
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`3 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.
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`4 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.
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`5
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`
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`IPR2020-01413
`Patent 8,199,726 B2
`
`argument time will not be provided in such circumstances, as with LEAP, a
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`party may request to share time with counsel and the Board will permit more
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`experienced counsel to provide some assistance, if necessary, during oral
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`argument, and to clarify any statements on the record before the conclusion
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`of the oral argument.
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`As always, all practitioners appearing before the Board shall
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`demonstrate the highest professional standards. All practitioners are
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`expected to have a command of the factual record, the applicable law, and
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`Board procedures, as well as the authority to commit the party they
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`represent. The Board discerns that it is often LEAP practitioners who have
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`the best understanding of the facts of the case and the evidence of record,
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`and the Board encourages their participation.5
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`Any special requests for audio-visual equipment should be directed to
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`PTABHearings@uspto.gov. A party may also indicate any special requests
`
`related to appearing at a video oral hearing, such as a request to
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`accommodate visual or hearing impairments, and indicate how the PTAB
`
`may accommodate the special request. Any special requests must be
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`presented in a separate communication not less than five (5) days before the
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`hearing.
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`The panel will have access to all papers filed with the Board,
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`including demonstratives. During the oral hearing, the parties are advised to
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`unmute yourself only when speaking, and identify clearly and specifically
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`each demonstrative referenced (e.g., by slide or screen number) to ensure the
`
`
`5 The Board encourages the participation of LEAP practitioners throughout
`this proceeding, including in Board conference calls, pre-hearing
`conferences, and depositions.
`
`
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`6
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`
`
`IPR2020-01413
`Patent 8,199,726 B2
`
`clarity and accuracy of the court reporter’s transcript. In addition, the parties
`
`are advised to identify themselves each time they speak. Furthermore, the
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`remote nature of the oral hearing may also result in an audio lag, and so the
`
`parties are advised to observe a pause prior to speaking, so as to avoid
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`speaking over others.
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`
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`Members of the public may request to listen in on this oral hearing. If
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`resources are available, the Board generally expects to grant such requests.
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`If either party objects to the Board granting such requests, for example,
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`because confidential information may be discussed, the party must notify the
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`Board by contacting PTABHearings@uspto.gov at least ten (10) business
`
`days prior to the oral hearing date.
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`It is
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`ORDERED that oral argument will commence at 1:00 PM Eastern
`
`Time on November 3, 2021.
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`
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`7
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`IPR2020-01413
`Patent 8,199,726 B2
`
`For PETITIONER:
`
`Joseph Micallef
`Scott Border
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`sborder@sidley.com
`
`
`For PATENT OWNER:
`
`Michael Rosato
`Matthew A. Argenti
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`
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`8
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