Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Date: November 16, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` XILINX, INC. and
`TAIWAN SEMICONDUCTOR MANUFACTURING CO. LTD.,1
`Petitioner,
`v.
`ARBOR GLOBAL STRATEGIES LLC,
`Patent Owner.
`____________
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`____________
`
`Before KARL D. EASTHOM, BARBARA A. BENOIT, and
`SHARON FENICK, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`ORDER2
`Granting Petitioner and Patent Owner Requests for Oral Argument
`35 U.S.C. § 316(a)(10); 37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 Taiwan Semiconductor Manufacturing Co. Ltd. filed a separate petition in
`each of IPR2021-00735, IPR2021-00736, IPR2021-00737, and IPR2021-
`00738. The Board joined them as a party to IPR2020-01567, IPR2020-
`01568, IPR2020-01570, and IPR2020-01571, respectively.
`2 This Order applies to each case. The parties must obtain prior Board
`authorization to employ this heading style and grouping of issues across the
`cases.
`
`
`571-272-7822
`
`Paper 30
`Date: November 16, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
` XILINX, INC. and
`TAIWAN SEMICONDUCTOR MANUFACTURING CO. LTD.,1
`Petitioner,
`v.
`ARBOR GLOBAL STRATEGIES LLC,
`Patent Owner.
`____________
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`____________
`
`Before KARL D. EASTHOM, BARBARA A. BENOIT, and
`SHARON FENICK, Administrative Patent Judges.
`
`BENOIT, Administrative Patent Judge.
`
`ORDER2
`Granting Petitioner and Patent Owner Requests for Oral Argument
`35 U.S.C. § 316(a)(10); 37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 Taiwan Semiconductor Manufacturing Co. Ltd. filed a separate petition in
`each of IPR2021-00735, IPR2021-00736, IPR2021-00737, and IPR2021-
`00738. The Board joined them as a party to IPR2020-01567, IPR2020-
`01568, IPR2020-01570, and IPR2020-01571, respectively.
`2 This Order applies to each case. The parties must obtain prior Board
`authorization to employ this heading style and grouping of issues across the
`cases.
`
`
`
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`
`
`
`The parties request oral argument in all four cases. Paper 28 (Patent
`Owner); Paper 29 (Petitioner).3 The Board grants the requests.
`Date and Time of Hearing
`The Oral Hearing will commence at 9:00 AM EST, on Friday,
`December 3, 2021, by video. See Paper 15 (Amended Scheduling Order).
`The parties request that the argument in all four proceedings be
`consolidated into a single hearing based on the relationship of the patents,
`overlapping prior art references, and substantially similar issues. Paper 29,
`2; Paper 28, 2. Petitioner indicates a “consolidated hearing would minimize
`repetitive argument and lead to an efficient presentation of the evidence and
`argument.” Paper 29, 2. The parties request is reasonable here because the
`four cases overlap to a large extent as outlined by Petitioner and Patent
`Owner. The parties are free to point out any similarities or differences that
`exist.
`The parties must contact the Board at least 10 days before the hearing
`to address any concerns about disclosing confidential information. The
`Board will provide a court reporter for the Oral Hearing, and the reporter’s
`transcript will constitute the official record of the Oral Hearing. Under the
`format contemplated, one transcript will include all four cases and be
`entered into the record of each case. To ensure a clear record, each party
`must specify during the hearing when it intends any statement not to
`
`
`3 The citations refer to Papers filed in IPR2020-01567. The parties filed
`materially the same Papers in all four cases.
`2
`
`
`
`
`
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`
`apply to all four cases, otherwise the Board may assume that any
`statement by a party applies to all four cases.
`No live testimony is permitted at the Oral Hearing unless expressly
`authorized. If either party wishes to present live testimony at the Oral
`Hearing, that party shall meet and confer with the other party, and the parties
`shall jointly request a conference call with the Board to make the request
`within 3 business days from date of this Order.
`During the Oral Hearing, if technical or other difficulties
`fundamentally undermine a party’s ability to adequately represent the party’s
`client, the party should immediately inform the panel and adjustments will
`be made.4
`To facilitate the Oral Hearing, each party must contact PTAB
`Hearings at PTABHearings@uspto.gov not less than 5 business days prior to
`the Oral Hearing date to receive video set-up information. All arrangements
`and the expenses involved with appearing by video, such as the selection of
`the facility to be used 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 Oral Hearing
`will be conducted telephonically.
`Direct any special requests for audio-visual equipment to
`PTABHearings@uspto.gov. A party may indicate any special requests
`related to appearing at a video Oral Hearing, such as a request to
`
`
`4 For example, if a party experiences poor video or audio quality, the Board
`may provide alternate dial-in information.
`3
`
`
`
`
`
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`
`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 not less than 5 days before the Oral
`Hearing.
`If one or both parties prefers to participate in the Oral Hearing by
`telephone, they must notify PTAB Hearings at the above email address not
`less than 5 business days prior to the hearing to receive dial-in connection
`information.
`The Oral Hearing will be open to the public.
`Allotted Argument Time
`Petitioner and Patent Owner “have agreed to request that each side be
`allowed a total of 105 minutes for each side’s combined arguments
`addressing the four patents, with the opportunity to reserve a portion of that
`time for rebuttal.” Paper 29, 2; see Paper 28, 2.
`Based on the similarity and overlap of issues and the parties’ request,
`each party will have a total of 105 minutes to present arguments
`relating to the four cases, for a total hearing time of 3.5 hours. Petitioner
`bears the ultimate burden of proof that the claims at issue in these reviews
`are unpatentable. Therefore, during the Oral Hearing, Petitioner will
`proceed first to present its case on its challenges to patentability. Thereafter,
`Patent Owner will argue its opposition to Petitioner’s case. Then, Petitioner
`may use any reserved time to rebut Patent Owner’s opposition. Absent
`special circumstances, Petitioner may use no more than half of its total
`allotted time. Finally, Patent Owner may request a brief sur-rebuttal.
`
`
`
`4
`
`
`
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`
`
`Request for Pre-hearing Conference
`Either party may request a pre-hearing conference to occur no later
`than 3 business days before the Oral Hearing. Such a pre-hearing
`conference affords the parties the opportunity to preview (but not argue)
`issues to be discussed at the Oral Hearing, and to seek the panel’s guidance
`as to particular issues that the panel would like the parties to address at the
`Oral Hearing. The parties may also discuss any unresolved issues with
`demonstrative exhibits or other issues. The Board may rule on objections
`and disputed exhibits during or after the pre-hearing conference or Oral
`Hearing.
`Prior to requesting a pre-hearing conference, the parties should meet
`and confer and, when possible, send a joint request to the Board with an
`agreed upon set of limited issues for discussion. A request for a pre-hearing
`conference may be made by e-mail and shall include a list of issues to be
`discussed, including but not limited to, identification of a limited number of
`objections for early resolution.
`Demonstrative Exhibits
`Demonstratives must be served 7 business days before the Oral
`Hearing. 37 C.F.R. § 42.70(b). Each set of demonstratives must be filed as
`an exhibit at the Board no later than 5 business days before the Oral Hearing.
`The panel will access electronic copies of the demonstratives prior to and
`during the Oral Hearing.
`Demonstratives constitute Oral Hearing aids and not evidence. Each
`slide must be marked with the words “DEMONSTRATIVE EXHIBIT –
`NOT EVIDENCE” in a footer. Demonstrative exhibits also must cite to the
`5
`
`
`
`
`
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`
`record. 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) (The “Board was
`obligated to dismiss [petitioner’s] untimely argument . . . raised for the first
`time during oral argument.”).
`The parties must attempt to resolve any objections to demonstratives
`by conferring prior to submitting the exhibits to the Board. Objections to
`demonstratives should be carefully considered and framed as the Board has
`found that such objections are unhelpful in many cases. Any unresolved
`issue regarding demonstrative exhibits should be addressed during a pre-
`hearing conference. Any objection to demonstrative exhibits not presented
`at least 2 business days before the Oral Hearing will be considered waived.
`See St. Jude Medical, Cardiology Division, Inc. v. Board of Regents of the
`University of Michigan, Case IPR2013-00041, Paper 65 at 2–5 (PTAB Jan.
`27, 2014) (Order) (guidance regarding the appropriate content of
`demonstrative exhibits).
`Each member of the panel will be attending the hearing by video from
`separate remote locations. The panel will have access to all papers filed
`with the Board, including the demonstrative exhibits. During the Oral
`Hearing, the parties must identify clearly and specifically each
`demonstrative referenced (e.g., by slide or screen number) to ensure the
`clarity and accuracy of the court reporter’s transcript and the record. In
`addition, speakers must identify themselves each time a party begins its
`argument or otherwise begins to address the panel. The remote nature of
`oral hearings sometimes results in an audio lag, so a speaker should pause
`6
`
`
`
`
`
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`
`prior to speaking to avoid speaking over others. Unmute the microphone
`only when speaking.
`Attendance of Counsel
`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
`argument.
`
`ORDER
`Accordingly, it is ORDERED that the Oral Hearing shall commence
`at 9:00 AM EST, on Friday, December 3, 2021, by video.
`
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`
`
`7
`
`
`
`IPR2020-01567, Patent 7,126,214 B2
`IPR2020-01568, Patent 7,282,951 B2
`IPR2020-01570, Patent RE42,035 E
`IPR2020-01571, Patent 6,781,226 B2
`
`For PETITIONER:
`
`David M. Hoffman
`Kenneth W. Darby Jr.
`Jeffrey Shneidman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`k.darby@fr.com
`shneidman@fr.com
`ptabinbound@fr.com
`
`James Glass
`Ziyong Li
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`jimglass@quinnemanuel.com
`seanli@quinnemanuel.com
`
`
`For PATENT OWNER:
`
`Jonathan S. Caplan
`James Hannah
`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`jcaplan@kramerlevin.com
`jhannah@kramerlevin.com
`jprice@kramerlevin.com
`
`
`
`
`
`8
`
`
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