`Tel: 571-272-7822
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`Paper 29
`Date: January 4, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`GOOGLE LLC,
`Petitioner,
`
`v.
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`ECOFACTOR, INC.,
`Patent Owner.
`____________
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`IPR2021-00054
`Patent 10,534,382 B2
`____________
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`
`
`Before WESLEY B. DERRICK, JEFFREY W. ABRAHAM, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
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`
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`ORDER
`Setting Oral Argument
`37 C.F.R. § 42.70
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`IPR2021-00054
`Patent 10,534,382 B2
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`A. Time and Format
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`I. ORAL ARGUMENT
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`Oral arguments will commence at 2:00 pm Eastern Time on
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`February 8, 2022, by video.1 The Board will provide a court reporter for
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`the hearing, and the reporter’s transcript will constitute the official record of
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`the hearing.
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`Petitioner will have a total of sixty (60) minutes to present argument
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`in this case and Patent Owner will have a total of sixty (60) minutes to
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`respond. Petitioner will open the hearing by presenting its case regarding
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`the challenged claims for which the Board instituted trial. Thereafter, Patent
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`Owner will respond to Petitioner’s argument. Petitioner may reserve
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`rebuttal time to respond to arguments presented by Patent Owner. In
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`accordance with the Consolidated Trial Practice Guide2 (“CTPG”), issued in
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`November 2019, Patent Owner may request to reserve time for a brief sur-
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`rebuttal. See CTPG 83.
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`The parties may request a pre-hearing conference in advance of the
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`hearing. See id. at 82. “The purpose of the pre-hearing conference is to
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`afford the parties the opportunity to preview (but not argue) the issues to be
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`discussed at the oral hearing, and to seek the Board’s guidance as to
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`particular issues that the panel would like addressed by the parties.” Id. If
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`either party desires a pre-hearing conference, the parties should jointly
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`1 If there are any concerns about disclosing confidential information, the
`parties must contact the Board at Trials@uspto.gov at least ten (10) business
`days before the hearing date.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`2
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`IPR2021-00054
`Patent 10,534,382 B2
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`contact the Board at Trials@uspto.gov at least seven (7) business days
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`before the hearing date to request a conference call for that purpose.
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`B. Demonstratives
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`As set forth in 37 C.F.R. § 42.70(b), demonstratives shall be served on
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`opposing counsel at least seven (7) business days before the hearing date and
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`filed as an exhibit no later than February 3, 2022.3
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`Demonstratives are not a mechanism for making new arguments.
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`Demonstratives also are not evidence, and will not be relied upon as
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`evidence. Rather, demonstratives are visual aids to a party’s oral
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`presentation regarding arguments and evidence previously presented and
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`discussed in the papers. Accordingly, demonstratives shall be clearly
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`marked with the words “DEMONSTRATIVE EXHIBIT – NOT
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`EVIDENCE” in the footer. See Dell Inc. v. Acceleron, LLC, 884 F.3d 1364,
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`1369 (Fed. Cir. 2018) (holding that the Board is obligated under its own
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`regulations to dismiss untimely argument “raised for the first time during
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`oral argument”). “[N]o new evidence may be presented at the oral
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`argument.” CTPG 85–86; see also St. Jude Med., Cardiology Div., Inc. v.
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`The Bd. of Regents of the Univ. of Mich., IPR2013-00041, Paper 65 at 2–3
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`(PTAB Jan. 27, 2014) (explaining that “new” evidence includes evidence
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`already of record but not previously discussed in any paper of record).
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`Furthermore, because of the strict prohibition against the presentation
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`of new evidence or arguments at a hearing, it is strongly recommended that
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`each demonstrative include a citation to a paper in the record, which allows
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`3 The parties may request that the Board modify the schedule for filing and
`serving demonstratives at least seven (7) business days before the hearing
`date.
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`3
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`IPR2021-00054
`Patent 10,534,382 B2
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`the Board to easily ascertain whether a given demonstrative contains “new”
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`argument or evidence or, instead, contains only that which is developed in
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`the existing record.
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`Due to the nature of the Board’s consideration of demonstratives and
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`the opportunity afforded for the parties to reach an agreement without
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`involving the Board, the Board does not anticipate that objections to
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`demonstratives are likely to be sustained. Nevertheless, to the extent that a
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`party objects to the propriety of any demonstrative, the parties shall meet
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`and confer in good faith to resolve any objections to demonstratives prior to
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`filing the objections with the Board. If such objections cannot be resolved,
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`the parties may file any objections to demonstratives with the Board no later
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`than the time of the hearing. The objections shall identify with particularity
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`which portions of the demonstratives are subject to objection (and should
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`include a copy of the objected-to portions) and include a one (1) sentence
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`statement of the reason for each objection. No argument or further
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`explanation is permitted. The Board will consider any objections, and may
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`reserve ruling on the objections.4 Any objection to demonstratives that is
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`not timely presented will be considered waived.
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`Finally, the parties are reminded that each presenter should identify
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`clearly and specifically each paper (e.g., by slide or screen number for a
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`demonstrative) referenced during the hearing to ensure the clarity and
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`accuracy of the court reporter’s transcript and for the benefit of all
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`participants appearing electronically.
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`4 If time permits, the Board may schedule a conference call with the parties
`to discuss any filed objections.
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`4
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`IPR2021-00054
`Patent 10,534,382 B2
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`C. Presenting Counsel
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`The Board generally expects lead counsel for each party to be present
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`at the hearing. See CTPG 11. Any counsel of record may present the
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`party’s argument as long as that counsel is present by video.
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`D. Video Hearing Details5
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`To facilitate planning, each party must contact the Board at
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`PTABHearings@uspto.gov at least five (5) business days prior to the
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`hearing date to receive video set-up information. As a reminder, all
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`arrangements and the expenses involved with appearing by video, such as
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`the selection of the facility 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 hearing will be
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`conducted telephonically.
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`If one or both parties would prefer to participate in the hearing
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`telephonically, they must contact the Board at PTABHearings@uspto.gov at
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`least five (5) business days prior to the hearing date to receive dial-in
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`connection information.
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`Counsel should unmute only when speaking. The panel will have
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`access to all papers filed with the Board, including demonstratives. During
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`the hearing, the parties are reminded to identify clearly and specifically each
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`paper referenced (e.g., by slide or screen number for a demonstrative) to
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`5 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.
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`5
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`IPR2021-00054
`Patent 10,534,382 B2
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`ensure the clarity and accuracy of the court reporter’s transcript and for the
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`benefit of all participants appearing electronically. In addition, the parties
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`are advised to identify themselves each time they speak. Furthermore, the
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`remote nature of the hearing may also result in an audio lag, and thus the
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`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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`If at any time during the hearing, counsel encounters technical or
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`other difficulties that fundamentally undermine counsel’s ability to
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`adequately represent its client, please let the panel know immediately, and
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`adjustments will be made.6
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`E. Remote Attendance Requests
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`Members of the public may request to listen to this 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 at PTABHearings@uspto.gov at least ten (10) business days prior to
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`the hearing date.
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`F. Audio/Visual Equipment Requests
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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
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`related to appearing at a video hearing, such as a request to accommodate
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`visual or hearing impairments, and indicate how the PTAB may
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`accommodate the special request. Any special requests must be presented in
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`6 For example, if a party is experiencing poor video quality, the Board may
`provide alternate dial-in information.
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`6
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`IPR2021-00054
`Patent 10,534,382 B2
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`a separate communication at least five (5) business days before the hearing
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`date.
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`G. Legal Experience and Advancement Program
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`The Board has established the “Legal Experience and Advancement
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`Program,” or “LEAP,” to encourage advocates with less legal experience to
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`argue before the Board to develop their skills. The Board defines a LEAP
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`practitioner as a patent agent or attorney having three (3) or fewer
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`substantive oral arguments in any federal tribunal, including PTAB. 7
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`The parties are encouraged to participate in the Board’s LEAP
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`program. Either party may request that a qualifying LEAP practitioner
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`participate in the program and conduct at least a portion of the party’s oral
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`argument. The Board will grant up to fifteen (15) minutes of additional
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`argument time to that party, depending on the length of the proceeding and
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`the PTAB’s hearing schedule. A party should submit a request, no later than
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`at least five (5) business days before the oral hearing, by email to the Board
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`at PTABHearings@uspto.gov.8
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`The LEAP practitioner may conduct the entire oral argument or may
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`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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`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 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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`7
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`IPR2021-00054
`Patent 10,534,382 B2
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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.9 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, due to 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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`argument time will not be provided when the advocate does not qualify for
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`LEAP, a party may share argument time among counsel and the Board will
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`permit the more experienced counsel to provide some assistance, if
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`necessary, during oral argument, and to clarify any statements on the record
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`before the conclusion of the oral argument.
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`All practitioners appearing before the Board shall demonstrate the
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`highest professional standards. All practitioners are expected to have a
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`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.
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`8
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`IPR2021-00054
`Patent 10,534,382 B2
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`command of the factual record, the applicable law, and Board procedures, as
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`well as the authority to commit the party they represent.
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`II. ORDER
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`Accordingly, it is
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`ORDERED that oral argument for this proceeding shall commence at
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`2:00 pm Eastern Time on February 8, 2022, by video, and proceed in the
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`manner set forth herein.
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`9
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`IPR2021-00054
`Patent 10,534,382 B2
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`PETITIONER:
`
`Matthew A. Smith
`Andrew S. Baluch
`Elizabeth Laughton
`SMITH BALUCH LLP
`smith@smithbaluch.com
`baluch@smithbaluch.com
`laughton@smithbaluch.com
`
`Rudolph Telscher
`Daisy Manning
`HUSCH BLACKWELL LLP
`ptab-rtelscher@huschblackwell.com
`ptab-dmanning@huschblackwell.com
`
`
`PATENT OWNER:
`
`Philip X. Wang
`Reza Mirzaie
`Kristopher Davis
`RUSS AUGUST & KABAT
`pwang@raklaw.com
`rmirzaie@raklaw.com
`kdavis@raklaw.com
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`10
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