Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 1 of 8
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`Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 2 of 8
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`1
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`IN THE UNITED STATES DISTRICT COURT
`IN AND FOR THE DISTRICT OF DELAWARE
`- - -
`
`CIVIL ACTION
`
`NO. 17-148-JFB-SRF
`
`:::::::::::
`
`FRAUNHOFER-GESELLSCHAFT ZUR
`FORDERUNG DER ANGEWANDTEN
`FORSCHUNG E.V.,
`
`Plaintiff,
`
`vs.
`SIRIUS XM RADIO INC.,
`Defendant.
`
`- - -
`Wilmington, Delaware
`Tuesday, August 15, 2017
`10:00 o'clock, a.m.
`- - -
`BEFORE: HONORABLE SHERRY R. FALLON, U.S. MAGISTRATE JUDGE
`- - -
`
`APPEARANCES:
`
`FARNAN LLP
`BY: BRIAN E. FARNAN, ESQ.
`
`-and-
`
`Valerie J. Gunning
`Official Court Reporter
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`Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 3 of 8
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`2
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`APPEARANCES (Continued):
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`IRELL & MANELLA, LLP
`BY: BEN J. YORKS, ESQ.
`(Newport Beach, California)
`
`-and-
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`LOBEL WEILAND GOLDEN FRIEDMAN LLP
`BY: ALAN J. FRIEDMAN, ESQ.
`(Costa Mesa, California)
`
`Counsel for Plaintiff
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`POTTER, ANDERSON & CORROON LLP
`BY: PHILIP ROVNER, ESQ. and
`ALAN SILVERSTEIN, ESQ.
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`-and-
`
`KRAMER LEVIN NAFTALIS & FRANKEL LLP
`BY: JONATHAN S. CAPLAN, ESQ.,
`MARK A. BAGHDASSARIAN, ESQ. and
`PETER ABRUZZESE, ESQ.
`(New York, New York)
`
`Counsel for Defendant
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`Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 4 of 8
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`3
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`P R O C E E D I N G S
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`(Proceedings commenced in the courtroom,
`beginning at 10:00 a.m.)
`
`THE COURT: Good morning, everyone. Please be
`
`seated.
`
`(Counsel respond, "Good morning, your Honor.")
`THE COURT: This is the time set aside in
`Fraunhofer versus Sirius XM.
`Unless the parties have discussed how to
`proceed, my thought was that we would, I would hear oral
`argument on the motion to dismiss first and then deal with
`the protective order. So with that, let's do the
`introductions of counsel and then we'll get started.
`MR. FARNAN: Good morning, your Honor.
`THE COURT: Good morning.
`MR. FARNAN: Brian Farnan on behalf of the
`plaintiff, and with me is Ben Yorks of Irell & Manella and
`Alan Friedman from Lobel Weiland Golden Friedman.
`THE COURT: Very good. Thank you.
`MR. FARNAN: Thank you.
`THE COURT: Sirius?
`MR. ROVNER: Good morning, your Honor.
`Phil Rovner from Potter Anderson on behalf of defendant
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`Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 5 of 8
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`4
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`Sirius XM Radio.
`With me from Kramer Levin, Jonathan Caplan, Brad
`O'Neill, Mark Baghdassarian and Peter Abruzzese.
`With us also is Pat Donnelly, general counsel
`for Sirius XM, and my colleague, Alan Silverstein, in the
`back.
`
`THE COURT: Very good. Welcome, everyone.
`
`Okay.
`
`I have indicated that we'll start with the
`motion to dismiss based on the sublicense defense. So I
`don't know if counsel, if that's acceptable to counsel?
`MR. CAPLAN: That's fine with us, your Honor.
`MR. FRIEDMAN: Sure, that's fine.
`THE COURT: All right. Let's start.
`MR. CAPLAN: Good morning, Honor.
`THE COURT: Good morning.
`MR. CAPLAN: Jonathan Caplan on behalf of Sirius
`XM. If it please the Court, we have a slide deck that goes
`along with the presentation with the argument.
`THE COURT: Very well.
`MR. CAPLAN: We have a hard copy. If we could
`hand that up if you would like to have that?
`THE COURT: You may. Have you shown the
`demonstrative to your opposing counsel?
`MR. CAPLAN: They have a copy, your Honor.
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`Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 6 of 8
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`60
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`the issues with respect -- well, you tell me what that
`eliminates. From my view, it looks like it eliminates for
`right now the issues with respect to paragraph 43, paragraph
`12, and paragraph 40 of the protective order.
`MR. O'NEILL: Your Honor, I think it eliminates
`paragraphs, the issue on 39, 40, 41, 43, 44, 45 and 46. I
`think the only issue remaining is the issue on the
`prosecution bar.
`THE COURT: Prosecution bar. Very well. All
`right. Let's see. Let me hear first from Sirius XM with
`respect to your burden of showing good cause for the
`imposition of a prosecution bar.
`MR. O'NEILL: Sure. Your Honor, just the
`starting point on the prosecution bar, I think both parties
`agree that there should be a prosecution bar, and the
`prosecution bar will prohibit litigation counsel that
`reviews confidential information from serving as counsel
`both in the District Court proceeding and in any post grant
`proceedings, but before the Patent Office where claims may
`be amended. That we have agreement on at this point.
`The dispute centers on whether litigation
`counsel can also serve as counsel for post grant
`proceedings, and they'll end up affecting the scope of the
`claims. And there's a distinction, important distinction
`between simply prohibiting them from amending the claims as
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`Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 7 of 8
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`61
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`opposed to affecting claim scope in those post grant
`proceedings should they come in the Patent Office.
`So we start from the proposition that all sides
`agree that Sirius XM's confidential information should not
`be used to amend claim scope. We believe that same rule
`should apply to affecting claim scope in those same
`proceedings. And the reason that is, your Honor, it's a
`very simple proposition. If an IPR here is brought and
`arguments are made by Fraunhofer's litigation counsel using
`Sirius XM confidential information either to affect the
`claim construction issues in the post grant proceedings or
`to distinguish prior art, those arguments and statements
`made by Fraunhofer become part of the intrinsic record, and
`ultimately, because they become part of the intrinsic record
`of the patents-in-suit here, that can be used ultimately to
`bolster or try to bolster Fraunhofer's positions in claim
`construction during the District Court proceeding, and
`that's exactly the type of thing that could affect claim
`scope.
`
`They could not be amending the claims, I
`understand that. They've already agreed to that and we
`appreciate that, but to do an end around and try to affect
`claim scope to arguments before the Patent Office in post
`grant proceedings, most like an IPR proceeding, that's the
`same exact concern why this Court and many other courts have
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`Case 3:17-cv-05659-WHA Document 117-2 Filed 06/26/18 Page 8 of 8
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`62
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`prohibited the amendment of claim scope. And I understand,
`and I will accept there hasn't been a lot of argument in
`Courts around the country about altering claim scope along
`the lines of what I'm talking about, but the same principle
`applies and that's why we're asking for the broader
`protection.
`
`THE COURT: All right.
`MR. O'NEILL: Ultimately, from our perspective,
`Fraunhofer I think needs to make a choice. If they want
`litigation counsel to review our confidential information,
`they are going to have to have different counsel be involved
`in the post grant proceedings. And I don't think as they've
`charged that we're affecting their choice of counsel.
`Again, there's disagreement about whose burden
`it is and I'm not going to get into that. But ultimately,
`they do need to make a showing that somehow this restriction
`was would somehow prohibit them from having their choice of
`counsel. They have already agreed that that is okay with
`respect to amending claims, and what I'm asking for is the
`same prohibition on affecting claim scope for the reasons
`that I've talked about.
`Thank you.
`THE COURT: All right. Just one housekeeping
`measure before I hear from counsel for the plaintiff.
`Mr. O'Neill, I'm not finding on the docket your
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