Case CBM2012-00005
`Patent 6,675,151
`Attorney Docket No. FPT-L6
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
`v.
`Patent of FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`______________
`Case CBM2012-00005
`Patent 6,675,151
`_____________
`
`
`
`
`
`
`
`
`TRANSCRIPT OF TELECONFERENCE PROCEEDING HELD
`FEBRUARY, 21, 2013
`
`
`
`
`
`
`Patent 6,675,151
`Attorney Docket No. FPT-L6
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`CRS ADVANCED TECHNOLOGIES, INC.
`Petitioner
`v.
`Patent of FRONTLINE TECHNOLOGIES, INC.
`Patent Owner
`______________
`Case CBM2012-00005
`Patent 6,675,151
`_____________
`
`
`
`
`
`
`
`
`TRANSCRIPT OF TELECONFERENCE PROCEEDING HELD
`FEBRUARY, 21, 2013
`
`
`
`
`
`
`
`February 21, 2013
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` Case CBM2012-00005
` Patent 6,675,151
`
` CRS ADVANCED TECHNOLOGIES,
` INC.,
` Petitioner,
`
` vs.
`
` FRONTLINE TECHNOLOGIES,
` INC.,
`
` Patent Owner.
`
` TRANSCRIPT OF PROCEEDINGS
` (VIA TELECONFERENCE)
`
` DATE TAKEN: FEBRUARY 21, 2013
`
` TIME: 1:00 P.M. - 1:14 P.M.
`
` BEFORE: HONORABLE SALLY C. MEDLEY
` HONORABLE JENNIFER S. BISK
` ADMINISTRATIVE PATENT JUDGES
`
` This cause came on to be heard at the time and
`place aforesaid, when and where the following
`proceedings were reported by:
` Joan L. Pitt
` Registered Merit Reporter
` Certified Realtime Reporter
`
`Golkow Technologies, Inc. - 1.877.370.DEPS
`
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`February 21, 2013
`
`Page 2
`
` APPEARANCES
`
`Counsel for the Petitioner:
`
` E. ROBERT YOCHES, ESQUIRE
` AARON J. CAPRON, ESQUIRE
` DARREL C. KARL, ESQUIRE
` Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
` Attorneys at Law
` 901 New York Avenue, Northwest
` Washington, DC 20001-4413
` bob.yoches@finnegan.com
` aaron.capron@finnegan.com
` darrel.karl@finnegan.com
`
`Counsel for Patent Owner:
`
` JOHN P. DONOHUE, JR., ESQUIRE
` JOHN E. McGLYNN, ESQUIRE
` R. SCOTT TEWES, ESQUIRE
` Woodcock Washburn, LLP
` Attorneys at Law
` 2929 Arch Street
` Cira Centre, 12th Floor
` Philadelphia, Pennsylvania 19104-2891
` donohue@woodcock.com
` mcglynn@woodcock.com
`
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`February 21, 2013
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`Page 3
` THEREUPON, the following proceedings were had
`and taken at 1:00 p.m.:
` JUDGE MEDLEY: Good afternoon. This is Judge
` Medley. I also have with me Judge Bisk. Could I
` get a roll call, please?
` MR. DONOHUE: On behalf of patent owners, Your
` Honor, John Donohue, John McGlynn, and Scott Tewes.
` MR. YOCHES: And on behalf of the requester,
` it's Robert Yoches, Darrel Karl and Aaron Capron.
` MR. DONOHUE: Your Honor, this is John Donohue
` again. We also have a court reporter, Ms. Joan
` Pitt, who's with Golkow, Inc., and she is also on
` the line, and in relation to a conversation that one
` of our paralegals had with Mr. Kellogg, she is also
` preparing a backup audiotape in addition to a
` transcript.
` JUDGE MEDLEY: That's fine. That's great.
` Okay. Well, as you recall, this is a sort of a
` follow-up conference call for CBM2012-0005 to
` discuss a possible motion to amend that the patent
` owner may file, but before we get started on that, I
` just wanted to follow up on the motion to stay and
` the related District Court case. Has anything
` become of that?
` MR. DONOHUE: Yes, Your Honor. John Donohue
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`February 21, 2013
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`Page 4
` again. We filed our response indicating that we
` were not opposed to the stay, and within a few days
` Judge Robreno stayed the case and placed it in
` suspense. So the present status of the case in the
` Eastern District of Pennsylvania is that it is
` suspended.
` JUDGE MEDLEY: Okay. Thank you very much.
` Okay. So really this is directed to the patent
` owner. Mr. Donohue, if you'd like to discuss if you
` have taken into account or considered whether your
` client would like to file a motion to amend.
` MR. DONOHUE: Yes, Your Honor. When it comes
` to the contingent motion to amend, the item
` that appears paramount to us is one of
` efficiency. The -- although we -- under the current
` case law we do not see a need to amend the claims.
` The CLS Bank case, which has been briefed, argued in
` the Federal Circuit, and we are now awaiting a
` decision, could significantly change how claims are
` analyzed in order to determine whether there is
` patentable subject matter, which, of course, is the
` only issue that we're focused on in this post-grant
` review proceeding.
` The issue that becomes, okay, is there a way in
` which to take that case into account and move to
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`February 21, 2013
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`Page 5
` amend the claims either now or later. From the last
` call, we understand that and believe that everyone,
` including the board, recognizes that since there is
` only one issue in this case that it is one that is
` susceptible of compression. We also recognize that
` under the statute a decision is due one year from
` institution, which is January 23, 2014.
` Given those two things, we see two alternatives
` for proceeding and taking into account a potential
` motion to amend the claims. The first is that we
` just proceed with the schedule that you've set out,
` and if the CLS Bank decision is issued by the
` Federal Circuit in time, that patent owner would
` believe the appropriate procedure would be to -- if
` that case does indeed change the way in which claims
` are to be analyzed for determining patentable
` subject matter and that amending the claims would be
` necessary, that it file an additional motion to
` amend if there's time.
` However, that way of proceeding appears to
` patent owner to not be very efficient, because we
` may not get the CLS Bank decision in time, so we may
` proceed under, let's say, prior case law and then at
` some future date be back doing it over again.
` Another way to account for the motion to amend
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`February 21, 2013
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`Page 6
` would be to come up with a new schedule that sets
` the date for filing a motion to amend and the
` response to the petition to institute a post-grant
` review sometime in October. Our best estimate, and
` these are just estimates, is that the Federal
` Circuit decision in CLS Bank will likely come down
` sometime between June and September. If our
` estimates are correct, then setting a date in
` October should be enough time, or it doesn't have to
` be a fixed date in October, it could be a date in
` October or some date relative to the issuance of
` that decision, whichever is sooner.
` At that time we could file our response, the
` patent owner could file its response, and could file
` either a motion to amend or an additional motion to
` amend, however we want to characterize it under the
` procedure, at the same time on that date. If we do
` go down that road, one other thing that we would
` need to take into account is would there need to be
` a notice of that motion, and so in that instance
` either this telephone conference could count as
` notice of that motion or notice of that motion would
` have to be provided, let's say, within a week or two
` weeks of the issuance of the decision in the CLS
` Bank case.
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`February 21, 2013
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`Page 7
` JUDGE MEDLEY: Okay. I think I understand. So
` Option No. 1 is we just stick with the schedule and
` you would not file a motion to amend unless there
` was a decision in the CLS Bank case, at which point
` you may, depending on what the ruling is there --
` MR. DONOHUE: Correct.
` JUDGE MEDLEY: -- file a motion to amend.
` That's Option 1. Option 2.
` Did someone just chime in? Did someone just
` sign into the phone call?
` Okay. Sorry. I was maybe expecting one other
` participant from our end.
` Option No. 2, I understand that you're
` suggesting that we just wait until October to pick
` this back -- all this back up hoping that the
` decision in the case -- that a decision will have
` been rendered by that time.
` So I'll let Mr. Yoches respond at this time.
` MR. YOCHES: Your Honor, I'm a bit confused,
` because until Mr. Donohue's speech, they've been
` opposing a stay and opposing a delay, so the reason
` I thought we had this whole procedure is to get
` things done quickly. If -- the problem I have with
` the proposal is that I don't know that the CLS case
` is going to be definitive or change things anyhow,
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`February 21, 2013
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`Page 8
` and what do we do if another case comes up in the
` meantime that then one party or the other party
` thinks is going to be dispositive? You know, do we
` then keep delaying this thing?
` My suggestion would be let's keep the current
` schedule, get this thing decided. If it turns out
` that the law changes, the patent owner can always, I
` believe, file a reissue, and -- because I don't
` think he's broadening the claims, I believe he'd
` probably be narrowing them, and add some claims, and
` so he's not without a recourse if the law changes.
` JUDGE MEDLEY: I agree, and also I just want to
` point out that you're not forever barred from filing
` a motion to amend in this proceeding either. We
` have mechanism in place that you can seek
` authorization. I mean, at that point it's not just
` an automatic right. It's more you have to seek it
` and explain why, you know, it's belated. It's a
` good cause standard. And certainly if the law has
` changed significantly to the point where it would
` make sense to take your amendment at a late juncture
` in the case in this proceeding, you know, that would
` be your showing of good cause. Whether or not we
` would grant that motion, you know, is one thing, but
` I think you would have a good story if the law
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`February 21, 2013
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`Page 9
` significantly changes. So I want to confer with my
` colleague, and then we'll get back with you. Okay?
` MR. DONOHUE: Your Honor, John Donohue again.
` There was a housekeeping matter left over from our
` last call. If I might just take two more minutes
` and address that.
` JUDGE MEDLEY: Sure.
` MR. DONOHUE: In our list of proposed motions
` we had also proposed a motion to dismiss, but we
` said we weren't at all -- the patent owner was
` interested in doing was preserving its position
` there, and after further consideration, we believe
` that if the board were to authorize us to file that
` motion, we represent to you that we would be making
` the very same arguments that we made in our
` preliminary response, Paper No. 16. We would not be
` adding anything new.
` So if you were to authorize us to file that
` motion, we would just be repeating that. If the
` board does not authorize us to file that motion, we
` believe our client's position is preserved.
` JUDGE MEDLEY: Okay. And, Mr. Yoches, do you
` have any comments on that?
` MR. YOCHES: No, I don't.
` JUDGE MEDLEY: Okay. All right. Let me put
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`February 21, 2013
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`Page 10
`
` you guys on hold for a second.
` (Short recess.)
` JUDGE MEDLEY: Okay, we're back. I think we
` will just proceed with the current schedule and, you
` know, cross that bridge when we get -- if or when we
` get to it in this proceeding. I mean, we have a
` statutory duty to get this done in a year, so
` I think we need to just forge forward.
` And with respect to the motion to dismiss,
` yeah, that motion's not authorized. So, as you
` said, you had made those arguments in your
` preliminary response.
` Do we have any questions?
` MR. DONOHUE: None from patent owner, Your
` Honor.
` MR. YOCHES: And none from the petitioner.
` JUDGE MEDLEY: Okay. And one last thing. I
` know we -- I had suggested that the parties get
` together and talk about the schedule. I know since,
` you know, patent owner's kind of come in with a new
` twist to the schedule, have the parties discussed
` possibly adjusting time periods 1 to 3 and then 4
` through 7 coming to the board with expediting any of
` those times?
` MR. DONOHUE: No, we have not, Your Honor. We
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`February 21, 2013
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`Page 11
` had that conversation prior to the last conference
` call, and as we went through our analysis we knew
` what the petitioner's position was, and it just
` didn't appear efficient to raise the subject again.
` JUDGE MEDLEY: Okay. I just wanted to follow
` up with that point. All right. Well, then if
` there's nothing further, we'll adjourn.
` MR. YOCHES: Thank you, Your Honor.
` MR. DONOHUE: Thank you, Your Honor.
` JUDGE MEDLEY: Bye.
` THEREUPON, the proceedings were concluded at
`1:14 p.m.
`
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`February 21, 2013
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` CERTIFICATE OF REPORTER
`
`Page 12
`
` I, Joan L. Pitt, Registered Merit Reporter,
`Certified Realtime Reporter, do hereby certify
`that I was authorized to and did report the foregoing
`proceedings and evidence in the captioned case,
`and that the transcript, pages 1 through 12 is a true
`and correct transcription of my stenographic notes.
`
` Dated: 3/4/13
`
` ________________________________________
` Joan L. Pitt, RMR, CRR
`
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`Case CBM2012-00005
`Patent 6,675,151
`Attorney Docket No. FPT-L6
`
`
`
`CERTIFICATE OF SERVICE
`I, John P. Donohue, Jr., hereby certify that on this 9th day of May, 2013, the
`foregoing TRANSCRIPT OF TELECONFERENCE PROCEEDING HELD
`FEBRUARY 21, 2013, was served electronically via email on the following
`counsel of record for Petitioner CRS Advanced Technologies, Inc.:
`E. Robert Yoches, Esquire
`Reg. No. 30,120
`Finnegan, Henderson, Farabow,
` Garrett & Dunner LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4113
`Email: bob.yoches@finnegan.com
`
`Aaron J. Capron, Esquire
`Reg. No. 56,170
`Finnegan, Henderson, Farabow,
` Garrett & Dunner LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4113
`Email: aaron.capron@finnegan.com
`
`Darrel C. Karl, Esquire
`Pro Hac Vice
`Finnegan, Henderson, Farabow,
` Garrett & Dunner LLP
`901 New York Avenue, N.W.
`Washington, D.C. 20001-4113
`Email: darrel.karl@finnegan.com
`
`
`
`
`/John P. Donohue, Jr./
` John P. Donohue, Jr.
` Reg. No. 29,916
`
`
`
`
`
`
`
`
`
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