SIGHTSOUND TECHNOLOGIES, LLC
`EXHIBIT 2170
`CBM2013-00020 (APPLE v. SIGHTSOUND)
`PAGE 000001
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` ---------------
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ---------------
`
` APPLE, INC.,
`
` Petitioner,
`
` v.
`
` PATENT OF SIGHTSOUND TECHNOLOGIES, LLC,
`
` Patent Owner.
`
` ---------------
`
` CASE CBM2013-00020 and 23
`
` Monday, March 31, 2014
`
` 2:02 p.m. to 2:44 p.m.
`
`BEFORE THE HONORABLE JUSTIN T. ARBES and THE
`
`HONORABLE MICHAEL P. TIERNEY
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`EXHIBIT 2170
`CBM2013-00020 (APPLE v. SIGHTSOUND)
`PAGE 000001
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` ---------------
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ---------------
`
` APPLE, INC.,
`
` Petitioner,
`
` v.
`
` PATENT OF SIGHTSOUND TECHNOLOGIES, LLC,
`
` Patent Owner.
`
` ---------------
`
` CASE CBM2013-00020 and 23
`
` Monday, March 31, 2014
`
` 2:02 p.m. to 2:44 p.m.
`
`BEFORE THE HONORABLE JUSTIN T. ARBES and THE
`
`HONORABLE MICHAEL P. TIERNEY
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000002
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 2
`
` A P P E A R A N C E S
`
` (As introduced on teleconference)
`
` On Behalf of the Patent Owner, SightSound
`
` Technologies, LLC:
`
` DAVID MARSH, ESQUIRE
`
` KRISTAN L. LANSBERY, ESQUIRE
`
` Arnold & Porter
`
` 555 Twelfth Street Northwest
`
` Washington, DC 20004
`
` (202) 942-5068
`
` On Behalf of the Petitioner, Apple, Inc.:
`
` J. STEVEN BAUGHMAN, ESQUIRE
`
` CHING-LEE FUKUDA, ESQUIRE
`
` Ropes & Gray
`
` Three Embarcadero Center
`
` San Francisco, California 94111-4006
`
` (415) 315-6300
`
` - - -
`
`1
`
`2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000003
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` P R O C E E D I N G S
`
` JUDGE ARBES: Hello, everyone. This
`
` Judge Arbes for the Patent Trial and Appeal
`
` Board. With me is Judge Tierney. This is a
`
` conference call in the case of CBM2013 in 20 and
`
` 23. Do we have counsel for the petitioner on
`
` the line?
`
` MR. BAUGHMAN: Yes, Your Honor. Steve
`
` Baughman from Ropes & Gray, and with me is
`
` Ching-Lee Fukuda.
`
` MS. FUKUDA: Hello, Your Honor.
`
` JUDGE ARBES: Okay. And counsel for the
`
` patent owner?
`
` MR. MARSH: Yes, Your Honor. We have
`
` David Marsh for the patentee. I'm here with
`
` William Louden, who will just be sitting in on
`
` the call.
`
` JUDGE ARBES: Okay. And I understand
`
` that we have a court reporter on the line today.
`
` THE REPORTER: Yes, sir. Rebecca
`
` Stonerock.
`
` JUDGE ARBES: Great. Thank you.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000004
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` The conference call was requested by
`
` counsel for the patent owner. We received an
`
` e-mail on March 24 with a couple of issues, one
`
` being the date in the scheduling order and
`
` proposing modified dates, and then two, issues
`
` with the petitioner's reply brief on each case.
`
` So regarding the first issue, I believe
`
` that the Board paralegal stated that we would --
`
` that the proposed modified dates for the
`
` scheduling order are fine, and so we will be
`
` entering a revised scheduling order in both
`
` proceedings with the date that the properties
`
` have proposed recognizing that the oral hearing
`
` will not be changed on the date. So is there
`
` anything else to discuss regarding that or any
`
` other issues with scheduling that the parties
`
` would like to raise?
`
` MR. MARSH: Yes, Your Honor. We would
`
` like to discuss the observations on
`
` cross-examination.
`
` JUDGE ARBES: Okay. Sure.
`
` MR. MARSH: We -- this is David Marsh on
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000005
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` behalf of SightSound. We would like to propose
`
` filing those and we would like to propose 15
`
` pages for those because we have five required
`
` declarants, four of which are brand new to the
`
` proceedings, and there's a significant amount of
`
` evidence that were discussed with respect to the
`
` other declarants issues we raised and regard
`
` that we would require 15 pages to encompass the
`
` large number of declarants and also the new
`
` evidence, which counsel for petitioner disagrees
`
` that it's new evidence. So just to lay that
`
` out.
`
` JUDGE ARBES: Okay. So it would be the
`
` patent owner filing a motion for observation on
`
` cross-exam of the declarants that the petitioner
`
` has put forth with the reply. Do I understand
`
` that right?
`
` MR. MARSH: You understand that
`
` correctly, Your Honor.
`
` JUDGE ARBES: Okay. And the date for
`
` that would be April 11?
`
` MR. MARSH: You're correct, Your Honor.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000006
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE ARBES: Okay. Any objection to
`
` that from the petitioner?
`
` MR. BAUGHMAN: Your Honor, we don't
`
` object to the date. We hadn't conferred about
`
` pages. I will say for petitioner I guess 15
`
` seems like a lot of pages. We have three fact
`
` witnesses, two of which are going to have
`
` very -- as apparent from their declarations,
`
` very short depositions and we think that that
`
` seems like more pages than might be merited for
`
` this.
`
` JUDGE ARBES: Okay. Well, the standard
`
` for motions is 15 pages. We'll authorize for
`
` the patent owner to file one motion for
`
` observation on cross-exam of all of the
`
` witnesses limited to 15 pages total. And then,
`
` petitioner, you have an opportunity to file a
`
` response to that. Any other issues to discuss
`
` for that?
`
` MR. BAUGHMAN: No, Your Honor.
`
` MR. MARSH: Just to confirm, Your Honor,
`
` the response to that will be on the 18th?
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000007
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE ARBES: Yes, that was our
`
` understanding.
`
` MR. MARSH: Thank you, Your Honor.
`
` JUDGE ARBES: Okay. Moving on to the
`
` other issues that the patent owner raised in
`
` their e-mail I believe had to do with
`
` petitioner's reply brief. So counsel for the
`
` patent owner, would you like to explain what
`
` you're requesting and the basis for the request?
`
` MR. MARSH: Yes, Your Honor. We're
`
` requesting the Court's guidance on the -- how to
`
` handle the additional evidence with respect to
`
` particularly obviousness that was filed with the
`
` reply brief. The new evidence on obviousness,
`
` in our view, includes materials in the brief,
`
` materials in the declarants and also specific
`
` exhibits.
`
` And also, Your Honors, we would desire
`
` the Court's guidance on that the declarants also
`
` have improper arguments in the declarations
`
` which should have been in the brief and were not
`
` in the brief because of the page limit.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000008
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE ARBES: Okay. Well, let's take the
`
` first issue first. Can you give us an example
`
` of what -- we have the petitioner's reply in
`
` CBM2013-00020 in front of us. Can you give us
`
` an example of what you believe to be the
`
` improper new argument in that reply?
`
` MR. MARSH: Yes, Your Honor. Here Apple
`
` cites to the -- here on page 9 of the brief
`
` CBM 23 page 8 to 9, page 9 of CBM 20. They
`
` cite, "During reexamination as cited, 1986
`
` reference depicted the ability to purchase and
`
` receive -- at home over phone lines, Exhibit
`
` 4256, paragraph 52, Exhibit 4103." Here Apple
`
` cites to the Kenswill declaration in which it's
`
` citing to the prosecution history which is
`
` actually citing to the District Court order, and
`
` the denied summary judgment on grounds of
`
` obviousness. The order was submitted during the
`
` reexam, which is why it's part of the file
`
` history.
`
` If Apple wanted to rely on the quote that
`
` it relies on within that, it should have done
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000009
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` that in its original motion. But they're doing
`
` it for the first time here, Your Honor.
`
` JUDGE ARBES: Okay. You mean they should
`
` have allowed it in their initial petition?
`
` MR. MARSH: Correct, Your Honor.
`
` JUDGE ARBES: Okay. Can we hear from the
`
` petitioner on that?
`
` MR. BAUGHMAN: Your Honor, I apologize.
`
` This is Steve Baughman for the petitioner. I
`
` actually wasn't able to entirely follow that
`
` example, which we hadn't heard before. This
`
` wasn't one of the two examples we discussed in
`
` advance of the call.
`
` JUDGE ARBES: Well, the patent owner
`
` seems to be saying that this citation to the
`
` prosecution history was not made in your initial
`
` petition and is not responsive to any argument
`
` that they made in their response. So do you
`
` have a response to that?
`
` MR. BAUGHMAN: Your Honor, I'm sorry, I'm
`
` just having trouble locating the pages that
`
` we're talking about in the reply.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000010
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` JUDGE ARBES: We have page 9 of the reply
`
` in the 20 case -- correct me if I'm wrong patent
`
` owner, but I believe you're referring to the
`
` second complete sentence beginning, "During
`
` reexamination."
`
` MR. MARSH: You're correct, Your Honor.
`
` MR. BAUGHMAN: Your Honor, I apologize.
`
` I have the 23 case up. Give me one moment,
`
` please.
`
` JUDGE ARBES: Sure. No problem.
`
` MR. BAUGHMAN: The statement on page 9 --
`
` sorry, I now have it open, Your Honor. I
`
` apologize, I -- one more time, please --
`
` JUDGE ARBES: Sure.
`
` MR. BAUGHMAN: -- counsel for petitioner
`
` or Your Honor.
`
` JUDGE ARBES: I believe that the patent
`
` owner was referring to the sentence beginning,
`
` "During reexamination as cited, 1986 reference,"
`
` and was arguing that that is improper new
`
` argument and not responsive to what they put in
`
` their response.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000011
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. BAUGHMAN: Oh, yes, Your Honor.
`
` Generally speaking, we were responding to their
`
` assertion that the ability to purchase and
`
` receive digital media at home was -- was not
`
` known at the time. We're responding with a
`
` variety of examples and we're responding to
`
` their assertions regarding what a person of
`
` skill would or would not have understood.
`
` They're arguing here that, among other
`
` things, it wasn't known to do certain things
`
` with credit cards, it wasn't known to purchase
`
` certain things over telecommunication lines, and
`
` we're responding to those assertions.
`
` JUDGE ARBES: Okay. And this 1986
`
` reference is cited in support of that, I take
`
` it.
`
` MR. BAUGHMAN: Yes, Your Honor. And I
`
` apologize again, this isn't an example we had
`
` discussed in advance so I haven't pulled all the
`
` documents in front of me, but we're not trying
`
` to present any new ground of invalidity here.
`
` We're not suggesting any new combination of
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000012
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` references other than the ground that the Board
`
` has already instituted. We're simply trying to
`
` combat the assertion that a person of skill
`
` would not have understood what we have asserted
`
` in the petition or that a person of ordinary
`
` skill would not have been able to do what the
`
` Board found in instituting trial in this matter.
`
` JUDGE ARBES: Okay. Would the patent
`
` owner like to respond?
`
` MR. MARSH: Your Honors, we're not
`
` asserting that it's a new ground of rejection,
`
` we're asserting that it's a new basis of
`
` evidence to support that ground that wasn't
`
` raised before, Your Honor.
`
` JUDGE ARBES: Okay. Well, Counsel, we
`
` have -- we have held in other cases before that
`
` the Board is able to determine what is new
`
` argument versus what is properly responsive to
`
` another party's filings at the time it reviews
`
` all of the evidence in a case at the very end
`
` and prepares a final written decision when we
`
` have the full record before us and are able to
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000013
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` look at everything and figure out what is new
`
` argument and what is not, and that that's the
`
` time that the Board customarily makes that
`
` determination.
`
` So that -- recognizing that that is the
`
` usual procedure in the absence of a special
`
` circumstance, why do you believe that there
`
` would be a special circumstance here or that it
`
` would -- it would be appropriate to take further
`
` action such as striking this or any other action
`
` at this time?
`
` MR. MARSH: Your Honor, we very much
`
` appreciate the skills set of the court and the
`
` ability of the court to handle the large volume
`
` of information in front of it. The issue that
`
` concerns us here is the extensive nature of this
`
` and the ability through a very large and
`
` extensive record to flag all of the issues that
`
` this has occurred during the reply brief. The
`
` reply brief was 15 pages, the associated
`
` exhibits was three binders worth.
`
` So, Your Honor, the burden on the Board
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000014
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` would be fairly extensive to cross-reference all
`
` of those points. Well within, of course, your
`
` skills set, but we would take the Board's
`
` guidance as to how to best point out this
`
` occurrence as it is not limited to just the
`
` brief.
`
` JUDGE ARBES: Okay. The Panel will
`
` confer briefly. We'll go on mute and be back in
`
` just a minute.
`
` MR. MARSH: Your Honor, before you
`
` confer, could I add one more issue? The --
`
` during the deposition of Mr. Kelly, the deponent
`
` stated that the obviousness arguments were
`
` largely limited to paragraph 57 -- paragraph 47,
`
` I apologize, of Mr. Kelly's declaration and it
`
` said, "Did you" -- my question was, "Did you
`
` evaluate the obviousness of claims in either the
`
` '573 or the '440 patent with respect to the
`
` Compusonic art?" And the response was, "I did."
`
` And then the answer was, "Well, I set forth the
`
` results of it in paragraph 47 of Exhibit 1132."
`
` So I wanted to flag where the petitioner
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000015
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` regarded the obviousness response or original
`
` filing to be, Your Honors.
`
` JUDGE ARBES: Okay. And how does that
`
` relate here? What relief are you seeking for
`
` that?
`
` MR. MARSH: It flags the extent the
`
` petitioner put forth the obviousness arguments
`
` in the original petition, Your Honor.
`
` MR. BAUGHMAN: Your Honor, if I might
`
` respond for petitioner.
`
` JUDGE ARBES: Sure.
`
` MR. BAUGHMAN: Steve Baughman, Your
`
` Honor. First, the issue as I understand it here
`
` is not the nature of the original arguments, but
`
` whether the responsive material placed in
`
` rebuttal in our reply is appropriate rebuttal.
`
` And certainly we are responding to arguments
`
` presented by patent owner in these papers. And
`
` regarding volume, I think the Board will
`
` certainly be able to assess what it does and
`
` does not need to review of documents in their
`
` entirety in assessing the reply brief we
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000016
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` provided. We're not asking the Board
`
` independently to comb through exhibits.
`
` We've made an argument that we believe is
`
` entirely responsive to what the patent owner has
`
` asserted in its response and we believe the
`
` Board is certainly able -- but obviously the
`
` Board will determine for itself -- certainly
`
` able to assess the argument being made and use
`
` the evidence appropriately.
`
` JUDGE ARBES: Okay. The Panel will
`
` confer briefly. We'll go on mute and be back
`
` shortly.
`
` (Short recess taken.)
`
` JUDGE ARBES: Okay. The Panel has had a
`
` chance to confer. What we're going to do is
`
` take the matter under advisement. We'll issue
`
` an order shortly after the call today on this
`
` and a number of other issues and we'll include
`
` that within the order.
`
` I believe the Panel has one other issue
`
` to discuss, but before we do, patent owner, I
`
` believe you raised an issue regarding the
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000017
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` witness declarations. Is there anything that
`
` you would like to discuss for that?
`
` MR. MARSH: Your Honor, the witness
`
` declarations -- and to give an example, the
`
` Kenswill declaration has extensive attorney
`
` argument or what's basically argument with
`
` respect to -- that's more appropriate in a brief
`
` than it is in a fact or expert witness. The
`
` paragraphs include paragraphs 34 to 40, 47,
`
` 48 --
`
` JUDGE ARBES: Counsel, do you have the
`
` exhibit number?
`
` MR. MARSH: Sure. My apologies. Let
`
` me -- Exhibit 4256, Your Honor.
`
` JUDGE ARBES: Okay. And this is a
`
` declaration from someone regarding the alleged
`
` commercial success or lack thereof argument?
`
` MR. MARSH: Correct, Your Honor.
`
` JUDGE ARBES: Okay. And what relief are
`
` you seeking for this?
`
` MR. MARSH: We're looking for guidance
`
` from the Board, Your Honor. There's extensive
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000018
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` what we would regard as argument here that is
`
` not declaratory evidence as you mentioned in
`
` the -- with respect to the evidence issues we
`
` raised before, that the -- had a sophisticated
`
` Board, so we're looking for what guidance from
`
` you as to how we should deal with this under
`
` these circumstances.
`
` JUDGE ARBES: Okay. Well, this is --
`
` obviously the arguments that a party puts
`
` forward in its briefing, i.e. the petition or
`
` the reply, are what are considered. That is the
`
` position of a party. The function of the expert
`
` declaration is to provide support for that, but
`
` the argument does need -- any argument to be
`
` made needs to be made in the briefing.
`
` The expert declaration is not a
`
` substitute for the briefing. We don't permit
`
` incorporation by reference. So that is
`
` something that the Board is able to determine on
`
` its own. We have done that for petitions.
`
` We're able to do that for replies as well. So I
`
` think that's -- that's something that the Panel
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000019
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` can determine when it reviews all of the
`
` evidence in this case.
`
` MR. MARSH: Your Honor, would it be
`
` helpful for us to submit a list of the
`
` paragraphs at issue here, Your Honor, or would
`
` that not be helpful?
`
` JUDGE ARBES: And this would be
`
` paragraphs that you believe are not -- that make
`
` arguments that are not made in the reply?
`
` MR. MARSH: You're correct, Your Honor.
`
` JUDGE ARBES: Okay. Let me do this,
`
` then. The Panel will consider that matter
`
` further as well and address that in the order
`
` after the call today.
`
` MR. BAUGHMAN: Your Honor, if petitioner
`
` could make a brief statement.
`
` JUDGE ARBES: Sure.
`
` MR. BAUGHMAN: I just want to note, Your
`
` Honor, obviously we disagree about whether these
`
` are appropriate, and I guess we would ask if the
`
` Board is considering patent owner's request that
`
` we get an opportunity to respond just as to the
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000020
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` petition -- the paragraphs that were mentioned.
`
` Because there's a transcript here today, I want
`
` to note that those are discussing a number of
`
` documents that are also addressed in the reply
`
` brief and quoting and examining those that are
`
` also again addressed in our argument in the
`
` reply. So we'd request an opportunity to
`
` respond if patent owner is given an opportunity
`
` to make assertions.
`
` JUDGE ARBES: Okay. The Panel will
`
` consider that further and address it as an
`
` order. I think we understand both parties'
`
` position.
`
` Any other issues that the parties would
`
` like to raise regarding the reply briefs or
`
` evidence submitted with them?
`
` MR. MARSH: Your Honor, we have discussed
`
` with counsel potentially inconsistent documents
`
` and have requested a TIGR infringement report
`
` that was filed by SightSounds' expert in the --
`
` in the District Court litigation as being
`
` inconsistent with the positions Apple has taken
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000021
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` in its reply papers, I believe.
`
` And Mr. Baughman will do, I'm sure, an
`
` excellent job of characterizing Apple's
`
` position, but it's Apple's position that the
`
` claims are not co-extensive with the iTunes
`
` ITMS, and it's our position that they are. And,
`
` for instance, Dr. Kelly has made a number of
`
` positions in its -- in his declaration that
`
` iTunes does not infringe, i.e., is not
`
` co-extensive with the claims of the patent. We
`
` believe that the TIGR infringement report, which
`
` is in possession of Apple, is inconsistent with
`
` that and have requested its production.
`
` JUDGE ARBES: Okay. Counsel, refresh our
`
` recollection. I believe that this -- this issue
`
` with the expert report came up previously in
`
` this case, that I take it the parties were not
`
` able to resolve the issue at that time.
`
` MR. MARSH: You're correct, Your Honor.
`
` We requested discovery on the -- and
`
` specifically called out the TIGR infringement
`
` report as a -- as a specific paper with its
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000022
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` exhibits that we requested discovery on, in
`
` part, Your Honor, because we believed this might
`
` be a position that Apple would take. Apple's
`
` position was -- and you denied the discovery,
`
` and Apple's position is, I believe, that it
`
` isn't inconsistent with the positions they're
`
` taking.
`
` JUDGE ARBES: Okay. Can we hear from the
`
` petitioner?
`
` MR. BAUGHMAN: Yes, Your Honor. So I
`
` guess the way that we would start by framing the
`
` issue that we have made specific statements in
`
` our reply brief about why we are not practicing
`
` the claimed invention. I'm not sure I would
`
` agree with counsel's characterization of what it
`
` means to be co-extensive with, but as far as
`
` practicing the limitations of the claims, we've
`
` not made a blanket assertion that we don't
`
` infringe -- that's not the issue presented to
`
` the Board -- but rather that we are not
`
` practicing particular elements. And we have,
`
` upon the inquiry from patent owner's counsel,
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000023
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` considered their request and we do not believe
`
` we have any inconsistent information with the
`
` statements we've made in our reply brief.
`
` And I guess I would just -- I know the
`
` Board's well aware of it, but we note the Garmin
`
` versus Cuozzo case, IPR2012-1, paper 26 at 4,
`
` which talks about the rule being directed to the
`
` specific information known to the responding
`
` party to be inconsistent with the position
`
` advanced by the party not broadly directed to
`
` any subject area in general.
`
` And so the issue here is not infringement
`
` or noninfringement. If there's a broad
`
` assertion that somebody infringes -- obviously
`
` there's a litigation here -- that's not
`
` inconsistent with our position that certain
`
` elements are not practiced as set forth in our
`
` papers. And so we don't believe there is
`
` inconsistent information to be provided here.
`
` JUDGE ARBES: Okay. Well, Counsel, I
`
` believe that our previous order addressed this
`
` within the context of a motion for additional
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000024
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` discovery. Seems that the patent owner here is
`
` arguing that this is -- that the assertions that
`
` are allegedly made in this expert report are
`
` inconsistent with assertions that Apple is
`
` making now.
`
` For instance, if Apple is arguing now
`
` that it does not practice the invention because
`
` it doesn't practice element X of the claims
`
` whereas we have this expert report that does say
`
` that Apple practices X element of the claims,
`
` that seems to be their argument.
`
` MR. BAUGHMAN: Your Honor, our position
`
` is that we've said we don't practice X element
`
` because of fact 1, and there is no position
`
` from -- we're aware of that's inconsistent with
`
` fact 1.
`
` JUDGE ARBES: Okay. The Panel will
`
` confer just briefly and go on mute and be back
`
` in a minute.
`
` (Short recess taken.)
`
` JUDGE TIERNEY: This is Judge Tierney. I
`
` just had a couple questions and I wanted to sort
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000025
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 25
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` of direct to Apple. Regarding the TIGR report,
`
` what prejudice is there to giving a copy of that
`
` report to SightSound's counsel in this case?
`
` MR. BAUGHMAN: Yes, Your Honor. Steve
`
` Baughman for petitioner. The report is
`
` predicated in large part on confidential and
`
` highly confidential information of Apple. The
`
` request that was made to us was to produce the
`
` report and all of the attached exhibits, which
`
` include, as I understand it, source code and
`
` other material that actually leads to a
`
` prosecution bar and was produced with the
`
` understanding that it would not be made
`
` available to anyone who was involved in
`
` activities involving prosecution or the shaping
`
` of claims or arguments about the claims owned by
`
` SightSound.
`
` JUDGE TIERNEY: Yes, I can remember the
`
` conversation we've had on this before.
`
` MR. BAUGHMAN: Yes, Your Honor.
`
` JUDGE TIERNEY: The report itself,
`
` though, without the attachments, without the
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000026
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 26
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` source code, if we merely attach the report, is
`
` there a problem with just the report being given
`
` over to the SightSound counsel, or would the
`
` prejudice be there?
`
` MR. BAUGHMAN: Well, Your Honor, the
`
` report, as I understand it -- and I don't have
`
` it in front of me, but it does quote extensively
`
` from those documents. In other words, it
`
` distills a lot of that confidential information.
`
` The report itself is highly confidential,
`
` not just the attachments. So it's not as though
`
` it's a redacted sort of form of document that
`
` attaches the confidential material. That
`
` confidential material is woven all through the
`
` report, which addresses a huge array of issues
`
` other than the few pinpoint questions that are
`
` before the Board on the reply, none of which
`
` depended on confidential information.
`
` JUDGE TIERNEY: You just mentioned
`
` another alternative, which is a redacted copy.
`
` Is there a way that it could be redacted such
`
` that you give them at least an inkling of what
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000027
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 27
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` the ex report is going toward?
`
` MR. BAUGHMAN: Your Honor, I haven't
`
` looked at that question. We can -- we can
`
` consider that and discuss with counsel for
`
` patent owner whether the particular, I suppose,
`
` limitations that we're talking about, whether
`
` it's possible to redact that portion of the
`
` brief so as not to include any confidential
`
` information. I haven't assessed that question.
`
` We haven't been asked that by patent owner.
`
` JUDGE TIERNEY: This is Judge Tierney.
`
` This is one member of the Panel. I would
`
` appreciate if you looked into that issue.
`
` Originally we denied the request because we are
`
` sensitive as to giving out source code and other
`
` highly confidential business information here
`
` given that there wasn't the showing of a need
`
` balanced out against prejudice. If we could
`
` somehow give at least a redacted copy over,
`
` though, that would alleviate the prejudice to
`
` you, to Apple, and I think that would go a long
`
` way to getting this issue resolved.
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`
`
`PAGE 000028
`
`Conference Call
`
`Washington, DC
`
`March 31, 2014
`
`Page 28
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. BAUGHMAN: Your Honor, we can -- we
`
` can certainly take a look at that and then see
`
` what we can reach agreement
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
