`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`1
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`APPLE INC.,
`Petitioner
`v.
`SMARTFLASH LLC,
`Patent Owner
`___________________________________
`Cases1
`CBM2014-00102(Patent 8,118,221 B2)
`CBM2014-00106(Patent 8,033,458 B2)
`CBM2014-00108(Patent 8,061,598 B2)
`CBM2014-00112(Patent 7,942,317 B2)
`___________________________________
`Monday, April 13, 2015
`11:02 a.m.
`
`
` Reported by: Chaz Bennett, Capital Reporting Company
` 1 Case CBM2014-00103 has been consolidated with CBM2014-00102; case
`
`CBM2014-00107 has been consolidated with CBM2014-00106; case
`CBM2014-00109 has been consolidated with CBM2014-00108; case
`CBM2014-00113 has been consolidated with CBM2014-00112.
`
`
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`2
`
`A P P E A R A N C E S
`
`ON BEHALF OF THE PETITIONER:
`STEVEN J. BAUGHMAN, ESQUIRE
`Ropes & Gary, LLP
`700 12th Street, Northwest, #900
`Washington, D.C. 20005
`(202) 508-4600
`steven.baughman@ropesgray.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`MICHAEL CASEY, ESQUIRE
`Davidson Berquist Jackson & Gowdey
`8300 Greensboro Drive, Suite 500
`McLean, Virginia 22102
`(571) 765-7700
`mcasey@dbjg.com
`
`
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`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
`THE COURT: With that, Mr. Baughman, could
`you please take the floor?
`MR. BAUGHMAN: Yes, your Honor. Thank you.
`It's Steve Baughman for petitioners.
`And, your Honor, our first request this
`morning is that the page limits for our reply briefs
`be increased to the new limits that the PTO director
`announced as applicable immediately. That's 25 pages
`per reply.
`It's based on Director Lee's March 27th blog
`announcement which, for the record, is
`www.uspto.gov/blog.
`That increase is then implemented in
`numerous orders and pending trials. Just as some
`examples, there's the LG Chem case, IPR2014-00692,
`Paper 48 at 2. That was last week, April 6th. And
`the board there said: "We exercised our discretion to
`revise the page limit of petitioner's reply brief to
`reflect this change in the rules."
`Another example is the Ford versus Paice
`case last Thursday, IPR2014-01415. That's Paper 11 at
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`
`2 to 3.
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`4
`
`And there are numerous others.
`The director, in her blog, announced that
`this determination was appropriate for replies
`generally and noted that commenters had said that 15
`pages for a petitioner's reply brief is not a
`commensurate number of pages to respond to a patent
`owner's response.
`And quoting from the blog: "We have heard
`you and we agree."
`And just to be clear, it's not the
`petitioner's goal to use every last page necessarily
`in each proceeding, but we do request the upper limit
`that the director has stated is appropriate now for
`all cases be applied to our reply briefs here.
`THE COURT: Mr. Baughman, is there anything
`specific in this case that warrants the increase to 25
`pages?
`
`MR. BAUGHMAN: Your Honor, we do have
`consolidated cases here in pairs. But respectfully,
`our position is that the -- that the announcement from
`the director indicates that the increase is
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`5
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`appropriate for all replies.
`And so a case-by-case showing, as would be
`required, for example, for an individual motion to
`expand page limits shouldn't be required based on
`the -- the direction from the director.
`THE COURT: Thank you.
`Mr. Casey, would you like to respond?
`MR. CASEY: Yes, your Honor.
`In three of the four cases where the page
`limits were extended to 25 pages, the replies would be
`longer than the oppositions themselves, your Honor.
`The last -- the last of the four cases in the
`CBM2014-00102, the opposition is only 31 pages.
`So I don't think that this is a -- is a
`necessary step and, in fact, it encourages a briefing
`that will be extended and will not meet the goals of
`speedy, just, and efficient proceedings.
`This is -- this is going to create just an
`opportunity to create very long proceedings that are
`not to the point and will be a drain on the court's
`time and on the patent owner's time.
`THE COURT: Mr. Casey, that was the patent
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`owner's choice, correct, as to not -- to not use every
`single page for the patent owner response?
`MR. CASEY: Yes, your Honor. That's true.
`It was the patent owner's choice when the rules were
`at -- at a different page length.
`THE COURT: Is the patent owner willing to
`compromise to more than 15 pages but fewer than 25
`pages for the petitioner reply?
`MR. CASEY: Your Honor, I think 15 pages
`is -- when we're dealing with, for example,
`CBM2014-00108 where it -- the opposition is 16 pages
`long, it's hard to imagine the petitioner needs more
`than 15 pages to reply. So I -- the rules being
`retroactively changed, I don't think, create a proper
`due process procedure.
`And should the -- should the petitioner
`believe it needs more, it's certainly capable of
`telling you why it needs more than 15 pages. But I
`haven't heard any argument why they're actually -- why
`they actually need it.
`THE COURT: Mr. Baughman, would you like to
`briefly reply?
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`MR. BAUGHMAN: Yes, your Honor. Thank you.
`First, the cases have been applying this in
`ongoing trials. So the issue of the retroactivity is
`on the board has already decided is not going to
`control here.
`The downward adjustment that the patent
`owner is suggesting based on its choice about how many
`pages to use is not something that's been present in
`the rules. Under 4224(c), reply briefs are not
`limited by how long the patent owner decided to make
`its response generally.
`And now the director has increased the
`limits in general for reply briefs. It's not a
`case-by-case determination.
`Here we are still in the process of
`preparing our reply briefs. We've just finished
`deposing patent owner's witness at the end of last
`week. We will be including some of that material in
`our brief, and we're still assessing how many pages it
`will take to do so.
`I can say that we are above the 15 pages in
`our -- in our drafting process, and we're certainly
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`endeavoring to keep the pages as few as possible not
`to burden the board.
`But we do believe that, as the director
`indicated, 15 pages is not enough. And the board
`agrees.
`
`We do feel that we're appropriately asking
`for something the board has determined is appropriate
`in all reply briefs. And there isn't, as I'm aware, a
`practice of adjusting downward based on patent owner's
`choice in its reply.
`THE COURT: Thank you. I'm going to put the
`parties on hold while I confer with the panel.
`
`
`(Whereupon, a short break was taken.)
`THE COURT: The panel is back online.
`Is counsel for petitioner present?
`MR. BAUGHMAN: Yes, your Honor.
`THE COURT: And counsel for patent owner?
`MR. CASEY: Yes, your Honor.
`THE COURT: The panel has conferred, and we
`authorize petitioner to have 25 pages for its
`petitioner reply.
`MR. BAUGHMAN: Understood, your Honor.
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`THE COURT: And we also just received an
`e-mail indicating that the parties agreed to expunge
`the papers that were in dispute in CBM2015-00106.
`Is that correct, Mr. Baughman?
`MR. BAUGHMAN: Yes, your Honor.
`THE COURT: And, Mr. Casey, is that your
`understanding as well.
`MR. CASEY: It is, your Honor. But I'd like
`to point out that that issue was raised with the board
`before we had even finished talking about it.
`We were -- we were in depositions for two
`days and this issue was never raised as to whether or
`not they were going to approach the board about it.
`And we said we were -- we were -- we were trying to
`figure out whether or not we had to have it expunged.
`And while in depositions with one of Mr.
`Baughman's partners, this e-mail was sent without
`us -- without patent owner ever having said that they
`wouldn't agree to the -- the expungement.
`So I --
`THE COURT: Thank you, Mr. Casey.
`MR. CASEY: Certainly.
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`THE COURT: I do appreciate that. And that
`brings me to my next point.
`You know, the panel is well aware that the
`parties may have disputes that are unresolvable
`without the panel's intervening. But we do encourage
`the parties to meet and confer on these issues. And,
`you know, these calls should be left for issues that
`are -- that the parties can't resolve by themselves.
`We do encourage the parties to meet and
`confer before getting on the phone with the panel so
`that the parties are apprised of each other's
`positions and the issues are narrowed for these calls.
`MR. BAUGHMAN: Your Honor, this Steve
`Baughman for petitioner. Understood.
`May I just briefly comment? Since there's a
`court reporter, I would like to correct the record
`that we began this discussion a week before we wrote
`to the board. And patent owner's counsel had never
`agreed and, in fact, insisted that it was contrary to
`his normal practice not to file.
`So it was an ongoing dispute. We asked for
`time that he was available for a call. We believed no
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`11
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`resolution was possible, and we certainly did intend
`and attempt to negotiate with patent owner.
`THE COURT: Thank you for --
`MR. CASEY: I'm sorry. Mr. Baughman, are
`you representing to the court that you asked for a
`conference -- a conference call with me and I --
`THE COURT: I do want to stop the parties
`right now. This is -- this is an inappropriate
`conversation to be having on a telephone conference
`with the panel.
`Again, I just want to encourage the parties
`to meet and confer. If the parties do reach a dispute
`that is unresolvable without the panel's intervention,
`please do let us know that a call is necessary.
`But these kinds of conversations should take
`place without the panel being present.
`MR. CASEY: Yes, your Honor.
`MR. BAUGHMAN: Understood, your Honor.
`THE COURT: Is there any other issues that
`the parties would like to raise at this time, starting
`with the petitioner's counsel?
`MR. BAUGHMAN: No, thank you, your Honor.
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`
`THE COURT: And patent owner's counsel?
`MR. CASEY: None for patent owner.
`Thank you, your Honor.
`THE COURT: Thank you.
`This call is adjourned.
`
`(Whereupon, at 11:12 a.m. the teleconference
`in the matter of Apple Inc. v. Smartflash
`LLC was adjourned.)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`CERTIFICATE OF NOTARY PUBLIC
`
`
`I, CHAZ BENNETT, the officer before whom the
`foregoing deposition was taken, do hereby certify that
`the witness whose testimony appears in the foregoing
`deposition was duly sworn by me; that the testimony of
`said witness was recorded by me and thereafter reduced
`to typewriting under my direction; that said
`deposition is a true record of the testimony given by
`said witness; that I am neither counsel for, related
`to, nor employed by any of the parties to the action
`in which this deposition was taken; and, further, that
`I am not a relative or employee of any counsel or
`attorney employed by the parties hereto, nor
`financially or otherwise interested in the outcome of
`this action.
`
`
`CHAZ BENNETT
`Notary Public in and for the
`DISTRICT OF COLUMBIA
`
`My commission expires:
`Notary Registration No.:
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
`
`
`
`
`Capital Reporting Company
`Apple v. Smartflash, April 13, 2015
`
`14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`CERTIFICATE OF TRANSCRIPTION
`
`I, JANE MOLARO, hereby certify that I am not the
`Court Reporter who reported the following proceeding
`and that I have typed the transcript of this
`proceeding using the Court Reporter's notes and
`recordings. The foregoing/attached transcript is a
`true, correct, and complete transcription of said
`proceeding.
`
`
`________________________
`
`_______________
`JANE MOLARO
`
`April 17, 2015
` Transcriptionist
`
`
`
`
`
`
`
`
`
`(866) 448 - DEPO
`www.CapitalReportingCompany.com © 2015
`
`
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
