032114PTOHearing.txt
` 1
`
` 1 IN THE UNITED STATES DISTRICT COURT
` EASTERN DISTRICT OF TEXAS
` 2 TYLER DIVISION
`
` 3 - - - - - - - - - - - - x
`
` 4 ROY-G-BIV CORPORATION, :
`
` 5 Plaintiff, :
`
` 6 vs. : Case No. 6:11-cv-00622-LED
`
` 7 ABB LTD., et al., :
`
` 8 Defendants. :
`
` 9 - - - - - - - - - - - - x
`
` 10 ROY-G-BIV CORPORATION, :
`
` 11 Plaintiff, : Case No. 6:11-cv-00623-LED
`
` 12 vs. :
`
` 13 HONEYWELL INTERNATIONAL :
`
` 14 and MOTIVA ENTERPRISES, :
`
` 15 LLC, :
`
` 16 Defendants. :
`
` 17 - - - - - - - - - - - - x
`
` 18 ROY-G-BIV CORPORATION, :
`
` 19 Plaintiff, : Case No. 6:11-cv-00624-LED
`
` 20 vs. :
`
` 21 SIEMENS CORP, et al. :
`
` 22 Defendants. :
`
` 23 - - - - - - - - - - - - x
`
` 24 MARCH 21, 2014 TELEPHONIC HEARING CONDUCTED BEFORE
`
` 25 THE HONORABLE THOMAS L. GIANNETTI
`
` 1
`
` 1 IN THE UNITED STATES DISTRICT COURT
` EASTERN DISTRICT OF TEXAS
` 2 TYLER DIVISION
`
` 3 - - - - - - - - - - - - x
`
` 4 ROY-G-BIV CORPORATION, :
`
` 5 Plaintiff, :
`
` 6 vs. : Case No. 6:11-cv-00622-LED
`
` 7 ABB LTD., et al., :
`
` 8 Defendants. :
`
` 9 - - - - - - - - - - - - x
`
` 10 ROY-G-BIV CORPORATION, :
`
` 11 Plaintiff, : Case No. 6:11-cv-00623-LED
`
` 12 vs. :
`
` 13 HONEYWELL INTERNATIONAL :
`
` 14 and MOTIVA ENTERPRISES, :
`
` 15 LLC, :
`
` 16 Defendants. :
`
` 17 - - - - - - - - - - - - x
`
` 18 ROY-G-BIV CORPORATION, :
`
` 19 Plaintiff, : Case No. 6:11-cv-00624-LED
`
` 20 vs. :
`
` 21 SIEMENS CORP, et al. :
`
` 22 Defendants. :
`
` 23 - - - - - - - - - - - - x
`
` 24 MARCH 21, 2014 TELEPHONIC HEARING CONDUCTED BEFORE
`
` 25 THE HONORABLE THOMAS L. GIANNETTI
`
2
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` 1
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` 2
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` 3 This matter came on for hearing before THE
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` 4 HONORABLE THOMAS L. GIANNETTI, Administrative Patent
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`Page 1
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` 1
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` 2
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` 3 This matter came on for hearing before THE
`
` 4 HONORABLE THOMAS L. GIANNETTI, Administrative Patent
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`Page 1
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`032114PTOHearing.txt
` 5 Judge of The United States Patent and Trademark
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` 6 Office, Friday, March 21, 2014, commencing at
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` 7 4:00 p.m., when were present on behalf of the
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` 8 respective parties:
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` 9
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` 10
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` 11
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` 12
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` 13 A P P E A R A N C E S:
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` 14
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` 15 ON BEHALF OF THE UNITED STATES PATENT AND
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` 16 TRADEMARK OFFICE:
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` 17 THOMAS L. GIANNETTI
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` 18 ADMINISTRATIVE PATENT JUDGE
`
` 19 USPTO
`
` 20 400 Dulany Street
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` 21 Alexandria, Virginia
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` 22 (571) 272-3547
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` 23 (Via telephone)
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` 24
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` 25
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3
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` 1 A P P E A R A N C E S C O N T I N U E D:
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` 2 ON BEHALF OF ABB, INC:
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` 3 STEVEN M. AUVIL, ESQUIRE
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` 4 SQUIRE SANDERS
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` 5 1200 19th Street, Northwest
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` 6 Suite 300
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` 7 Washington, D.C. 20036
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` 8 (202) 626-6237
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` 9 steven.auvil@squiresanders.com
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` 10 (Via telephone)
`Page 2
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` 1 A P P E A R A N C E S C O N T I N U E D:
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` 2 ON BEHALF OF ABB, INC:
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` 3 STEVEN M. AUVIL, ESQUIRE
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` 4 SQUIRE SANDERS
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` 5 1200 19th Street, Northwest
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` 6 Suite 300
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` 7 Washington, D.C. 20036
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` 8 (202) 626-6237
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` 9 steven.auvil@squiresanders.com
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` 10 (Via telephone)
`Page 2
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`032114PTOHearing.txt
`
` 11 AND
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` 12 RICHARD D. McLEOD, ESQUIRE
`
` 13 KLARQUIST SPARKMAN LLP
`
` 14 One World Trade Center
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` 15 Suite 1600
`
` 16 121 S.W. Salmon Street
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` 17 Portland, Oregon 97204
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` 18 (503) 595-5300
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` 19 rick.mcleod@klarquiest.com
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` 20 (Via telephone)
`
` 21 AND
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` 22
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` 23
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` 24
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` 25
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4
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` 1 A P P E A R A N C E S C O N T I N U E D:
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` 2
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` 3 ON BEHALF OF ROY-G-BIV CORPORATION:
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` 4 RICHARD A. MEYER, ESQUIRE
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` 5 BOIES, SCHILLER & FLEXNER LLP
`
` 6 5301 Wisconsin Avenue, NW
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` 7 Washington, D.C. 20015
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` 8 (202) 237-2727
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` 9 rmeyer@bsfllp.com
`
` 10 (Via telephone)
`
` 11 AND
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` 12 RICHARD T. BLACK, ESQUIRE
`
` 13 FOSTER PEPPER PLLC
`
` 14 1111 Third Avenue
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` 15 Suite 3400
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`Page 3
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`
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` 1 A P P E A R A N C E S C O N T I N U E D:
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` 2
`
` 3 ON BEHALF OF ROY-G-BIV CORPORATION:
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` 4 RICHARD A. MEYER, ESQUIRE
`
` 5 BOIES, SCHILLER & FLEXNER LLP
`
` 6 5301 Wisconsin Avenue, NW
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` 7 Washington, D.C. 20015
`
` 8 (202) 237-2727
`
` 9 rmeyer@bsfllp.com
`
` 10 (Via telephone)
`
` 11 AND
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` 12 RICHARD T. BLACK, ESQUIRE
`
` 13 FOSTER PEPPER PLLC
`
` 14 1111 Third Avenue
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` 15 Suite 3400
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`Page 3
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`032114PTOHearing.txt
` 16 Seattle, Washington 98101-3299
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` 17 (206) 447-6251
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` 18 BLACR@FOSTER.COM
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` 19 (Via telephone)
`
` 20 AND
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` 21
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` 22
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` 23
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` 24
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` 25
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5
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` 1 A P P E A R A N C E S C O N T I N U E D:
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` 2 DOUGLAS R. WILSON, ESQUIRE
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` 3 HEIM, PAYNE & CHORUSH, LLP
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` 4 JP Morgan Chase Tower
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` 5 600 Travis Street
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` 6 Suite 6710
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` 7 Houston, Texas 77002
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` 8 (713) 221-2000
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` 9 (Via telephone)
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` 10
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` 12
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` 13
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`Page 4
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` 1 A P P E A R A N C E S C O N T I N U E D:
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` 2 DOUGLAS R. WILSON, ESQUIRE
`
` 3 HEIM, PAYNE & CHORUSH, LLP
`
` 4 JP Morgan Chase Tower
`
` 5 600 Travis Street
`
` 6 Suite 6710
`
` 7 Houston, Texas 77002
`
` 8 (713) 221-2000
`
` 9 (Via telephone)
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` 10
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` 11
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` 12
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` 13
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` 14
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`Page 4
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`032114PTOHearing.txt
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` 25
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6
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` 1 P R O C E E D I N G S
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` 2 4:00 p.m.
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` 3 (The above-matter came on for hearing
`
` 4 before the HONORABLE THOMAS L. GIANNETTI,
`
` 5 Administrative Patent Judge with the USPTO, and the
`
` 6 following proceedings were had; to wit:)
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` 7 JUDGE GIANNETTI: I'll hear from the
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` 8 Petitioner first.
`
` 9 MR. MEYER: Rick, are you on?
`
` 10 MR. McLEOD: I am.
`
` 11 MR. MEYER: Excellent. I didn't know you
`
` 12 were there. Thanks.
`
` 13 JUDGE GIANNETTI: Okay. So Mr. McLeod.
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` 14 MR. McLEOD: Yes. And, also, Mr. Auvil,
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` 15 Steve Auvil, for the Petitioner.
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` 16 JUDGE GIANNETTI: The patent layer, who do
`
` 17 we have?
`
` 18 MR. BLACK: Your Honor, I am Richard
`
` 19 Black, and I have with me today Richard Meyer and
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` 20 Doug Wilson.
`
` 21 MR. MEYER: I'm on the line. I'm not sure
`
` 22 Mr. Wilson is on the line.
`
` 23 MR. WILSON: Yes, I'm on.
`
` 24 MR. MEYER: Okay.
`
` 25 JUDGE GIANNETTI: Good. So anyone else
`
`
` 1 P R O C E E D I N G S
`
` 2 4:00 p.m.
`
` 3 (The above-matter came on for hearing
`
` 4 before the HONORABLE THOMAS L. GIANNETTI,
`
` 5 Administrative Patent Judge with the USPTO, and the
`
` 6 following proceedings were had; to wit:)
`
` 7 JUDGE GIANNETTI: I'll hear from the
`
` 8 Petitioner first.
`
` 9 MR. MEYER: Rick, are you on?
`
` 10 MR. McLEOD: I am.
`
` 11 MR. MEYER: Excellent. I didn't know you
`
` 12 were there. Thanks.
`
` 13 JUDGE GIANNETTI: Okay. So Mr. McLeod.
`
` 14 MR. McLEOD: Yes. And, also, Mr. Auvil,
`
` 15 Steve Auvil, for the Petitioner.
`
` 16 JUDGE GIANNETTI: The patent layer, who do
`
` 17 we have?
`
` 18 MR. BLACK: Your Honor, I am Richard
`
` 19 Black, and I have with me today Richard Meyer and
`
` 20 Doug Wilson.
`
` 21 MR. MEYER: I'm on the line. I'm not sure
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` 22 Mr. Wilson is on the line.
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` 23 MR. WILSON: Yes, I'm on.
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` 24 MR. MEYER: Okay.
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` 25 JUDGE GIANNETTI: Good. So anyone else
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7
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`032114PTOHearing.txt
` 1 expected on the call?
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` 2 MR. MEYER: We have a court reporter, Your
`
` 3 Honor, as well.
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` 4 JUDGE GIANNETTI: Okay. And we will ask
`
` 5 then that when the transcript is prepared that you
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` 6 file this with the exhibit as you should.
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` 7 MR. MEYER: Yes.
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` 8 JUDGE GIANNETTI: So the Patent owner has
`
` 9 requested this conference. So I don't know who is
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` 10 speaking for the patent owner.
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` 11 Mr. Black, is that you?
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` 12 MR. BLACK: Mr. Meyer will begin.
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` 13 JUDGE GIANNETTI: So, Mr. Meyer, you have
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` 14 the floor.
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` 15 MR. MEYER: Thank you very much --
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` 16 JUDGE GIANNETTI: Yes, go ahead.
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` 17 MR. MEYER: Thank you very much, Your
`
` 18 Honor. There is Richard Meyer. RGB requested this
`
` 19 call to obtain guidance for submitting supplemental
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` 20 evidence under Rule 42.123(d). We just learned of
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` 21 evidence that establishes independent corroboration
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` 22 of RGB's key conception evidence, and we believe
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` 23 it's proper for the Board to consider it under the
`
` 24 interest of justice standard underneath that rule.
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` 25 Last Friday ABB took the deposition of a
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8
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` 1 former Compumotor employee, Mark McClung which
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` 2 provides the independent evidence of corroboration
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` 3 that ABB says is necessary in this case. He
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` 4 testified that he and another current Compumotor
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` 5 employee, Mr. Stewart Goodnick received and reviewed
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` 6 and commented on RGB's key conception evidence that
`Page 6
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`
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` 1 former Compumotor employee, Mark McClung which
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` 2 provides the independent evidence of corroboration
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` 3 that ABB says is necessary in this case. He
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` 4 testified that he and another current Compumotor
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` 5 employee, Mr. Stewart Goodnick received and reviewed
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` 6 and commented on RGB's key conception evidence that
`Page 6
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`032114PTOHearing.txt
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` 7 the July '94 XMC design spec which has been
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` 8 submitted in the IPR proceeding 62, 63 and 74 as
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` 9 Exhibit Nos. 2010-1, 212-1 and 213-74 respectively
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` 10 in August and September of 1994 under nondisclosure
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` 11 of agreements.
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` 12 ABB was not only present, but they noticed
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` 13 the deposition, they took the deposition, they
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` 14 elicited some of these testimonies themselves. I
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` 15 cross-examined the witness and brought out some more
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` 16 of this corroboration testimony at the time.
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` 17 ABB then redirected the witness after this
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` 18 evidence fully came out, so there's no prejudice at
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` 19 all to ABB. The witness also testified that ABB has
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` 20 been working with another Compumotor employee,
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` 21 Mr. Goodnick, who I mentioned, very closely on this
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` 22 matter, so close that it was becoming burdensome for
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` 23 Mr. Goodnick. So the fact that there is independent
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` 24 evidence of corroboration is surely no surprise to
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` 25 ABB.
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9
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` 1 The issue has been briefed extensively.
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` 2 It became apparent to us at the last hearing how
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` 3 important that this evidence is to the Board.
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` 4 So we submit permission just to submit the
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` 5 transcript itself. I would suggest you let us
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` 6 highlight the relevant portions of the transcript so
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` 7 you can see exactly what's relevant, and a few of
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` 8 the exhibits.
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` 9 There are some specifications and there's
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` 10 some e-mails where Mr. McClung is commenting very
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` 11 specifically on the RGB design specification that we
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`Page 7
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` 1 The issue has been briefed extensively.
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` 2 It became apparent to us at the last hearing how
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` 3 important that this evidence is to the Board.
`
` 4 So we submit permission just to submit the
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` 5 transcript itself. I would suggest you let us
`
` 6 highlight the relevant portions of the transcript so
`
` 7 you can see exactly what's relevant, and a few of
`
` 8 the exhibits.
`
` 9 There are some specifications and there's
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` 10 some e-mails where Mr. McClung is commenting very
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` 11 specifically on the RGB design specification that we
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`Page 7
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`032114PTOHearing.txt
` 12 submitted. So he clearly establishes the
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` 13 independent corroboration, which is why we
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` 14 respectfully request that you permit us to submit it
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` 15 to the Board without any argument or anything so the
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` 16 Board can come to its own conclusion and review the
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` 17 evidence.
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` 18 JUDGE GIANNETTI: Okay. We'll hear from
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` 19 Mr. McLeod.
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` 20 Is there anything further, Mr. Meyer?
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` 21 MR. MEYER: No, I don't have anything
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` 22 further to add.
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` 23 JUDGE GIANNETTI: Mr. McLeod?
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` 24 MR. McLEOD: Yes, Your Honor. ABB opposes
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` 25 submission for a number of reasons. The first part
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10
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` 1 and is under 123(b), the first part of that Rule,
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` 2 showing why this evidence could not have been
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` 3 obtained earlier, ABB in April 15th of 2013
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` 4 submitted counterclaims asserting that Compumotor
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` 5 was an unnamed -- or certain Compumotor employees
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` 6 were unnamed inventors on this patent and that was
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` 7 the basis of an equitable conduct claim.
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` 8 Certainly RGB had every opportunity to
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` 9 develop this evidence prior to its original
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` 10 submission. Moreover, it highly prejudices ABB
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` 11 because if they had presented this evidence in the
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` 12 patent owner's response, we would have raised a
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` 13 number of different issues.
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` 14 First of all, we would have investigated
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` 15 that issue of joint inventorship more fully. Of
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` 16 course, if he's a joint inventor, his testimony is
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` 17 corroborated, so in reality this just presents a
`Page 8
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`
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` 1 and is under 123(b), the first part of that Rule,
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` 2 showing why this evidence could not have been
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` 3 obtained earlier, ABB in April 15th of 2013
`
` 4 submitted counterclaims asserting that Compumotor
`
` 5 was an unnamed -- or certain Compumotor employees
`
` 6 were unnamed inventors on this patent and that was
`
` 7 the basis of an equitable conduct claim.
`
` 8 Certainly RGB had every opportunity to
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` 9 develop this evidence prior to its original
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` 10 submission. Moreover, it highly prejudices ABB
`
` 11 because if they had presented this evidence in the
`
` 12 patent owner's response, we would have raised a
`
` 13 number of different issues.
`
` 14 First of all, we would have investigated
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` 15 that issue of joint inventorship more fully. Of
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` 16 course, if he's a joint inventor, his testimony is
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` 17 corroborated, so in reality this just presents a
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`032114PTOHearing.txt
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` 18 tainted can of worms, it hasn't been properly put
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` 19 before the Board.
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` 20 Additionally, the -- Mr. McClung, as I
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` 21 understand it, whatever documents concerning
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` 22 Mr. McClung have been held under -- in terms of the
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` 23 protective order, ABB sought inconsistent evidence
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` 24 during the course of this proceeding, which art
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` 25 should be prevented, as I understand, they still
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11
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` 1 maintain confidentiality. If they're allowed to
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` 2 submit this, suddenly we have a whole new list of
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` 3 potential -- documents which we'd have to go into
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` 4 and brief. That's another prejudice against us.
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` 5 And then, finally, they can't say that,
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` 6 you know, they suddenly realized that this is
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` 7 important to the Board. The Hahn v. Wong case which
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` 8 we cited in our reply makes it quite clear that, not
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` 9 knowing what the appropriate evidentiary standard is
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` 10 not good cause, is not even good cause for a
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` 11 supplemental submission.
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` 12 And so we think that they can't meet the
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` 13 terms of the late submission requirement, they
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` 14 reasonably could have investigated this and
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` 15 presented evidence on this with their timely
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` 16 submissions, and that whatever they are trying to
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` 17 submit now is just a last-ditch, untimely effort.
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` 18 JUDGE GIANNETTI: So I guess it's back to
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` 19 Mr. Meyer. I'd like to hear what kind of showing
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` 20 you might make on the issue -- you know, the Rule
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` 21 places the issue of late submissions, and you have
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` 22 to make a showing as to why the information was not
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`Page 9
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` 1 maintain confidentiality. If they're allowed to
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` 2 submit this, suddenly we have a whole new list of
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` 3 potential -- documents which we'd have to go into
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` 4 and brief. That's another prejudice against us.
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` 5 And then, finally, they can't say that,
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` 6 you know, they suddenly realized that this is
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` 7 important to the Board. The Hahn v. Wong case which
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` 8 we cited in our reply makes it quite clear that, not
`
` 9 knowing what the appropriate evidentiary standard is
`
` 10 not good cause, is not even good cause for a
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` 11 supplemental submission.
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` 12 And so we think that they can't meet the
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` 13 terms of the late submission requirement, they
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` 14 reasonably could have investigated this and
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` 15 presented evidence on this with their timely
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` 16 submissions, and that whatever they are trying to
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` 17 submit now is just a last-ditch, untimely effort.
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` 18 JUDGE GIANNETTI: So I guess it's back to
`
` 19 Mr. Meyer. I'd like to hear what kind of showing
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` 20 you might make on the issue -- you know, the Rule
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` 21 places the issue of late submissions, and you have
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` 22 to make a showing as to why the information was not
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` 23 submitted earlier, could not have been obtained and
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` 24 not submitted earlier. What would be your showing
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` 25 if we authorized the motion?
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12
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` 1 MR. MEYER: Well, often -- what comes to
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` 2 my mind now is we didn't know what this witness was
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` 3 going to say until he actually said it. And we have
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` 4 not been working behind the scenes with Compumotor
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` 5 the way ABB has. And, I mean I think that ABB
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` 6 themselves should have brought this evidence
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` 7 forward.
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` 8 I don't see how they can stand up in court
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` 9 to you and say that there is no evidence of
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` 10 independent cooperation when they do all this. So
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` 11 the fact is that the witness was only deposed a week
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` 12 ago, and we would emphasize that. I just received
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` 13 the official transcript today, so, you know, that is
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` 14 the reason why it wasn't submitted earlier. And,
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` 15 frankly, it really wasn't until our most recent
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` 16 hearing, as you know, our view of the law, you know,
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` 17 we believe that under the facts of our case where
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` 18 our documents are so strong that we don't need
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` 19 independent cooperation, though it became very clear
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` 20 to us when during our most recent hearing that the
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` 21 Board felt that this was very important as well, and
`
` 22 so that was another reason why we would cite that we
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` 23 could not have done this sooner.
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` 24 JUDGE GIANNETTI: Well, I'm not sure that
`
` 25 that is your understanding of the law; perhaps your
`
`
` 1 MR. MEYER: Well, often -- what comes to
`
` 2 my mind now is we didn't know what this witness was
`
` 3 going to say until he actually said it. And we have
`
` 4 not been working behind the scenes with Compumotor
`
` 5 the way ABB has. And, I mean I think that ABB
`
` 6 themselves should have brought this evidence
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` 7 forward.
`
` 8 I don't see how they can stand up in court
`
` 9 to you and say that there is no evidence of
`
` 10 independent cooperation when they do all this. So
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` 11 the fact is that the witness was only deposed a week
`
` 12 ago, and we would emphasize that. I just received
`
` 13 the official transcript today, so, you know, that is
`
` 14 the reason why it wasn't submitted earlier. And,
`
` 15 frankly, it really wasn't until our most recent
`
` 16 hearing, as you know, our view of the law, you know,
`
` 17 we believe that under the facts of our case where
`
` 18 our documents are so strong that we don't need
`
` 19 independent cooperation, though it became very clear
`
` 20 to us when during our most recent hearing that the
`
` 21 Board felt that this was very important as well, and
`
` 22 so that was another reason why we would cite that we
`
` 23 could not have done this sooner.
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` 24 JUDGE GIANNETTI: Well, I'm not sure that
`
` 25 that is your understanding of the law; perhaps your
`
13
`
` 1 misunderstanding of the law is an excuse. I guess
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` 2 what's unusual about this situation is that the
`Page 10
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` 1 misunderstanding of the law is an excuse. I guess
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` 2 what's unusual about this situation is that the
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`032114PTOHearing.txt
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` 3 deposition was taken by the Petitioner and not by
`
` 4 you. So you didn't notice this deposition. Is that
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` 5 correct, Mr. Meyer?
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` 6 MR. MEYER: That is correct. They noticed
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` 7 it, the deposition, they took it on their time
`
` 8 frame. And their claims of joint inventorship and
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` 9 these other claims are not seriously -- the
`
` 10 transcript itself, as you can see, if you permit us
`
` 11 to submit it, where the witness says that he didn't
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` 12 contribute to any of the key or core concepts and
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` 13 that he's not claiming to a co-inventor and he
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` 14 specifically disagrees with ABB's claims of
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` 15 co-inventorship.
`
` 16 But, yes, ABB took the deposition. They
`
` 17 established some on this on their direct examination
`
` 18 that he reviewed the design specification and
`
` 19 commented on it in September of 1994. I asked some
`
` 20 follow-up and some authentication questions. They
`
` 21 then had the opportunity to redirect him, and they
`
` 22 did redirect him.
`
` 23 So I clearly don't think there's any
`
` 24 prejudice here. I clearly think the issue of
`
` 25 independent corroboration has been briefed on both
`
14
`
` 1 sides and that this is just in the interest of
`
` 2 justice submitting this evidence that just became
`
` 3 available to us for you to consider without our
`
` 4 argument or anything, I don't think it would be very
`
` 5 burdensome, and I think it does comply with the
`
` 6 interest of justice and be why it couldn't have been
`
` 7 submitted sooner.
`
`Page 11
`
`
`
` 1 sides and that this is just in the interest of
`
` 2 justice submitting this evidence that just became
`
` 3 available to us for you to consider without our
`
` 4 argument or anything, I don't think it would be very
`
` 5 burdensome, and I think it does comply with the
`
` 6 interest of justice and be why it couldn't have been
`
` 7 submitted sooner.
`
`Page 11
`
`
`
`032114PTOHearing.txt
` 8 JUDGE GIANNETTI: Well, it seems to me
`
` 9 that if your opponent hadn't taken this deposition,
`
` 10 this information would never have come out. You
`
` 11 didn't notice this deposition, they did.
`
` 12 MR. MEYER: Correct.
`
` 13 JUDGE GIANNETTI: And the Compumotor, I
`
` 14 know that there was a mention of an NDA in your
`
` 15 papers, and I assume that this is the NDA that you
`
` 16 were talking about in the papers that you submitted
`
` 17 on the --
`
` 18 MR. MEYER: Yes, yes. He authenticated
`
` 19 that he reviewed the spec. under an NDA that's
`
` 20 referred to on the second page of the RGB XMC spec,
`
` 21 and the pages match up, and so that's another
`
` 22 exhibit that we could submit to you.
`
` 23 JUDGE GIANNETTI: So you've been aware of
`
` 24 this Compumotor thing for some time. Is that right?
`
` 25 MR. MEYER: We have been aware of the
`
15
`
` 1 Compumotor issue as has ABB, yes.
`
` 2 JUDGE GIANNETTI: Anything further,
`
` 3 Mr. McLeod?
`
` 4 MR. McLEOD: Yes, Your Honor. This
`
` 5 submission would, even if it were allowed, it would
`
` 6 only address the conception side of corroboration.
`
` 7 There are cases that note that there needs to be
`
` 8 corroboration of both phases of, whether it's
`
` 9 diligence or reduction to practice, and a
`
` 10 conception. Those both have to be independently
`
` 11 corroborated. This would not even address -- our
`
` 12 arguments on diligence, there's still being evidence
`
` 13 corroborating the alleged diligence and reduction to
`Page 12
`
`
`
` 1 Compumotor issue as has ABB, yes.
`
` 2 JUDGE GIANNETTI: Anything further,
`
` 3 Mr. McLeod?
`
` 4 MR. McLEOD: Yes, Your Honor. This
`
` 5 submission would, even if it were allowed, it would
`
` 6 only address the conception side of corroboration.
`
` 7 There are cases that note that there needs to be
`
` 8 corroboration of both phases of, whether it's
`
` 9 diligence or reduction to practice, and a
`
` 10 conception. Those both have to be independently
`
` 11 corroborated. This would not even address -- our
`
` 12 arguments on diligence, there's still being evidence
`
` 13 corroborating the alleged diligence and reduction to
`Page 12
`
`
`
`032114PTOHearing.txt
`
` 14 practice. So the submission itself would also be
`
` 15 futile.
`
` 16 Again, if they had put this in the record
`
` 17 back in July, our reply brief probably would have
`
` 18 devoted so much of it to specifically corroboration
`
` 19 of conception, we would have attacked the conception
`
` 20 documents more directly -- so I do believe it's
`
` 21 highly prejudicial at this point.
`
` 22 JUDGE GIANNETTI: All right. Well, the
`
` 23 Panel and I have discussed this before this hearing
`
` 24 and I think this is a complicated enough issue that
`
` 25 we are going to authorize briefing, so we will
`
16
`
` 1 authorize a motion under Rule 123(e), and the motion
`
` 2 will be due by noon, by Monday, noon Eastern time on
`
` 3 Monday, limited to five pages. And it will require
`
` 4 support by declaration as to why this information --
`
` 5 let me quote the Rule here so we get it exactly
`
` 6 right, "must show why the supplemental information
`
` 7 reasonably could not have been obtained earlier." I
`
` 8 want to see a decoration from you on that point and
`
` 9 you are limited to 5 pages.
`
` 10 Mr. McLeod, you can file an opposition of
`
` 11 five pages that will be done by Wednesday 12 noon
`
` 12 Eastern time.
`
` 13 MR. McLEOD: Yes, Your Honor.
`
` 14 JUDGE GIANNETTI: Okay? In addition I
`
` 15 would like to have, because we are under a time
`
` 16 limit here for getting our final decision done, I
`
` 17 don't want to delay in getting the transcript, so I
`
` 18 will ask the Patent owner to submit the transcript
`
`Page 13
`
`
`
` 1 authorize a motion under Rule 123(e), and the motion
`
` 2 will be due by noon, by Monday, noon Eastern time on
`
` 3 Monday, limited to five pages. And it will require
`
` 4 support by declaration as to why this information --
`
` 5 let me quote the Rule here so we get it exactly
`
` 6 right, "must show why the supplemental information
`
` 7 reasonably could not have been obtained earlier." I
`
` 8 want to see a decoration from you on that point and
`
` 9 you are limited to 5 pages.
`
` 10 Mr. McLeod, you can file an opposition of
`
` 11 five pages that will be done by Wednesday 12 noon
`
` 12 Eastern time.
`
` 13 MR. McLEOD: Yes, Your Honor.
`
` 14 JUDGE GIANNETTI: Okay? In addition I
`
` 15 would like to have, because we are under a time
`
` 16 limit here for getting our final decision done, I
`
` 17 don't want to delay in getting the transcript, so I
`
` 18 will ask the Patent owner to submit the transcript
`
`Page 13
`
`
`
`032114PTOHearing.txt
` 19 and you are permitted to have three pages of
`
` 20 observations. Are you familiar with that?
`
` 21 I believe you submitted observations
`
` 22 earlier. So three pages, maximum, observation in
`
` 23 the form that we require which basically allows you
`
` 24 to cite page and line number and what issue it's
`
` 25 relevant to, no argument. Understood?
`
17
`
` 1 MR. MEYER: Yes.
`
` 2 JUDGE GIANNETTI: Okay. And that will be
`
` 3 due at the same time as the motion, that is, by 12
`
` 4 noon Eastern time on Monday. If we decide to grant
`
` 5 the motion, then the transcript will be in the
`
` 6 record. If we decide not to grant the motion, we
`
` 7 will expunge the transcript and the exhibits. Also
`
` 8 file the exhibits.
`
` 9 MR. MEYER: So you want us to file the
`
` 10 exhibits also at the same time?
`
` 11 JUDGE GIANNETTI: Yeah, file the
`
` 12 transcript and the exhibits and the three pages,
`
` 13 maximum, observations, and meanwhile we consider the
`
` 14 motion, we take that under submission when we get
`
` 15 Mr. McLeod's response and we'll decide whether to
`
` 16 fit in the transcript or whether to expunge it.
`
` 17 But we will require you to make a showing
`
` 18 under Rule 123(b), Late Submission of Supplemental
`
` 19 Information. So I think you should review that Rule
`
` 20 and make sure that your declaration covers the
`
` 21 requirements of the rule. Any questions?
`
` 22 MR. MEYER: No, Your Honor. Thank you
`
` 23 very much.
`
` 24 JUDGE GIANNETTI: Okay. Mr. McLeod,
`Page 14
`
`
`
` 1 MR. MEYER: Yes.
`
` 2 JUDGE GIANNETTI: Okay. And that will be
`
` 3 due at the same time as the motion, that is, by 12
`
` 4 noon Eastern time on Monday. If we decide to grant
`
` 5 the motion, then the transcript will be in the
`
` 6 record. If we decide not to grant the motion, we
`
` 7 will expunge the transcript and the exhibits. Also
`
` 8 file the exhibits.
`
` 9 MR. MEYER: So you want us to file the
`
` 10 exhibits also at the same time?
`
` 11 JUDGE GIANNETTI: Yeah, file the
`
` 12 transcript and the exhibits and the three pages,
`
` 13 maximum, observations, and meanwhile we consider the
`
` 14 motion, we take that under submission when we get
`
` 15 Mr. McLeod's response and we'll decide whether to
`
` 16 fit in the transcript or whether to expunge it.
`
` 17 But we will require you to make a showing
`
` 18 under Rule 123(b), Late Submission of Supplemental
`
` 19 Information. So I think you should review that Rule
`
` 20 and make sure that your declaration covers the
`
` 21 requirements of the rule. Any questions?
`
` 22 MR. MEYER: No, Your Honor. Thank you
`
` 23 very much.
`
` 24 JUDGE GIANNETTI: Okay. Mr. McLeod,
`Page 14
`
`
`
` 25 anything from you?
`
18
`
`032114PTOHearing.txt
`
` 1 MR. McLEOD: Do I get to file
`
` 2 counter-observation?
`
` 3 JUDGE GIANNETTI: Yes, can you file
`
` 4 counter observation, subject to the same
`
` 5 restriction, three pages maximum.
`
` 6 MR. McLEOD: Thank you, Your Honor.
`
` 7 JUDGE GIANNETTI: And those will be due,
`
` 8 Wednesday 12 noon with your opposition.
`
` 9 MR. McLEOD: Yes, Your Honor.
`
` 10 JUDGE GIANNETTI: Okay. Anything further
`
` 11 from either party?
`
` 12 MR. MEYER: Just one thing, Your Honor, on
`
` 13 the exhibits, I just remember that I don't have the
`
` 14 exhibits yet. The exhibits are supposed to come on
`
` 15 Monday. Would it be possible that we could submit
`
` 16 our filing, as opposed to noon on Monday, by
`
` 17 5:00 p.m. on Monday? They should be there at that
`
` 18 time, or maybe we should just wait until Tuesday?
`
` 19 JUDGE GIANNETTI: No, file what you have
`
` 20 at 12 noon. If the exhibits come in later, I'll
`
` 21 give you an extra day on those.
`
` 22 MR. MEYER: Okay.
`
` 23 JUDGE GIANNETTI: Because I want the
`
` 24 motion by 12 noon on Monday.
`
` 25 MR. MEYER: Okay. Thank you very much.
`
`
`032114PTOHearing.txt
`
` 1 MR. McLEOD: Do I get to file
`
` 2 counter-observation?
`
` 3 JUDGE GIANNETTI: Yes, can you file
`
` 4 counter observation, subject to the same
`
` 5 restriction, three pages maximum.
`
` 6 MR. McLEOD: Thank you, Your Honor.
`
` 7 JUDGE GIANNETTI: And those will be due,
`
` 8 Wednesday 12 noon with your opposition.
`
` 9 MR. McLEOD: Yes, Your Honor.
`
` 10 JUDGE GIANNETTI: Okay. Anything further
`
` 11 from either party?
`
` 12 MR. MEYER: Just one thing, Your Honor, on
`
` 13 the exhibits, I just remember that I don't have the
`
` 14 exhibits yet. The exhibits are supposed to come on
`
` 15 Monday. Would it be possible that we could submit
`
` 16 our filing, as opposed to noon on Monday, by
`
` 17 5:00 p.m. on Monday? They should be there at that
`
` 18 time, or maybe we should just wait until Tuesday?
`
` 19 JUDGE GIANNETTI: No, file what you have
`
` 20 at 12 noon. If the exhibits come in later, I'll
`
` 21 give you an extra day on those.
`
` 22 MR. MEYER: Okay.
`
` 23 JUDGE GIANNETTI: Because I want the
`
` 24 motion by 12 noon on Monday.
`
` 25 MR. MEYER: Okay. Thank you very much.
`
19
`
` 1 JUDGE GIANNETTI: Okay. Anything further?
`
` 2 MR. MEYER: Not from us.
`
` 3 JUDGE GIANNETTI: Okay. Thanks very much,
`
`Page 15
`
`
`
` 1 JUDGE GIANNETTI: Okay. Anything further?
`
` 2 MR. MEYER: Not from us.
`
` 3 JUDGE GIANNETTI: Okay. Thanks very much,
`
`Page 15
`
`
`
`032114PTOHearing.txt
` 4 everyone. We're adjourned.
`
` 5 (Whereupon, the hearing concluded at
`
` 6 4:17 p.m.)
`
` 7
`
` 8
`
` 9
`
` 10
`
` 11
`
` 12
`
` 13
`
` 14
`
` 15
`
` 16
`
` 17
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` 18
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` 19
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` 20
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` 21
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` 22
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` 23
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` 24
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` 25
`
`
` 1 CERTIFICATE OF SHORTHAND REPORTER - NOTARY PUBLIC
`
` 2 I, Bess A. Avery, Registered Merit
`
` 3 Reporter, the officer before whom the foregoing
`
` 4 proceedings was taken, do hereby certify that the
`
` 5 foregoing transcript is a true and correct record of
`
` 6 the testimony given; that said testimony was taken
`
` 7 by me stenographically and thereafter reduced to
`
` 8 typewriting under my supervision; and that I am
`
` 9 neither counsel for, related to, nor employed by any
`Page 16
`
`
`
`032114PTOHearing.txt
`
` 10 of the parties to this case and have no interest,
`
` 11 financial or otherwise, in its outcome.
`
` 12 IN WITNESS WHEREOF, I have hereunto set my
`
` 13 hand and affixed my notarial seal this 21st day of
`
` 14 March 2014.
`
` 15
`
` 16 My commission expires:
`
` 17 March 31, 2018
`
` 18
`
` 19 ____________________________
`
` 20 BESS A. AVERY, RMR
`
` 21 NOTARY PUBLIC IN AND FOR THE
`
` 22 COMMONWEALTH OF VIRGINIA Notary Reg. # 7016339
`
` 23
`
` 24
`
` 25
`
`
`Page 17
`
`
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