Telephonic Hearing
`
`Washington, D.C.
`
`December 4, 2013
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`- - - - - - - - - - - - - - -X
`
`SIPNET EU S.R.O. ) Case No. IPR2013-00246
`
` Petitioner, )
`
` v. )
`
`STRAIGHT PATH IP GROUP, )
`
`INC., )
`
`1
`
`2
`
`3 4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
` Patent Owner. )
`
`11
`
`- - - - - - - - - - - - - - -X
`
`12
`
`13
`
` Telephonic Hearing Before the
`
`14
`
` Administrative Patent Judges
`
`15
`
` Washington, D.C.
`
`16
`
` Wednesday, December 4, 2013
`
`17
`
` 4:00 p.m.
`
`18
`
`19
`
`20
`
`Job No. 47230
`
`21
`
`Pages 1 - 26
`
`22
`
`Reported by: Leslie Anne Todd
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`1
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`December 4, 2013
`
`Washington, D.C.
`
`Page 2
`
`Page 4
`
`APPEARANCES:
`
`For Petitioner:
`
` PAUL C. HAUGHEY, ESQUIRE
`
` MICHAEL T. MORLOCK, ESQUIRE
`
` KILPATRICK TOWNSEND & STOCKTON, LLP
`
` Eighth Floor, Two Embarcadero Center
`
` San Francisco, California 94111
`
` (415) 273-4787
`
`For Patent Owner:
`
` ALAN M. FISCH, ESQUIRE
`
` FISCH HOFFMAN SIGLER, LLP
`
` 5335 Wisconsin Avenue, N.W.
`
` Fifth Floor
`
` Washington, D.C. 20015
`
` (202) 362-3500
`
`Page 3
`
` Starting with discovery, discovery in an
`
`IPR proceeding is controlled by Rule 4251, and
`
`4251(b) identifies the limited discovery that is
`
`available in an IPR proceeding. And I just want to
`
`specifically identify the portion of that rule. I
`
`will read it to you, 4251(b): A party is not
`
`entitled to discovery except as provided in
`
`paragraph A of this section or as otherwise
`
`authorized in the subpart. Paragraph A deals with
`
`mandatory initial disclosures, and if I recall
`
`correctly from our first conference, the parties did
`
`not enter an agreement as to mandatory disclosures.
`
` Petitioner, is that correct?
`
` MR. HAUGHEY: Yes.
`
` PANEL CHAIR WARD: So discovery in this
`
`case is then limited to 4251(b), the first subpart:
`
`Routine discovery and materials are identified in
`
`that section of the rule that -- materials that are
`
`considered to be routine discovery.
`
` So outside of that, 4251(b)(2) identifies
`
`additional discovery. And it does state that the
`
`parties may agree to additional discovery between
`
`Page 5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`1
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`1
`
` P R O C E E D I N G S
`
`themselves.
`
` PANEL CHAIR WARD: This is a conference
`
`call on inter partes review matter No. IPR
`
`2013-00246.
`
` One of the goals of the board in these
`
`IPR proceedings is to seek to eliminate delay in the
`
`proceedings and ensure the attorneys are prepared to
`
`resolve the relevant disputed issues in the cases.
`
`One of the ways that we achieve that goal is by
`
`maintaining the record and ensuring that the record
`
`contains only timely and relevant filings.
`
` There have been some recent filings by
`
`the parties that have caused this panel some concern,
`
`and that's why we're having this conference call
`
`today.
`
` I have two topics that I would like to
`
`address with the parties. The first is discovery and
`
`the second is objections to evidence. I would like
`
`to address those two topics, and then I will open the
`
`floor up to both the petitioner and the patent owner
`
`to address any additional issues on which they would
`
`like to be heard today.
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` I wanted to ask, Petitioner, have the
`
`parties reached an agreement as to any additional
`
`discovery in this case?
`
` MR. HAUGHEY: No, we have not. We --
`
` PANEL CHAIR WARD: Okay. So it -- I'm
`
`sorry?
`
` MR. HAUGHEY: I was going to say, we met
`
`and conferred, but did not reach an agreement. We
`
`proposed a declaration from our client with respect
`
`to the real-party-in-interest issue, but that did not
`
`seem satisfactory, and the existing discovery request
`
`seemed to us to be overreaching.
`
` PANEL CHAIR WARD: Okay. So without an
`
`agreement in place between the parties, what the rule
`
`tells us is that where the parties fail to agree, a
`
`party may move for additional discovery, and in order
`
`to be able to move for additional discovery,
`
`authorization is required, and the moving party will
`
`have to show that that additional discovery is in the
`
`interest of justice.
`
` It appears to this panel in reviewing the
`
`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
`
`2 (Pages 2 to 5)
`
`2
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`December 4, 2013
`
`Washington, D.C.
`
`Page 6
`
`Page 8
`
`recent filings that petitioner's objections to patent
`
`owner's interrogatories filed as paper No. 23 and
`
`petitioner's objections to patent owner's request for
`
`production, filed as paper No. 25, appear to relate
`
`to additional discovery that was not agreed to by the
`
`party. Accordingly, we are going to expunge those
`
`papers, papers 23 and 25, from the record.
`
` So that's the guidance that I wanted to
`
`give the parties with respect to discovery.
`
` Moving on to my second topic, objections
`
`to evidence. The relevant rule there is 4264. And
`
`4264 provides the rules not only for objections to
`
`evidence but also for motions to exclude. And
`
`specifically 4264 states that any objection to
`
`evidence submitted during a preliminary proceeding
`
`must be served within ten business days, and
`
`similarly the rule for supplemental evidence states
`
`that a party relying on evidence to which an
`
`objection is timely served may respond to the
`
`objection by serving supplemental evidence. And I
`
`emphasize the word "serve" there because the intent
`
`of the rule is that these objections and the
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`believe is June 6 of 2014.
`
` So as we discussed in our last conference
`
`call, we would encourage the parties to confer with
`
`respect to their evidentiary objections, and the rule
`
`contemplates that the objections and supplemental
`
`evidence will be served among the parties but yet not
`
`filed. If an issue bubbles up that requires
`
`adjudication by the board, it will be addressed in a
`
`motion to exclude. As the rule tells us, a motion to
`
`exclude evidence must be filed to preserve an
`
`objection. So if there is an evidentiary issue that
`
`the parties are not able to come to an agreement upon
`
`and one party feels it's significant enough to bring
`
`before the board, that they may do so in a motion to
`
`exclude.
`
` That's why we will expunge these papers
`
`14, 21, and 26, and to the extent that there are
`
`issues that need to be addressed, we will address
`
`those in the context of the motion to exclude, and
`
`those relevant objections and the supplemental
`
`evidence will come into the record, to the extent
`
`that they need to, as part of that motion to exclude
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Page 7
`
`Page 9
`
`supplemental evidence be served on the parties but
`
`not filed.
`
` Here the patent owner filed objections to
`
`the evidence in paper No. 14 and also in paper No.
`
`21, and it appears petitioner responded to that in
`
`paper No. 26, filing supplemental evidence, including
`
`Exhibits 1016 through 1032.
`
` The panel determines that these filings
`
`are contrary to Rule 4264, and those papers 14, 21
`
`and 26 will be expunged in addition to those exhibits
`
`that were submitted, along with paper `26; that's
`
`Exhibits 1016 through 1032.
`
` The procedure that's laid out in 4264 is
`
`one of a motion to exclude. And should the patent
`
`owner in this situation be unsatisfied with
`
`petitioner's attempts to overcome their objection
`
`through service of supplemental evidence, the patent
`
`owner can file, and they can file without
`
`authorization from the board, a motion to exclude.
`
`And as our schedule sets forth, that motion to
`
`exclude can be filed any time between now and the
`
`deadline set forth in the scheduling order, which I
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`proceeding.
`
` Let me ask the petitioner: Any questions
`
`as to those two topics?
`
` MR. HAUGHEY: No. I think I understand
`
`and I appreciate the explanation.
`
` PANEL CHAIR WARD: Okay. And patent
`
`owner, do you have any questions on that?
`
` MR. FISCH: Thank you, Judge Ward.
`
` What I would like to understand is if the
`
`panel at this time then would accept under 4251(b)(2)
`
`a request for additional discovery related to two
`
`narrow issues.
`
` PANEL CHAIR WARD: Yes. Well, what we
`
`would accept, Mr. Fisch, is your request for
`
`authorization to file a motion for additional
`
`discovery. And as we talked about last time, a
`
`motion for additional discovery will be analyzed, in
`
`large part, based upon the board's decision in the
`
`Garmin case and the five Garmin factors that are
`
`relevant to such request for additional discovery.
`
` So if you, the patent owner, are prepared
`
`to have that discussion today and seek authorization
`
`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
`
`3 (Pages 6 to 9)
`
`3
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`December 4, 2013
`
`Washington, D.C.
`
`Page 10
`
`Page 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`for a motion for additional discovery on that point,
`
`we're happy to entertain and hear from you today on
`
`that point. If you would like to discuss that in a
`
`later conference, we can also do it that way.
`
` MR. FISCH: Your Honor, thank you very
`
`much for the clarification.
`
` I would like to address the topic now if
`
`that is okay with the panel.
`
` PANEL CHAIR WARD: Yes, that is fine with
`
`me. I will give the floor to you, Mr. Fisch.
`
` MR. FISCH: Thank you, sir.
`
` The first topic is related to the
`
`examination of the key pieces of prior art in the
`
`case. There are two in particular. It's a fairly
`
`routine request and is identified in document
`
`requests 1 and 2 of the patent owner's first set of
`
`document requests. In there, the specifics that
`
`we're looking for is nothing more complicated than
`
`the ability to send one of our attorneys to the
`
`petitioner's offices to simply see the document as it
`
`presently exists, not a photocopy of it, not a
`
`picture of it, not a digital image of it, but the
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`course, and just simply have somebody inspect the
`
`document.
`
` So, Judge Ward, that is the first of the
`
`topics I would like to raise.
`
` The second I would like to raise relates
`
`to some discovery related to the real party in
`
`interest. The petitioner here, as we know, is
`
`Sipnet. I had not heard of Sipnet prior to these
`
`proceedings. Sipnet, I have now learned, is a
`
`company that is based in the Czech Republic that
`
`resells long distance over the internet, as thousands
`
`of countries across this world do. I understand from
`
`their website that they have a presence also in the
`
`Ukraine and some space in Russia. As I understand
`
`it, they have no operations in the United States.
`
`The patent owner in this case has no patent rights in
`
`the countries that Sibnet operates, namely Czech
`
`Republic, Ukraine and Russia. The patent owner has
`
`not threatened the petitioner Sipnet, nor has it had
`
`any dealings with them prior to this event. And
`
`certainly as Sipnet does not have a presence in the
`
`U.S., it's hard for us to even understand what
`
`Page 11
`
`Page 13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`actual piece of evidence itself.
`
` I'm sure, as the panel is aware, in all
`
`kinds of adversarial proceedings, even many of those
`
`outside of the patent realm, this is not an uncommon
`
`request. I view it as very traditional, and I
`
`believe it would require something on the order of
`
`15 to 20 minutes of time from the petitioner's
`
`counsel. They could certainly just let us see them;
`
`they could have a secretary, a paralegal, an
`
`associate, a partner supervise and allow us maybe to
`
`take a picture or two with our camera phone, but
`
`nothing more than that. And I have mentioned, there
`
`are two key pieces of prior art in the case. It
`
`appears, based on some dialogue between the parties
`
`over the last day or two, that this really now has
`
`boiled down to one particular piece of prior art,
`
`Your Honor, and that is known as the Wynn's
`
`(phonetic) prior art, and that is a user manual
`
`that's purported by the petitioner to contain key
`
`pieces of prior art. I would like to be able to send
`
`someone, as I said, to the office of the petitioner,
`
`their law office in San Francisco, at my expense of
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`relationship they could possibly have. But I will go
`
`a step further and identify that the petitioner here
`
`is a licensee or a reseller, I should say -- to stand
`
`corrected, Your Honors, is a reseller of one of our
`
`licensees. And in that respect, if they did choose
`
`to open up operations in the United States or
`
`anywhere else we had patent rights, they would be
`
`covered by that. And so it is a challenge right now
`
`for me and the patent owner to understand why a
`
`company this small with no business need to be
`
`involved in a case way far away from home in a
`
`country that they don't do business in with a cost
`
`that looks approximately like it will be 50 percent
`
`of this small company's annual profit, and all of
`
`this leads to the conclusion that these folks may not
`
`be the real party in interest. And we would like to
`
`take some very limited discovery to learn who in fact
`
`could be the real party in interest.
`
` Now, we've approached opposing counsel,
`
`Your Honors, with this very set of facts and this
`
`very concern. And we've been stymied. We've been
`
`told that they will not provide this information to
`
`4 (Pages 10 to 13)
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`4
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`December 4, 2013
`
`Washington, D.C.
`
`Page 14
`
`Page 16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`us, they view it as outside the scope, and to the
`
`extent that they have not taught away from the idea
`
`that the petitioner here is in fact the real party in
`
`interest, I submit that really it could fall under
`
`the rubric of this as being relevant information that
`
`is inconsistent with the position advanced by the
`
`party during the proceedings; namely, they filed
`
`identifying us as the real party in interest, we
`
`believe that not to be the case, and in just
`
`traditional meet-and-confer dialogue with the other
`
`side, they have represented to us that they will not
`
`share that information as to who the real party of
`
`interest is. So I would like to be able to present
`
`papers to the panel in greater detail to explain why,
`
`in fact, this narrow scope of discovery is of course
`
`essential.
`
` Thank you, Your Honors.
`
` PANEL CHAIR WARD: Thank you, Mr. Fisch.
`
` Let me address those two points before we
`
`hear from the petitioner on both of those points.
`
`And let me say, first, with respect to the first
`
`issue of the Wynns reference, Mr. Fisch, you
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`seeking to establish with respect to the petitioner
`
`here, are you concerned about potential bar issues,
`
`or what is your concern with respect to the real
`
`party in interest issue in this case?
`
` MR. FISCH: Well, certainly, Your Honor,
`
`thank you for your question.
`
` The core concern over the real party of
`
`interest is in fact whether this proceeding should be
`
`taking place at all. The real party of interest has
`
`not materialized, and the obligation for the real
`
`party of interest to serve this is the one that I
`
`believe is absolutely critical to understanding these
`
`issues. Certainly it would be very difficult to
`
`reach any type of resolution outside of a full trial
`
`with an adversary that is not the real party of
`
`interest, and my understanding already is that Sipnet
`
`has indicated to co-counsel from Kirkland & Ellis
`
`that, in fact, maybe that if we were to pay them,
`
`they would simply go away. And so I would really
`
`like to better understand what is going on here, Your
`
`Honor. I'm feel that trying to understand who the
`
`real party of interest here is is going to be an
`
`Page 15
`
`Page 17
`
`mentioned that you served a first set of document
`
`requests. Just to be certain that we're clear and
`
`the parties are fully informed here, this proceeding
`
`is not governed by the Federal Rules of Civil
`
`Procedure. And unless the parties agree to it, it is
`
`not proper to serve a document request on the other
`
`party that hasn't been agreed to by that party or
`
`authorized by the board under a motion for additional
`
`discovery.
`
` Saying that, at the outset, the request
`
`that you made to me seems fairly reasonable. It
`
`seems like you made a limited request and a
`
`reasonable request to view an original copy of one of
`
`the primary pieces of prior art in this case. I do
`
`want to hear from petitioner as to that point. But
`
`your request does seem reasonable except for the fact
`
`that you appear to have made it in a set of document
`
`requests to the petitioner.
`
` Your second point about the real party in
`
`interest, before I hear from the petitioner on that,
`
`I just had a follow-up question for you, Mr. Fisch.
`
`As to the relevance of the information that you are
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`essential component to bringing this case to any
`
`resolution short of trial.
`
` PANEL CHAIR WARD: Okay. Thank you.
`
` Okay. Thank you. Counsel for
`
`petitioner, I would really like to hear from you on
`
`both of those issues.
`
` MR. HAUGHEY: Yes. So on the first
`
`issue, the first -- there were two document requests:
`
`The first one for NetBIOS. Both were asking for the
`
`original. We can say to counsel that we don't have
`
`an original. We actually obtained a copy of the
`
`NetBIOS from the next party re-examination of this
`
`'704 patent, it's in the record for that, and so I
`
`presume from the comments today that the patent
`
`owner's counsel is not seeking that any more since
`
`they have the same access to that record as we do.
`
` The second reference, we told them that
`
`we only had a copy. We don't have an original. I've
`
`been dealing with a lot of the other discovery
`
`requests with my client, and just recently obtained
`
`information about where they got their copy, and they
`
`got their copy from the -- it was referenced in an
`
`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
`
`5 (Pages 14 to 17)
`
`5
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`December 4, 2013
`
`Washington, D.C.
`
`Page 18
`
`Page 20
`
`expert report in the Stocker litigation in October of
`
`2012. And I understand that my client contacted
`
`Stocker and obtained a copy that way. So, again, we
`
`don't have an original. We have a copy of what was
`
`in the litigation. And the patent owner should have
`
`the same access to that. I'm not sure what use our
`
`copy is beyond what they have. So those are the two
`
`issues there.
`
` With respect to the real party in
`
`interest, it seems to us like this is a fishing
`
`expedition. Our client is -- they're interested in
`
`coming into the U.S. market. They are a customer of
`
`Stocker in one aspect, but they would like to enter
`
`the U.S. market. They are aware of the litigation,
`
`and the reason they are not in the market yet is
`
`because they don't want to get sued when they come in
`
`the market. Thus, the reason for this proceeding.
`
`And our understanding is that the Stocker litigation
`
`settled in December of last year. And, accordingly,
`
`we're a little unclear -- a lot of the
`
`interrogatories and requests are directed to Stocker
`
`in particular and the relationship there, with the
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`providing the patent owner with the true and best
`
`copy of the Wynns reference as you have it?
`
` MR. HAUGHEY: No problem, Your Honor.
`
`That would be an attachment to an e-mail I received
`
`from my client, and their attachment is one they
`
`received from Stocker, so we can provide that.
`
` PANEL CHAIR WARD: Okay. And counsel for
`
`patent owner, do you have any issues with receiving
`
`that copy of the Wynns record?
`
` MR. FISCH: No, Your Honor. That would
`
`be acceptable. Thank you, sir.
`
` PANEL CHAIR WARD: Yes. So let's move on
`
`to the second issue, and as I'm hearing it, it sounds
`
`like petitioner is telling us that they may be
`
`willing to provide additional information to answer
`
`the queries by the patent owner here, but the
`
`interrogatories that were served, and as we talked
`
`about earlier, it doesn't appear that those were
`
`agreed by the parties, so those interrogatories were
`
`properly served on the petitioner. But those
`
`interrogatories were very broad.
`
` Would it be possible for the patent owner
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`Page 19
`
`Page 21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`presumed suggestion that Stocker is the real party in
`
`interest, and it's a little puzzling to us why that
`
`would be if they've settled the case.
`
` So we're just concerned with -- I don't
`
`think my client would have problems answering some of
`
`the interrogatories and things like that, but the
`
`scope seems fairly wide, asking for all sorts of
`
`commercial agreements, and we don't want to just
`
`start replying to stuff and opening up doors to other
`
`evidence and depositions that we believe are
`
`completely tangential to the issues in the proceeding
`
`here.
`
` And I don't know if that sufficiently
`
`addresses it to the panel's satisfaction, Your Honor.
`
` PANEL CHAIR WARD: Yes. Thank you for
`
`those comments, Counsel.
`
` And let's first see if we can tackle the
`
`issue with respect to the Wynns reference. As I
`
`understand it, your best copy is in fact a copy that
`
`was obtained from the Stocker company in related
`
`litigation involving this patent.
`
` Do you have any problem, petitioner, in
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`to attempt to narrow the questions that are being
`
`asked with respect to this real-party-in-interest
`
`issue to a more narrowed list of specifically
`
`identifiable issues regarding their involvement with
`
`any other parties to answer this query that the
`
`patent owner has about who in fact may be the real
`
`party in interest here.
`
` Any comments to that from the patent
`
`owner?
`
` MR. FISCH: Thank you, Your Honor.
`
` No problem narrowing the request. I note
`
`to the panel that this discussion about what Sipnet's
`
`intentions are will require some type of additional
`
`discovery, because, as we just heard on the phone for
`
`the first time, Sipnet intends to come into the
`
`United States. I find that curious in light of the
`
`request from Sipnet's counsel to our colleagues at
`
`Kirkland & Ellis on this case where they asked for
`
`money to go away. They didn't ask for a license,
`
`your Honor; they asked for money. So this is going
`
`to require some digging. I will do the best I can to
`
`narrow. That is absolutely my commitment to this
`
`6 (Pages 18 to 21)
`
`Alderson Reporting Company
`1-800-FOR-DEPO
`
`6
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`December 4, 2013
`
`Washington, D.C.
`
`Page 22
`
`Page 24
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`panel. But the idea that this is a fishing
`
`expedition or is somehow intended to obscure the real
`
`facts of the case is belied by what we just heard on
`
`the phone, as well as the facts as presented by my
`
`colleagues at Kirkland & Ellis.
`
` PANEL CHAIR WARD: Okay. Well, thank
`
`you, Mr. Fisch, and I appreciate your comments there
`
`and your willingness to attempt to work with the
`
`other side in narrowing the requests that you have
`
`for them.
`
` The panel is troubled by the relevance of
`
`this inquiry and how it will play into this case.
`
` So let me say this, as we identified
`
`earlier, you can come to an agreement with the other
`
`side about additional discovery requests, and it
`
`sounds like that they may have opened the door here
`
`for you to make more pointed and specific requests on
`
`this issue that they may be willing to voluntarily
`
`answer to. If they are not willing to voluntarily
`
`answer to those, your other option is going to be to
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
` Do you have any additional issues that
`
`you would like to address today?
`
` MR. FISCH: No, Your Honor. Thank you
`
`very much for the opportunity to be heard today.
`
` PANEL CHAIR WARD: Okay.
`
` Mr. Haughey, do you have any additional
`
`issues that you would like to address?
`
` MR. HAUGHEY: Just maybe one last point.
`
`I know one thing we discussed with patent owner's
`
`counsel before was a declaration from our client as
`
`to facts that would hopefully satisfy the requests in
`
`that way as opposed to having depositions and other
`
`discovery that requires a lot of time and effort.
`
`And I guess I'm not clear if that's still an option
`
`or not. I guess that is something that we need to
`
`discuss with patent owner counsel, but that is
`
`something else we would be willing to do.
`
` PANEL CHAIR WARD: Yes, it sounds like
`
`that's a ripe topic for discussion with the patent
`
`owner.
`
` MR. HAUGHEY: Thank you.
`
` PANEL CHAIR WARD: Okay. Thank you,
`
`Page 25
`
`Mr. Haughey.
`
` If there is nothing else, we will stand
`
`adjourned.
`
` MR. FISCH: Thank you, Your Honor.
`
` MR. HAUGHEY: Thank you, Your Honor.
`
` (Whereupon, at 4:28 p.m. the
`
` proceedings concluded.)
`
`21
`
`22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`come to us, and through one of the five -- at least
`
`one of the five, and hopefully more, of the Garmin
`
`Page 23
`
`factors, if that's necessary, to establish for us why
`
`it is that this information is going to be relevant
`
`for you in a motion for such additional discovery.
`
` MR. HAUGHEY: Your Honor, this is Paul
`
`Haughey for petitioner. If I might ask a point of
`
`clarification. If we provide voluntarily some
`
`answers, does that open the door that we have to then
`
`follow on -- if they didn't require depositions or
`
`other things to follow up on the answers, or can we
`
`at that point insist on the board approving the
`
`discovery?
`
` PANEL CHAIR WARD: It's not as if we
`
`would necessarily be approving the discovery. You
`
`would essentially be agreeing to provide the
`
`information that has been requested, but I don't -- I
`
`can't think at this moment of a circumstance which
`
`that would open you up to requirements to provide
`
`further information outside of the scope of what you
`
`already agreed to.
`
` MR. HAUGHEY: Thank you, Your Honor.
`
` PANEL CHAIR WARD: Let me turn it back
`
`then to Mr. Fisch.
`
`21
`
`22
`
`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
`
`7 (Pages 22 to 25)
`
`7
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`December 4, 2013
`
`Washington, D.C.
`
`Page 26
`
` CERTIFICATE OF NOTARY PUBLIC
` I, LESLIE A. TODD, the officer before whom
`the foregoing proceedings were taken, do hereby
`certify that the proceedings were taken down by me in
`stenotypy and thereafter reduced to typewriting under
`my direction; that said transcript is a true record
`of the proceedings; that I am neither counsel for,
`related to, nor employed by any of the parties to the
`action in which these proceedings were 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.
`
`Dated this 4th day of December 2013.
`
` ____________________________
` LESLIE A. TODD
` Notary Public in and for the
` District of Columbia
`
`My commission expires:
`November 30, 2018
`
`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
`
`8 (Page 26)
`
`8
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`
`
`Telephonic HearingTelephonic Hearing
`
`A
`ability 10:19
`able 5:18 8:12
`11:20 14:13
`absolutely 16:12
`21:22
`accept 9:10,14
`acceptable
`20:11
`access 17:16
`18:6
`achieve 3:9
`action 26:9,13
`actual 11:1
`addition 7:10
`additional 3:21
`4:21,22 5:3,17
`5:18,20 6:5
`9:11,15,17,20
`10:1 15:8
`20:15 21:13
`22:15 23:3
`24:1,6
`address 3:17,19
`3:21 8:18 10:7
`14:19 24:2,7
`addressed 8:8
`8:18
`addresses 19:14
`adjourned 25:3
`adjudication 8:8
`administrative
`1:14
`advanced 14:6
`adversarial 11:3
`adversary 16:15
`agree 4:22 5:16
`15:5
`agreed 6:5 15:7
`20:19 23:19
`agreeing 23:14
`agreement 4:12
`5:3,9,15 8:12
`22:14
`agreements 19:8
`
`alan 2:12
`allow 11:10
`analyzed 9:17
`anne 1:22
`annual 13:14
`answer 20:15
`21:5 22:19,20
`answering 19:5
`answers 23:7,9
`appeal 1:2
`appear 6:4
`15:17 20:18
`appearances 2:1
`appears 5:22 7:5
`11:14
`appreciate 9:5
`22:7
`approached
`13:19
`approving 23:10
`23:13
`approximately
`13:13
`art 10:13 11:13
`11:16,18,20
`15:14
`asked 21:2,18,20
`asking 17:9 19:7
`aspect 18:13
`associate 11:10
`attachment 20:4
`20:5
`attempt 21:1
`22:8
`attempts 7:16
`attorney 26:11
`attorneys 3:7
`10:19
`authorization
`5:19 7:19 9:15
`9:22
`authorized 4:9
`15:8
`available 4:4
`avenue 2:14
`
`
`
`Washington, D.C.Washington, D.C.
`
`aware 11:2
`18:14
`
`B
`b 4:3,6,16,20
`9:10
`back 23:21
`bar 16:2
`based 9:18
`11:14 12:10
`belied 22:3
`believe 8:1 11:6
`14:9 16:12
`19:10
`best 19:19 20:1
`21:21
`better 16:20
`beyond 18:7
`board 1:2 3:5
`7:19 8:8,14
`15:8 23:10
`boards 9:18
`boiled 11:16
`bring 8:13
`bringing 17:1
`broad 20:21
`bubbles 8:7
`business 6:16
`13:10,12
`
`C
`c 1:15 2:4,16 3:1
`california 2:8
`call 3:3,14 8:3
`camera 11:11
`cant 23:16
`case 1:5 4:16 5:4
`9:19 10:14
`11:13 12:16
`13:11 14:9
`15:14 16:4
`17:1 19:3
`21:18 22:3,12
`cases 3:8
`caused 3:13
`
`
`
`December 4, 2013December 4, 2013
`
`Page 27
`
`center 2:7
`certain 15:2
`certainly 11:8
`12:21 16:5,13
`certificate 26:1
`certify 26:4
`chair 3:2 4:15
`5:6,14 9:6,13
`10:9 14:18
`17:3 19:15
`20:7,12 22:6
`23:12,21 24:5
`24:18,22
`challenge 13:8
`choose 13:5
`circumstance
`23:16
`civil 15:4
`clarification
`10:6 23:6
`clear 15:2 24:14
`client 5:10 17:20
`18:2,11 19:5
`20:5 24:10
`cocounsel 16:17
`colleagues 21:17
`22:5
`columbia 26:18
`come 8:12,21
`18:16 21:15
`22:14,21
`coming 18:12
`comments 17:14
`19:16 21:8
`22:7
`commercial
`19:8
`commission
`26:19
`commitment
`21:22
`company 12:10
`13:10 19:20
`companys 13:14
`completely
`
`19:11
`complicated
`10:18
`component 17:1
`concern 3:13
`13:21 16:3,7
`concerned 16:2
`19:4
`concluded 25:7
`conclusion
`13:15
`confer 8:3
`conference 3:2
`3:14 4:11 8:2
`10:4
`conferred 5:9
`considered 4:19
`contacted 18:2
`contain 11:19
`contains 3:11
`contemplates
`8:5
`context 8:19
`contrary 7:9
`controlled 4:2
`copy 15:13
`17:11,18,21,22
`18:3,4,7 19:19
`19:19 20:2,9
`core 16:7
`correct 4:13
`corrected 13:4
`correctly 4:11
`cost 13:12
`counsel 11:8
`13:19 17:4,10
`17:15 19:16
`20:7 21:17
`24:10,16 26:7
`26:11
`countries 12:12
`12:17
`country 13:12
`course 12:1
`14:15
`
`
`Alderson Reporting CompanyAlderson Reporting Company
`
`1-800-FOR-DEPO1-800-FOR-DEPO
`
`9
`
`Straight Path Ex. 2032
`Sipnet EU S.R.O. v. Straight Path IP Group, Inc.
`Case No. IPR2013-00246
`
`

`
`Telephonic Hearing
`
`covered 13:8
`critical 16:12
`curious 21:16
`customer 18