Filed on behalf of Game Show Network, LLC and WorldWinner.com, Inc.
`By: Brenton R. Babcock
`
`Ted M. Cannon
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
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`Irvine, CA 92614
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`Tel.: (949) 760-0404
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`Fax: (949) 760-9502
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`Email: BoxGSN@Knobbe.com
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`Case IPR2013-00289
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
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`Game Show Network, LLC and WorldWinner.com, Inc.,
`Petitioners,
`v.
`Patent Owner of
`U.S. Patent 6,174,237 to Stephenson
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`TRANSCRIPT OF PROCEEDINGS
`FEBRUARY 14, 2014
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`By: Brenton R. Babcock
`
`Ted M. Cannon
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`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`
`
`Irvine, CA 92614
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`Tel.: (949) 760-0404
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`Fax: (949) 760-9502
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`Email: BoxGSN@Knobbe.com
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`Case IPR2013-00289
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`Game Show Network, LLC and WorldWinner.com, Inc.,
`Petitioners,
`v.
`Patent Owner of
`U.S. Patent 6,174,237 to Stephenson
`
`
`
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`TRANSCRIPT OF PROCEEDINGS
`FEBRUARY 14, 2014
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`
`In The Matter Of:
`
`GAME SHOW NETWORK, LLC
`v.
` JOHN STEPHENSON
`
` ___________________________________________________
`
`CONFERENCE CALL REGARDING REEXAMINATION
`February 14, 2014
`
` ___________________________________________________
`
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`
`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GAME SHOW NETWORK, LLC, and )
`WORLDWINNER.COM, INC.; )
` )
` Petitioners, )
` ) Case IPR2013-00289
` vs. )
` )
`JOHN STEPHENSON; )
` )
` Patent Owner. )
`_______________________________)
`
` CONFERENCE CALL REGARDING REEXAMINATION
` Irvine, California
` Friday, February 14, 2014
`
`Reported by:
`Lynda L. Fenn, CSR, RPR
`CSR No. 12566
`
`800-826-0277
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`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
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`Page 2
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`This CONFERENCE CALL REGARDING REEXAMINATION, taken on
`behalf of Petitioners, at 2040 Main Street, Irvine,
`California, at 12:00 p.m. and ending at 12:40 p.m.,
`Friday, February 14, 2014, reported by Lynda L. Fenn,
`CSR No. 12566, Certified Shorthand Reporter within and
`for the State of California.
`
`APPEARANCES:
`Before SALLY C. MEDLEY, KEVIN F. TURNER, and BENJAMIN
`D.M. WOOD, Administrative Patent Judges
`(Appearing Telephonically)
`For the Petitioners:
` KNOBBE, MARTENS, OLSON & BEAR, LLP
` BY: BRENTON R. BABCOCK, ESQ.
` TED M. CANNON, ESQ.
` MICHAEL FRIEDLAND, ESQ.
` 2040 Main Street, 14th Floor
` Irvine, California 92614
` (949) 760-0404
` brent.babcock@knobbe.com
` ted.cannon@knobbe.com
` michael.friedland@knobbe.com
`For the Patent Owner (Appearing Telephonically):
` MERCHANT & GOULD
` BY: ROBERT A. KALINSKY, ESQ.
` THOMAS J. LEACH, ESQ.
` 3200 IDS Center
` 80 South Eighth Street
` Minneapolis, Minnesota 55402
` (612) 336-4771
` rkalinsky@merchantgould.com
` tleach@merchantgould.com
`Also Present (Appearing Telephonically):
` Miles Zvi
` In-House Counsel at GSN
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
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`Page 3
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` Irvine, California
` Friday, February 14, 2014
` 12:00 p.m. - 12:40 p.m.
`
` HONORABLE MEDLEY: We will begin with a roll
`call, beginning with the petitioner.
` MR. BABCOCK: Good afternoon, Your Honors. I
`would like to inform the Board that we do have a court
`present. Her name is Lynda Fenn, F-e-n-n, with Merrill,
`M-e-r-r-i-l-l, Legal Solutions.
` HONORABLE MEDLEY: Okay. Thank you.
` MR. BABCOCK: So on behalf of petitioner it's
`Brent Babcock and Ted Cannon. Also listening in is
`in-house counsel at GSN, Miles Zvi, spelled Z-v-i, and
`litigation counsel for GSN, Michael Friedland,
`F-r-i-e-d-l-a-n-d.
` HONORABLE MEDLEY: Okay. Thank you. And then
`for patent owner.
` MR. KALINSKY: Yes, Your Honor, this is Rob
`Kalinsky and I have a colleague here, Tom Leach, we are
`for Patent Owner, John Stephenson.
` HONORABLE MEDLEY: Okay. And, Mr. Kalinsky,
`do you object to petitioner having the additional
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`participants, or listening in today?
` MR. KALINSKY: No, Your Honor.
` HONORABLE MEDLEY: Okay. Thank you. And then
`also, Mr. Babcock, do you oppose patent owner having
`additional colleagues there with them?
` MR. BABCOCK: Not at all.
` HONORABLE MEDLEY: Okay.
` MR. KALINSKY: And Mr. Leach, so the record is
`clear.
` HONORABLE MEDLEY: Oh, okay. Thank you very
`much.
` All right. So we understand there's been a
`requested a conference call regarding the reexamination
`that the patent owner just recently filed so we'll let
`the petitioner explain.
` MR. BABCOCK: Thank you, Your Honor, and this
`morning I have prepared kind of a formal presentation.
`It's probably about eight to ten minutes so if you'll
`bear with me I would like to walk through that with the
`Board.
` HONORABLE MEDLEY: Okay. Well, you could give
`us kind of the high level. I don't know that we're
`going to make a decision to -- I understand you want to
`either stay or -- stay the re-exam or terminate it --
` MR. BABCOCK: Right.
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`800-826-0277
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`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
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` HONORABLE MEDLEY: -- or file a motion so I
`don't know that we're prepared to decide the motion, so
`can you just give us a high level as to why you think
`you need authorization to begin with to file a motion?
` MR. BABCOCK: Right. That's exactly what I'm
`prepared to do, Your Honors.
` HONORABLE MEDLEY: Okay.
` MR. BABCOCK: So our request, as you've
`pointed out, is not to grant anything today. It's
`simply to authorize GSN to file a motion.
` The motion that we're proposing is a motion to
`terminate the ex parte reexamine that's currently
`pending before the CRU or alternatively to stay or, as
`some panels refer to it as suspend, the ex parte
`reexamine.
` The authority that is provided for the Board's
`ability to do such is set forth in the statute 35 U.S.C.
`§ 315(d). That's as implemented in the Board's rules
`and regulations at 42.122(a), and the Trial Practice
`Guide also makes a reference to the 77th Fed. Register
`157, pages 48756 through 48757.
` And we have noted that there have been a
`couple of cases -- and we haven't done exhaustive
`research here, Your Honors, but we've noted there's a
`couple cases that have addressed this issue and have
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`800-826-0277
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`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
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`stayed pending reexaminations. One of which is the
`Lumondi v. Lennon Image Technologies case. That's IPR
`2013, dash, 00432, Paper 7 and another case is Invue
`Security v. Merchandising Technologies and that is IPR
`2013, dash, 00122 and that's Paper 15.
` Just a quick chronology, Your Honors, you
`recall on January 16th, 2014, of this year, we had a
`conference call to discuss patent owner's request to --
`for authorization to file a motion to amend and we
`discussed that motion. I asked the panel if they would
`inquire about the nature of the potential amendment and
`I think, Judge Medley, you actually suggested maybe the
`amendment would be directed to incorporating into
`Claim 1 the limitation of head-to-head competition
`between the player and the computer and the amendment
`was discussed. I think you -- the Board authorized
`filing that motion to amend.
` The next issue that was raised was whether or
`not the patent owner could file an ex parte re-exam and,
`of course, I raised the issue of, well, they certainly
`can't end-run the IPR by trying to get minor amendments
`through an ex parte process. They need to get those
`here and the Board agreed but basically said, you know,
`if there's wholesale amendments, different types of
`amendments that are going to be made that are
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`800-826-0277
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`www.merrillcorp.com/law
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
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`dramatically different, then those are permitted -- the
`ex parte reexamination process is permitted. And I
`think the patent owner assured us that that wasn't their
`intent to try to get minor amendments through the
`ex parte process.
` On the 21st of January the Board did issue an
`order and the order discussed the ex parte re-exam
`authorization and basically said that -- I quote, it
`said if there a complete remodeling of its claim
`structure according to a different strategy was what was
`authorized.
` February third was the deadline for patent
`owner to file a motion to amend. They did not. They
`chose not to seek any amendments. And then about a week
`later patent owner actually filed an ex parte re-exam.
` I've attached a copy with the -- with the
`request for the conference call and I'll direct, in
`particular, the Board to page 17 which has the proposed
`claims, and as you can see there's only one amendment to
`Claim 20 which is essentially Claim 1 except for this
`head-to-head competition, this minor deviation which is
`exactly the amendment that we had discussed in the
`conference call.
` And so they are, in fact, not seeking any type
`of complete remodeling or different claim strategy.
`
`800-826-0277
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`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
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`Page 8
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`They are actually seeking the exact same type of
`amendment that should be sought here.
` So, in our view, Your Honors, this is exactly
`the type of amendment that should have been filed on
`February third as a motion to amend, not in a separate
`PTO proceeding. It's a transparent attempt to end-run
`this IPR process and try to get the same result through
`a different body at the patent office, namely the CRU.
` I think here the patent owner is trying to
`avoid the more rigorous inter partes process and, in
`fact, trying to use the ex parte process to end-run this
`panel and the Board.
` The issues that are raised here with regards
`to the head-to-head competition and the claim
`construction are issues that have been part of this IPR
`from the beginning, including the petition, the
`preliminary response from the patent owner, the decision
`the Board issued to institute trial. Even
`Dr. Whitehead, our expert -- GSN's expert's
`cross-examination dealt with this issue. It was raised
`in a conference call and in the recent response that was
`filed by patent owner on February 10th -- excuse me,
`February third.
` It's the same reference at issue here, Walker,
`which is the same prior reference. In fact, Stephenson
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`800-826-0277
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`isn't even raising any new arguments. They are simply
`saying, gee, if the Board is right -- they're saying
`this to the CRU. They are saying, well, if the Board is
`right and these current claims are unpatentable, then
`CRU examiner, please, give us this minor amendment so we
`can get a patent through you guys instead of trying to
`get it through the Board.
` The basis for the request for the motion would
`be basically duplication and inefficiency that the
`patent owner is having the Patent Office decide
`essentially the same issues and largely overlapping
`issues through two different bodies, the CRU and the
`PTAB, resulting in the possibility of yet another
`lawsuit over very similar issues by Stephenson and
`probably another IPR before this -- before the Board on
`a very similar potential patent.
` They also have the possibility of inconsistent
`results where you have the CRU rendering decisions and
`claim constructions that very likely could be different
`from what the Board is issuing.
` And here there's really no prejudice to
`Stephenson because if they had wanted these claims to
`issue, they could have and should have sought them in
`this proceeding and they would have or could have issued
`even earlier if they would be able to get them.
`
`800-826-0277
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`www.merrillcorp.com/law
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 10
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` But clearly the issue here is they clearly
`felt they could not get them here so they are trying to
`get them through what they believe is probably a more
`favorable venue and more favorable forum.
` And I think finally, Your Honor, I think this
`sets a terrible policy to allow patent owners to end-run
`IPRs by filing ex parte re-exams. Congress allowed and
`has allowed patent owners to amend their claims to avoid
`the prior art in an IPR. The process is supposed to be
`if you have amendments you want to make to avoid the
`IPR, to avoid the cancellation of the claims, to get
`around the prior art you raise those in front of the
`Board and in front of the petitioner, get those resolved
`here and now. You don't try to hold off on that and use
`a different process to essentially get the same minor
`claim amendments through a different process.
` So our motion, Your Honor, would be to
`terminate the re-exam. Maybe that's a harsh remedy, but
`we think here the remedy is warranted because
`essentially if they had filed a motion to amend the
`claims on February tenth with this same proposal, the
`Board would have denied it. They would have said it's
`untimely. It's a week too late.
` So the fact that they filed a re-exam request
`seven days after the deadline to seek them in claims, I
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`800-826-0277
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`www.merrillcorp.com/law
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 11
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`think it should terminate the re-exam. They should not
`be permitted to proceed. But as an alternative and in
`light of the cases we've seen, we'd certainly request a
`motion that would authorize us to -- or have the Board
`suspend the proceeding or stay the proceeding, the
`ex parte re-exam, pending the outcome on a final judge
`in this IPR. Thus determine whether or not it should
`even proceed at all given the potential unlikely
`estoppel effects and if it did in what context it would
`proceed, but certainly not until after this proceeding
`is over and guidance can be given to the CRU regarding
`what, if at all, should be happening in the CRU.
` HONORABLE MEDLEY: Okay. Thank you,
`Mr. Babcock.
` Mr. Kalinsky?
` MR. KALINSKY: Thank you, Your Honor. I'll be
`very brief.
` I think there's the two issues: The
`termination and the stay.
` On the termination side I'd like to point out
`that there is simply no precedence for terminating an
`ex parte re-exam in this context. You know, the only
`basis that petitioner has identified is just a bold
`statement that the Board has the ability to terminate
`and it's never been done in this context so we think
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`800-826-0277
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`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 12
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`that's a wholly inappropriate remedy.
` As far as the actual bases for that request we
`see no duplication. In this proceeding we are going to
`proceed with the original claims set and the dispute
`will be over claim interpretation and once that's
`completed we will entertain the -- or once this is
`completed we would entertain the amendments that would
`be handled by the CRU.
` And as far as the claim set themselves, it's a
`completely new claim set that we're seeking in the
`ex parte re-exam, so changes were made to the
`independent claim and there's a number of dependent
`claims that have been added to that claim set.
` And finally, the assertion that this was filed
`untimely, you know, after the time period was -- was
`told for filing an amendment in this proceeding again
`has no basis for -- we, as patent owner, have the
`ability to file an ex parte re-exam at any point so
`that's our position on termination.
` And I guess finally and probably the largest
`part of that is that we -- you know, we have been given
`guidance by the Board to seek this process and in the
`decision and other decisions there's been significant
`language that says if a patent owner wishes to proceed
`with claim amendments, they are encouraged to seek them
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`800-826-0277
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`Page 13
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`in an ex parte context.
` And then finally in the request for a stay, we
`believe that's wholly premature at this point. The
`petitioner had identified the Invue Security's product,
`IPR 2013, dash, 00122 and in Paper 11 the panel
`suggested that any request to terminate and -- or excuse
`me, to stay an ex parte re-exam prior to institution of
`the re-exam is premature. And so I direct the Board to
`footnote one of Paper 11 where the denial for the stay
`was based, at least in part, on the fact that no ex
`parte reexamination had been granted.
` HONORABLE MEDLEY: Okay. Thank you.
` Yes, that was going to be a question I had for
`Mr. Babcock.
` What's the prejudice if we were to wait to
`first see if the CRU actually granted the reexamination?
` MR. BABCOCK: Well, Your Honor, I believe the
`issue here really is the policy basis that Congress and
`the Board were attempting to evoke is to avoid
`duplication of effort by the office and to avoid
`inefficiency.
` And essentially what patent owner is
`suggesting is that you are going to go ahead and have
`the CRU evaluate this current patent, construe the
`claims and evaluate the same prior art that this panel
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`800-826-0277
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`www.merrillcorp.com/law
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`is doing in this proceeding currently. So even before
`institution in order to decide whether or not the
`standard is met for granting an ex parte re-exam, the
`CRU has to invest some substantial amount of effort and
`time to evaluate the prior art, to evaluate the claims,
`not only the claims that exist in the current patent but
`in the very, very mildly amended claim forms. I mean,
`again, there's only one amendment which is the
`head-to-head competition which is a very insignificant
`change.
` And so I disagree with the panel in that --
`and, again, that wasn't the basis of their decision, but
`I think here this panel has a very distinct opportunity
`to say, you know, the policy behind the stay, the
`suspension rule is to avoid the CRU and the Board, the
`PTAB doing the same work on the same issues at the same
`time.
` HONORABLE MEDLEY: Yeah, I understand that,
`but we -- this is not the first time that this has
`occurred. I mean you cited two other cases where we had
`two parallel tracks running together.
` MR. BABCOCK: And both of those cases, the
`cases that we cited, the Board did -- the Board did
`suspend the ex parte re-exam.
` So I think here you have a situation where
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`800-826-0277
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`it's a very clear end-run attempt. I mean if you look
`back at what we discussed during our conference call,
`you look at the timing of this amendment, you look at
`the nature of the amendment, you see it's exactly the
`type of amendment that should have been sought in this
`process and to say to the patent owner that's fine,
`we'll just let the CRU run with this, you would be
`encouraging a very -- I believe a dangerous precedent to
`allow patent owners to completely avoid the amendment
`process that's supposed to happen here in this IPR and
`seek minor amendments in the CRU and talk about a flood
`of ex parte re-exams.
` I don't think your colleagues -- that the CRU
`would be happy to see all of these IPRs suddenly blossom
`into parallel ex parte re-exams and nobody wants to file
`an amendment anymore affecting the IPR because, hey, you
`know, it's a lot easier to get this done in the ex parte
`process where the petitioner can't participate.
` So now you are going to get a bunch of
`ex parte re-exams filed where the CRU is going to have
`to evaluate them and evaluate whether or not to initiate
`or not and the Board is going to say, well, we'll let
`you do all that work and then we'll decide whether or
`not to stay or not.
` This is a good time, I think, and this is a
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 16
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`good case where you've got a set of facts that are so on
`point to say this isn't what you're supposed to be
`doing, patent owner. We talked about this. We said you
`can file an ex parte re-exam and the language was very
`clear. I think the Board said very clearly if you have
`a complete remodeling of the claim structure according
`to a different claim strategy, there's no way that test
`has been met here, not even facially so it's clearly an
`end-run.
` I think the Board should put its foot down and
`say, no, we're not going to let this happen in the
`ex parte process and subject the CRU to this type of
`duplication of Patent Office effort when Congress has
`already provided for the very relief that you are trying
`to seek through this process.
` If you want to get minor amendments, get them
`through us, you had that chance. We discussed that very
`amendment here and we said bring it in here and you
`decided not to.
` So I think if there's a chance for the Board
`to make some precedent that stands for what the process
`should be this is a good opportunity. You are probably
`not going to find a clearer case of an end-run than this
`case.
` HONORABLE MEDLEY: Okay. I know there's at
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 17
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`least one case and I can't remember the IPR number off
`the top of my head. It might be the ZTE case where they
`came in and they did file a reissue application but, you
`know, I guess, Mr. Babcock, I think you kind of have a
`good point there in that, you know, running two of these
`together may not be the best or the right thing to do,
`and so I think in the ZTE case, if that's the case I'm
`thinking of, the patent owner pursued claims outside of
`the IPR, but they also disclaimed the claims that were
`in the IPR.
` So, in other words, they requested adverse
`judgment, said we're out of here, we're going to go
`pursue in another forum.
` And so I just wanted to ask the patent owner
`is that something that you would contemplate in this
`case?
` MR. KALINSKY: Your Honor, we have not
`discussed that with the client, but I think we have a
`slightly different view than the petitioner in that we
`see little or no duplication, you know, in the -- in
`this proceeding we're going to be addressing the claims
`as they originally stand and addressing claim
`construction issues. And we realize that while we
`believe the request to stay is premature, we realize
`that once the ex parte reexamination, should it be
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 18
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`granted and we believe it will be granted, then it's
`likely that that process will be stayed. And I'm not
`suggesting that maybe the patent owner wouldn't even,
`you know, acquiesce in having that stayed.
` So our view is that this forum will address
`claim construction issues and the original claims. And
`then the claims that were filed in the ex parte re-exam,
`while petitioner may disagree, we believe are patentably
`distinct for sure from these claims and are patentably
`distinct from Walker or that's our hope.
` And there is the independent Claim 20 and then
`a number of dependent claims off of that that further
`refines our claiming strategy and so we see little or no
`duplication because the work that will be done by the
`CRU and the ex parte re-exam will be wholly based upon
`those new claims and the new issues that will be needed
`to be addressed with those new claims.
` HONORABLE MEDLEY: So, if I understood what
`you said, you would not object to a stay once the CRU
`makes its determination to grant the petition.
` MR. KALINSKY: That's correct. And to be
`honest, Your Honor, from what we've seen, you know, the
`cases that were identified by the petitioner, he's
`correct, those cases did grant stays. The difference is
`those stays were granted after the ex parte review has
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 19
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`been instituted.
` HONORABLE MEDLEY: So back to you,
`Mr. Babcock. I'm not sure that I got those -- the
`answer maybe I was hoping to get.
` What is the prejudice? Why can't we just wait
`to see what the CRU does and that way we would avoid the
`whole motion process here which the Board tries to avoid
`to make things more efficient, less costly to,
`certainly, your respective clients? Why can't we wait
`and see what happens? And then if they do grant the
`petition, you know, petitioner says -- or patent owner
`has -- counsel for patent owner has said that they would
`not object to a stay at that point.
` MR. KALINSKY: Your Honor, just to be clear,
`I'm not -- I would have to clarify that with my client.
`That's my belief that we would be fine and I can do
`that. But my understanding -- my belief, I would have
`to clarify that with my client. So, yes, our brief
`would be a stay would be instituted.
` HONORABLE MEDLEY: Okay. And then, you know,
`assuming -- we would get to the end -- we would stay it,
`get to the end, it's certainly our judgment -- if we
`were to enter judgment and make a final determination
`with respect to the original claims, that would go
`before the CRU along with the appropriate rule that
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 20
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`says -- you know, we would alert the CRU to say, hey,
`you know, the claims that they are trying to pursue in
`this proceeding, the reexamination, they have to be
`patentably distinct and the Board has made no new --
`no -- has no discussion either way with respect to
`whether it would or would not have been obvious for a
`computer to play a person, as opposed to just
`administer. I think that that is left for another day,
`but it seems to me that might be the appropriate way
`procedurally to handle the situation.
` MR. BABCOCK: Well, I respectfully disagree
`for a couple reasons, Your Honor. I think, first of
`all, you have jurisdiction over this patent now and the
`point I was trying to make and maybe I didn't make it
`clearly enough was that the policy here is to avoid
`office duplication of effort.
` So you are allowing the CRU to now evaluate
`the merits of the patent claims, the bulk of which are
`identical. We're not just looking at this one
`limitation. We're looking at the entirety of the
`claims, the bulk of which are identical and make an
`assessment of prior art and of the claim set that this
`panel is also addressing so that is duplication of
`Patent Office effort. The reason why this regulation
`was passed was to avoid duplication of Patent Office
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 21
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`effort when the Board has primary jurisdiction.
` The second point is we don't know what the CRU
`is going to do in their decision to institute or not.
`We don't know what they're going to say or how they're
`going to construe these claims or how they're going to
`initiate or not initiate. And what the patent owner
`here is hopefully hoping for some ammunition they can
`use as to, hey, look, here's what the examiner over at
`the CRU said. They said the claims were patentable,
`there was no substantial question of patentability or
`whatever.
` We don't want in this -- now that you have
`jurisdiction over this case the CRU should not be
`issuing decisions on the merits of these -- of the prior
`art and the merits and the meaning of the claims in this
`patent, particularly when they're almost identical to
`the patent at issue here.
` So there is prejudice to us to have the CRU
`off in an ex parte process working with the patent owner
`to issue who knows what, to say what the claims might
`cover, what they might not cover, what they mean, what
`they don't mean. And it's not just this limitation.
`It's the entirety of the claims you are going to be
`looking at. And then to have that somehow crop up in
`this proceeding.
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 22
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` So, again, for both of those reasons, the
`duplication of the Patent Office resources and the
`duplication of -- the potential prejudice and
`inconsistent results that could occur should the CRU
`institute or not institute a re-exam.
` There is no reason here why the petitioner
`should have filed this ex parte re-exam particularly now
`they are saying they're willing to stay it. So the only
`basis here for them to do this is to try to get some
`leverage in this case, to try to somehow get the CRU to
`say something that they can leverage against us in this
`case to leverage in this proceeding and that's not
`proper. You have jurisdiction. You should grab this
`patent and say this is ours for now. The CRU, you butt
`out until we make a decision and then you pick it up.
` HONORABLE MEDLEY: Okay.
` MR. KALINSKY: Your Honor, let me just respond
`very quickly if it's okay.
` HONORABLE MEDLEY: Sorry.
` MR. KALINSKY: I guess I first say that we
`recognize that you have jurisdiction over this patent
`and to the extent that's true nothing we do in the CRU
`is going to wrest that away from you and we understand
`that and that's not our intention.
` Our intention was to follow the guidance of
`
`800-826-0277
`
`Merrill Corporation - Los Angeles
`www.merrillcorp.com/law
`
`
`
`CONFERENCE CALL REGARDING REEXAMINATION - 2/14/2014
`Page 23
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`the Board in the decisions that said if you want claim
`amendments, those amendments are most appropriately
`pursued in an ex parte process and with the realization
`that that process may have been after the IPR is
`completed.
` And so that was our whole intent and goal with
`filing an ex parte re-exam and to suggest that the claim
`amendments are somehow disingenuous or not meaningful,
`we wholly disagree with that. They are meaningful.
`Like I mentioned earlier, we believe they are patentably
`distinct and that they are -- are claims of a different
`scope. And so we're not suggesting -- we're very --
`trying to pursue claims of the same scope in the
`reexamination and someh
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