IPR2013-00567 - IPR2013-00568 - IPR2014-00541
` APRIL 14, 2014 Conference Call
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` PATENT TRIAL AND APPEAL BOARD
`
`1
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`WINTEK CORPORATION, )
` )
` Petitioner, ) Case IPR2013-00567
` ) Patent 8,217,902
`vs. )
` ) Case IPR2013-00568
`TPK TOUCH SOLUTIONS, ) Patent 8,217,902
` )
` Patent Owner. ) Case IPR2014-00541
` ) Patent 8,217,902
`______________________________)
`
` Monday, April 14, 2014
` 3:30 p.m. EST
`
` Teleconference before the Patent Trial and
`Appeals Board, Judges Josiah C. Cocks,
`Richard E. Rice,and Adam V. Floyd presiding, the
`proceedings being recorded stenographically by
`Carrie LaMontagne, Certified Shorthand Reporter for
`the State of Oklahoma, License No. 1976, and
`transcribed under her direction.
`
`202-220-4158
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`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 1 of 42
`
`Wintek Exhibit 1015
`Wintek v. TPK
`IPR2013-00567
`
`
` APRIL 14, 2014 Conference Call
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` PATENT TRIAL AND APPEAL BOARD
`
`1
`
`WINTEK CORPORATION, )
` )
` Petitioner, ) Case IPR2013-00567
` ) Patent 8,217,902
`vs. )
` ) Case IPR2013-00568
`TPK TOUCH SOLUTIONS, ) Patent 8,217,902
` )
` Patent Owner. ) Case IPR2014-00541
` ) Patent 8,217,902
`______________________________)
`
` Monday, April 14, 2014
` 3:30 p.m. EST
`
` Teleconference before the Patent Trial and
`Appeals Board, Judges Josiah C. Cocks,
`Richard E. Rice,and Adam V. Floyd presiding, the
`proceedings being recorded stenographically by
`Carrie LaMontagne, Certified Shorthand Reporter for
`the State of Oklahoma, License No. 1976, and
`transcribed under her direction.
`
`202-220-4158
`
`Henderson Legal Services, Inc.
`www.hendersonlegalservices.com
`
`Page 1 of 42
`
`Wintek Exhibit 1015
`Wintek v. TPK
`IPR2013-00567
`
`
`
` IPR2013-00567 - IPR2013-00568 - IPR2014-00541
` APRIL 14, 2014 Conference Call
`
`APPEARANCES OF COUNSEL (all appearing
`telephonically):
`On behalf of the Patent Trial and Appeal Board:
` JOSIAH C. COCKS, ESQ., Administrative Law Judge
`
`2
`
`On behalf of the Party TPK TOUCH SOLUTIONS:
` JOSEPH RICHETTI, ESQ.
` BRYAN CAVE LLP
` 1290 Avenue of the Americas
` New York, New York 10104
` (212) 541-2000
` joe.richetti@bryancave.com
`
` and
`
` DAVID BILSKER, ESQ.
` QUINN EMANUEL URQUHART & SULLIVAN, LLP
` 50 California Street, 22nd Floor
` San Francisco, California 94111
` (415) 875-6600
` davidbilsker@quinnemanuel.com
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` IPR2013-00567 - IPR2013-00568 - IPR2014-00541
` APRIL 14, 2014 Conference Call
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`3
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`On behalf of the Parties WINTECK CORPORATION:
` JOSEPH E. PALYS, ESQ.
` FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
` Two Freedom Drive
` Reston, Virgina 20190
` (571) 203-2700
` joseph.palys@finnegan.com
`
` and
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` NAVEEN MODI, ESQ.
` FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
` 901 New York Avenue, N.W.
` Washington, D.C. 20005
` (202) 408-4000
` naveen.modi@finnegan.com
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` PROCEEDINGS
` MR. BILSKER: This is David Bilsker for
`patent owner. Good afternoon, your Honors. So the
`first issue that we have is something that was
`discussed at the scheduling conference and it was the
`witness statement of petitioner's expert,
`Vivek Subramanian.
` We believe that there was information in that
`witness statement that was relevant to positions that
`he was taking in this IPR, and we did do a meet
`confer with petitioners; and I can't say that we are
`actually in disagreement, but we're at an impasse.
` The issue is that the expert, Dr. Subramanian,
`does not actually have in his possession the witness
`statement any longer and petitioners do not have it
`either. So even if they wanted to give it to us,
`they are not in a position to actually produce it to
`us. So we're at somewhat of an impasse as to what to
`do.
` The witness statement belongs to Apple. They
`were the ones that submitted his testimony in the ITC
`proceedings in which the testimony came out. So it
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`seems that they would be really the only ones that
`would be in a position to produce it to us.
` JUDGE COCKS: This is Judge Cocks.
` So what relief are you seeking from the board?
` MR. BILSKER: Well, I guess we're seeking
`one of two things. Either some guidance from the
`board as to how to go about obtaining that witness
`statement with the Board's assistance and/or leave
`the file and motion to compel to obtain that witness
`statement.
` JUDGE COCKS: All right. Mr. Palys, do you
`have any thoughts in that regard?
` MR. PALYS: This is Joseph Palys.
` My only thoughts are I wouldn't necessarily
`agree that there is no disagreement. We -- from the
`preliminary information that we received from the
`patent owner, we don't think there's an inconsistent
`statement; but as far as the facts are concerned,
`that is true.
` Our client does not have possession of this
`material, nor does our expert. So we really couldn't
`produce it even if there was a motion to compel or
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`some sort of order from the board. It's not in our
`possession, custody, or control.
` JUDGE COCKS: Okay. So this is not
`information that's relied upon. It's being sought
`because it's allegedly inconsistent with the position
`taken in the petition.
` Is that what I'm hearing?
` MR. BILSKER: This is David Bilsker.
` That's correct, your Honor. And I can get into
`that a little bit more if you would like.
` JUDGE COCKS: Yes, please, briefly, I
`guess.
` MR. BILSKER: Sure. As you know, there's
`cases about touch panels, capacitive touch panels,
`and that was the technology at issue in the Apple ITC
`proceedings. And Dr. Subramanian, basically, in
`refuting the obviousness of a combination between two
`references that involved different types of sensors
`stated that it would not be obvious to implement
`those two systems together or combine them together
`because, in fact, they did use different types of
`censors.
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` Now, that statement is directly contradictory to
`multiple statements -- multiple positions that he is
`taking in this IPR. For example, with respect to the
`Fujitsu and the Miller references, the Fujitsu
`reference is one that measures self-capacitance; the
`Miller reference is one that measures mutual
`capacitance but does so in a two-layer solution -- or
`two-layer system.
` The two-layer system is not the type of system
`that is at issue in Fujitsu. It's a one-layer
`system. Two-layer system is what the patent at
`issue, the 902 patent, seeks to distinguish. Yet he
`says it would be obvious to combine those two. So we
`believe that those would reasonably be calculated as
`systems that involve different types of sensors.
` He's saying it would be obvious to combine those
`two; whereas in the previous Apple case, he said a
`system that involved different types of sensors would
`not be obvious to combine. And that's just one
`example. There are many more.
` JUDGE COCKS: Okay. Well, at first blush,
`the question of whether something is obvious is a
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`question of law. And that's something for us to
`decide. So I'm not sure that there is a prejudice
`here if this testimony never comes to light.
` MR. BILSKER: I think he's relying on
`factually -- what people of ordinarily skill in the
`art factually would find to be obvious. He's not
`drawing the legal conclusion, but he is stating what
`those at skill in the art would find reasonable to do
`at the time, which I think is a factual issue which
`we can dispute with him.
` JUDGE COCKS: Okay. Well, I mean, the
`other side is required by rules -- or is required to
`provide evidence of inconsistent statements made in
`the petition, but I think they're saying they don't
`have it.
` That is the case, right, Mr. Palys, you do not
`have this information that we're discussing?
` MR. PALYS: This is Joseph Palys.
` That's correct, your Honor. But just a couple
`points. Just as I'm sure the board appreciates, this
`is information coming from one side of the "B," if
`you will. I haven't even had a chance to look at
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`what they're talking about.
` Obviously, from what we reviewed in the order
`that the patent owner provided to us in the ITC case,
`that when we asked, you know, in particular what
`inconsistent statement they're referring to, based on
`that information, we don't believe that is
`inconsistent.
` But the details that I'm hearing from the other
`side haven't been shared with us. And to be honest
`with you, it sounds like they've already seen it.
`They might already be in possession of it. So I'm
`kind of lost if they're seeking for additional
`discovery on something, one, that we don't have
`possession on. Just to confirm, again --
` JUDGE COCKS: Mr. Palys, I'm sorry to
`interrupt.
` Why doesn't your expert have access to his prior
`report?
` MR. PALYS: I believe that the issue is
`that it was all under a protective order. These were
`confidential documents, and that case has since
`ceased. Under the protective order, they were
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`supposed to destroy all documents in their
`possession. I believe that's the issue here. So he
`was filing a court order to --
` JUDGE COCKS: Are you saying you believe
`this document does not exist?
` MR. PALYS: In his possession, that's what
`he's telling us. I've asked the expert and that's
`what he told us. I even asked our client if they
`would happen to have this information. I have no
`reason to believe that they would because this is a
`different case, a different party, different issues.
`And they confirmed they don't have this information.
`So we do not have possession, custody, or control.
`That's my understanding of the information that they
`requested.
` JUDGE COCKS: Okay.
` MR. BILSKER: This is David Bilsker. I can
`assure you, Judge Cocks, that I do not have
`possession of the expert witness statement. I was
`basically just putting forth what is stated in the
`publicly available commission order from the ITC.
` MR. PALYS: Okay. Thank you.
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` JUDGE COCKS: Okay. So just -- so
`Mr. Bilsker, as I said before, what are you -- what
`relief are you seeking? What are you asking for?
` MR. BILSKER: I believe we would be asking
`for the board to subpoena -- issue a subpoena
`compelling Apple to produce that witness.
` JUDGE COCKS: Mr. Bilsker, the board does
`not have subpoena power, so that is not an option.
`Possibility, we could -- this will allow you to seek
`that information in a different proceeding, a
`district court proceeding, but we don't have subpoena
`power. So that is not something available.
` MR. BILSKER: So then we would be seeking
`leave to get permission from you to seek a subpoena
`from a district court compelling Apple to produce
`that witness statement.
` JUDGE COCKS: Okay. I understand.
` MR. BILSKER: And any testimony.
` JUDGE COCKS: Mr. Palys, it sounds, from
`what you said before, that you haven't necessarily
`had time to consider what the other side is saying.
` Is there a possibility there still is some
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`12
`agreement to be reached here or is that foreclosed at
`this point?
` MR. PALYS: This is Joseph Palys.
` As far as an agreement, I'm not quite sure what
`that agreement is. They're asking for production of
`a document that we don't have. That's the underlying
`issue here. I'm not sure what the board means by
`reaching an agreement.
` JUDGE COCKS: Okay. I understand. I just
`wondered if there was any possibility that the
`parties could somehow confer without requiring board
`intervention at the stage. It sounds like that's not
`the case, though.
` MR. PALYS: Yeah, I don't believe on this
`issue, sir.
` JUDGE COCKS: Okay. Let's table that
`discussion. That Board is going to confer, the Panel
`is going to confer briefly at some point.
` Let's get into the second position and we'll
`confer about all the issues that we have to talk
`about today.
` There was a second item in your e-mail,
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`Mr. Palys, I believe.
` MR. PALYS: Yes. This is Joseph Palys
`again.
` The other issue we would like to discuss -- we
`briefly raised it in our last call with the Board
`that there is a new IPR petition that was filed. I
`believe it's IPR 2014, dash, 00541. And that has
`been afforded a filing date.
` And that IPR relates to the 902 patent. And
`with that petition there was a motion for joinder.
`And in particular with that -- and this is all set
`forth in the motion, your Honor. But in particular
`with that petition it relates to four independent
`claims that are not being reviewed in the 902 patent
`based on decisions from the Board and the 567 and 568
`matters.
` I won't bore you with the details. I'm happy to
`do so, but what it boils down to is these are
`dependent claims, and it really only relates to two
`claim limitations. In fact, out of the four claims,
`two of the claims -- I want to correct myself. Two
`of the claims are actually under review and one of
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`them -- the matters -- I believe it's claims -- I
`don't even want to represent -- the four claims at
`issue are 20, 23, 28, and 30.
` What we're asking here today, your Honor, is to
`consider somehow coming up with a plan to align the
`schedules, assuming the Board grants our -- Wintek's
`motion for joinder. And we raise this issue with the
`patent owner trying to come to some preliminary
`consensus about a schedule, how these four dependent
`claims can be addressed in the proceedings should the
`Board grant a joinder. And we proposed a schedule to
`them. They declined to adopt that schedule and
`didn't propose anything back. That's why we added
`this issue to the call.
` As we set forth in the motion in the 541 matter,
`you know, the Board has done something similar in the
`Ariosa case, whether it was dependent claims. There
`was another IPR petition filed on dependent claims.
`Just like in the Ariosa case, we have the same
`patent, almost the exact, identical, same type of
`prior art.
` The independent claims that these dependent
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`claims stem from -- have the same positions that are
`being considered in the 567 and 568 matter, the same
`declarants. Essentially, the position is that were
`taking in -- taken by the expert and the petitioner
`in the 567 and 568 matters that are essentially this
`new petition -- we're just making sure these four
`claims are going to be under review.
` So that's where we stand right now. And what
`we're seeking from the Board right now is something
`similar to what happened in Ariosa. We just want to
`find a way to come to a plan that can align the
`schedule should joinder be granted.
` JUDGE COCKS: Sounds like, to me, this is
`preliminary for two reasons: One, the Board has not
`decided to institute -- made a decision on the
`institution with the respect to the 541 case. So
`it's preliminary in that regard; therefore, it has
`also not issued a decision on whether it is -- in the
`even that decision we do institute, whether they
`join.
` So I think there's nothing really to discuss
`today except to say that should the Board institute
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`in the 541 case and should they grant the motion for
`joinder, we will make every effort to adjust the
`schedule as well as can be to try and maintain
`consistency and something that's fair to both
`parties.
` I'm not sure what else we can talk about here
`today in terms of hypothetical changes to a --
`scheduling order based on hypothetical joinders.
` MR. PALYS: I'm sorry, your Honor. This is
`Joseph Palys again.
` Just to make a point here. We fully appreciate
`that. And what we're asking for is something -- what
`was similarly -- happened in the Ariosa case, which
`was the Board considered having the parties propose a
`revised schedule before the joinder motion was
`granted. That way there was a schedule that when, in
`that case -- when joinder was eventually -- the
`motion was granted, the revised schedule was adopted,
`it allowed for discovery in the original underlying
`cases or trials to proceed.
` And what we're asking -- why we're proposing
`this, your Honor, is because we're digging into
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`discovery timelines for the 567 and 568. And what we
`want to do is try to come up with a plan, of course,
`with the other side and see if we can work something
`out with the Board's guidance, but really come up
`with a plan that allows the patent owner to get the
`discovery it need on the four claims.
` Again, this is a very similar matter as -- very
`similar issues. In fact, some of the same
`limitations are going to be addressed in some of the
`claims that are already being reviewed in the 567 and
`568.
` So what we're simply proposing is that we asked
`for an expedited schedule for the preliminary
`response in the 541 matter in order for the Board to
`expedite -- you know, at least it gets before the
`Board quicker to make its determination on
`institution and a joinder motion, and at the same
`time allow the parties so there isn't much adjustment
`to the schedule in terms of, you know, the deposition
`for Wintek's expert and discovery and things of that
`nature, that these four claims can be addressed in
`the 567 and 568 matter in due course.
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` JUDGE COCKS: Well, let me ask you. In the
`Ariosa case -- if you have that number, please
`provide it. Let me ask you first.
` Was the decision to institute already -- was
`trial already instituted in the case that was sought
`to be joined?
` MR. PALYS: I believe not. The case matter
`was -- there's two trials. So it's IPR2012, matter
`22 was, I believe, the original IPR that was filed.
`And then matter 250 -- let me make sure -- let me get
`the right date. I think it was IPR2012-250, but I
`want to make sure. It's in our motion. Just a
`second here.
` But in that matter, your Honor, just to answer
`your question, the Board had considered these issues
`with the revised schedule before institution. In
`fact, the Board found that -- expedited the
`preliminary response period for the new petition to
`allow for this to happen.
` MR. MODI: Your Honor, this is Naveen Modi.
`Joe, I can get that information.
` MR. PALYS: Please do.
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` MR. MODI: Your Honor, it's IPR2013, dash,
`0250. And it was paper number 24.
` JUDGE COCKS: Okay. Thank you.
` MR. PALYS: That was the new matter, the
`new petition that was filed.
` JUDGE COCKS: I understand.
` MR. PALYS: Thank you.
` JUDGE COCKS: Mr. Bilsker, any comments on
`this?
` MR. BILSKER: Mr. Richetti is going to
`respond to this.
` MR. RICHETTI: Yes, hi, your Honor. This
`is Joseph Richetti for patent owner.
` I think from TPK's position, your Honor, is, you
`know, I think along the lines of what the Board
`mentioned, that this is premature.
` I think the second part is at least the proposed
`schedule that was provided by Wintek's counsel,
`petitioner's counsel, was trying to cut down the
`patent owner's preliminary response from being due on
`July 4th to April 23rd. So, you know, almost cutting
`it out two and a half months. It seemed like it
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`unduly prejudiced patent owner and, you know, also
`put in built-in assumptions that the Board would be
`able to respond, you know, in an expedited way, like
`petitioner mentioned, such that our May 16th date,
`which is the present date for the final response and
`the 567 and 568 IPRs.
` So I just think this is a situation where the
`deadlines are so far off because the 541 IPR
`petition, the new one that Wintek filed, was accorded
`a filing date of April 4th. And the 567 and 568, the
`ones we're talking about today, our final response is
`due May 16th, so it just doesn't seem that there is a
`way to reconcile these schedules without, you know,
`cutting -- dramatically cutting short, you know,
`patent owner's ability to file a preliminary response
`and the Board to have ample time to respond.
` So, you know, we intend to oppose the motion for
`joinder as set forth in the e-mail, you know, and we
`were notifying the Board and seeking authorization to
`do that. And even that date just to oppose the
`joinder motion won't be due until April 28th.
` So it just seems like because petitioner waited
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`so long to file this third petition -- and it sounds
`like that may be, you know, similar issue raised --
`it seemed like the impact to the original schedule
`would be too greet. And for that reason patent owner
`would like to oppose.
` MR. BILSKER: Okay. It's David Bilsker,
`and I wanted to raise one more issue.
` The petitioner did raise this issue with respect
`to the joinder of the 541 consolidating the discovery
`which is going to take place with respect it to their
`expert. And I just want to make sure that we're not
`slowing down the discovery that is supposed to be
`proceeding in the current cases where we have a
`request for a deposition out for the expert which
`we've agreed should go forward and we are waiting for
`date.
` I'm just hoping that the petitioner is not
`waiting to provide a date in the hopes that there's
`going to be joinder in this new case and that we take
`the discovery of all of the cases together during
`that deposition.
` JUDGE COCKS: Okay. Well, I can appreciate
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`that. At this point -- I mean, the schedule has not
`been changed. Both parties should be operating with
`the respect to the 567 and 568 cases based on the
`scheduling order that is currently in place.
` Mr. Palys, I do want to ask you -- so what
`Mr. Richetti said seems to make some sense to it.
`Essentially, you're asking that the patent owner have
`less time, it sounds like.
` Is that the gist of it?
` MR. PALYS: This is Joseph Palys.
` Yes, your Honor, in terms of the preliminary
`response for the 541 matter, we are requesting that
`we get an expedited due date. And I think what isn't
`being appreciated here, your Honor -- this isn't a
`case where there's a complete new petition with all
`60 -- 40-something claims and all these new issues
`that are being raised.
` I don't know if the Board -- I'm not going to
`suggest that they do this immediately. But I don't
`know if the Board has the chance to consider the
`facts and the issues that were set forth in the
`motion.
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` What we're talking about here are four claims --
`really two limitations of two claims that have
`already been addressed by the Board, in terms of the
`features of this. They are actually redundant of the
`limitations of the claims that are under review in
`the 567 and 568. This isn't something where there's
`totally new issues with TPK to consider.
` We think that expediting the schedule for
`preliminary response is not prejudicial at all. In
`fact, I don't even know if they would be pursuing the
`fact that their patent would be considered patentable
`on the limitations of these claims given that their
`expert has already agreed that this stuff was obvious
`back before the filing date of the 902 patent.
` So I think that factual background, as set forth
`in our motion, it needs to be considered in terms of
`what we're asking from the Board. Certainly, we're
`willing to work with the other side and we're willing
`to work with the Board.
` What we're trying to do here in terms of
`discovery and the proceedings itself is really
`minimize that impact. And we don't think that, yes,
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`there might have to be a shift in the current
`schedule for the 568, 567 in order to accommodate
`this. And we think it could all be done with just a
`two-week shift.
` If we expedite their preliminary responses, as I
`mentioned -- and I think it certainly can be done,
`and we're open to suggestions from the Board and the
`other side. But like in Ariosa, all this could --
`there's precedent for it, that to discuss schedules
`before institution just to accommodate that --
`because at the end of the day here I think the whole
`idea here is to make sure -- obviously, we want to
`make sure that the Board has that opportunity to make
`its mandate to finish these IPR proceedings within
`its one-year time frame. But at the same time, these
`claims are not something that's so outlandish that
`they would require a separate proceeding.
` And one last point, in terms of waiting so
`long -- your Honor, I'm sure this Board appreciates
`that we had filed a request for a rehearing on the
`Board's decision, and the Board ruled against us, and
`we understand that. But we had to wait for that
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`decision to see -- if the Board had granted that
`decision, this would have been a moot issue because
`those four claims would have been in these
`proceedings.
` So what happened is that -- these claims were
`not considered -- not under Inter Party's review for
`the substance of them. It was more of a procedural
`aspect of how, based on the Board's decisions on
`certain prior art, those claims fell out of the 567
`and 568 proceedings.
` So in order to make sure that these are being
`addressed, we had to prepare -- and we actually did
`it rather fast, if you will, your Honor -- to put
`together this petition and have it before the Board
`for consideration.
` JUDGE COCKS: Okay. So to be clear, what
`you're asking for is an expedited period for the
`preliminary patent owner response in the 541 case?
`That's what you're asking?
` MR. PALYS: Yes, your Honor. We're asking
`for that, and we're also asking for -- I guess, to
`allow us to -- I don't know how to you say this
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`politely, but let's have the parties play nice and
`allow us to work together to propose a revised
`schedule to show the Board out how the 567 and 568
`schedule will be adjusted should the Board grant
`institution -- grant institution and grant the motion
`for joinder just like in the Ariosa case.
` JUDGE COCKS: Okay. I think we understand.
` Mr. Bilsker, I take it that you're inclined to
`disagree with Mr. Palys. Is that the -- well, why
`don't you offer some comments and then the Board's
`going to confer about the issues.
` MR. BILSKER: Mr. Richetti, did you want to
`comment?
` MR. RICHETTI: Yeah, sure. This is
`Joseph Richetti for patent owner.
` I think the real issue is the due date, the
`current due date, for the 567 and 568 IPR, for the
`final response, is May 16th, and any kind of
`modification to the preliminary response date in the
`541 IPR would seem to be, you know, in conflict with
`being able to reach that date.
` And so I think while it's been fashioned right
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`now the argument from petitioner is just trying to
`expedite patent owner's preliminary response date, I
`think it necessarily implicates the current deadline
`and the current schedule for the 567 and 568 IPRs,
`which we, as the patent owner, you know, are not
`seeking to move those dates.
` And from, you know, our past discussion and the
`scheduling order with the Board, it was made clear
`that, you know, it's premature to do that. So I just
`don't think that based on the dates and when t
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