Transcript of TELEPHONIC CONFERENCE CALL HELD
`BEFORE JUDGES EASTHOM, SIU, TIERNEY
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`Date: January 10, 2014
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`Case: RPX CORPORATION v. VIRNETX, INC. ET AL.
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`Planet Depos Asia
`Phone: 888-433-3767
`Fax: 888-503-3767
`Email: international.transcripts@planetdepos.com
`Internet: www.planetdepos.com/asia
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`Court Reporting I Videography I Videoconferencing I Interpretation I Transcription
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`RPX Corporation Exhibit 1076
`RPX Corporation v. VirnetX, Inc. et al.
`Case IPR2014-00171
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`
`BEFORE JUDGES EASTHOM, SIU, TIERNEY
`
`Date: January 10, 2014
`
`Case: RPX CORPORATION v. VIRNETX, INC. ET AL.
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`. ,
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`Planet Depos Asia
`Phone: 888-433-3767
`Fax: 888-503-3767
`Email: international.transcripts@planetdepos.com
`Internet: www.planetdepos.com/asia
`
`Court Reporting I Videography I Videoconferencing I Interpretation I Transcription
`
`RPX Corporation Exhibit 1076
`RPX Corporation v. VirnetX, Inc. et al.
`Case IPR2014-00171
`
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`UN ITED STATES PATENT AND TRADEMARK OFF I CE
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`BEFORE THE PATE NT TRIAL AND APPEAL BOARD
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`RPX CORPORATI ON ,
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`Petitioner ,
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`Case IPR
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`2 0 1 4-0 017 1
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`Patent-
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`VIRNETX ,
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`INC. AND SCIENCE APPL ICATION
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`6 , 502 , 135
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`INTERNATIONAL CORPORATION ,
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`Patent Owner
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`Te l e phonic Conference Call
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`Held Before J udges Eastham, Siu, Tierney
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`Friday, Januar y 10, 201 3
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`2 :00 p.m.
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`Job No .:
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`509 78
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`Pages:
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`1 - 4 0
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`Reported b y : Bonnie Panek
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`• • ___ 111 DEPOSITION OFTI:LEPHQNI( CONfERENCE CALL IIElD BEroRE JUDGES EASTHO.\1. SIU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,20] 3
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`A P P EA RAN C E S
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`ON BEHALF OF PETI TIONER RPX:
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`OLIVER R . ASHE , JR., ESQUIRE
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`ASHE , PC
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`114 40 I saac Newto n Square Nor t h
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`Su i t e 210
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`Res t on, Virg i n i a
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`20 19 0
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`( 703) 467 - 900 1
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`GREGORY M. HOWI SON, ESQUIRE
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`HOWISON & ARNOTT, LLP
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`Lin coln Centre I I
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`54 20 LBJ Freeway
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`Su ite 66 0
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`Dal l as, Texas 752 40
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`(972) 479 - 0462
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`PLANET DEPOS I 888.433.3767 I WWW.PLANETDEPOS.COM
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`______ OEPOSITION or- TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTIIOM. $IU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
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`A P PEA R AN C E SC 0 N TIN U E 0
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`ON BEHALF OF RESPONDENT VI RNETX:
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`JOSEPH E. PALYS , ESQUIRE
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`EL LI OT C. COOK , ESQU IRE
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`FINNEGAN, HENDERSON, FARABOW , GARRET T &
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`DUNNER , LLP
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`Two Freedom Square
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`11955 Freedom Dri ve
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`Resto n, Virg inia 2019 0
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`(571) 203 - 2700
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`NAVEEN MODI, ESQUIRE
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`FI NNEGAN , HENDERSON, FARABOW, GARRETT &
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`DUNNER, LLP
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`90 1 Ne w York Avenue , NW
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`Washi ngton, D. C.
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`200 01
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`(202) 408-4 000
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`______ DI:I'OSITJON OF TEl E PHO~ I C CONr:ERENCE CALL HEll) BEFORE JUDGES r:.ASTHOM. SIU. T IERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,20 13
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`A P PEA RAN C ESC 0 N T I N U E D
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`JAMES D. STEIN, ESQUIRE
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`FINNEGAN, HENDERSON, FARABOW, GARRETT &
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`DUNNER, LLP
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`3500 SunTrust Plaza
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`Atl anta , Georgia 30308
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`(404) 653-6400
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`ON BEHALF OF RESPONDEN T APP LE:
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`JEFFREY P . KUSHAN, ESQUIRE
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`J OSEPH A. MICALLEF, ESQUIRE
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`SIDLEY AUSTIN , LLP
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`1501 K Street , NW
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`Washi ngton , D.C .
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`20005
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`(202) 736 - 8000
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`• ____ ~ D(;P()S ITION OF TELEPHUN IC CONFERENCE CAl.L HELD BEfORE JU DGES EASTHOM . Sil L TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
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`CONTENTS
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`REMARKS BY :
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`Mr , As h e
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`Mr . Pa1ys
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`Mr. Kushan
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`Mr. As h e
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`Mr . Pa 1ys
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`Mr . Mod i
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`Mr . Ashe
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`SCHEDULING DISC USSION S :
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`E X H I B IT S
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`(Non e Marked.)
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`• __ • • IIII~DEPOSIT10N OF TELEPHONIC CONrERENCE CALL HELD BEfORE JUDGES EASTHQtvL STU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
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`PRO C E E DIN G S
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`MR. ASHE: Well,
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`I think that we're ready to
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`go. We have the court reporter on the line, and I'd
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`just like to confirm at the outset that everyone on the
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`line is subject to the protective order.
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`I think it is
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`the same audience that we had on Wednesday's call, but
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`if we can just get confirmation of that.
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`JUDGE TIERNEY:
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`If anyone is on the line who
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`is not currently subject to the protective order,
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`please so announce. Okay. At this point I heard no
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`one object, so Mr. Ashe, there appears to be everyone
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`on the line is subject to the protective order.
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`MR. ASHE: Okay. Thank you, Your Honor. On
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`the latter part of Wednesday's call we were discussing
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`the issue of real party in interest, and at the very
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`end of the call VirnetX made a comment referring to
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`metadata that was associated with the RPX petitions and
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`said that the metadata contained the name of Apple's
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`counsel.
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`And upon review after the call I looked at
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`the metadata.
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`I didn't do that before the call.
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`Sidley Austin's name appears in the metadata on the
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`• • • • _III!~ DEPOS ITION or: TELEPHONIC CON FERENCE CALL HELD BERJRE JVDr.r:S EASTHOM , SIU. TIER NEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
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`PDFs that were submitted t o the patent office, and
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`Sidley is identified in this -- in these cases as
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`coun sel for Apple .
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`However , there ' s -- VirnetX has a
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`misapprehension of the facts, and RPX believes t hat
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`it ' s
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`i mportant t o promptly c l a r i f y th i s p oi n t on the
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`reco r d , and basically here ' s the story. Sid l ey
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`Aus tin's name appears in t he metadata on t he RPX
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`petitions because Sidley , at the time those were filed ,
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`was acting in i ts capacity as RPX's coun sel .
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`__ _ ____ DEPOSlTlON OFTELEPI!ONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM, SlU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
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`So the bottom line is that VirnetX's
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`statement on the last call, that RPX petitions had
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`metadata from Apple's counsel, I believe was based on a
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`misapprehension of the facts that were in front of
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`VirnetX at the time, and RPX just didn't want to leave
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`that misapprehension of fact on the record where, you
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`know, it may cause an issue somewhere down the road,
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`and we felt that it was very important to clarify it at
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`this stage in the proceeding.
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`In disclosing this information RPX does not
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`intend in any way to waive privilege with respect to
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`communications between RPX and its counsel, and for
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`that reason and, you know, just the types of things
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`that we're talking about here we just want to make sure
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`that this transcript is, you know, subject to the
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`protective order in the proceedings and, you know,
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`really this was just a matter of clarifying that point.
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`_ __ ___ _ , DEPOSITION Of TELEPHONIC CONFERENCE CALL fiELD BEFORE JUDGES EASTHOM. SIU, TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
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`Certainly I'm available or, you know,
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`anybody that you want to ask questions to, we're all on
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`the line.
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`I thought it would be useful to just loop
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`back and clarify the record before everybody moves
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`forward, and that's all I have to say.
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`JUDGE TIERNEY: Okay. Thank you, Mr. Ashe.
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`I'm going to turn it over to Apple for comment, and
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`lastly we'll go to VirnetX. Apple, do you have any
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`comments regarding the statement that was just given or
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`any concerns, questions you have that we need to be
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`MR. KUSHAN: No, Your Honor,
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`I don't have
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`any comments on behalf of Apple on this matter.
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`JUDGE TIERNEY: Okay. Turning over to
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`virnetX.
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`MR. PALYS: Thank you, Your Honor.
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`Just two
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`points, Your Honor. The first is the fact that we're
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`actually even having this call we think supports our
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`position that additional investigation on the RPI issue
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`is warranted. From what I'm hearing, it's almost as if
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`RPX is essentially getting an opportunity to reply to
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`our preliminary response before we even file it.
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`_______ DEPOSIT ION Of TELr:P I~ON I C CONfERENCE CALL HELD BEFORE JUDGES EASTHOM. SIU. TIr: RNEY
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`I mean, yo u kn ow, RPX is now r:epr-esen Ll ny --
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`and this is a new fact . This is a new fact t hat wasn ' t
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`in the rec ord, th a t RPX is now saying that Apple ' s
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`counsel is also t he ir cou nsel . This i s a new fact , and
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`you may reca l l d ur ing our cal l a coupl e of days ago
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`when quest ions wer e posed t o RPX 's coun sel he sai d
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`we l l ,
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`l et' s not put the cart befo r e t he ho r se , you
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`know ,
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`l et' s not -- t hey ' re asking for d i scovery .
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`It su r e appears now that RPX i s getting th e
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`opportunity to provide d i sc overy when it su it s them,
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`but Virnet X is esse ntially getting blocke d f rom
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`invest i gating , or the board fr om investigating issues
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`on fac t s th at may be in consistent or ma y s upport
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`VirnetX ' s pos it io n.
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`A co uple o f othe r poin ts. Now we have this
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`representa tio n t hat Sidley , which is Apple ' s counsel ,
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`als o repr esent s RPX . During the cal l you may r ecall we
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`went through ou r a nn ouncements , and Mr . Kushan never
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`menti oned once t ha t he wa s RPX ' s couns el .
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`He s a i d he was App le' s counse l, and whe n t he
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`boa rd even questioned Mr. Kushan and sa i d are you
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`wi l ling t o be subje c t
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`t o the protective order ,
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`t here
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`_______ OEroSITION OFTEl EPI·iON IC CONFERENCE C,\ l L HELD BEfORE JUDGES E,\STHQA·1. SIU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10, 2013
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`was no need f or him to do th at if he's RPX' s cou ns e l
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`because the in formation that was confide n tial is RPX ' s .
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`They had the oppor tunit y to p r e sen t th is informat i on
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`then . They di d not.
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`A couple o f ti mes th e board e v en asked even
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`af ter it r endered its decision is t here any o ther
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`a d d i t i ona l informa t i on t hat t he pa rties need to
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`present . They r ema i ned s i l ent. The fact th a t App l e ' s
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`counsel is also RPX ' s couns el we beli eve i s a very
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`i mp ort ant facto r .
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`It ' s e xtremely relevant g i ve n t he
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`history that we have here .
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`It s eems t o me if Sidley Austin represe nts
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`both par ties , you k now ,
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`i t's our under st and i ng t he y
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`migh t even have you ha ve co nsen t
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`f r om Apple to be
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`p rov iding i nformation , whether i t ' s work p roduct ,
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`draft , or informat i on of t hat mattRr from one par t y to
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`anothe r . The t ria l practice gu i de again, it ma kes
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`clear without a r ea l party of interest i t may be th e
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`petiti oner itself or the party at whos e b ehes t the
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`petit i on has been fi l ed .
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`I t
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`i s VirnetX ' s belief again, Your Honor,
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`that RPX has f i l ed the IPR upon Apple ' s belief , and the
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`_______ DEPOSITION OF TELEPtlON IC CONFERENCE CAU HELD BErllK~ JUDGES EASTI IOM. SIU. TIERNEY
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`record shows that.
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`In re Guan aga in says, Your Honor ,
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`t here 's three factors , or thre e thin gs that RPX in this
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`case cannot do, anyone of these.
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`If RPX does anyone
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`of these they canno t be ident ified as the only r ea l
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`party in interest, and this is on page eight of the
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`decision , Your Honor.
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`One, they can ' t accept payment from ano t her
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`group , pay a request or to fi l e a request or in any
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`party reexam and then have itself sol ely named as rea l
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`part y in interest.
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`JUDGE TIERNEY : And let' s stop th ere s ince
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`you ' re walking through the factors. We walked through
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`the s ta tement on page three of the petit ion , and th ey
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`con f irmed o nce again t hat it was f i led. RPX was the
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`sole discretion of file , and they had sole discretion
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`to extend and not been in a quid pro quo, wh i.c h I
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`t hink
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`is going to a second poin t.
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`So what add i t ional informa tion do we have
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`today t o revisit th ose determinations that we had on
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`MR. PALYS, Than k you, Your Honor.
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`Wednesday?
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`apo l ogize.
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`I didn ' t mean to rehash old arguments , but
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`~. ".;.. ""
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`-----(cid:173)
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`_ • • • ___ DT,roSIT ION OF TCLEI'HONIC CONFERENCE CAt L HEl.D DUONE JUDGI::.S EA!>-rIIOM. SIU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10, 20 13
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`we th in k the additional info rma tion is we c an ge t
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`inLo
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`some of th e details about t he metadat a th at Mr. Ashe
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`had menti one d.
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`I believe he was repr ese nt ing that it
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`was just -- a nd I don ' t want to -- Oliver ,
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`I ' m not
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`trying to mi srepresent .
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`I just don ' t k now the
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`speci f i cs.
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`But I be l ieve what t he y were say i ng is t he y
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`were j ust cop i es of the origi nal d ocumen t s tha t were
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`already file d . Well , we have reason to believe that
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`that's not accurate , Your Ho nor, and the metadata ca n
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`show that.
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`I n f ac t , Your Honor, I don ' t know i f you ' re
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`in f r on t o f the computer r ight n ow .
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`If you ' ve g o t the
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`electronic versi on in f ront o f you i n Adobe I c an wa l k
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`you through and ac t ua ll y show you some of t he metadata
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`th~t 's ava ilable there .
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`JUDGE TIERNEY:
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`Just to l et you know ,
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`I have
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`the 00171 petition in f ron t of me and it ' s in PDF form .
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`I have pul l ed up the wor king file. Do you wi sh me
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`t o
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`go to the act u a l fil e copy on t he system? What would
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`yo u l ike me to d o?
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`MR . PALYS: Yeah ,
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`i f you have a copy of t he
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`__ ___ __ DEI'OSlTlON Of TELEPHONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHOM. 51U. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
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`PDF -- you said 171?
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`JUDGE TIERNEY: That was the one I had,
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`If
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`you'd like me to pull up another one
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`which one would
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`you like me to have in front of me?
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`MR, PALYS:
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`I have 174 in front of me, but I
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`can pull up 171 just as easily,
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`JUDGE TIERNEY:
`
`I'm pulling up 174 as we
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`speak,
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`Just give me one moment, please, Which paper
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`number, the first one in the petition?
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`MR, PALYS: The corrected petition, Your
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`Honor, paper number four,
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`JUDGE TIERNEY: Thank you,
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`It is now open
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`on my screen,
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`MR, PALYS: Thank you, sir,
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`If you want to
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`look at the metadata you go to file,
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`,JUDGE TIERNEY:
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`I've done so.
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`MR, PALYS: Properties,
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`JUDGE TIERNEY:
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`I've pulled it up, and I see
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`the name -- the title, author, et cetera,
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`MR, PALYS: Right, and you see the author,
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`Michael E, -- Scott Border?
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`JUDGE TIERNEY: Yes.
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`MR . PALYS : That is one o f App l e ' s
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`attorneys, ok ay , and Mr. Border works for Sidley Austi n
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`who represent s Apple .
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`If you go to th e tab custom .
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`JUDGE TIERNEY :
`
`I 'm ther e .
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`MR . PALYS : You can see a number of types o f
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`information t h a t ar e avail a b le t h at are part of t hi s
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`document . One , you can see that t he r e ' s an E- mail
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`sub j ect, and i t says -- and this is i nforma tion that ' s
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`being provided from an author from the E- mail. You see
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`Thomas Broughan. He ' s fro m Sidley.
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`Mr . Brough an has fil ed pape r s for App le in
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`seve ral o f
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`t hese IPRs , an d his -- t his me t adata
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`information is shown i n many of the ot her RPX fi lings .
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`J UDG E TI ERNEY : Can we clarify , you said it
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`shows h e fil ed for App l e?
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`MR . PALYS: No , no, no.
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`I'm sorry, Your
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`Honor.
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`I mis -- I was just telling y ou who Thomas
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`Brou ghan is.
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`J UDGE TIERNEY : Oh , thank you . Than k you .
`
`I
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`ju s t wanted t o c l arify what t hese metadata was
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`act ua l l y say ing because I d i dn't see how we could
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`dete rmine that.
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`• ______ ')[POS I1'lON Ot"TELEPI rON IC CONFERf:NCf; ( ,\Ll HELl) BEFORE JUDGES EASTHOI'.'L SJU. TIER N EY
`CONDUCTED ON FRIDAY, JANUARY 10, 2013
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`MR . PI\LYS : No , no ,
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`I was just showing --
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`yeah, so we have the name of one of Appl e ' s atto rn ey ' s
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`here.
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`If you scroll down you can see other inf ormatio n
`
`about thi s docume nt. Yo u ca n see aga in -- I'm
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`scroll ing down abou t three- quarters of th e way - - you
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`can see Sidl ey Au s t in i s ident i fied, y ou ca n s ee tha t
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`t he ve r s i on document, this i s version five , right .
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`You can also see -- we ll ,
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`I al r eady sa id
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`the name -- you can see that the IPR peti t i on number
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`that -- th e E-mail s ubj e ct is sugges ting th e r e ' s an
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`E-mail her e , s h ows that this is a petit ion , a document
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`t hat was prov i ded by Thomas Broughan, but it ' s a Wor d
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`documen t, fi r st of all , because it ' s a do t DOC f ile,
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`but i t ' s also related t o RPX' s pe titi on .
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`And a n interest ing point here, Your Honor,
`
`is that we're talking about a corrected petition . What
`
`had happe ned he re is that , you know, RPX fil ed i ts
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`original pet itions on November 20th, and in filing
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`these pe t itions and co ncern i ng the, l et ' s say , for
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`exampl e, the 504 a nd 21 1 patent s, you k no w, RPX didn 't
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`inc l ude certain cla ims , and these mi ss i ng c l aims a r e
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`actua l ly claims that Apple has found to inf ri nged
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`_______ DEr>oS ITION OF TELEPJ tON IC CONFERENCE Ct\ LL HELD BEFORE JUDGES EASTHOM. SIU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10, 2013
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`1 7
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`coi ncidenta lly .
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`So a day later on the 21st RPX f iles t hese
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`crepid p etitions, incl uding this one we ' re looking at ,
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`the 174, and on th e 22nd it filed correct ed pe titi ons
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`for the 1 76 and 1 77 matt er s t hat relates to th e 504
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`patent. The sole d i ffere nces o f thes e correct ed
`
`pet itions were t o add these certain c laims , claim 37
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`for the 2 11 patent , cla ims 5 , 16 , 21 and 2 7 o n the 504
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`patent . Appl e was a l ready foun d to infringe a ll these
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`cla ims, and he re ' s wh e re some of the metadata comes in,
`
`Your Hono r .
`
`The me tada ta shows tha t Apple ' s cou ns e l
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`Sidley sent cor re c t e d pet i t ions to RPX - - we ll, i t
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`suggests tha t th e r e was an E- mail fr om Apple ' s coun se l
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`to file co r rec t ed - - p rovid i ng co r rected petitions i n
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`Wo rd format to RPX .or RPX' s counselor h owe ver it got
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`there, but we can see on th e public r ecord t hat t h e
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`PDFs show thi s .
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`The point here , Your Honor, is that this,
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`a nd certa inl y we ca n ha ve the opport un i t y to provi de
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`,
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`more details o n t hi s because we have a f o r e ns i c e xpe rt
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`that l ooked a t
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`the metadata and we 're looking for war d
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`_ . . . . __ . OEJ>OSITION OFTELEPHQN IC CONFERENCE CALL HELD BEFORE JUDGF.S EASTHOM. SIU. TIER:-.IEY
`
`CONDUCTED ON FRIDAY, JANUARY 10,20 13
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`18
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`to , as you ment ioned , the oppor tuni ty to present th is
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`informati on as you instructed in our pre liminary
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`r esponse.
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`But the poi nt here is t hat the fact that
`
`we 're even having t hi s call and this d iscussion here ,
`
`sir , and going thr ough th is me tadata info rmation
`
`supports our position that t he board should investigate
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`rea l party of interest and p r ivi ty i ssues.
`
`It just
`
`it seems to us that we ' re hearing f acts li k e you
`
`brought this up again , s ir, where you
`
`where RPX ' s
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`counsel represented yes , what we said in t he petiti on
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`JUDGE TIE RNEY : Thi s is Judge Ti erney .
`
`MR . PALYS : Yes .
`
`JUDGE TIERNEY :
`
`I th ink it might be best to
`
`stop right here. There are a couple of th in gs th at
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`have come up tha t
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`I think may warrant furthe r briefing .
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`One thing I do want to point out, sir, is on
`
`Wednesday's ca l l --
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`MR. PALYS: Uh -huh .
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`JUDGE TIERNEY :
`
`- -
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`for fut ure refe r ence
`
`where you have a n issue such as the metadata that you
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`_______ DEPOSITION OfTELEI'HONIC CONFERENCE CALL HELD BEFORE JUDGES EASTHO;-'1. SIll. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
`
`19
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`believe to be important, please bring it up earlier in
`
`the call rather than later because it appeared that it
`
`was being given at the end of the call after much had
`
`already been addressed and discussed, and some of the
`
`decisions were almost already in place before the
`
`metadata came out.
`
`And now that we know about the metadata,
`
`w,e've gone through it, you've explained it in detail,
`
`I'm looking and discussing with the panel members as we
`
`are online right now. One thing we were wanting to
`
`know is what would you like us to do with this
`
`information as of today?
`
`You may obviously raise it in your
`
`preliminary response should you do so, but are there
`
`issues you would like us to act upon currently, and if
`
`so please identify specifically what you would like.
`
`MR. PALYS: Thank you, Your Honor. With the
`
`board's indulgence may I confer with my cocounsel on
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`this for a minute or two?
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`JUDGE TIERNEY: Please do so.
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`MR. PALYS: Thank you, sir.
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`(There was a brief pause in the
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`_______ DEPOSITION or. TELEPHONIC CONFERENCE CALL HELD BI:]-'ORE JUDGES EASTHOM, SIU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
`
`20
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`teleconference.)
`
`MR. PALYS: Hello, Your Honor. Thank you
`
`for your indulgence.
`
`So what VirnetX would like is
`
`we'd like to basically renew our request that we raised
`
`two days ago, and that is we're asking the board to
`
`based on all the facts and circumstances and all the
`
`factors under In re Guan to look into and investigate
`
`this issue on real party of interest now before the
`
`preliminary responses.
`
`And however the board intends to do that,
`
`whether it's through an order to show cause or
`
`providing the opportunity for VirnetX to file a motion
`
`for additional discovery and then possibly a motion to
`
`dismiss, that's what we would like, obviously ideally.
`
`Yeah,
`
`I think I'll stop there.
`
`JUDGE TIERNEY:
`
`I just want to try and
`
`narrow the issues down here. At this time VirnetX is
`
`able to file a preliminary response.
`
`11m not inclined
`
`to go ahead and have a show cause order prior to having
`
`the preliminary response filed.
`
`I am inclined, however, given the additional
`
`facts today, to entertain a motion for additional
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`_______ OEPOSITION OF TELEI'HQ1'! IC CONFERE1'!CE CAtL HELD DUOR[ Jt;DGES £ASTIiOM. SIU. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10, 2013
`
`2 1
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`d i scovery . We ' r e ge t t i ng qu ite d etai l ed on the facts
`
`be ing pr esented on' th e phone call, and I think i t ' s
`
`best to have it mo r e
`
`i n wri ting as to wh at t he parties
`
`specifical l y are requesting for addi tio nal discovery .
`
`I know there ' s some in ter es t ing fac t s tha t
`
`have come to l ight , so where t hat
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`l eads u s I ' m not
`
`sure, and what additional mat e r i a ls you a re see k i ng to
`
`find it ' s st i ll not c l ea r to me what additional
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`informat io n you want , wha t documents you ' re see k i ng
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`through add itio n a l discover y.
`
`As Mr . Ashe sa i d on Wedn esday ' s call , it
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`appe a red you had suff ici e nt inf or mation to fi l e y o ur
`
`r esp on se a t the p r ope r time, so ma ybe you could cl ar i f y
`
`f o r
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`t he recor d today , Mr . Palys, what additiona l
`
`in f o rma t io n a re yo u seek i ng , and wou l d i t be bes t to
`
`discuss it now o r you looki ng now as more or l ess
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`authorize a motio n for a ddi tional disc overy so yo u ca n
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`go ahead and define it wi th specificity?
`
`MR . PALYS : Thank you, Your Honor .
`
`I th i nk
`
`it wou l d be bes t
`
`i f we were gi ven the opportuni t y t o
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`p u t th i s
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`i n writ i ng.
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`I
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`t hi nk it would he l p the board,
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`it wo u ld probabl y h e l p - - obvious ly he l p us , and then
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`_______ DEroSITION OFTr:I .EPHONICCONFERf.NCE CALL HELD BEFOREJ UDC,ES EAsrHU:\'!. SIU. T IERNEY
`CONDUCTED ON FRIDAY, JANUARY 10, 201 3
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`mak e it more clear fo r opposing counse l to cons ider the
`
`issues inst ead of trying to do this on a cuf f.
`
`I ' m happy to go over some of th e topics ,
`
`we're obviously p r epared to go over th e m, but I think
`
`in writi ng would be best for eve ryone i f you agree .
`
`J UDGE TI ERNEY:
`
`I ' m j u s t
`
`and I have not
`
`confer red with the panel ye t. This i s just i nf ormat i on
`
`gat he ring . App r o ximate l y what are yo u reque st i ng for
`
`in terms of time line and scope of r e qu est for pages?
`
`MR. PALY S :
`
`I t hink, Your Honor, if it ' s
`
`okay with the board o ne week for us to pr epare and file
`
`the motion fo r additional d i scove ry ,
`
`i f
`
`t hat ' s okay
`
`wit h you.
`
`I 'l l leave i t to th e board fo r as far as
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`opposing counsel ' s op posit i on. Page l imi t ,
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`I t hink the
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`1~
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`ru l e is l~ pages , if we could follow those pages .
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`I' m
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`not saying that we wou l d use them all, but to have them
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`there ava ilable would be appr opriate.
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`JUDGE TIERNEY: And again, for informat ion
`
`purposes I h ave not yet g iven the floor to Ap ple and
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`RPX to respo nd a nd t e ll me wha t
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`t heir t ak e i s on a l l
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`t h is .
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`MR. PALYS :
`
`I ' m sorry.
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`PLANET DEPOS 1 888.433.3767 1 WWW.PLANETDEPOS .COM
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`
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`• • • _____ DEPOSITION OF TELEPHON IC CON FE~EN C£C A LL HELD BEFORE JUOC.r:S EA$THOM. SIU. T IERNEY
`CONDUCTED ON FRIDAY, JANUARY 10, 2013
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`J UDGE TIERNEY : No,
`
`jus t again, I want to
`
`find out what you ' re requesting . One thing I will say
`
`up front be fore we have Apple chime in and also RPX
`
`c hime in is that if you were to file a r equest for
`
`addit i onal discovery would there any p robl em if you
`
`we re t o fi l e the same request f or al l cases , or wou ld
`
`you need a coup le of additiona l pages for any nuances
`
`that may arise in the various cases, because I don ' t
`
`want to have separate -- comp letely di fferent motions
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`in each cas e given the s imilarities b e twee n the cases .
`
`MR . PALYS : Your Hono r?
`
`JUDGE TIERNEY : Go ahead.
`
`MR. PALYS :
`
`I ' m sor ry .
`
`I hat e to ask for
`
`add i t i onal, but I ' d
`
`l ike t o t alk with counsel just f o r
`
`30 seconds.
`
`I belie ve they 'r e g o i ng to be a ll
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`subsequently th e same.
`
`I thi nk that's whe re I ' m going
`
`t o come out .
`
`I ju s t want to make sur e that we ' re on
`
`the same page if you don ' t mind .
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`J UDGE TIERNEY:
`
`Take as much time as you
`
`need on t h is .
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`MR. PALYS : Thank you, sir .
`
`(There was a brief pause in the
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`PLANET DEPOS I 888.433.3767 I WWW.PLANETDEPOS.COM
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`
`
`__ . . . . . . . OEPOSITION OF TELEPHONIC CONfERENCE CALL HELD BEt-'ORE JUDGES EASTHOM. S[U. TIERNEY
`CONDUCTED ON FRIDAY, JANUARY 10,2013
`
`24
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`teleconference.)
`
`MR. PALYS: Your Honor, yeah, we think they
`
`would be the same.
`
`JUDGE TIERNEY: Understood. Thank you. All
`
`right.
`
`I believe it's -- unless there's any further
`
`comment I'm going to turn the floor over to Apple and
`
`RPX. Mr. Pa1ys, is there any further information we
`
`need before we turn it over?
`
`MR. PALYS: Not at this time, Your Honor.
`
`JUDGE TIERNEY: Okay.
`
`I'm going to start
`
`with Apple then I'm going to go to RPX last. So
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`counsel for Apple, do you have any questions, concerns,
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`objections to authorizing a motion for discovery? The
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`outline -- the suggested outline would be time line one
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`week for filing a motion. One week would be given then
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`for response by you, RPX, and the number of pages would
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`be standard.
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`It would be 15 pages, and it would be the
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`same motion that would be put into each case where
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`appropriate.
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`I don't know.
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`It's unclear to me at this
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`point whether they need to request information in the
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`Apple cases as well as RPX cases, but at least they've
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`______ . DEPOSIT ION or- TELEI'HON IC CONFERENCE CA I.L HELD BERJRE JUDGES EASTHOM. SIU. T IERNEY
`CONDUCTED ON FRIDAY, JANUARY 10, 20 13
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`made a case fol." r eguesLln y In[uLHld Ll ull [ U!' duulL l uIldl
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`discovery in the RPX cases .
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`With t hat as backdrop, Apple , would you care
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`to chime in?
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`MR . KUSHAN : Sure . Than k you, Your Ho nor .
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`A coupl e of in itial poi nt s . First I wil l
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`r e it erate , as
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`I h ave, I -- Sidl ey Austin is representi ng Apple in
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`th i s proceed ing a l one . The re ' s no rep r esentation fo r
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`this call or f or the 697 p e tition of any jo in t
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`represent ation as Mr. Palys seemed to be appl y ing .
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`That 's simply in co rre ct .
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`Seco nd was to confi rm what Mr. Ashe h ad
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`indicated ear li e r,
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`, and
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`then fina l ly I want to reiter ate a conce r n, a priv ilege
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`becau se we are in no p osition to waive privilege of any
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`of our client s.
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`I will obser v e on the merits of t he question
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`that was present ed f or briefing that it ' s s till - - we
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`don't believe the r e ' s a basis for additi o nal di scove r y
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`give n the f ac t th a t the information of e xi stence of
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`Sidley be i ng retained by RPX.
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`It doesn' t ch an ge a ny
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`variable that was I think relevant to your
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`determination a couple of days ago.
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`You know, we had provided you with case
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`citations, or mentioned, made reference to an
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`observation in our last call about the fact that
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`sharing counsel doesn't establish that two parties have
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`established privity between the parties. There are
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`already a couple of decisions in the panels in these
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`IPR proceedings reinforcing that point.
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`One was in IPR 2013, 178, paper number 22.
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`Another one was IPR 2013, 236, paper number 10.
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`In
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`both of those cases it's legally irrelevant that two
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`different parties use the same counsel in a real party
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`of interest determination.
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`JUDGE TIERNEY: Let's step back here. Even
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`if we were to agree with you that the propositions you
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`announced are correct, would it not be best to have
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`that in the record in a request in a motion for
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`additional discovery where we would actually take those
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`issues and then decide them, rather than just trying to
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`decide on a phone call with a court reporter?
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`MR. KUSHAN: Of course we're going to follow
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