A P P E A R A N C E S C O N T I N U E D :
`
`3
`
` A S H B Y & G E D D E S , P . A .
` B Y : J O H N D A Y , E S Q .
`
` C o u n s e l f o r t h e P l a i n t i f f
` B r o a d s o f t , I n c .
`
` M O R R I S N I C H O L S A R S H T & T U N N E L L , L L P
` B Y : J A C K B . B L U M E N F E L D , E S Q .
`
` - a n d -
`
` W I N S T O N & S T R A W N
` B Y : S C O T T R . S A M A Y , E S Q .
` B Y : P E T E R L A M B R I A N A K O S , E S Q .
`
` C o u n s e l f o r t h e D e f e n d a n t G o o g l e
`
` M O R R I S N I C H O L S A R S H T & T U N N E L L , L L P
` B Y : K A R E N J A C O B S , E S Q .
`
` C o u n s e l f o r t h e D e f e n d a n t S p r i n t
`
` M O R G A N L E W I S & B O C K I U S , L L P
` B Y : J O D Y C . B A R I L L A R E , E S Q .
`
` C o u n s e l f o r t h e D e f e n d a n t s
` A T & T M o b i l i t y , B l a c k b e r r y L H a n d
` B l a c k b e r r y C o r p
`
` C O N N O L L Y G A L L A G H E R , L L P
` B Y : R Y A N P . N E W E L , E S Q .
`
` C o u n s e l f o r t h e D e f e n d a n t T - M o b i l e
`
`Hawkins Reporting Service
`715 N. King Street - Wilmington, Delaware 19801
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`A P P E A R A N C E S C O N T I N U E D :
`
`4
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` S E I T Z R O S S A R O N S T A M & M O R I T Z , L L P
` B Y : B E N J A M I N J . S C H L A D W E I L E R , E S Q .
`
` - a n d -
`
` D E N T O N S
` B Y : M A R K C . N E L S O N , E S Q .
`
` C o u n s e l f o r t h e D e f e n d a n t
` A T & T M o b i l i t y
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`1 2
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`3
`4
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`1
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`et
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`CALLWAVE COMMUNICATIONS,
`)
`LLC,
`
`)
`
`)
`
`Plaintiff,
`)
`
`) C.A. No. 12-1701-RGA
`v.
`)
`
`)
`
`)
`AT&T MOBILITY, LLC,
`)
`al,
`)
`
`)
`
`)
`Defendants.
`- - - - - - - - - - - - - - - - - - - - - - - - -
`CALLWAVE COMMUNICATIONS,
`)
`LLC,
`)
`
`)
`
`)
`Plaintiff,
`
`) C.A. No. 12-1702-RGA
`v.
`
`)
`
`)
`SPRINT NEXTEL CORP, et al,)
`
`)
`
`Defendants.
`)
`- - - - - - - - - - - - - - - - - - - - - - - - -
`CALLWAVE COMMUNICATIONS,
`)
`LLC,
`)
`
`)
`
`)
`Plaintiff,
`
`) C.A. No. 12-1703-RGA
`v.
`)
`
`)
`T-MOBILE USA, INC., et al,)
`
`)
`
`Defendants.
`)
`- - - - - - - - - - - - - - - - - - - - - - - - -
`CALLWAVE COMMUNICATIONS,
`)
`LLC,
`)
`
`)
`
`)
`Plaintiff,
`
`) C.A. No. 12-1704-RGA
`v.
`)
`
`)
`VERIZON COMMUNICATIONS,
`)
`INC.,
`)
`
`Defendant.
`)
`Hawkins Reporting Service
`715 N. King Street - Wilmington, Delaware
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`19801
`
`2
`
`C A L L W A V E C O M M U N I C A T I O N S , )
`L L C , )
` )
` P l a i n t i f f , )
` ) C . A . N o . 1 2 - 1 7 8 8 - R G A
`v . )
` )
`A T & T M O B I L I T Y , L L C , e t a l , )
` )
` D e f e n d a n t s . )
`- - - - - - - - - - - - - - - - - - - - - - - - -
`B R O A D S O F T , I N C . , )
` )
` P l a i n t i f f , )
` ) C . A . N o . 1 3 - 7 1 1 - R G A
`v . )
` )
`C A L L W A V E C O M M U N I C A T I O N S , )
`L L C , )
` )
` D e f e n d a n t . )
`
` W e d n e s d a y , A p r i l 9 , 2 0 1 4
` 1 0 : 5 1 a . m .
`
` 8 4 4 K i n g S t r e e t
` W i l m i n g t o n , D e l a w a r e
`
`B E F O R E : T H E H O N O R A B L E R I C H A R D G . A N D R E W S
` U n i t e d S t a t e s D i s t r i c t C o u r t J u d g e
`
`A P P E A R A N C E S :
`
` P E P P E R H A M I L T O N , L L P
` B Y : E D M O N D D . J O H N S O N , E S Q .
` B Y : N O A H M A L G E R I , E S Q .
`
` C o u n s e l f o r t h e P l a i n t i f f
` C a ll W a v e C o m m u n i c a t io n s , L L C
`
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`
`

`

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`
`THE CLERK: All rise.
`THE COURT: All right. Good
`morning, everyone.
`MR. BLUMENFELD: Good morning.
`THE COURT: This is CallWave
`Communications, LLC versus a number of different
`defendants, including -- you can be seated --
`AT&T Mobility, Civil Action Number 12-1701. And
`I see there's six cases in total. So I guess we
`ought to know who's here.
`Mr. Johnson.
`MR. JOHNSON: Yes, Your Honor.
`Edmond Johnson from Pepper Hamilton on behalf of
`the plaintiff, CallWave. And I have with me at
`counsel table, Noah Malgeri, also from Pepper
`Hamilton.
`
`THE COURT: All right. And good
`
`morning.
`
`here?
`
`And who represents the defendants
`
`MR. BLUMENFELD: Good morning, Your
`Honor, Jack Blumenfeld.
`I'm here for Google, along with
`Scott Samay and Peter Lambrianakos from Winston &
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`
`Strawn.
`
`MS. JACOBS: Good morning, Your
`Honor. On behalf of the defendant, Sprint, Karen
`Jacobs from Morris Nichols.
`THE COURT: I'm sorry, which
`defendant?
`MS. JACOBS: Sprint.
`MR. NEWELL: Ryan Newell from
`Connolly Gallagher on behalf of T-Mobile in the
`1703 matter.
`THE COURT: All right.
`MR. BARILLARE: Good morning, Jody
`Barillare for Morgan Lewis for Blackberry and
`AT&T Mobility.
`THE COURT: All right. Good
`
`morning.
`
`MR. SCHLADWEILER: Your Honor, Ben
`Schladweiler from Seitz Ross on behalf of Verizon
`and AT&T Mobility in the 1701 action.
`With me today is Mr. Nelson from
`
`Dentons.
`
`Honor.
`
`MR. NELSON: Good morning, Your
`
`THE COURT: Good morning. And
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`7
`
`Mr. Day.
`
`MR. DAY: Good morning, Your Honor.
`John Day from Ashby & Geddes for Broadsoft in the
`13-711 action.
`THE COURT: Okay. So I've got these
`various disputes about the Protective Order and
`I've got also the ESI Order. And I guess the
`first letter I got, I guess it was from the
`defendants.
`And I do appreciate that you agreed,
`one of you, to go first and one of you to go
`second as opposed to just submitting two letters
`and then submitting two responses. So thank you
`for that.
`
`Why don't we just go over these
`things one by one. In the prosecution bar, is
`there anything that the defense counsel wants to
`say about that?
`MR. BLUMENFELD: Just, Your Honor, a
`couple things based on the response letter that
`we got. I don't have much to add about, you
`know, the strategic amendment point that we
`covered.
`
`We cited a number of cases from Your
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`Honor, Judge Stark, Judge Sleet. None of which
`they responded to.
`THE COURT: Even though I thought
`the cases we cited from me, while that may have
`been in the actual order, I don't think that was
`a disputed issue of that case.
`MR. BLUMENFELD: What Your Honor
`said was that you were entering the defendants'
`order and you did enter the order, which applied
`to the post-grant review issue and also was a
`one-way bar. But certainly we argued the issues
`more fully in the two cases before Judge Sleet
`and in the case before Judge Stark.
`And if you want to hear more about
`that, I'll be glad to talk about it.
`THE COURT: No. No. No.
`I had actually just gone back to see
`what I had said in that case, and it did strike
`me that one-way bar, I certainly addressed. I
`wasn't sure how much I had addressed the first
`question.
`
`But, in any event, go ahead.
`MR. BLUMENFELD: I mean, we can
`address the strategic amendment issue if you'd
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`9
`like. I think it's pretty clear, a pretty clear
`issue.
`
`On the one-way, two-way bar, they
`didn't address that in their letter, so I'm
`assuming that that's no longer an issue. The one
`thing that they did raise that's new is they
`argued that we're willing, we the defendants,
`collectively are willing to accept other defense
`counsel as participants in post-grant reviews.
`And that really isn't much of an
`argument, in our view, because we're not going to
`produce our confidential information to the other
`defense counsel. I mean, I can speak for Google
`and I think it's true for all of the defendants,
`the only party that's requested our information
`is the plaintiff. The only party that we're
`going to produce it to is the plaintiff.
`So we're not producing our
`confidential information to the other defendants,
`so there's just not any risk at all there. In
`fact, you know, to the extent that we've produced
`all -- the defense has produced core technical
`documents. You know, we've only produced them to
`the plaintiff. We're not sharing them with the
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`10
`other defendants and there's no intention to.
`So, in our view, this is just a very
`plain prosecution bar issue. They can amend or
`perhaps they can add new claims in post-grant
`proceedings. There's already an IPR pending for
`one of the patents, and we think the law is
`pretty clear that the lawyers who have access
`shouldn't be permitted to participate.
`THE COURT: And so just to make sure
`that I have the background correct, there are
`five patents; right?
`MR. BLUMENFELD: There are. There
`are more than five patents. There's three
`tracks. Two of the tracks have one patent. I
`think there's six patents in the third track.
`So there are --
`THE COURT: Total number of patents
`altogether is how many?
`MR. BLUMENFELD: I think it's eight.
`THE COURT: Oh, okay. And so one of
`them is under IPR review?
`MR. BLUMENFELD: One of them is in
`IPR. Correct.
`THE COURT: And there's no pending
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`11
`request or anything in regard to the other seven?
`MR. BLUMENFELD: There have not been
`any requests for the other seven.
`THE COURT: All right.
`MR. BLUMENFELD: And I think I
`mentioned that when we were here at the
`scheduling conference that IPR had happened and
`that there might be even a stay of this, a
`request for a stay of the litigation pending the
`IPR, which also may happen.
`THE COURT: Okay. All right.
`Thank you.
`MR. BLUMENFELD: Anything else you'd
`like to hear on the prosecution bar?
`THE COURT: No.
`MR. BLUMENFELD: Thank you.
`THE COURT: All right.
`MR. MALGERI: Good morning, Your
`Honor. Noah Malgeri from Pepper Hamilton on
`behalf of CallWave.
`Go ahead. Your Honor, you have a
`
`question?
`
`THE COURT: Well, so I think I see
`this stuff about Mr. Engellener and Attorney
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`12
`Mullagababa, two registered patent attorneys who
`apparently are representing CallWave in the IPR;
`is that right?
`MR. MALGERI: Yes, Your Honor.
`That's right.
`Actually there was a mention of some
`of the circumstances that sort of surround their
`participation in the IPR and the defendant in the
`defendants' letter to Your Honor, but it didn't
`get the facts entirely right. CallWave did not
`appoint the presence for counsel.
`They were the counsel of record at
`the U.S. PTO for the patentee who just sort of
`defaulted into the role of being counsel of
`record for service of the petition, et cetera.
`The first counsel that CallWave appointed and
`selected in its exercise of its discretion to
`choose counsel was naturally counsel from Pepper
`Hamilton.
`
`And Your Honor, much like the
`defendants' arrangement in the present IPR, they
`have counsel. They have the same individual who
`was on the pro hac for T-Mobile and Sprint, who's
`also appeared as counsel in the IPR.
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`13
`
`And so --
`THE COURT: Well, so just, and maybe
`it was in here about how far IPR is or maybe it
`wasn't. I can't remember now.
`But are you saying that Mr.
`Engellener and Attorney Mullagababa are not the
`people who are representing CallWave in the IPR,
`they were essentially just on the docket as such
`and now somebody else is or what?
`MR. MALGERI: Oh, no, Your Honor.
`My mistake, if I wasn't clear.
`There was a mention in the
`defendants' letter to Your Honor that mentioned
`that there was previous counsel before Mr.
`Engellener.
`THE COURT: Oh, okay. Because it
`said substituted, so that implied somebody, yes.
`MR. MALGERI: There was no
`substitution on CallWave's behalf, Your Honor.
`THE COURT: I don't think that
`
`matters.
`
`MR. MALGERI: Okay.
`THE COURT: But I did appreciate
`that, so thank you for pointing that out.
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`MR. MALGERI: Yes, Your Honor. So
`basically the argument that the defendants make
`in their letter and then also today briefly said
`that the prosecution bar that they'd like to see
`imposed in this case, that is their burden to try
`to justify, goes well beyond the arguments that
`they have even made. That prosecution bar would
`effectively eliminate CallWave's ability to have
`folks who have participated on CallWave's behalf
`over the course of awhile in learning the
`litigation strategy of CallWave and the validity
`theories of CallWave with respect to this
`particular patent, and foreclose their
`participation in the IPR where the exact same
`issues are here.
`And, indeed, the only information
`that's relevant to those questions in the IPR is
`public prior art and the patent claims
`themselves, Your Honor. So, in the interest of
`efficiency and the ability of this small
`company's exercise of its discretion to select
`counsel of its choosing, Your Honor, there's no
`combination of those interests.
`So whatever in the proposed
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`prosecution bar that has been provided by the
`defendants, in fact, even that level of
`participation which goes well beyond the argument
`they've made with claim amendments, is foreclosed
`as well. And as I mentioned before, they're
`enjoying the ability to exercise common counsel
`in representation with respect to issues in the
`litigation and have done -- so counsel of record
`in the cases before this Court, Your Honor, is
`the same individual who's arguing before the
`Patent & Trademark Office on IPR.
`THE COURT: But the only relevant
`confidential information those people have is
`their own confidential information; right?
`MR. MALGERI: Not necessarily, Your
`Honor, because as has been made clear in this
`case, third-party discovery is going to be very,
`very important. And we expect that there will be
`issues that involve the confidential information
`of third parties who will seek to take advantage
`of the protection of this Protective Order in
`producing their information.
`And that information will be
`available to those counsel and will not be
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`available to benefit the team from CallWave, Your
`Honor, in arguing the IPR. So, nonetheless, our
`contention, as made clear in the letter, is that
`the prosecution that the Protective Order itself
`already contains a protection against using
`information that's --
`THE COURT: I mean, they always do
`because basically we're talking about inadvertent
`disclosure here.
`MR. MALGERI: Yes, Your Honor,
`understood. And it's a good point.
`But, Your Honor, the danger is so
`outweighed by the patentee's interest in being
`able to retain and use as his counsel of choice
`because --
`THE COURT: Well, I take it that Mr.
`Engellener or the second attorney, you know, are
`registered patent attorneys of Pepper Hamilton.
`So these are two people who are premiere at
`representing people before the PTO; right?
`MR. MALGERI: I believe that's a
`correct characterization, Your Honor. Yes.
`THE COURT: But I take it that their
`background in CallWave's technology is they're
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`starting from zero or near zero.
`MR. MALGERI: Well, that's right,
`Your Honor. In the interest of CallWave being
`able to assemble a coherent strategy with respect
`to validity, that's going to be severely impeded
`by the restriction because CallWave simply can't
`afford to have two dedicated teams handling
`exactly the same issues with respect to validity
`in two different forums at the same time.
`And that's been an interest that has
`been recognized consistently by the courts who
`have addressed the same issue in different
`contexts.
`
`THE COURT: All right. Anything
`else you want to say?
`MR. MALGERI: Yes, Your Honor. I'd
`just like to add that the danger of claim
`amendments is very, very small, Your Honor,
`because statutorily --
`THE COURT: Well, you know, one way
`that one could take care of the problem entirely
`would be if you just agree not to make any claim
`amendments.
`THE COURT: Right.
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`MR. MALGERI: I suppose, Your Honor,
`that much like the litigation where that's not an
`option --
`
`THE COURT: Okay.
`MR. MALGERI: But the only
`amendments that are statutorily allowed, Your
`Honor, are ones that are narrowed and so --
`THE COURT: Well, right, but that's
`the whole point of what the Deutsche Bank said.
`You know, strategically I think Mr. Blumenfeld
`wants to get strategically amended or surrender
`claim scope during prosecution. I mean, that is
`language that's fully applicable to the situation
`here; right?
`MR. MALGERI: Well, Your Honor, it
`is applicable in one sense, but the other
`interests are that CallWave has interests in
`maintaining the validity of the patents in the
`broadest scope, far beyond this litigation.
`Your Honor, this isn't the only use
`
`for our --
`
`THE COURT: Well, but that's the
`reason why it's a strategic decision because,
`yes, CallWave has that interest. But when you --
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`if you know that, in fact, even though you're,
`you know, trying to separate it, in the back of
`your mind, if you know, in fact, that you don't
`need that entire breadth, that's where it gets to
`be strategic surrender of claim scope; right?
`MR. MALGERI: It would be, Your
`Honor, although that information isn't
`necessarily available to CallWave about future
`circumstances and where --
`THE COURT: Well, even just present
`circumstances.
`MR. MALGERI: Right, Your Honor.
`Although CallWave is starting from the
`proposition that there's no way that an amendment
`can be made that would capture products that
`don't currently infringe all the accused
`products.
`
`THE COURT: But, no, that's not
`really the concern. You're right because if
`you're surrendering claim scope, presumably it
`includes things that are now not within the
`scope. The whole point is that if you surrender
`scope, and that you then may still pick up the
`infringement, but now you may get rid of the
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`invalidity.
`MR. MALGERI: Right, Your Honor.
`Understood.
`And I understand now the outline of
`the argument, but I think the over-the-counter
`arguments to that, and I think the more weight to
`consideration from CallWave's decision that
`overrides that is to maintain the scope of the
`patent, regardless of the present circumstances,
`because it has a long-term view of the value of
`the patents.
`THE COURT: Yeah, but not so much if
`you're willing to agree that you won't amend it.
`MR. MALGERI: Well, Your Honor, I
`don't know at this juncture that that would -- it
`may be a little premature. That IPR hasn't even
`been instituted at this point.
`There was a petition and a response.
`The Patent & Trademark Office hasn't even made a
`decision on whether or not to institute it.
`But, Your Honor, the law itself
`actually provides a mechanism to protect the
`interest of target companies or companies against
`whom a patent may be asserted when they're
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`21
`amended and in the form of intervening rights,
`Your Honor. And the Intervening Rights Doctrine
`is well established.
`It applies to this circumstance
`explicitly by Statute 35 U.S. Code 318, and that
`provides that if there are any amendments that
`are made during the course of the IPR, then that
`claim scope would only apply prospectively. And
`so if those new claims can only be read on
`prospective products, to the extent that the old
`claim scope is no longer operative, the current
`set of accused products can't be infringed by the
`existing claims as they were amended.
`THE COURT: All right. Is there
`anything else you want to say about this?
`MR. MALGERI: Not necessarily, Your
`Honor, but I'm happy to answer further questions
`and potentially have an opportunity to follow up
`and respond to whatever Mr. Blumenfeld may say.
`THE COURT: All right. Thank you.
`MR. MALGERI: Thank you.
`THE COURT: Mr. Blumenfeld, would
`you like to say anything in response?
`MR. BLUMENFELD: Just very briefly,
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`Your Honor. We're here because CallWave decided
`to sue six sets of defendants. And now to say,
`Well, we can't afford to have lawyers who can do
`this and do that is a matter of their own making.
`But what Mr. Malgeri started with
`was to say that the problem here is that people
`involved in litigation strategy can't be involved
`in the Patent Office, and that's exactly the
`reason for the rule. People who have been
`involved in litigation strategy shouldn't be
`involved in the Patent Office.
`On the validity side of things, the
`prior art's public. We have a provision in the
`Protective Order.
`THE COURT: Right. I saw that, that
`people can send prior art when they're --
`MR. BLUMENFELD: So that's not the
`problem. The problem is the strategy amendment.
`And you know, I don't know that Your Honor needs
`to hear more.
`One of the reasons for the original
`prosecution bar cases way back 20, 30 years ago
`was inadvertence. It's like the thief in the
`night. You know, it's not that they're going out
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`there and they're going to intentionally use this
`stuff.
`
`Once you know it, once you know what
`the defendants are doing, you have the
`opportunity to shape new claims. You know, the
`risk is too high.
`THE COURT: You say this is like the
`thief in the night?
`MR. BLUMENFELD: Well, this is
`people using information that nobody can trace.
`And in that sense, that was a phrase that I think
`Judge Longobardi used in the original decision,
`the Interdigital decision a long, long time ago.
`But the danger of misuse of
`information, not necessarily intentional, I think
`far outweighs the concerns that Mr. Malgeri
`raised.
`
`THE COURT: Well, and you know, I
`start from the proposition that we're not talking
`about intentional at all --
`MR. BLUMENFELD: Right.
`THE COURT: -- because --
`MR. BLUMENFELD: Yeah.
`THE COURT: -- there is something
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`that says you can't do that.
`MR. BLUMENFELD: Right. But once
`you know the information, you have the
`opportunity to amend claims or put in new claims,
`the risk is there. And we think that risk is
`very high and people who are involved in the
`litigation strategy and know what the defendants
`are doing shouldn't be in that situation.
`THE COURT: All right. Mr. Malgeri.
`MR. MALGERI: Yes, Your Honor, just
`very briefly. Just two points, Your Honor,
`briefly.
`
`The first is, and I didn't fully
`develop this I fear when I first focused, that
`the scope of the bar that the defendants are
`urging the Court to adopt, it goes far beyond
`even the requirements of the Deutsche Bank case,
`which says that the touchstone is really folks
`who are involved in competitive decision making
`should not be allowed to participate in
`activities where exactly inappropriately applied
`in this case.
`Your Honor, where that can be, the
`defendants' proposal would inhibit folks from
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`25
`even participating in purely validity-related
`activity within the context of the IPR, not even
`claim amendment.
`There's no delineation between those
`activities, but simply participating at all in
`the validity. Y