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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________________________
`PETROLEUM GEO-SERVICES,
`Petitioner
`V.
`WESTERNGECO,
`Patent Owner
`_____________________________________________
`
`CASES: IPR2014-00687, 00678, 00689, 00688
`
` TELEPHONIC HEARING
` 2:19 p.m.
`
`Reported by:
`ROBIN NUNEZ
`JOB NO. 82885
`
`TSG Reporting - Worldwide
`(877) 702-9580
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________________________
`PETROLEUM GEO-SERVICES,
`Petitioner
`V.
`WESTERNGECO,
`Patent Owner
`_____________________________________________
`
`CASES: IPR2014-00687, 00678, 00689, 00688
`
` TELEPHONIC HEARING
` 2:19 p.m.
`
`Reported by:
`ROBIN NUNEZ
`JOB NO. 82885
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 1
`
`
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`Page 2
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`A P P E A R A N C E S
`
` WILLIAMS & CONNOLLY
` Attorneys for Petitioner
` 725 Twelfth Street, N.W.
` Washington, DC 20005
` BY: JESSAMYN BERNIKER, ESQ
` CHRISTOPHER SUAREZ, ESQ
`
` OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT
` Attorneys for Patent Owner
` 1940 Duke Street
` Alexandria, Virginia 22314
` BY: SCOTT MCKEOWN, ESQ
` CHRISTOPHER BULLARD, ESQ
`
`Also Present:
`MITCH BLAKELY
`DAVID BURROW
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 2
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`
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`Page 3
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` HEARING
` THE COURT: This is a call requested
`by the parties in IPR 2014-678,687,688 and
`689, and the topics for the call were
`request for motion to seal, and I believe a
`request for clarification on the order that
`we put out in the case.
` Can we have who is on the call
`starting with petitioner.
` MR. MCKEOWN: For petitioner, your
`honor, it is Scott McKeown and Chris
`Bullard, and we also have Mitch Blakely
`representing for the patent owner on the
`line as well, and a court reporter,
`although I think at present there are two
`of them, so we are trying to sort out which
`one wins here, I guess.
` THE COURT: Why don't we take a break
`here for a second, if you guys want to talk
`and whatever you need to resolve and let me
`know when you are ready to go.
` MR. MCKEOWN: I think we have
`resolved it. I think we are going to go
`forward with the reporter that was on the
`line first.
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 3
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` HEARING
` THE COURT: Since we have a court
`reporter on the call, a couple of things
`the reporter will tell you but I'll go
`ahead and say as well when you speak on the
`call, if you can identify yourselves, it
`makes it easier for the reporter to get
`things down. And the other thing is whoever
`is handling the reporter, I would like you
`to get a copy of the transcript for this
`call and file it in the purpose in the
`case.
` MR. MCKEOWN: Will do, your Honor.
` THE COURT: Who's on the line for
`petitioner?
` MS. BERNIKER: This is Jessamyn
`Berniker for petitioner Petroleum
`Geo-Services Inc., and with me is Chris
`Suarez, backup counsel, as well as David
`Burrow.
` THE COURT: And then for patent
`owner?
` MR. MCKEOWN: Yes, your Honor, for
`patent owner is Scott McKeown and Chris
`Bullard, as well as Mitch Blakely who is a
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 4
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` HEARING
`representative of the patent owner.
` THE COURT: And there is no
`objection on the call for Mr. Blakely to be
`on the call?
` MS. BERNIKER: No objection on our
`end.
` MR. MCKEOWN: No objection, your
`Honor.
` THE COURT: So we should start with
`the motion to seal issue, and I believe
`that's an issue brought by patent owner.
`Maybe if you start off by discussing that
`issue.
` MR. MCKEOWN: The motion to seal
`certain documents were part of the pending
`litigation. Some of these documents were
`designated highly confidential, and after
`that petition was filed the parties agreed
`to the petitioner's proposal that we adopt
`for the protective order. It is our
`understanding that in order to maintain the
`current state here in this proceeding and
`to keep everything protected as we would
`need, nonetheless, permission for a motion
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 5
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`Page 6
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` HEARING
`to seal basically the same materials that
`are sealed and perhaps some additional
`materials. And then I would look for the
`board's guidance on whether or not we would
`also have to file a motion to enter the
`default protective order or whether or not
`we can use the transcript to sort of
`memorialize.
` Just looking for the board's
`guidance on how they like to proceed on
`these issues.
` THE COURT: Okay. And can I get
`petitioner just to briefly let me know if
`if that's their understanding.
` MS. BERNIKER: That is generally our
`understanding. I assume we are talking
`about, I think patent owner represented
`that they are referring to the same
`materials that we filed as part of our
`petition. If it is the same materials, then
`we certainly have no objection to that.
` THE COURT: Okay. Well, we probably
`need to go back to patent owner then,
`because you mentioned, and just for
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 6
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` HEARING
`clarification, your preliminary responses
`are due, I think indicated today and
`tomorrow in the cases; is that correct?
` MR. MCKEOWN: That's correct. One
`filing is due today, the remainder due
`tomorrow.
` THE COURT: I think you indicated
`that there were additional documents other
`than the documents that petitioner
`requested to be sealed, and so if you can
`give me a sense of what those documents
`are.
` MR. MCKEOWN: Sure, when I say
`additional documents, I'm not necessarily
`referencing altogether new documents, but
`these are also the documents from the
`litigation. I think we are talking about
`the same documents, the same transcripts;
`however, we may be referring to two
`different sections. I'm not aware of any
`new documents so to speak, this will be the
`same transcripts, perhaps just different
`sections.
` THE COURT: All right. And
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 7
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`Page 8
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` HEARING
`petitioner, do you have any response to
`this.
` MS. BERNIKER: I think that's fine.
`Separate portions of the same transcript is
`not a problem from our perspective.
` THE COURT: All right. So the
`situation, I think, that we have here, is
`the motion to seal, the original motion to
`seal that was filed since we stated that
`the documents were marked highly
`confidential in the district court
`litigation, and in here at the board, we
`require that you give more of an
`explanation than simply that the documents
`were declared confidential in district
`court litigation, and in this case, it
`appears to me that the information is
`patent owner's information, the petitioner
`marked it confidential out of caution and
`courtesy to the patent owner in this. If I
`pencil that as correct, the issue that I
`have that we need more detail certainly
`than it was given in the opening motion to
`seal in order to appeal these documents.
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 8
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` HEARING
` But of course, we are dealing with
`something that's going out today and
`something that's going out tomorrow. It is
`probably not much opportunity to add that
`detail at this time, so I guess before I go
`further, patent owner, did you -- let me
`know, sort of my understanding of what you
`are seeking to put in is correct, that it
`will be substantially similar reason
`petitioner gave in their motion to seal; is
`that correct?
` MR. MCKEOWN: I guess if we need to
`supplement or we need to give a little more
`detail, we can do that. We certainly want
`to keep these documents under seal, so if
`the board requires that, we will do our
`best to meet that showing.
` THE COURT: Okay. Well, then what
`I'm going to do, I'll memorialize that in
`an order that comes after this, but given
`the time, what I'm going to do is allow
`petitioner to file, and appears to be a
`joint, motion to seal, just as you have it
`now, I'm not going to require you to
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 9
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`
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`Page 10
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` HEARING
`supplement it in a couple of hours. I'd
`rather have something you're taking some
`time with. So what I would proposal is that
`you go ahead and put in the motion to seal
`as it is to keep them sealed for now, and
`then I will, in the order, give you some
`guidance as to what I need in a motion to
`seal, and then have you go ahead and read
`-- do a renewed note motion, probably don't
`need to withdraw the old motion, just do a
`renewed motion to seal, and in about ten
`business days that gives more detail on why
`each of one of these, or the portions of
`the documents that you feel should be
`confidential, why they are confidential,
`and an explanation, document by document,
`for the board.
` So I guess are there any questions
`starting with patent owner as to what we
`are contemplating doing here?
` MR. MCKEOWN: No, your Honor. We
`appreciate the courtesy. I think that's a
`fair resolution. I guess the only other
`issue is whether or not we would need to
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 10
`
`
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`Page 11
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` HEARING
`file something formally on the default
`protective order or should we wait until
`this order comes out.
` THE COURT: Right, just wait until
`the order comes out. The default protective
`order is in the motion. And everything will
`be sealed under the default protective
`order. If there is anything further we need
`you to do, we'll indicate it in the order
`and you can do it once you get the order.
` MR. MCKEOWN: Understood, your
`Honor.
` THE COURT: And I guess then
`petitioner, does that sound reasonable to
`you or do you have any comment?
` MS. BERNIKER: That's fine, your
`Honor.
` THE COURT: Okay. So I think that
`takes care of that issue. So the next issue
`I think is petitioner's, I think they
`indicated that they wanted to discuss what
`action they can take in response to the
`order, the previous order, the July 24th
`order. So petitioner if you want to go
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 11
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`Page 12
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` HEARING
`ahead with that.
` MS. BERNIKER: Yes, your Honor,,
`thank you.
` We are considering, as an abundance
`of caution, filing an updated mandatory
`notice to identify additional potential
`real parties in an interest to direct the
`point that patent owner has raised. As we
`indicated on our call a few weeks ago, we
`don't see any reason why this should matter
`for the purposes of the merits of the case
`or for purposes of whether the petition
`should be instituted given that these
`parties wouldn't change any analysis by the
`board on that front.
` As a precaution, we are
`contemplating that and we want to request
`permission from the board to prepare to
`file that updated mandatory notice.
` THE COURT: Okay. I'm thinking
`whether I need a comment here from patent
`owner. I think with all respect to the
`patent owner, it will help if I made a few
`comments before I have you speak on this
`
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 12
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`Page 13
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` HEARING
`issue. In the order I think we indicated
`that, you know, our sense of it is that in
`order to do that, you would lose your
`filing date because it is not a clerical
`error, it is not something that was done
`inadvertently, even though you deal
`legitimately and you have no reason to put
`it in there. It is not a situation that
`there is something that could have gone in
`and there was some sort of mistake.
` So our reading of the rules then is
`that you would then lose your filing date,
`and I think what we indicated in the order
`was that there may have been sort of an
`open issue as to whether you'd have to
`re-file. But my sense of this here on the
`call, and maybe for the purposes of this
`call, we need to discuss it this way, is
`that in order to get that done and get that
`person listed, you would need to withdraw
`this case or these cases, and re-file them
`with a new real parties interest, if you
`want to, in the abundance of caution,
`before the bar date, I would assume you
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 13
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`Page 14
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` HEARING
`would want to get that listed and sort of
`removed that issue from the case.
` So I think that what that would do,
`I'll let you tell me if that's what you
`want to do, but my sense is then that the
`issue then becomes these preliminary
`responses, which are sort of ready to go
`into the cage today and tomorrow, and you
`know what the status of those, if you
`re-file, obviously the re-file, you would
`have the opportunity to put whatever you
`would want to put in in the re-file motion.
` So the difficulty I have here today,
`I don't want these preliminary responses to
`go in and have to be re-filed in a second
`case; if we can avoid that. I guess I said
`a lot, maybe if petitioner, you can sort of
`respond to what I said, and then we'll get
`the patent owner to give a him an
`opportunity to speak on it.
` MS. BERNIKER: Certainly, your
`Honor.
` We have given close attention of the
`rule and regulations in the circumstances,
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 14
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`Page 15
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` HEARING
`and also try to take a look at what other
`parties have done in the circumstances. It
`appears to us that too quickly when the
`parties are making this sort of amendment,
`it is done by mandatory updated notice. It
`is not done by re-filing the petition. And
`in fact if you take a look at section
`42.106, it is specifically references the
`contents of an incomplete petition, and
`obviously our view is that our petition is
`not incomplete, but putting that aside, it
`still addresses the concept of correcting
`the petition without -- it certainly
`doesn't imply that you need to re-file it
`as a whole, and so I think our view is that
`given that the only thing that's changing
`is the real party's interest
`identification, if anything, that that
`shouldn't require an entire re-filing.
` Now I understand the board's
`comments in the order regarding a new
`filing date. I think that is a separate
`question, but just with respect to the
`procedural question on how to go about
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 15
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`Page 16
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` HEARING
`this, it appears the parties have routinely
`in the past done this by way of amended and
`way of mandatory notice, and it is not
`clear why we would have to formally re-file
`the entire petition.
` I think there is a separate question
`that you raised about the question of when
`or how to go about responding with respect
`to the patent owner, and with respect to
`that, the rules certainly imply that the
`obligation -- state that the obligation is
`to respond within three months of the
`request to institute, and which is
`obviously today or tomorrow of this
`particular instance, and from our
`perspective this shouldn't trigger a new
`three-month window. I think that's a
`separate question from a procedural
`question on how to go about making this
`amendment.
` THE COURT: Okay. This is probably a
`good time for patent owner to weigh in on
`everything that's been said by me and by
`petitioner.
`
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 16
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`Page 17
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` HEARING
` MR. MCKEOWN: Sure. Thanks, your
`Honor.
` I'm not aware of a single case that
`the failure to name the real parties
`interest, which is required by statute, was
`ever fixed by mandatory notice. The
`incomplete filing rules that opposing
`counsel is referring to refers to
`incomplete filings which don't have filing
`dates to begin with. So what we are talking
`about here is unfortunately something
`that's been going in the litigation with
`this idea of sort of playing hide the ball
`on jurisdictional issues, and we, of
`course, object to the piecemeal treatment
`of these proceedings. And if you named the
`wrong real parties in interest, you just
`need to re-file.
` And then as they've mentioned, there
`is no leads from their perspective on the
`statutory bar issues, so there is nothing
`preventing that. This creates significant
`issues for us, because we've been exploring
`on the litigation side relationships from
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`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 17
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`Page 18
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` HEARING
`an earlier litigation and the currently
`named party. Now we are talking about
`adding two additional parties which
`necessarily would require us to investigate
`the relationships on that side as well. So
`we've been on this issue since June and,
`you know, here it is the day that our
`responses are due, and this is something
`that's been brought up by PGS. This is
`after the order issue. Clearly there is
`something there. An abundance of caution or
`otherwise. We wouldn't be talking about
`this unless this is a significant concern,
`as we argued all along it should be because
`the necessary parties aren't here.
` So if we are going to talk about
`fixing it today, we think it is wholly
`unreasonable for us to be submitting
`piecemeal responses when we are going to
`see re-filings essentially in a week or
`whenever, and we would ask that the dates
`be extended in some manner to account for
`any kind of change in direction of this
`late date.
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 18
`
`
`
`Page 19
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`
` HEARING
` THE COURT: Okay. Petitioner.
` MS. BERNIKER: In the first instance
`I think it is worth pointing out that we
`obviously are not trying to do anything in
`secret here. As we said when this was first
`raised by patent owner, we think it's an
`issue that they are raising in order to
`either try to delay this proceeding
`substantially or to try to come with a
`hypothetical basis for dismissing the
`petition early in the date. But
`substantively there is nothing different
`about these entities that would change the
`ability -- change the estoppel question or
`change the question on whether the
`proceeding should be able to go forward. It
`is probably to make the modification
`designed to be a minor correction, that we
`frankly don't think it is incorrect, and we
`understand in the district court patent
`owner has been attempting to take raw
`discovery with respect to any PGS entity in
`an effort to come up with some sort of
`argument from what we can tell is leading
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 19
`
`
`
`Page 20
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` HEARING
`nowhere. But obviously our goal here is to
`avoid passing a bar date on the off chance
`that this becomes some sort of issue.
` So I think the real question, a
`practical matter which we have been raising
`for a few weeks now, how can we fix this if
`there is something to be fixed so that it
`is corrected before the bar date and we can
`move forward on a timely basis with respect
`to the IPR?
` So we don't think this is an excuse
`for delaying everything several more
`months. As a substantive matter, it doesn't
`seem like we are taking any offense to the
`arguments that the patent owner appears to
`be intending to make in their preliminary
`response, which we understand to be
`substantive and not procedural in nature.
`But, you know, if they are proposing to
`have some sort of short extension with
`respect to their preliminary response, so
`that we can take into account this
`amendment on our side, I think we'd be
`comfortable with that. We are trying to
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 20
`
`
`
`Page 21
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`
` HEARING
`look for our practical way of handling the
`issue.
` THE COURT: All right. If you can
`just give me a moment, I think we have
`enough commentary from both sides on this
`issue. I'm going to convene with the panel
`for a moment and then I'll come back on the
`line and we'll have further discussion on
`this issue.
` (The board convenes. 2:43 p.m.)
` (On the record. 2:53 p.m.)
` THE COURT: I discussed this with
`the panel, and the first thing I'd like to
`do is if the petitioner mentioned that
`there were instances where the change be
`treated as a correction, and if you have
`any citations that you can give me here on
`the call, I would appreciate those, if you
`have them.
` MS. BERNIKER: Certainly, your
`Honor.
` Well, first of all, I believe
`section 42.1068 supports for that
`proposition, which states, "where a party
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 21
`
`
`
`Page 22
`
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`
` HEARING
`files an incomplete petition, no filing
`date will be accorded, and the office will
`dismiss the petition if the deficiency in
`the petition is not corrected within one
`month from the notice of an incomplete
`petition."
` We understand that rule to state
`that to the extent th office determines
`that the petition is incomplete, that
`allows the petitioner to have a month to
`correct it, and it otherwise doesn't
`require any other sort of re-filing.
`Separate from that we are not aware of any
`rule that specifically would require
`re-filing in this circumstance.
` In addition to that, we have seen a
`number of cases where parties have filed
`amended mandatory notices. I'm going to
`look to my colleague to get me those cases,
`if you don't mind.
` THE COURT: That's fine.
` MS. BERNIKER: Your Honor, an
`example of a recent case to reference is
`the Motorola mobility case, IPR 2014-00504,
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 22
`
`
`
`Page 23
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`
` HEARING
`paper number 10, where they reference the
`fact that a party files an amended
`mandatory notice in order to correct a real
`party's interest or update a real party's
`interest identification. Now, I believe
`there are other cases, but those are at my
`fingertips at the moment. We'd be happy to
`provide you with additional support by
`e-mail if you'd prefer that.
` THE COURT: Okay. And obviously I'm
`actually doing it to try to be fair and say
`patent owner, if you have any commentary? I
`wouldn't expect you to have any citations
`at this point on the call, but if you have
`some brief comments regarding what she
`said.
` MR. MCKEOWN: Sure.
` Just to reiterate the rule about
`incomplete filing dates, you don't get the
`filing dates until you complete your
`petition. So the fact there is some time in
`order for you to fix your petition in order
`to get a date, I'm not sure what this has
`to do with the the case here, the case that
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 23
`
`
`
`Page 24
`
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`
` HEARING
`was cited. My recollection of that case is
`the name of one of the party's changed, so
`we are talking about updating a corporate
`name change, not adding an entirely new
`party which is the case here. From the
`patentee's perspective, we don't see any
`authority that would allow what's being
`proposed here absent a re-filing.
` THE COURT: All right. Okay. Given
`the timing and my -- and the sort of, I
`guess, not proposal but the allowance by
`petitioner for some delay, and also because
`I have a sense, although we haven't
`determined, that if you are going to do
`this, and you get a new filing date, it
`should restart the clock. It should mean
`that patent owner should get the full three
`months put in there. New preliminary
`response and to the extent that the results
`of this is, I think alluded to in the order
`that substantive requirement, it can't be
`corrected unless, you know, there is a
`change of situation which the rules
`contemplate there being a change of
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 24
`
`
`
`Page 25
`
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`
` HEARING
`situation, or a typographical error. To the
`extent that it is substantive and there
`needs to be a new filing date, there would
`need to be an opportunity for patent owner
`to get the benefit of that filing date as
`far as all patent owner stated. Because
`this situation is presenting itself here
`the day the preliminary response is due,
`I'm proposing and since petitioner
`mentioned this, I'll just get patent
`owner's response to this. I'm looking for
`patent owner's reaction to approximately a
`one week extension of the preliminary
`responses giving the board time to just
`examine this issue for a couple of days,
`and make itself comfortable. How we are
`going to go forward if this case dealing
`with this issue, and then maybe again
`around a short e-mail as we had before,
`which laid out, the you know, the
`petitioner's basis for why they should be
`able to correct, I think we've already
`resolved the issue that the filing date
`would be lost, that if you reread the
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 25
`
`
`
`Page 26
`
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`
` HEARING
`order, I don't think it is an issue.
` My sense of what the issue is here
`is whether or not it can be corrected in
`this IPR or whether the IPR would need to
`be re-filed, so that's the issue that I see
`is before us right now. So, you know, that
`would be my tentative proposal right now,
`and then maybe I can hear from patent owner
`of their reaction to that.
` MR. MCKEOWN: Sure, your Honor.
` I think it makes sense to delay
`today's filings at the very least as to the
`amount of time. I leave that to the board's
`discretion. If we are waiting on an order,
`I'm not really in a position to say when
`that order is coming out. I'm assuming it
`is coming out on the short term, I think we
`would be agreeable to that.
` THE COURT: Okay. Petitioner, any
`reaction?
` MS. BERNIKER: I guess the question
`that is not clear to us is whether or not
`it is in fact required that with a new
`filing date that would necessarily add an
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 26
`
`
`
`Page 27
`
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`
` HEARING
`additional three months in terms of a
`response. Given to the rules, it would
`appear that the three months are triggered
`by the original notice instituting this
`procedure -- the proceeding. And so I guess
`the only hesitation I have if the board has
`already determined that there will
`necessarily be an initial three months,
`obviously we have a decision to make on our
`end about whether or not we want to go
`forward with any of these plans or whether
`we should leave the situation as is.
` Is this something that's open for
`briefing, the additional three months, or
`is that an issue that the board has already
`determined?
` THE COURT: All right. Before I
`respond to that, I should probably just
`take a moment to speak with the panel. I'll
`get right back to you.
` (Board convenes. 3:02 p.m.)
` (On the record. 3:06 p.m.)
` THE COURT: I guess my understanding
`of the rules is that the three months for
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 27
`
`
`
`Page 28
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` HEARING
`the preliminary response is triggered by
`the notice of filing date, not by the
`actual date that petition was filed,
`looking at just generic notice of filing
`date that I have in front of me. So I'm not
`sure that I contemplate a situation where
`the three months wouldn't be reset in some
`way. I guess my feeling is here on this
`call we've got a preliminary response
`that's going to come in and I don't want to
`have two preliminary responses coming in
`this case, if we can avoid it. I think, you
`know, we have an issue here that given the
`short amount of time that would prejudice
`either party, we are talking about a matter
`of probably five days or at the most
`10 days. The prudent thing to do here would
`be to delay these preliminary responses and
`explore this issue about the filing date
`and get it resolved, at least get the
`parties from a sense of how this is going
`to be resolved, and then either go forward
`with the responses or have petitioner
`indicate that they plan to re-file, or if
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 28
`
`
`
`Page 29
`
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` HEARING
`it turns out that, you know, a correction
`or an updated mandatory notice to be done,
`then they would go ahead and do that.
`Either way, my sense of it is that the
`three-month clock would be reset, but we
`can resolve all those issues today by a
`short delay.
` I think that's the best way to go in
`the situation that we have right now. I
`guess once again, the petitioner brought up
`this issue, maybe petitioner if they have
`any comment at this point?
` MS. BERNIKER: Well, we'll proceed
`as you propose, your Honor.
` THE COURT: And patent owner?
` MR. MCKEOWN: Nothing from patent
`owner, your Honor.
` THE COURT: Okay. So I guess just to
`recap what we have here, I would
`contemplate because I don't want a whole
`lot of reaching on this issue, and
`ultimately we are going to resolve from our
`understanding of the rules is a short
`e-mail, due tomorrow from petitioner,
`
`TSG Reporting - Worldwide
`(877) 702-9580
`
`IPR2014-00688
`PGS v WESTERNGECO
`WESTERNGECO Exhibit 2001, pg. 29
`
`
`
`Page 30
`
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` HEARING
`because although it is patent owner that's
`requesting that the real party interest be
`changed, petitioner is actually requesting
`the situation because of the resolution of
`the order last week. So a short e-mail, I
`think, I'm not sure what number of words or
`pages, but it would be then two paragraphs
`of the previous e-mails, was one paragraph
`of a certain number of pages, 300, 400, or
`something like that. We'll contemplate an
`an e-mail of twice that length, with two
`paragraphs, to deal with those issues that
`some support for doing it under a mandatory
`notice and as opposed to re-filing and some
`support regarding the three month deadline,
`although I kind of told you where that's
`going to end up.
` Then patent owner would get the same
`thing, the next day, which would be
`Wednesday, by end of day, as I did mention
`by end of day,
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