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`· · · SAMSUNG ELECTRONICS, CO.,· · :
`·3· · LTD.; SAMSUNG ELECTRONICS· · :
`· · · AMERICA, INC.; and SAMSUNG· ·:
`·4· · TELECOMMUNICATIONS· · · · · ·:
`· · · AMERICA, LLC,· · · · · · · · :
`·5· · · · · · · · · · · · · · · · ·:
`· · · · · · · · · · ·PLAINTIFFS,· ·:
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`· · · · · · · · ·vs.· · · · · · · ·:
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`· · · BLACK HILLS MEDIA, LLC,· · · :
`·8· · · · · · · · · · · · · · · · ·:
`· · · · · · · · · · ·DEFENDANT.· · :
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`12· · · ·HEARING BEFORE THE PATENT TRIAL AND APPEAL BOARD
`· · · · · · · · · · · ·(via teleconference)
`13· · · · · · · · · · · November 20, 2014
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`· · ·Reported by:· Jackie Johnson
`17· · · · · · · · ·Court Reporter
`· · · · · · · · · ·Notary Public
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`BHM 2009
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`· · · SAMSUNG ELECTRONICS, CO.,· · :
`·3· · LTD.; SAMSUNG ELECTRONICS· · :
`· · · AMERICA, INC.; and SAMSUNG· ·:
`·4· · TELECOMMUNICATIONS· · · · · ·:
`· · · AMERICA, LLC,· · · · · · · · :
`·5· · · · · · · · · · · · · · · · ·:
`· · · · · · · · · · ·PLAINTIFFS,· ·:
`·6· · · · · · · · · · · · · · · · ·:
`· · · · · · · · ·vs.· · · · · · · ·:
`·7· · · · · · · · · · · · · · · · ·:
`· · · BLACK HILLS MEDIA, LLC,· · · :
`·8· · · · · · · · · · · · · · · · ·:
`· · · · · · · · · · ·DEFENDANT.· · :
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`12· · · ·HEARING BEFORE THE PATENT TRIAL AND APPEAL BOARD
`· · · · · · · · · · · ·(via teleconference)
`13· · · · · · · · · · · November 20, 2014
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`· · ·Reported by:· Jackie Johnson
`17· · · · · · · · ·Court Reporter
`· · · · · · · · · ·Notary Public
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`·1· ·A P P E A R A N C E S:
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`·2
`· · · · · · · ·Covington & Burling, LLP (via
`·3· · · · · · ·phone)
`· · · · · · · ·BY:· ANDREA G. REISTER, ESQUIRE
`·4· · · · · · · · · GREGORY DISCHER, ESQUIRE
`· · · · · · · ·1201 Pennsylvania Avenue, NW
`·5· · · · · · ·Washington, D.C.· 20004
`· · · · · · · ·Attorneys for Petitioner Samsung
`·6
`· · · · · · · ·Thomas Horstemeyer, LLP (via phone)
`·7· · · · · · ·BY:· N. ANDREW CRAIN, ESQUIRE
`· · · · · · · · · · ROBERT D. GRAVOIS, ESQUIRE
`·8· · · · · · · · · KENNETH A. KNOX, ESQUIRE
`· · · · · · · ·400 Interstate North Parkway, SE
`·9· · · · · · ·Suite 1500
`· · · · · · · ·Atlanta, Georgia· 30339
`10· · · · · · ·andrew.crain@thomashorstemeyer.com
`· · · · · · · ·brandi.walzer@thomashorstemeyer.com
`11
`· · · · · · · ·Pepper Hamilton, LLP (via phone)
`12· · · · · · ·BY:· THOMAS J. ENGELLENNER, ESQUIRE
`· · · · · · · · · · LANA A. GLADSTEIN, ESQUIRE
`13· · · · · · · · · REZA MOLLAAGHABABA, ESQUIRE
`· · · · · · · ·125 High Street
`14· · · · · · ·19th Floor, High Street Tower
`· · · · · · · ·Boston, Massachusetts· 02110
`15· · · · · · ·Attorneys for Patent Owner Black
`· · · · · · · ·Hills Media
`16
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`17· · · · · · · · · · · · · · ·- - -
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`18
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`19· · · · · Teleconference before the Patent Trial and Appeal
`· · ·Board on the 20th day of November, 2014 at 4:00 p.m.,
`20· ·before Jackie Johnson, Court Reporter and Notary Public.
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`·1· · · · · · · · · P R O C E E D I N G S
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`·2· · · · · · JUDGE McNAMARA:· Good afternoon.· This is
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`·3· ·Judge McNamara.· I believe on the line there's also
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`·4· ·Judge Hoff, Judge Ippolito, Judge McKone, and Judge
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`·5· ·Chen.
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`·6· · · · · · Is there someone on for the Petitioner, the
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`·7· ·Samsung entities?
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`·8· · · · · · MS. REISTER:· Yes, Your Honor.· This is
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`·9· ·Andrea Reister, and I'm on with my backup counsel
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`10· ·Greg Discher.
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`11· · · · · · JUDGE McNAMARA:· And for the Patent Owner?
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`12· ·I guess that's Black Hills.
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`13· · · · · · MR. ENGELLENNER:· Yes, Your Honor.· Thomas
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`14· ·Engellenner here, lead counsel on the 740 and 737
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`15· ·cases.
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`16· · · · · · With me are my partners Reza Mollaaghababa,
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`17· ·lead counsel on the 711 and 733 cases, and Lana
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`18· ·Gladstein, lead counsel on the 709 and 723 cases.
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`19· · · · · · JUDGE McNAMARA:· Alright.· So is anybody
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`20· ·else going to be joining us or do we have a full
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`21· ·complement of participants?· I understand we're
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`22· ·supposed to have 11 people joining.
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`23· · · · · · MR. GRAVOIS:· This is Robert Gravois and
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`24· ·Kenneth Knox, backup counsel for Patent Owner. I
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`25· ·believe Andrew Crain, lead counsel, is calling in
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`
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`·1· ·right now.
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`·2· · · · · · JUDGE McNAMARA:· Mr. Crain, have you joined
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`·3· ·yet?
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`·4· · · · · · MR. CRAIN:· Yes, I have.
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`·5· · · · · · JUDGE McNAMARA:· Okay.· Great.
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`·6· · · · · · Mr. Crain, you are on what case?
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`·7· · · · · · MR. CRAIN:· I am on four of the IPRs, the
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`·8· ·first one being the 717 IPR, the 686 patent, and the
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`·9· ·second one being the 718 IPR, and also the 721 IPR
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`10· ·for the two Goldberg patents, and then the last one
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`11· ·is for the 735 IPR, and that's for the 593 patent.
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`12· · · · · · JUDGE McNAMARA:· Alright.· We have a few
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`13· ·things to talk about today.
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`14· · · · · · This is our initial conference.
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`15· ·Ordinarily, we would have issued or we would have
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`16· ·entered a Scheduling Order, but we did not do that,
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`17· ·because we have, if I'm right, we're talking about
`
`18· ·nine separate cases today.
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`19· · · · · · MS. REISTER:· Correct.
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`20· · · · · · JUDGE McNAMARA:· 709, 11, 17, 18, 21, 23,
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`21· ·35, 37 and 40.
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`22· · · · · · They're all related in one way or another,
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`23· ·and so when we get down to all the hearings, I assume
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`24· ·that the parties will want to conduct them over the
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`25· ·same couple of days.
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`
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`·1· · · · · · I'm assuming that everybody is not going to
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`·2· ·want to be running in here on Monday one week and
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`·3· ·Wednesday on the following week.
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`·4· · · · · · I'm assuming that the parties would prefer
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`·5· ·to do this maybe a couple of them on Monday, a couple
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`·6· ·of them on Tuesday, and that sort of thing.
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`·7· · · · · · Clearly, because of the overlap, we are not
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`·8· ·going to be conducting all of those hearings.· We are
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`·9· ·not going to conduct nine separate hearings.
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`10· · · · · · So I also wanted to get some sense from
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`11· ·counsel as to which ones they think would be best
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`12· ·done together and the timing with respect to that.
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`13· · · · · · Just so you know, the timing that would
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`14· ·normally -- that we would normally have these
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`15· ·hearings on would be -- if it were just one case, it
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`16· ·would be somewhere on or about July 30th of 2015.
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`17· · · · · · So I'm looking at that week, which I guess
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`18· ·it looks like it's the week of July 27th through the
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`19· ·31st, and that's the approximate week in which we
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`20· ·would be looking to conduct these hearings.· So let's
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`21· ·talk a little bit about that.
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`22· · · · · · Have the parties had a chance to discuss
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`23· ·this?
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`24· · · · · · MR. CRAIN:· Judge, this is Andrew Crain.· If
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`25· ·I could jump in for a moment.
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`·1· · · · · · Perhaps, before I got on the call, everyone
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`·2· ·had introduced themselves, but I wanted to alert the
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`·3· ·Board and Samsung's counsel that I believe there may
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`·4· ·be a court reporter on the line.
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`·5· · · · · · JUDGE McNAMARA:· Would you arrange, by the
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`·6· ·way, to have a transcript filed for this hearing?
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`·7· ·Thank you.
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`·8· · · · · · MR. CRAIN:· We most certainly will.
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`·9· · · · · · Thank you.· I'll turn it back to you.
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`10· · · · · · JUDGE McNAMARA:· Alright.· Thank you.
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`11· · · · · · Speaking of that, I just wanted to clarify.
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`12· · · · · · Mr. Engellener, you said you were lead
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`13· ·counsel on the 740 and 737?
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`14· · · · · · MR. ENGELLENER:· Yes, Your Honor.
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`15· · · · · · JUDGE McNAMARA:· Ms. Gladstein is on the 709
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`16· ·and the 723?
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`17· · · · · · MR. ENGELLENER:· Yes, Your Honor.
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`18· · · · · · JUDGE McNAMARA:· I'm sorry.· Your other
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`19· ·counsel was who?
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`20· · · · · · MR. ENGELLENNER:· Reza Mollaaghababa.
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`21· · · · · · I misspoke.· He is lead counsel on the 711
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`22· ·case.
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`23· · · · · · So there's five cases that we are handling,
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`24· ·and Mr. Crain's firm is handling four cases.
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`25· · · · · · JUDGE McNAMARA:· Okay.· Great.· Great.
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`·1· ·That's good.
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`·2· · · · · · Anyway, have the parties had a chance to
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`·3· ·talk about this with respect to how you might want to
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`·4· ·conduct the hearings and which ones they might like
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`·5· ·to combine and that sort of thing?
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`·6· · · · · · MS. REISTER:· Your Honor, this is counsel
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`·7· ·for Samsung.· I know, we have not conferred with
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`·8· ·either of the two law firms on that issue.
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`·9· · · · · · JUDGE McNAMARA:· I see.
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`10· · · · · · Well, does anybody have any thoughts?
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`11· · · · · · MS. REISTER:· Yes, we do.
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`12· · · · · · JUDGE McNAMARA:· Okay.· I'd like to hear
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`13· ·them.
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`14· · · · · · MS. REISTER:· Certainly, Your Honor.
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`15· · · · · · I think one thing that I'd like to just
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`16· ·point out right from the beginning, in terms of a
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`17· ·schedule.· You had mentioned the week of July 27th
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`18· ·through the 31st, and one of the schedule conflicts
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`19· ·that Samsung has is earlier that month, July 2nd to
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`20· ·17th.
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`21· · · · · · So we have no conflicts with the July 27 to
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`22· ·31 week, but certainly do in the 2 to 17 time frame,
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`23· ·and we wanted to alert the Board to that today.
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`24· · · · · · JUDGE McNAMARA:· Okay.
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`25· · · · · · MS. REISTER:· We have given a lot of
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`·1· ·thought, and I think the Board is absolutely correct,
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`·2· ·that in terms of the preference of Petitioners to
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`·3· ·consolidate workload for all the parties here, in
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`·4· ·terms of the oral argument.
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`·5· · · · · · We're mindful of the consolidation that was
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`·6· ·done in the Yahama proceedings that had an oral
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`·7· ·argument on October the 21st.· I believe in those
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`·8· ·cases, there were four patents consolidated into a
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`·9· ·single hearing.
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`10· · · · · · JUDGE McNAMARA:· Right.
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`11· · · · · · MS. REISTER:· And those same four patents
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`12· ·are at issue in this set of nine.· There is also a
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`13· ·fifth patent that's related to those four.
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`14· · · · · · The 323 patent, which is in the 709
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`15· ·proceeding, that is a parent of one of the four that
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`16· ·were heard together.
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`17· · · · · · So from the Petitioner's perspective, we
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`18· ·think it's reasonable to hold a consolidated hearing
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`19· ·with five patents, the 952 patent, the 652, the 099,
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`20· ·the 873, and the 323.· There's a lot of commonality
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`21· ·of issues there.· Four of those patents were held in
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`22· ·a consolidated hearing previously.
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`23· · · · · · JUDGE McNAMARA:· Could you tell me which
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`24· ·IPRs they pertain to?
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`25· · · · · · MS. REISTER:· Certainly, Your Honor.
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`·1· · · · · · This would be the 709, the 711, the 723,
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`·2· ·the 737, and the 740.
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`·3· · · · · · I believe those five patents are, on the
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`·4· ·Patent Owner's side, they're all being represented by
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`·5· ·the Pepper Hamilton firm.
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`·6· · · · · · So although there may be different lawyers,
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`·7· ·it's a nice set of the same law firm.
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`·8· · · · · · JUDGE McNAMARA:· How does that work for the
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`·9· ·Patent Owner?
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`10· · · · · · MR. ENGELLENER:· Your Honor, Thomas
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`11· ·Engellener here for Pepper Hamilton.
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`12· · · · · · As you may recall, the October 25th hearing
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`13· ·was a bit of a smorgasbord.· There were not the same
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`14· ·issues in all of these cases.· In fact, there were
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`15· ·different issues in each one of them.
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`16· · · · · · We had suggested earlier on that they be
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`17· ·tried by family, and we'd like to suggest that again
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`18· ·here.· It's not a great deal of division in that
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`19· ·there are two cases that are related to each other,
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`20· ·the Qureshi patents, and then there are three other
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`21· ·cases that are related to the so-called wheel
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`22· ·patents.
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`23· · · · · · Our preference would be to treat each one
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`24· ·of those as a family and to have oral argument on
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`25· ·each family separately.
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`·1· · · · · · JUDGE McNAMARA:· Alright.· What does the
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`·2· ·Petitioner think about that?
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`·3· · · · · · MS. REISTER:· We wouldn't have any
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`·4· ·particular objection to that, Your Honor.· I think
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`·5· ·that there is some overlap of issues among those
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`·6· ·five.
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`·7· · · · · · Perhaps we could have those hearings by
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`·8· ·family, maybe a hearing in the morning and a hearing
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`·9· ·in the afternoon or something along that line,
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`10· ·something close in time, given the overlap of the
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`11· ·issues.
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`12· · · · · · JUDGE McNAMARA:· Yeah.· I guess my
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`13· ·recollection of the hearing we had in October is we
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`14· ·had no trouble following it.· There was enough
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`15· ·overlap that we really didn't have any problem
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`16· ·following it, but we will take that under
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`17· ·consideration at this point.
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`18· · · · · · Alright.· With respect to the other four
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`19· ·patents, Mr. Crain -- well, let me ask the
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`20· ·Petitioner:· Would you consolidate those into a
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`21· ·single hearing, as well?
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`22· · · · · · MS. REISTER:· I think on the other four,
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`23· ·Your Honor, what we would suggest, part of which I
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`24· ·think is analogous to Patent Owner's family approach,
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`25· ·is there are two of those patents, the 689 which is
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`·1· ·involved in a 718 proceeding, and the 082 patent
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`·2· ·which is involved in a 721 proceeding.· Those are
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`·3· ·related to each other, and that would make sense to
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`·4· ·us to do those in one hearing.
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`·5· · · · · · The remaining two patents, which are the
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`·6· ·717 and the 735 proceeding, aren't really related to
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`·7· ·each other, but again I think we could do sort of
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`·8· ·back-to-back arguments on those patents so that
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`·9· ·perhaps we could accomplish one hearing in the
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`10· ·morning on 689 and 082 patents and one hearing in the
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`11· ·afternoon on 686 and 593 or on consecutive days so
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`12· ·that we could pair those other two up to each.
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`13· · · · · · JUDGE McNAMARA:· Assuming we were to do
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`14· ·that, let's say -- well, let me ask the Patent Owner:
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`15· ·What is your opinion on that kind of a division?
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`16· · · · · · MR. CRAIN:· Your Honor, this is Andrew Crain
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`17· ·speaking on behalf of Patent Owner for that question.
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`18· · · · · · I would tend to agree with Petitioner with
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`19· ·respect to the 718 IPR on the 082 patent -- I'm sorry
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`20· ·-- the 721 IPR on the 082 patent and the 718 on the
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`21· ·689.· They do share a couple of the same issues
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`22· ·there.· I think we would be amenable to do those
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`23· ·together.
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`24· · · · · · I would probably tend to disagree a little
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`25· ·bit with the combination of the other two.· I do
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`·1· ·agree with counsel that they are different, and for
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`·2· ·that reason, I think that they should probably be
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`·3· ·dealt with individually.
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`·4· · · · · · Now, we could do these either all in one
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`·5· ·day or sequential days.· We have no objection to that
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`·6· ·at all.
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`·7· · · · · · It may be a better approach for the 717 IPR
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`·8· ·on the 686 patent to be separate from the 735 IPR on
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`·9· ·the 593, but we have no issue with the combination of
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`10· ·the 721 and the 718 IPR if you're with me on all
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`11· ·those numbers.
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`12· · · · · · JUDGE McNAMARA:· I'm trying to follow along,
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`13· ·because there's a lot of numbers floating around
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`14· ·here.
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`15· · · · · · Yes, I think I understand the 718 and 721,
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`16· ·both sides -- the 718 IPR and the 712 IPR both sides
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`17· ·agree it could be heard in a single hearing.
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`18· · · · · · The 713 and the -- I'm sorry -- 717 and the
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`19· ·735 IPRs, the question is whether or not we should
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`20· ·try and shoehorn that into one hearing or do it as
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`21· ·two separate hearings.
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`22· · · · · · MS. REISTER:· Right.
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`23· · · · · · MR. CRAIN:· Right.
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`24· · · · · · JUDGE McNAMARA:· Hang on just a second.
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`25· · · · · · Okay.· I've had a chance to chat with the
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`·1· ·judges for a minute.· Now, what we will plan to do is
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`·2· ·to combine the 718 -- to have a consolidated hearing
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`·3· ·for IPR 2014-00718 and 00721.
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`·4· · · · · · I guess we can do the other two, the 717
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`·5· ·and the 735 cases, separately on the same day, and
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`·6· ·that would work out okay, as well.· Alright.· So we
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`·7· ·will plan to do that.
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`·8· · · · · · Is everybody free that week, that last week
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`·9· ·of July, July 27th to the 31st?
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`10· · · · · · MS. REISTER:· This is counsel for
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`11· ·Petitioners, Your Honor, and yes, I believe we are.
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`12· ·I think we would prefer to do it early in the week,
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`13· ·the 27th, 28th, and 29th.
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`14· · · · · · JUDGE McNAMARA:· Okay.· And you have no
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`15· ·objection if let's say if we're doing the first
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`16· ·group, for example, the five of them, either in one
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`17· ·or two hearings, on let's say the 27th, and then we
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`18· ·will go right into the next group on the 28th, if
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`19· ·that's okay with everybody.
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`20· · · · · · Nobody needs a day in between or anything?
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`21· · · · · · MR. CRAIN:· Judge, this is Andrew Crain
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`22· ·speaking for Patent Owner.
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`23· · · · · · As I'm looking at my schedule now, it looks
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`24· ·like I have a proposed trial date beginning on
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`25· ·July 28th.· I need to check to make sure that is, in
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`·1· ·fact, accurate, but I'm looking at my calendar for
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`·2· ·the first time as we're speaking here, and that has
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`·3· ·popped up.
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`·4· · · · · · I certainly can get back to the Court, at
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`·5· ·the earliest convenience, on that, if that's
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`·6· ·acceptable.
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`·7· · · · · · JUDGE McNAMARA:· The only option for us is
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`·8· ·to move it up a week to the 20th, which gives you
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`·9· ·guys less time.
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`10· · · · · · MS. REISTER:· Right.· Right.
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`11· · · · · · JUDGE McNAMARA:· And that's right after -- I
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`12· ·think Petitioner is not available before the 17th.
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`13· · · · · · MS. REISTER:· Correct.· From the 2nd to the
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`14· ·17th, and that's a firm commitment out of the
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`15· ·country.
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`16· · · · · · JUDGE McNAMARA:· Right.· So we could do it
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`17· ·the week of the 20th or we could do it the week of
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`18· ·the 27th; is that okay?
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`19· · · · · · MR. CRAIN:· Yeah.· The week of the 20th, I
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`20· ·think, from Patent Owner's perspective, at least from
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`21· ·my perspective, for those cases I'm involved in,
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`22· ·appears to be open.
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`23· · · · · · I'm trying to confirm right now the trial
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`24· ·date.· We can continue on.
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`25· · · · · · JUDGE McNAMARA:· Sure.
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`
`
`·1· · · · · · For Petitioners and for Mr. Engellenner at
`
`·2· ·Pepper Hamilton, is that week available for you, as
`
`·3· ·well, the week of the 20th?
`
`·4· · · · · · MR. ENGELLENNER:· Yes, sir, Your Honor.· It
`
`·5· ·appears to be open.
`
`·6· · · · · · JUDGE McNAMARA:· And the week of the 27th?
`
`·7· · · · · · MR. ENGELLENNER:· In that case, as well,
`
`·8· ·yes.
`
`·9· · · · · · JUDGE McNAMARA:· So we just need to know
`
`10· ·from Mr. Crain whether it will be the week of the
`
`11· ·20th or the 27th.
`
`12· · · · · · If it's the week of the 20th, would you
`
`13· ·prefer to do it at the beginning of the week or the
`
`14· ·latter part of the week?
`
`15· · · · · · MS. REISTER:· This is counsel for
`
`16· ·Petitioners.
`
`17· · · · · · Obviously, given our scheduling conflict,
`
`18· ·which we've already confirmed with the Board, we
`
`19· ·obviously would request that any hearing that would
`
`20· ·be held the week of the 20th would be at the end of
`
`21· ·the week.
`
`22· · · · · · JUDGE McNAMARA:· Sure.· I thought that might
`
`23· ·be the case.
`
`24· · · · · · All of this will depend on what our
`
`25· ·courtroom availability looks like for that period of
`
`
`
`·1· ·time, as well.
`
`·2· · · · · · MS. REISTER:· I understand.
`
`·3· · · · · · JUDGE McNAMARA:· Right now I think the
`
`·4· ·hearing rooms are still pretty much available,
`
`·5· ·because we don't usually schedule them that far out.
`
`·6· ·That's why I wanted to have this conversation with
`
`·7· ·everybody, to make sure we have rooms available and
`
`·8· ·that sort of thing.
`
`·9· · · · · · MR. ENGELLENNER:· Your Honor, if I could
`
`10· ·make one more request.
`
`11· · · · · · The last hearing that we had on the
`
`12· ·consolidated cases with Yamaha was in a courtroom
`
`13· ·that had only an occupancy of 15.· Then when you
`
`14· ·counted the judges and the stenographer, there was
`
`15· ·very little room for counsel, much less for clients.
`
`16· · · · · · If there's a possibility, because of the
`
`17· ·large number of people involved here, whether there
`
`18· ·would be an opportunity to get one of the larger
`
`19· ·conference rooms, that would certainly be
`
`20· ·appreciated.
`
`21· · · · · · JUDGE McNAMARA:· We'll do what we can.
`
`22· · · · · · I'm just looking right now.· It looks like
`
`23· ·Hearing Room A, which is our largest room -- I don't
`
`24· ·have control over the booking of the hearing rooms.
`
`25· ·But right now Hearing Room A looks like it might be
`
`
`
`·1· ·available during that week of the 22nd, 23rd, 24th.
`
`·2· ·The Hearing Room A might not be available Wednesday,
`
`·3· ·the 29th.
`
`·4· · · · · · MR. CRAIN:· Judge, this is Andrew Crain.· If
`
`·5· ·I could interject.
`
`·6· · · · · · I've had an opportunity to reconfirm.· It
`
`·7· ·looks like I did pull out a date for a proposed trial
`
`·8· ·date.· So I can confirm that the 28th, which you had
`
`·9· ·initially suggested, would be amenable.
`
`10· · · · · · JUDGE McNAMARA:· Alright.· So if I were to
`
`11· ·ask preferences, would you guys prefer to do it on
`
`12· ·the 23rd and the 24th or the 27th and 28th?
`
`13· · · · · · MS. REISTER:· This is counsel for
`
`14· ·Petitioners.
`
`15· · · · · · We strongly prefer the 27th to 28th.
`
`16· · · · · · JUDGE McNAMARA:· Okay.
`
`17· · · · · · Is that okay with the Patent Owner?
`
`18· · · · · · MR. CRAIN:· No objection here.
`
`19· · · · · · MR. ENGELLENNER:· None here either.
`
`20· · · · · · JUDGE McNAMARA:· So we will schedule these
`
`21· ·for the 27th and the 28th, which then means that the
`
`22· ·remaining dates will all fall out before that,
`
`23· ·obviously, and just to give you an approximate date,
`
`24· ·you can renegotiate any dates through day five when
`
`25· ·you get the Scheduling Order.
`
`
`
`·1· · · · · · We will send out a formal Scheduling Order
`
`·2· ·so you will know what these dates are exactly, but it
`
`·3· ·will be somewhere around the 4th of February when the
`
`·4· ·Patent Owner response and Motions to Amend are due.
`
`·5· · · · · · The reply, Petitioner's reply, in
`
`·6· ·opposition to any Motions to Amend, will be then due
`
`·7· ·around May 4th.· The Patent Owner reply to the
`
`·8· ·opposition to the Motion to Amend will be around June
`
`·9· ·4th.· Motions to Exclude at the end of June,
`
`10· ·June 25th.· Oppositions to the Motions to Exclude
`
`11· ·will be July 9th.· Observations on cross would also
`
`12· ·be due on June 25th, and responses on July 9th, and
`
`13· ·then reply to the opposition -- any opposition to
`
`14· ·Motion to Exclude would be due around July 16th.
`
`15· · · · · · So we will send out a Scheduling Order that
`
`16· ·goes to that, and in the Scheduling Order, we will
`
`17· ·also address the question of that first group of
`
`18· ·cases, whether to do them all at once or to do them
`
`19· ·in two separate groups.· We'll see how that plays
`
`20· ·out, as well.
`
`21· · · · · · Alright.· Are there any other questions on
`
`22· ·scheduling, any other thoughts?
`
`23· · · · · · MS. REISTER:· None from Petitioners, Your
`
`24· ·Honor.
`
`25· · · · · · MR. CRAIN:· None from Patent Owner on the
`
`
`
`·1· ·cases I'm involved in.
`
`·2· · · · · · MR. ENGELLENNER:· None here either, Your
`
`·3· ·Honor.
`
`·4· · · · · · JUDGE McNAMARA:· Alright.· Let me see. I
`
`·5· ·guess the next thing I wanted to mention is, with
`
`·6· ·respect to related matters, are any of the patents --
`
`·7· ·the Patent Owner could probably respond to this best.
`
`·8· · · · · · Are any of the patents that are involved
`
`·9· ·here currently the subject of a re-exam proceeding?
`
`10· · · · · · MR. ENGELLENNER:· No, Your Honor.
`
`11· · · · · · JUDGE McNAMARA:· I know there's a bunch of
`
`12· ·litigation going on.
`
`13· · · · · · Is any of the litigation stayed or is that
`
`14· ·also still proceeding?
`
`15· · · · · · MR. ENGELLENNER:· The litigation is
`
`16· ·currently stayed.
`
`17· · · · · · MS. REISTER:· That's the District Court
`
`18· ·litigation, correct.
`
`19· · · · · · JUDGE McNAMARA:· So there's no District
`
`20· ·Court litigation that's actually proceeding.· They're
`
`21· ·all stayed at the moment involving these patents?
`
`22· · · · · · MR. ENGELLENNER:· That's my understanding.
`
`23· ·I'm not litigation counsel.
`
`24· · · · · · There is one case that's proceeding against
`
`25· ·Defendant Sonos, but I do not think it involves any
`
`
`
`·1· ·of the patents that are involved here.
`
`·2· · · · · · JUDGE McNAMARA:· Okay.· Is there an ITC
`
`·3· ·case, as well?
`
`·4· · · · · · MS. REISTER:· Yes, there is, Your Honor.
`
`·5· · · · · · The ITC case, I believe, has concluded.
`
`·6· · · · · · JUDGE McNAMARA:· Has concluded.· Okay.
`
`·7· · · · · · A couple of other things I wanted to talk
`
`·8· ·about.· First, the Protective Order.· In the event
`
`·9· ·that anyone wants to file a Motion to Seal, we will
`
`10· ·need to have a Protective Order in place.· There is
`
`11· ·no Protective Order that is entered at this time.
`
`12· · · · · · I know there's sometimes been a little bit
`
`13· ·of confusion because of what the -- because of how
`
`14· ·the Office Patent Trial Practice Guide refers to the
`
`15· ·default standing Protective Order, but it's not
`
`16· ·entered unless you actually sign it and ask for it.
`
`17· ·So just so everyone knows, we don't have a Protective
`
`18· ·Order in place at this time.
`
`19· · · · · · If you're going to be filing any Motions to
`
`20· ·Seal the confidential information or anything like
`
`21· ·that, you will need to get that Protective Order
`
`22· ·signed.
`
`23· · · · · · Then if there's any changes that you want
`
`24· ·to make to the standing Protective Order, we need a
`
`25· ·redlined version of our Protective Order so we know
`
`
`
`·1· ·what the differences are.
`
`·2· · · · · · Let's see.· Oh, the other thing I should
`
`·3· ·remind anybody that if there's any confidential
`
`·4· ·information that's used during the proceeding, if
`
`·5· ·it's in the final decision, it's going to get made
`
`·6· ·public, and that's something you will want to be
`
`·7· ·thinking about, as well.· It becomes public 45 days
`
`·8· ·after denial of a petition or sooner, 45 days after
`
`·9· ·the judgment of a trial.
`
`10· · · · · · You can ask for it to be expunged, but I
`
`11· ·want to make sure that everybody is aware of that
`
`12· ·provision in the rules.
`
`13· · · · · · Okay.· Here's the next interesting topic
`
`14· ·that we will want to talk about, initial disclosures
`
`15· ·and discovery.
`
`16· · · · · · I assume the parties haven't agreed to any
`
`17· ·initial disclosures back and forth; is that right?
`
`18· · · · · · MS. REISTER:· That's correct.
`
`19· · · · · · MR. CRAIN:· Correct.
`
`20· · · · · · MR. ENGELLENNER:· Correct.
`
`21· · · · · · JUDGE McNAMARA:· And so just as a general
`
`22· ·rule, discovery requests and objections don't get
`
`23· ·filed with the Board without some prior
`
`24· ·authorization.
`
`25· · · · · · So if you're unable to resolve a discovery
`
`
`
`·1· ·issue, you handle discovery issues just like you
`
`·2· ·would in District Court.· Try and work them out.
`
`·3· · · · · · If you can't work them out, then you can
`
`·4· ·come to us, and we will try to work them out for you,
`
`·5· ·and that may involve our authorizing a Motion to
`
`·6· ·Compel.
`
`·7· · · · · · I gather there's a discovery issue pending
`
`·8· ·right now, though, in the 717 and 735, IPR 717 and
`
`·9· ·735 case; is that right?
`
`10· · · · · · MR. ENGELLENNER:· That's correct, Your
`
`11· ·Honor.
`
`12· · · · · · JUDGE McNAMARA:· So let me hear who is
`
`13· ·seeking -- well, first of all, we had authorized --
`
`14· ·as I recall, the issue in those cases had to do with
`
`15· ·the real party in interest, and we had authorized
`
`16· ·some limited discovery with respect to documents and
`
`17· ·Answers to Interrogatories.
`
`18· · · · · · Has that discovery been completed?
`
`19· · · · · · MR. ENGELLENNER:· That has occurred.
`
`20· · · · · · JUDGE McNAMARA:· That has occurred.
`
`21· · · · · · So what's the issue that's pending now?
`
`22· · · · · · MR. CRAIN:· Judge, this is Andrew Crain
`
`23· ·speaking.
`
`24· · · · · · The issue that is apparently an issue of
`
`25· ·the parties pertains to Patent Owner's desire to
`
`
`
`·1· ·depose, as part of routine discovery, an individual
`
`·2· ·that submitted a Declaration on behalf of Petitioner
`
`·3· ·in both of the two IPRS at issue, the 717 and the
`
`·4· ·735.· We understand that to be a part of routine
`
`·5· ·discovery.
`
`·6· · · · · · Patent Owner would like to take a
`
`·7· ·deposition to cross examine that declarant, and I
`
`·8· ·believe that Petitioner has taken a position that it
`
`·9· ·does not intend to make that individual available.
`
`10· ·This is relevant to the real party in interest issue.
`
`11· · · · · · We understand that the rules allow that, as
`
`12· ·a part of routine discovery, and we'd like to see if
`
`13· ·we could bring that issue to resolution here.· Or if
`
`14· ·the Board would prefer for that issue to be briefed,
`
`15· ·we're happy to that, as well.
`
`16· · · · · · JUDGE McNAMARA:· Let me hear from the
`
`17· ·Petitioner about that.
`
`18· · · · · · MS. REISTER:· Yes, Your Honor.
`
`19· · · · · · You are correct that this all relates back
`
`20· ·to the additional discovery that was requested by
`
`21· ·Patent Owner, and in the two papers ordering the
`
`22· ·limited additional discovery in the proceedings, the
`
`23· ·additional discovery was ordered in the form of
`
`24· ·interrogatories and document requests.· That Order
`
`25· ·did not require the Petitioner to make Mr. Cho, who
`
`
`
`·1· ·is a resident in Korea, available for cross
`
`·2· ·examination.
`
`·3· · · · · · The Patent Owner has already come back to
`
`·4· ·the Board on this very issue once before, and in a
`
`·5· ·communication from the Board dated October 24th, the
`
`·6· ·Panel clarified, again, that the discovery that was
`
`·7· ·ordered in the motion was interrogatories and to
`
`·8· ·produce documents, as specified in the Order.· The
`
`·9· ·Order does not require that Petitioner make Mr. Cho
`
`10· ·available for cross examination.
`
`11· · · · · · As the Patent Owner has confirmed, the
`
`12· ·discovery that was actually ordered by the Board,
`
`13· ·Patent Owner complied with it a week earlier than the
`
`14· ·Patent Owner had requested.
`
`15· · · · · · In addition, Patent Owner had requested
`
`16· ·that Petitioner voluntarily provide the same scope of
`
`17· ·additional discovery in five of the additional
`
`18· ·proceedings here, and Patent Owner has complied with
`
`19· ·that, as well -- excuse me -- the Petitioner.· My
`
`20· ·apologies.· The Petitioner has provided that
`
`21· ·additional discovery voluntarily to the Patent Owners
`
`22· ·in the additional proceeding.· The Patent Owner has
`
`23· ·not raised any objections to the discovery provided.
`
`24· · · · · · So it's our position that the issue of the
`
`25· ·cross examination of Mr. Cho was really one of
`
`
`
`·1· ·additional discovery, and that issue has been closed
`
`·2· ·twice with the Board's original Order and the
`
`·3· ·confirmation on October 24th that Petitioner is not
`
`·4· ·required to make Mr. Cho available for cross
`
`·5· ·examination.
`
`·6· · · · · · We think that routine discovery doesn't
`
`·7· ·apply, as the very beginning of the Rule of
`
`·8· ·4251(b)(1) says, "Except as the Board may otherwise
`
`·9· ·order."
`
`10· · · · · · We believe that the Board has otherwise
`
`11· ·ordered that we are not required to make Mr. Cho
`
`12· ·available for cross examination.
`
`13· · · · · · MR. CRAIN:· Judge, may I respond?
`
`14· · · · · · JUDGE McNAMARA:· Sure.
`
`15· · · · · · MR. CRAIN:· I would like to clarify.
`
`16· · · · · · The prior request to the Board, I think
`
`17· ·there was a little confusion, and perhaps we can
`
`18· ·clarify that.
`
`19· · · · · · We never meant to indicate that the Order
`
`20· ·with respect to additional discovery specifically
`
`21· ·authorized that discovery, because that was
`
`22· ·pertaining to additional discovery.
`
`23· · · · · · We were merely seeking to reference, I
`
`24· ·believe, on Page 4 of that Order, that the Board had
`
`25· ·indicated that the Patent Owner was entitled to
`
`
`
`·1· ·corroboration of the assertions of the declarant and
`
`·2· ·to cross examine declarant.
`
`·3· · · · · · As we understand the rules, Rule 4251 --
`
`·4· ·I'm sorry -- 4151(b)(1)(2), it would be to cross
`
`·5· ·examine the affidavit testimony that was provided.
`
`·6· · · · · · We believe it's part of routine discovery,
`
`·7· ·and I think the Board now seems to understand that
`
`·8· ·the parties just do it differently.
`
`·9· · · · · · JUDGE McNAMARA:· Right.· I remember part of
`
`10· ·the reason that we ran with the discovery, in the
`
`11· ·first place, was because of the Declaration.· We did
`
`12· ·not know that Mr. Cho would be available for cross
`
`13· ·examination.· So we granted the initial discovery,
`
`14· ·the limited discovery in terms of the Answers to
`
`15· ·Interrogatories and the documents.
`
`16· · · · · · As I understood it, that discovery was
`
`17· ·specifically tailored to get to the issue of the real
`
`18· ·party in interest.
`
`19· · · · · · The Order, itself, and we clarified later,
`
`20· ·the Order did not order the production of Mr. Cho at
`
`21· ·the time, and so that's what we were saying when we
`
`22· ·responded to the inquiry that we got about whether or
`
`23· ·not the Order authorized the deposition of Mr. Cho.
`
`24· · · · · · So I sort of see this as sort of a separate
`
`25· ·request, given that -- a separate discovery request,
`
`
`
`·1· ·and I understand that you're making it under routine
`
`·2· ·discovery under the provision that says that you can
`
`·3· ·cross examine someone who's provided affidavit
`
`·4· ·testimony.
`
`·5· · · · · · Let me ask you this:· What did the
`
`·6· ·discovery we granted produce?
`
`·7· · · · · · MR. CRAIN:· The discovery that was provided
`
`·8· ·by -- that was authorized by the Board did speak to
`
`·9· ·issues with respect to who was involved with the
`
`10· ·preparation of the petition and whether or not there
`
`11· ·were payments that were received.
`
`12· · · · · ·
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