1
`
`P R O C E E D I N G S
`
`THE COURT: Thank you, good morning. We must have
`
`some people on the telephone.
`
`THE CLERK: We do, Your Honor.
`
`The matter now pending before this Court is civil
`
`docket number MJG-14-2581, et al, CTP Innovations, et al.
`
`versus Specialty Promotions, et al. Counsel for the plaintiff
`
`that is present in court is Clint Crosby and Sam Miller.
`
`Counsel for the defendants that are present in court is Tom
`
`Heneghan, John Jackson and Ahmad Davis.
`
`Counsel on the phone, if you would please identify
`
`yourselves and the company that you represent.
`
`MR. ST. CLAIR: Your Honor, this is Nathaniel St.
`
`Clair and Blake Dietrich from Jackson Walker in Dallas, Texas,
`
`we represent Worldwide Ticket & Publishing, Indexx Inc., and
`
`Versa Press.
`
`THE COURT: Okay. Anybody else?
`
`MR. BRUNELLI: Your Honor, this is Rob Brunelli in
`
`Denver, Colorado, representing Publication Printers
`
`Corporation.
`
`MR. JINKINS: David Jinkins and Matt Braunel
`
`representing Jet Printing.
`
`THE COURT: Where are you located?
`
`MR. VEAL: Robert Veal representing EBSCO
`
`Industries.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF MARYLAND
`
` )
` )
`IN RE: CTP INNOVATIONS, LLC )
`PATENT LITIGATION ) CIVIL NO.: MJG-14-2581
` )
`__________________________________)
`
`
`
`Transcript of Proceedings
`Before the Honorable Marvin J. Garbis
`Tuesday, December 15th, 2015; 10:00 a.m.
`Baltimore, Maryland
`
`APPEARANCES:
`
`For the Plaintiffs:
`
`Samuel F. Miller, Esquire
`L. Clint Crosby, Esquire
`
`For Defendant Arandell Corp., Schumann Printers & Times
`Printing, Liason counsel for Tag-Along defendants:
`
`Thomas P. Heneghan, Esquire
`
`For Defendant Versa Press, Worldwide Tickets and Labels,
`Indexx, Inc., Liaison counsel for the original defendants:
`
`John M. Jackson, Esquire
`Nathaniel St. Clair, Esquire (by telephone)
`Blake Dietrich, Esquire (by telephone)
`
`For Defendant Valassis Communications, Inc.:
`
`Ahmad Jamal Davis, Esquire
`
`For Defendant Jet Printing, LLC:
`
`David B. Jinkins, Esquire (by telephone)
`Matthew Braunel, Esquire (by telephone)
`_______________________________________________________________
`
`Christine T. Asif, RPR, FCRR
`Federal Official Court Reporter
`101 W. Lombard Street, 4th Floor
`Baltimore, Maryland 21201
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 1
`
` 3
`
`APPEARANCES: (cont'd)
`
`For Defendant F.C.L. Graphics, Inc.:
`
`THE COURT: Mr. Jinkins --
`
`MR. CURLEY: Michael Curley --
`
`THE COURT: Okay. I'm sorry. Mr. Jinkins, where are
`
`you located?
`
`MR. JINKINS: This is Mr. Jinkins and Matt Braunel,
`
`we are in St. Louis, Missouri.
`
`THE COURT: Okay.
`
`MS. MILESNICK: This is Elizabeth Milesnick in
`
`Portland, Oregon, representing Journal Graphics.
`
`MR. CURLEY: This is Michael Curley in Tucson,
`
`Arizona, representing F.C.L. Graphics.
`
`MR. COOPER: Good morning, this is Neil Cooper in
`
`Irvine, California, representing Trend Offset Printing
`
`Services.
`
`MR. HALL: This is Stephen Hall, Louisville,
`
`Kentucky, representing American Printing Company.
`
`MS. CHAMBERS: This is -- Emily Chambers, I'm in
`
`Atlanta, Georgia, representing GEO Graphics, Inc. And with me
`
`from my Dallas office is Derek Neilson.
`
`MR. CAPLAN: This is Barry Caplan, standing in for
`
`Robert Hughes calling from Atlanta, Georgia, on behalf of
`
`Walton Press.
`
`MR. WHITE: This is Benjamin White and Jonathan
`
`Winter in Stanford, Connecticut, and we represent Cenveo.
`
`MR. McKEOWN: This is Scott McKeown and Chris
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Michael J. Curley, Esquire (by telephone)
`
`For Defendant Journal Graphics, Inc.:
`
`Elizabeth A. Milesnick, Esquire (by telephone)
`
`For Defendant Trend Offset Printing Services, Inc.:
`
`Neil J. Cooper, Esquire (by telephone)
`
`For Defendant American Printin Company, Inc.:
`
`Stephen C. Hall, Esquire (by telephone)
`
`For Defendant GEO Graphics, Inc.:
`
`Emily Chambers, Esquire (by telephone)
`Derek S. Neilson, Esquire (by telephone)
`
`For Defendant Walton Press, Inc.:
`
`Barry Caplan, Esquire (by telephone)
`
`For Defendant Cenveo Corporation:
`
`Benjamin C. White, Esquire (by telephone)
`Johathan A. Winter, Esquire (by telephone)
`
`For Defendant Command Web Offsite Company, Worzalla Publishing
`Company, Sandy Alexander Incorporated, and Specialty Promotions
`Incorporated.:
`
`Scott McKeown, Esquire (by telephone)
`Christopher Ricciuti, Esquire (by telephone)
`
`For Defendant Directmail.com:
`
`Peter J. Davis, Esquire
`
`_______________________________________________________________
`
`Christine T. Asif, RPR, FCRR
`Federal Official Court Reporter
`101 W. Lombard Street, 4th Floor
`Baltimore, Maryland 21201
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 2
`Christine T. Asif, Official Court Reporter, 410-962-4492
`
` 4
`
`PETITIONERS Ex. 1028, p. 1
`Kodak v. CTP
`IPR2014-00788
`
`

`
`5
`
`you have a significant number of plaintiffs and you have one or
`
`a few defendants. And as such, the plaintiffs tend to
`
`organize. And I guess Mr. Heneghan, Mr. Jackson, Mr. Davis,
`
`you have some familiarity with what happens in -- I see Mr.
`
`Heneghan is nodding his head -- that generally the plaintiffs
`
`organize and there's a lead counsel and all that. I'm not sure
`
`how this is going to turn out for us. But this is the ultimate
`
`objective. And also to see how far we can go before there is a
`
`transfer back to the transfer cases.
`
`THE COURT: What's the problem?
`
`THE CLERK: He said holy smoke, he's on his way.
`
`That's what he said.
`
`THE COURT: Okay. Let's find out what you folks
`
`think about the PTAB decision and what it does, I suppose.
`
`Mr. Miller, what do you perceive that the PTAB
`
`decisions have done for us? And anything else you want to
`
`comment on. Then I can hear from the defendants.
`
`Now, I'm going to hear from the -- I suppose the
`
`liaison counsel. And because we have so many people on the
`
`telephone, I'm going to have -- I guess if you want to speak,
`
`speak. And if a number of people speak, I'll try and keep
`
`track and call on you. Mr. Heneghan, you've got -- do you
`
`understand that it's likely that most of the counsel will want
`
`to speak a lot or maybe just infrequently?
`
`MR. HENEGHAN: Judge, we've talked about it, and I
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Ricciuti at Oblon in Alexandria, Virginia, we represent Command
`
`Web Offsite Company, Worzalla Publishing Company, Sandy
`
`Alexander, Incorporated, and Specialty Promotions,
`
`Incorporated.
`
`THE COURT: Okay. I think the only one I missed is
`
`Fields, where are you from? Is there a Fields?
`
`MR. VEAL: This is Robert Veal for EBSCO, I'm in
`
`Atlanta.
`
`THE COURT: Okay. Thank you. All right. And
`
`present, would you just announce who you guys are, besides the
`
`plaintiff, Mr. Miller, Mr. Crosby. Mr. Heneghan, you are?
`
`MR. HENEGHAN: Good morning, Judge, Tom Heneghan from
`
`Madison, Wisconsin. I represent Arandell Corp., Schumann
`
`Printers & Times Printing Company. Also I am acting as liaison
`
`counsel for the tag-along defendants today.
`
`THE COURT: Okay. Mr. Jackson, you're --
`
`MR. JACKSON: Yes, good morning, Your Honor. John
`
`Jackson from Dallas, Texas. I'm representing defendants
`
`Worldwide Ticket, Taylor Publishing, Indexx, and Versa Press.
`
`And I'm also serving as liaison counsel for the original
`
`defendants.
`
`THE COURT: Okay. Mr. Davis.
`
`MR. AHMAD DAVIS: Good morning, Your Honor. Ahmad
`
`Davis from Fish and Richardson in Washington, D.C. I'm here on
`
`behalf of Valassis Communications.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 5
`
` 7
`
`think that it would be -- if there is a specific question that
`
`one of the individual defendants is better in a position to
`
`answer, they're prepared to talk about it. But I think for the
`
`most part they're going to rely on Mr. Jackson and I to answer
`
`the Court's questions.
`
`THE COURT: Okay. Well, let's see how it goes. At
`
`least I can see Mr. Davis. If he wants to speak, he can let it
`
`be known.
`
`Okay. From the plaintiff's point of view, could you
`
`tell us what you perceive as the impact or significance of
`
`these PTAB decisions.
`
`MR. MILLER: Your Honor, as a general matter, we're
`
`pleased with most of the decisions of PTAB at this point. As
`
`the Court may recall from our complaint and following the
`
`history of this case, initially we filed these cases in 2003,
`
`or I should say we filed a majority of the first tranche of
`
`cases in 2000 -- or 2013, other than Taylor Publishing, which
`
`beat us to the punch by one day. Subsequently there were two
`
`interparty -- petitions for interparty review filed with PTAB.
`
`They were filed by the Printing Industries of America. Both of
`
`those were denied and no IPR was initiated. We now have been
`
`through four additional IPRs, and our success rate in keeping
`
`these patents were five out of six. We lost claims 1 through 9
`
`of the '155.
`
`It's our position that PTAB in conjunction with the
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`THE COURT: Okay. Now, since I don't have all the
`
`names, Mr. Davis, is your client the Maryland defendant?
`
`MR. AHMAD DAVIS: It is not Direct Mail, we were
`
`originally sued in the Northern District of Georgia and
`
`transferred here under the MDL.
`
`THE COURT: Well, there's an order that the Maryland
`
`defendant counsel be here. Does somebody have some idea why
`
`he's not here or they're not here?
`
`MR. MILLER: No idea, Your Honor.
`
`THE COURT: Well, I think you're going to have to
`
`call his office and immediately we have to talk to somebody.
`
`This is -- I mean, you all got the notice, I assume?
`
`MR. MILLER: Yes, Your Honor.
`
`MR. HENEGHAN: Your Honor, if I could approach the
`
`clerk I have a contact list, rather than her having to look it
`
`up I have it right here.
`
`THE COURT: Mr. Heneghan, why don't you help the
`
`clerk and see what the problem is. We'll just take a moment.
`
`I don't want to delay you folks, but as you can imagine, this
`
`is fairly -- it's going to be helpful.
`
`Meanwhile, I think we can get started, the ultimate
`
`objective is to resolve these cases in the most efficient and
`
`expeditious manner. My observation of this patent case is that
`
`this case, and probably all patent cases, are a mirror image of
`
`a typical multidistrict case. In a typical multidistrict case
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 6
`Christine T. Asif, Official Court Reporter, 410-962-4492
`
` 8
`
`PETITIONERS Ex. 1028, p. 2
`Kodak v. CTP
`IPR2014-00788
`
`

`
`9
`
`MR. MILLER: We may appeal the one denial.
`
`THE COURT: All right. But are you suggesting that
`
`we should just proceed on this case as if the PTAB decisions
`
`are final, rather than await rehearing or await an appeal? I
`
`think that's what you're saying.
`
`MR. MILLER: I believe we should proceed as if
`
`they're final. And we're prepared to press forward with our
`
`claims in this case, without pressing Claims 1 and 3, or 1
`
`through 9 of the '155.
`
`THE COURT: Okay. Well, how would you --
`
`procedurally how are we going to handle that. Are you going
`
`to -- obviously, you have to preserve your rights for rehearing
`
`or for appeal. But just as obviously, at least while it
`
`stands, I have to treat them as being invalid, don't I?
`
`MR. MILLER: Yes.
`
`THE COURT: Okay. So in a sense, you're suggesting
`
`that you're going to assert those claims and then they're going
`
`to be dismissed without prejudice if the PTAB changes.
`
`MR. MILLER: No, Your Honor.
`
`THE COURT: No?
`
`MR. MILLER: No, we're saying that we're not going to
`
`assert those claims in this litigation against the 28
`
`defendants here.
`
`THE COURT: Right. That's fine. Okay. So that
`
`makes that simple.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Eastern District of Texas through Magistrate Payne, who has
`
`construed these terms and done a lot of the work to move these
`
`cases forward, and have taken constructions that we believe,
`
`for the most part, other than one particular term that you
`
`identified, the remoteness issue, we can take -- we can take
`
`forward in this court and will take a lot of burden off this
`
`court.
`
`We do intend to, at least at this point in time, we
`
`do intend to appeal IPR =2014 00789, that's the one case that
`
`we lost of the six. And if Kodak appeals, which we think is
`
`probably going to happen, given the history of this case, we
`
`will counter appeal the remote printer construction adopted by
`
`PTAB in regards to that one -- well, in regards to the Claim 10
`
`of both -- so it's Claim 10 of both of the patents if they
`
`should appeal. And Claim 16, I believe of the '349. So that's
`
`our position regarding this. We would further state, Your
`
`Honor, we're prepared to go forward and press this with all due
`
`haste. We don't believe that a stay or any delay due to any
`
`appeal that would go forward of the PTAB decisions is warranted
`
`at this time.
`
`THE COURT: Okay. Well, I won't ask anything until I
`
`hear from the other side. What's your view of what these
`
`decisions mean, et cetera? I mean, you can ask -- are you
`
`pleased, displeased, is important but not critical.
`
`MR. HENEGHAN: Well, Judge, in general, I would say
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 9
`
` 11
`
`All right. Now, tell me about the significance or
`
`importance of this remoteness position that the plaintiff took.
`
`That I assume is the position that will effect these cases, Mr.
`
`Miller.
`
`MR. MILLER: It will effect some of the cases, Your
`
`Honor, we anticipate. We are still going through our list and
`
`checking it twice, noted the holiday season, to make sure that
`
`we have claimed positions and assessing those claimed positions
`
`in light of the PTAB decisions. We believe that PTAB, to the
`
`extent there is something they got it wrong, that they got it
`
`wrong inserting "offsite" in reference to "remote printer."
`
`And I've gathered that that is what Your Honor is discussing in
`
`terms of remoteness.
`
`It's our position that when it comes to remote
`
`printer, they took the word "offsite" out of context. Offsite,
`
`as they cited in the specification in column 5, line 29 -- I
`
`believe it's line 29 through 30, they reference offsite storage
`
`facility coupled to essential service facility, that's really
`
`in reference to a remote back up system, in case of a disaster
`
`contingency. And that really has nothing to do with the claims
`
`in the patent.
`
`THE COURT: Did I misread -- I can't say I studied
`
`this as fully as I will have to, but didn't PTAB say that you,
`
`the plaintiff, had taken a position regarding remoteness?
`
`MR. MILLER: We had not previously taken a position
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`that we would prefer that the patents had all been invalidated,
`
`but they weren't. And we recognize that and we understand the
`
`ramifications of that. I do think that perhaps the plaintiffs
`
`are jumping a little bit ahead to talk about the appeal. I do
`
`not directly represent any of the parties in the IPR. But my
`
`understanding from other counsel who do, is that they intend to
`
`file a motion for rehearing with the PTAB.
`
`So I think that there is a procedural step that's
`
`going to be before any appeal that keeps those IPRs in front of
`
`the PTAB, at least for some period of time. My understanding
`
`is that in the typical practice that would probably take it
`
`until about March by the time a motion for rehearing is filed.
`
`The PTAB then decides whether or not the patent holder should
`
`respond. And then they typical rule in about one to three
`
`months, which takes us to March give or take.
`
`So I think that that really is where we are
`
`procedurally. Whether or not any of parties appeal then is a
`
`question after what happens with that rehearing. So I think
`
`that for the defendants as a whole, we're waiting to see how
`
`that plays out. And see -- because the feeling from the folks
`
`who handled the IPRs is that there was some fundamental misses
`
`of the evidence. And they want to point those out and see if
`
`it makes a difference with the PTAB.
`
`THE COURT: All right. Well, Mr. Miller, I
`
`understand that you might be appealing also?
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 10
`Christine T. Asif, Official Court Reporter, 410-962-4492
`
` 12
`
`PETITIONERS Ex. 1028, p. 3
`Kodak v. CTP
`IPR2014-00788
`
`

`
`13
`
`the plaintiff.
`
`All right. Mr. Miller, what are you referring to?
`
`MR. MILLER: Your Honor, the issue, as I understood
`
`remoteness was referring to remote printer. And the term
`
`remote printer in two of the decisions. The language is very
`
`similar, so I'm referring to paper 35, IPR 2014 =00788 on page
`
`10. There's a sub heading that says, "3, remote printer,
`
`paren, all claims, end paren." It's the second sentence, "It
`
`says neither party proposes a construction for the term."
`
`THE COURT: Right. And then it similarly, in -- it's
`
`similarly in paper 47 of IPR 2014 =00791. And this begins on
`
`page 9, where it again says -- this refers to subheading 3,
`
`"Remote printer, all claims." Second sentence, "Neither party
`
`proposes a construction for the term."
`
`THE COURT: All right. So, in other words, you're
`
`saying the PTAB never said you took a position.
`
`MR. MILLER: That is correct, Your Honor.
`
`THE COURT: All right. Mr. Heneghan, is that
`
`correct.
`
`MR. HENEGHAN: Your Honor, I'm not familiar enough
`
`with the decision to say off the top of my head.
`
`THE COURT: All right.
`
`MR. HALL: Your Honor, this is Steve Hall on the
`
`phone, if I may?
`
`THE COURT: Yes.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`regarding remote printer in any of the briefing. In fact, we
`
`said it should be plain and ordinary construction, as with our
`
`claim construction filings in the Eastern District of Texas and
`
`the Northern District of Texas. We did not take a position in
`
`the preliminary response or the formal response on that issue.
`
`THE COURT: Mr. Heneghan, is that correct? I thought
`
`that the PTAB said they had taken a position.
`
`MR. HENEGHAN: Judge, I believe that's what the PTAB
`
`said. Whether or not that is correct on the record, I am not
`
`familiar enough with the patent holder's filings to say. But I
`
`believe that is what the PTAB said.
`
`THE COURT: Well, okay. Let's just see. We have --
`
`Mr. Miller, it's fine, you're saying you didn't take that
`
`position?
`
`MR. MILLER: Did not take the offsite position, is
`
`that what you're referring to?
`
`THE COURT: Let me see. Can you find the part where
`
`they say plaintiffs -- the PTAB said you took a certain
`
`position. The first cut is whether you did take that
`
`position.
`
`MR. MILLER: Your Honor, the briefs -- the relevant
`
`briefs at issue on remote printer are paper 35 in the '788 IPR,
`
`page 10 through -- 10 through 12.
`
`THE COURT: Let me see.
`
`MR. MILLER: And it says neither party proposes a
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 13
`
` 15
`
`MR. HALL: I'm looking at the decision on the '155
`
`patent, Claims 10 through 20, near the bottom of page 30 of
`
`that.
`
`THE COURT: Yes.
`
`MR. HALL: Where it gives a reference to patent
`
`owner's response 40.
`
`THE COURT: Yes.
`
`MR. HALL: And it states, quote, "In response to the
`
`petitioner's petition on providing said plate filed to a remote
`
`printer. In response patent argues that Claim 10 requires a
`
`separate central service facility and printing company
`
`facility, but emergent central service facility and the
`
`printing company facility, which are described as all being
`
`present at the same remote location. For example, the
`
`facilities of a commercial printing service."
`
`THE COURT: Thank you, Mr. Hall. That's -- I believe
`
`that's what I'm referring.
`
`Mr. Miller, did you, in fact, make that argument to
`
`the PTAB?
`
`MR. MILLER: No, Your Honor. We did not make the
`
`argument the remote printer meant what PTAB defined as offsite.
`
`We have taken consistently, through every paper filed in every
`
`court and every PTAB, that they are distinct components,
`
`defined by their function. That is the position. And that's
`
`consistent with that sentence. However, if you take out
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`construction for this term.
`
`THE COURT: I'm sorry, we're on page 11?
`
`MR. MILLER: Page 10 of paper 35 of IPR 2014,
`
`00788.
`
`THE COURT: Yeah.
`
`MR. MILLER: It's on page 10. It's the third
`
`sub-heading where it refers to remote printer, all claims.
`
`THE COURT: All right. Is this counsel?
`
`MR. PETER DAVIS: Yes, Peter Davis, Your Honor.
`
`THE COURT: Is there some reason why you didn't
`
`comply with the order?
`
`MR. PETER DAVIS: Your Honor, I don't have a good
`
`explanation. The case close to settling. And I have not been
`
`paying sufficient attention to the deadlines, Your Honor. In
`
`fact, I just came immediately upon getting the call. I didn't
`
`even look over the docket to see what it was --
`
`THE COURT: What case is close to settling?
`
`MR. PETER DAVIS: My client's case with the plaintiff
`
`in this case. I just need to wordsmith some --
`
`THE COURT: I've got to tell you, I think it's very
`
`serious, that we've had five lawyers and God knows how many on
`
`the telephone, and that's -- come forward, you represent a
`
`client. I'm really shocked.
`
`MR. PETER DAVIS: Defendants, Your Honor --
`
`THE COURT: Well, I don't think you're sitting with
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 14
`Christine T. Asif, Official Court Reporter, 410-962-4492
`
` 16
`
`PETITIONERS Ex. 1028, p. 4
`Kodak v. CTP
`IPR2014-00788
`
`

`
`17
`
`therefore, different. But I think that we're still in the PTAB
`
`proceeding until that rehearing is decided.
`
`THE COURT: Okay. But considering where I think
`
`we're going, I don't, at this point, see any reason to be
`
`delaying for that. Where we're going is getting any amended
`
`complaints filed. Having the plaintiff tell us which claims
`
`are being asserted against which defendants. I don't see any
`
`reason to delay any of that. Maybe there's something else, but
`
`I understand. Thank you.
`
`MR. HENEGHAN: Thank you.
`
`THE COURT: All right. With regard to -- I'd like to
`
`talk about the defendants. And first of all, in general terms,
`
`and I don't think I'm asking anything that's very confidential,
`
`but Mr. Heneghan and Mr. Jackson, if it is just tell me.
`
`Inevitably we have to have consolidated proceedings on behalf
`
`of all defendants for part of these things. To what ex --
`
`analogous to what plaintiffs would do in a typical case, is
`
`there some organization? I'll give you an example, which I'll
`
`get to later. Pretty clearly there's going to have to be
`
`discovery from the plaintiff as to invalidity issues. Mr.
`
`Jackson, Mr. Heneghan, you'd agree with that?
`
`MR. JACKSON: Yes, Your Honor.
`
`THE COURT: And forgetting -- not forgetting, but
`
`understanding that damages issues can be defendant specific, I
`
`don't see any defendant-specific invalidity discovery. It just
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`"remote printer," that's their definition of remote printer
`
`they're asserting, not our definition of remote printer.
`
`THE COURT: All right. That's -- the PTAB, as
`
`pointed out by Mr. Hall, states, "Patent owner argues that
`
`Claim 10," and there's a quote, that is an accurate quote of
`
`what you said?
`
`MR. MILLER: That's a quote from the language of the
`
`patent, Your Honor, that's not a quote from us. That's the
`
`language of the patent.
`
`THE COURT: All right. So in other words, if I look
`
`at the response at 40 it -- in other words, you did not take
`
`that position?
`
`MR. MILLER: That is correct, Your Honor, that's a
`
`claim --
`
`THE COURT: All right. Okay. If it's important --
`
`and that's not the position you take here?
`
`MR. MILLER: The position we take here -- there's two
`
`separate issues here. There's one, remote printer and the
`
`definition that PTAB has applied to it, which includes the word
`
`"offsite." Our quarrel is with the word "offsite." PTAB has
`
`taken the position that "central service facility," the
`
`"printing facility," and the "end-user facility," all have to
`
`be distinct components. And I can point the Court to the
`
`language where they've taken that consistently through their
`
`brief.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 17
`
` 19
`
`seems to me that we're not going to have the plaintiff
`
`subjected to 27 different depositions, et cetera. Don't we
`
`need to have a process whereby there is one discovery
`
`proceeding against the plaintiff?
`
`MR. HENEGHAN: Your Honor, I think that in general
`
`that the defendants are in agreement with that concept. But
`
`there are some differences. I would say that the lack of
`
`commonality extends beyond damages in this case. It also
`
`extends to infringement.
`
`THE COURT: I will get to that, Mr. Heneghan.
`
`MR. HENEGHAN: Okay.
`
`THE COURT: But in terms of invalidity, I'm not
`
`cutting anybody off, I'm saying you can have a deposition of
`
`somebody, the inventor, somebody. Is there any reason why
`
`you're going to have to have 27 or ten different depositions
`
`rather than one?
`
`MR. HENEGHAN: We don't think so, Judge. And I can
`
`say that up to this point, the defendants have cooperated, you
`
`know, pretty well with each other. And everybody seems to be
`
`moving in the same direction. So I don't think anyone would
`
`stand up and say we need to have 15 different depositions of
`
`the inventor. I think that those kind of issues that are truly
`
`common, the defendants will be able to cooperate and get it
`
`done in the most efficient way possible. I have no doubt of
`
`that.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`THE COURT: No, I just want to know if you're saying
`
`that you didn't make this argument. If you say you didn't, you
`
`didn't. But the PTAB, when they say you argued it, you did not
`
`make that argument, whatever the argument is here, that's an
`
`inaccurate statement.
`
`MR. MILLER: That is an inaccurate statement. And
`
`they quoted the language from the patents, it's not a quote
`
`from us.
`
`THE COURT: All right. That's not your position.
`
`All right. If it's significant, we can debate it. I just
`
`wanted to get clear where we are. Okay.
`
`And we now know the further proceedings that are
`
`possible in the PTAB. Mr. Heneghan or any defendant, my
`
`position would be that while the plaintiff may appeal, they're
`
`not asserting the invalidated claims in this case. And we're
`
`going to proceed. But if something happens in the PTAB,
`
`they'll -- we'll have to adjust to it.
`
`Mr. Heneghan or Mr. Jackson?
`
`MR. HENEGHAN: Well, Judge, the only thing I would
`
`say in response to that is that your original order, back in
`
`January, about the stay of original defendants, talked about
`
`the review proceedings before the PTAB. And I would say until
`
`the rehearing is decided, the review proceedings from the PTAB
`
`are still going on. I realize that the Court may view an
`
`appeal of the Federal Circuit as a separate proceeding, and
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 18
`Christine T. Asif, Official Court Reporter, 410-962-4492
`
` 20
`
`PETITIONERS Ex. 1028, p. 5
`Kodak v. CTP
`IPR2014-00788
`
`

`
`21
`
`entered into the short-term negotiations that are very close to
`
`settling. So I'm not sure --
`
`THE COURT: Okay. The question is, tell me your
`
`client, what does your client do? Forget the patent. You're
`
`in some -- the printing -- what do you do?
`
`MR. PETER DAVIS: Sure. They print direct mail
`
`advertisements for their clients. So they send out the kinds
`
`of advertisements that end up in your post box that advertise
`
`local car dealership sales, or Jiffy Lube sales, those kinds of
`
`things.
`
`THE COURT: So a client is a company that's engaged
`
`in direct sales?
`
`MR. PETER DAVIS: They do direct marketing for other
`
`companies. So they send out mailers on behalf of their
`
`clients.
`
`THE COURT: Their clients are selling widgets?
`
`MR. PETER DAVIS: Correct.
`
`THE COURT: Direct mail. Okay. So their clients
`
`come to them with an ad or they design the ad or what have you?
`
`MR. PETER DAVIS: Correct. They do both, some cases
`
`the client has designed the ad and my client prints it. In
`
`other cases, my client will help design the ad.
`
`THE COURT: So you print it and you have a mailing
`
`service.
`
`MR. PETER DAVIS: Correct.
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`There is some difference in invalidity among the
`
`defendants, in that some of the defendants have already
`
`stipulated to be bound by the IPR and some have not. So there
`
`are additional invalidity arguments that might be available to
`
`tag along defendants, at least some of the tag along
`
`defendants, that are not available to the other defendants, so
`
`that is a difference.
`
`THE COURT: I'll grant you that, to that extent but
`
`it's -- you know, once again, I'm just saying if you're going
`
`to have Mr. Inventor on a deposition, I'm not saying you can't
`
`have 27 people around the room. I'm just saying, we're not
`
`going to have 27 depositions.
`
`MR. HENEGHAN: Understood.
`
`THE COURT: And there's no -- but in addition to
`
`that, as we will get into, everybody -- all defendants are
`
`going to jump on certain motions together. And I'm just
`
`suggesting that the organization should be in some way that we
`
`have one hearing. I want everybody to participate so they're
`
`all bound by it, but I don't want to have separate ones. But
`
`what you're saying is this is not -- you're not formally
`
`looking at a lead counsel, correct?
`
`MR. HENEGHAN: We have not yet discussed that.
`
`THE COURT: Okay. And -- okay. That's fine.
`
`MR. HENEGHAN: And I think as far as the example you
`
`gave of the inventor's deposition, I think all defendants would
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` 21
`
` 23
`
`THE COURT: Okay. But as I understand this case,
`
`we're dealing with the printing aspect of it.
`
`MR. PETER DAVIS: Correct.
`
`THE COURT: Okay. Fine. That may be fair.
`
`Mr. Heneghan, first, Mr. Jackson, at that superficial
`
`level, could you tell me -- and again, I'm not binding
`
`everything to every significant detail, there's plenty of
`
`people on the phone. Could you relate how the other companies
`
`that you think are in distinguishable groups, operate at that
`
`overview?
`
`MR. HENEGHAN: Sure, Judge, I would say very much in
`
`general that all of the defendants are in the printing business
`
`in some aspect. Some others also do similar things to what
`
`Direct Mail does. But really what this is about is what's
`
`called the prepress process.
`
`THE COURT: Yes.
`
`MR. HENEGHAN: So it's essentially using a computer,
`
`using printing equipment to get something ready to be printed.
`
`And so to that extent, these defendants all do some form of a
`
`pre-press process. Some are similar. Some are quite
`
`different. These systems are made up of multiple pieces.
`
`Sometimes they're purchased as a system, sometimes they're
`
`purchased in pieces. Because they involve software, they
`
`involve updates that are sometimes accepted, sometimes not
`
`accepted. So in every regard, the defendants have all very
`
`1 2 3 4 5 6 7 8 9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`agree that we're not going to have 27 different depositions.
`
`But like you said, there may be many lawyers there, all of whom
`
`have something they want to say. I would anticipate that we
`
`probably will need to expand the time limit for depositions
`
`just for that reason, that we have so many people. Those are
`
`things I think that we can probably negotiate with
`
`plaintiffs.
`
`