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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`ORACLE CORPORATION, §
`NETAPP INC. AND HUAWEI §
`TECHNOLOGIES CO., LTD. §
` §
` Petitioners, § IPR2014-01197
` § IPR2014-01207
`VS. § IPR2014-01209
` §
` §
`CROSSROADS SYSTEMS, §
`INC. §
` §
` Patent Owner. §
`
` TELECONFERENCE WITH THE PANEL
` JULY 16, 2015
` CONFIDENTIAL PROTECTIVE ORDER MATERIAL
` EXHIBIT 1217
`
` Job No: 95252
`
`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 1
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 2
` THE COURT: Hello. This is Judge Jung in a
`telephone conference for Cases IPR2014-01197, -01207 and
`-01209. I have with me judges with Judges Kalan and Lee.
` Do I have anyone for the petitioner in these
`related cases?
` MR. GARDELLA: Yes, Your Honor. This is
`Greg Gardella from Oblon on behalf of Petitioner. I
`believe I'm the only one who's going to be speaking. We
`do have a court reporter here, and I do have others in the
`room with me if you'd like me to introduce them.
` THE COURT: If you're the only one that's
`going to be speaking, that's fine. Thank you,
`Mr. Gardella.
` Do we have anyone for the patent owner?
` MR. HALL: Yes, Your Honor. This is James
`Hall for the patent owner. Similar situation to
`Mr. Gardella, and we're both in the same room.
` THE COURT: Okay. So we have -- we received
`an e-mail shortly, and before we begin, Mr. Hall, can you
`just describe what's happening and what the purpose of
`this conference call is?
` MR. HALL: Yes, Your Honor. So the
`petitioner is taking the deposition of Patent Owner's
`expert declarant. They've concluded their
`cross-examination. We were recessing to prepare our
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`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 2
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 3
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`redirect, and actually before it went off record,
`Mr. Gardella stated that they would object to any
`conference between the attorneys for Patent Owner and the
`expert during the recess, and that they would preserve
`their -- or they're reserving their right to move to
`strike the testimony, any testimony that resulted after
`that.
` So we thought it appropriate to get the
`Board involved before we did any such consultation because
`we don't want to do anything improper. But based on, you
`know, the case law that we have seen, such consultation
`would not be proper -- or it would be proper, and we
`wanted the Board's guidance on this topic. And, you know,
`I have cases that I could cite to the Board and can more
`narrowly focus the inquiry, but that's generally what's
`going on.
` THE COURT: Okay. Mr. Gardella, do you
`agree that's the events that transpired before this
`telephone conference?
` MR. GARDELLA: Yeah. There are some other
`relevant events that I'll get to when it's my turn to
`talk, essentially. But, yeah, I generally agree with
`Mr. Hall's summary.
` THE COURT: Okay. Mr. Hall, you said you
`had some case law as the basis for your request for a
`
`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 3
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 4
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`conference with the witness. Can you briefly describe
`those?
` MR. HALL: Yes, Your Honor. I have three
`cases that we've been able to locate since the deposition
`was recessed. The first is Google, Inc. v. Jongerius
`Panoramic Technologies. It's Case IPR 2013-00191.
` In that case, the -- I'm not sure of the
`precise situation before the Board or the precise
`character of how the question came to the board, but the
`question was exactly the same as what's presented here,
`where the Board looked to the testimony guidelines in
`Appendix D of the Office Trial Practice Guide regarding
`the impropriety of consulting with a witness during
`cross-examination but noted that it's expressly or -- and
`noted that it is permitted to consult with a witness once
`cross-examination has concluded and before redirect
`examination has begun.
` I mean, the quote from the case is, "Patent
`Owner's counsel was permitted to confer with the witness
`before redirect examination begins."
` THE COURT: Okay.
` MR. HALL: I have another case, which I
`believe is the next chronologically, Schott Gemtron v. SSW
`Holding Company, which is Case IPR2013-00358.
` In that case, the Board said precisely the
`
`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 4
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 5
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`same thing.
` THE COURT: Okay.
` MR. HALL: "Because cross-examination has
`concluded, there is no prohibition on petitioner in that
`case conferring with Mr. Schechter."
` The last one that we found in the time
`period we had is Case IPR2014-116, which is Focal
`Therapeutics v. Senorx, Inc. And that case cited where
`the -- the Board again cited to Appendix D, as well as the
`Google case that we previously cited, saying that "Counsel
`is permitted to confer with the witness before redirect
`examination begins."
` So based on those case, we believe that it's
`permissible to confer with the witness before redirect
`begins.
` I believe Mr. Gardella has referred to cases
`where impermissible coaching is not allowed or the Board
`has stated that it would view impermissible coaching in a
`poor light. I'm not sure what he's going to say, but --
` So the question is, is what is the line
`between a permissible conference and impermissible
`coaching?
` One of the issues is, we as lawyers need a
`little help from an expert to understand some of the
`technical areas. So to what extent are we able to ask him
`
`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 5
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 6
`questions about areas we might have been confused about?
`To what extent, if we believe that some of Petitioner's
`questions were misleading, are we permitted to discuss
`the -- you know, our thoughts with the witness on that?
` So that's kind of the question we're -- you
`know, one, are we even permitted to talk with him at all?
`Based on the cases, we think we are; and, you know, if so,
`where is the line on what's permissible and impermissible?
` THE COURT: Okay. Thank you, Mr. Hall.
` Mr. Gardella, your response?
` MR. GARDELLA: So the cases that opposing
`counsel, Mr. Hall, cited are from 2014, and I acknowledge
`that the early cases, you know, did seem to indicate that
`these conversations were permissible. More recent case
`law, however, from the Board has said otherwise.
` I'll refer Your Honor to FLIR Systems v.
`Leak Surveys, IPR2014-411 and 434, Paper 12. Therein the
`following is noted:
` "There are inherent difficulties for an
`opponent to uncover the nature of any conversations during
`a recess. As a result, when recess conversations occur, a
`party runs the risk that the Board may find that there was
`witness coaching and may exclude or give little or no
`weight to the testimony of a coached witness."
` So further to this decision, which came out
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`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 6
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 7
`in February, in this same case, when we, the petitioner,
`were offering our expert, Dr. Chase, for deposition, we
`abstained from any such recess or any conversation with
`the witness during the recess. And we're fundamentally
`looking for symmetry.
` My basic understanding is that there has
`been a shift in the view at the Board, and the rule
`pronounced in FLIR Systems is what we are seeing most
`recently from various panels, and I would submit that the
`FLIR Systems -- the rule set forth therein is the proper
`one.
` I'll note that it is consistent with
`district court proceedings. And, you know, the notion of
`attorneys talking to their witness and talking through
`issues in the middle of a cross-examination is -- I think
`it just -- it runs directly counter to the, you know,
`purpose of depositions and trying to get to the truth.
` I think the early decisions were essentially
`an anachronism from interference practice that created an
`artificial distinction between the -- you know, the end of
`cross and the start of redirect, for which there's really
`no substantive justification.
` So I would submit that the recent cases are
`controlling and do recite the correct rule and, perhaps
`most importantly, would give us symmetry in this case.
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`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 7
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 8
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` MR. HALL: If I may respond, Your Honor.
` THE COURT: Yes. Go ahead, Mr. Hall.
` MR. HALL: One thing I'll note, Mr. Gardella
`indicated that conference during cross-examination is
`improper, which is expressly set forth in the -- in
`Appendix D as improper. However, the cases that we cited
`specifically drew the distinction between consultation
`between the time period when cross-examination concludes
`and redirect begins, specifically because that is what is
`stated in the Trial Practice Guidelines.
` As far as symmetry is concerned, I don't
`think because Petitioner chose a certain course of action
`and chose not to raise this issue with the Board itself,
`that that should have any impact on the Board's decision
`today.
` THE COURT: Okay. All right. Thank you,
`gentlemen, for both of your presentations. I will go
`offline to discuss this with my panel, but I will be back
`on shortly.
` (The Panel confers.)
` THE COURT: Mr. Hall, Mr. Gardella, are you
`still on? This is Judge Jung.
` MR. GARDELLA: Yes, Your Honor.
` MR. HALL: Yes, Your Honor.
` THE COURT: I took up the matter with the
`
`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 8
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 9
`Panel, and the Panel has decided to allow the patent owner
`confer with their witness, although the Panel will provide
`the following warning: That patent owner should not use
`this time to coach the witness, and the Panel would also
`like to remind the parties that conferences with an expert
`witness are not privileged and are discoverable on
`recross.
` And, lastly, I would like to remind the
`parties that for issues like this, before they call the
`Board, they should try and arrange some kind of agreement
`amongst themselves, but in this case it looks like no
`agreement was able to be reached before calling this
`Panel.
` Other than that, are there any questions
`from either Mr. Gardella or Mr. Hall?
` MR. GARDELLA: None from Petitioner, Your
`Honor.
` MR. HALL: So just to -- this is Mr. Hall,
`Your Honor. To clarify, we're allowed to confer with our
`witness, should not do any coaching or improper coaching,
`but we should expect that any of our conversations are
`proper for Mr. Gardella to inquire into on recross?
` THE COURT: That's correct.
` MR. HALL: Okay. I think we understand,
`Your Honor.
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`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 9
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 10
` MR. GARDELLA: And as long as we have Your
`Honor on the line, may we ask one additional question for
`follow-up which might preclude or prevent another call to
`the Board?
` THE COURT: All right.
` MR. GARDELLA: And that is simply, what is
`the Panel's position on propriety of re-redirect? The
`Rules do not provide for it. In this circumstance it
`sounds like we're going to have redirect and we'll
`probably have recross. Petitioner's position is that is
`not provided for this in the Rules and not permitted.
` Can you provide us some guidance on that
`issue?
` THE COURT: There is -- as the Panel sees
`it, there is no re-redirect.
` MR. GARDELLA: That's consistent with our
`understanding. I just wanted to confirm that because I
`thought this was an issue that might come up for Mr. Hall
`later today perhaps.
` MR. HALL: It's something we haven't
`prepared to discuss. We realize the Rules don't expressly
`address it, but we certainly did not know the propriety of
`doing so or impropriety of doing so before talking with
`the Panel.
` THE COURT: I see. The Panel feels that
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`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 10
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 11
`there is not -- re-redirect is not provided in the Rules.
`And unless you provide some legal argument or legal
`reasoning that should -- that the Rules implicitly provide
`this re-redirect, we would not allow a re-redirect. Is
`that understood?
` MR. HALL: Yes, Your Honor.
` MR. GARDELLA: Thank you, Your Honor.
` THE COURT: And whichever party arranged for
`the court reporter, please extract this portion concerning
`this telephone conference with the Panel and file it as an
`exhibit using their next available exhibit number.
` Which party provided the court reporter?
`Was that you, Mr. Hall, or --
` MR. HALL: I think it's technically
`Mr. Gardella, but it's the same court reporter for the
`deposition.
` MR. GARDELLA: Petitioner will upload the
`relevant portion of the transcript as an exhibit.
` THE COURT: Okay. Thank you, Mr. Gardella.
` Are there any other issues or questions
`before I adjourn this telephone conference?
` MR. GARDELLA: Nothing from Petitioner, Your
`Honor.
` MR. HALL: Nothing from Patent Owner, Your
`Honor.
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`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 11
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
`Page 12
`
` THE COURT: All right. Thank you,
`gentlemen. And this telephone conference is adjourned.
` MR. HALL: Thank you.
` MR. GARDELLA: Thank you.
` (TELEPHONE CONFERENCE CONCLUDED 11:35 A.M.)
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`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 12
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 13
`
`ORACLE CORPORATION, §
`NETAPP INC. AND HUAWEI §
`TECHNOLOGIES CO., LTD. §
` §
` Petitioners, § IPR2014-01197
` § IPR2014-01207
`VS. § IPR2014-01209
` §
` §
`CROSSROADS SYSTEMS, §
`INC. §
` §
` Patent Owner. §
`
` REPORTER'S CERTIFICATION
` TELEPHONE CONFERENCE WITH THE PANEL
` JULY 16, 2015
`
` I, Tamara Chapman, Certified Shorthand Reporter in
`and for the State of Texas, hereby certify to the
`following:
` That this teleconference transcript is a true record
` I further certify that I am neither counsel for,
`related to, nor employed by any of the parties in the
`action in which this proceeding was taken, and further
`that I am not financially or otherwise interested in the
`outcome of the action.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Oracle Ex. 1217, pg. 13
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)
`
`
`
` Certified to by me this 23rd day of July, 2015.
`
`Page 14
`
` _____________________________________
` Tamara Chapman, CSR, RPR
` CSR No. 7248
` Expiration Date: 12/31/16
` TSG Reporting, Inc.
` Firm Registration No. 615
` Nationwide - Worldwide
`
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`Oracle Ex. 1217, pg. 14
`Oracle, et al. v. Crossroads
`IPR2014-01209
`(CONFIDENTIAL)