UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING COMPANY OF AMERICA, INC.,
`Petitioners,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`TRANSCRIPT OF APRIL 7, 2015 INITIAL CONFERENCE CALL
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`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`SHARP CORPORATION, SHARP ELECTRONICS CORPORATION, and
`SHARP ELECTRONICS MANUFACTURING COMPANY OF AMERICA, INC.,
`Petitioners,
`
`v.
`
`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`___________
`
`Case IPR2015-00021
`Patent No. 7,202,843 B2
`___________
`
`
`
`TRANSCRIPT OF APRIL 7, 2015 INITIAL CONFERENCE CALL
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`Please find attached the transcript of the initial conference call for this inter partes
`
`review proceeding held on April 7, 2015.
`
`Respectfully submitted,
`AMSTER, ROTHSTEIN & EBENSTEIN LLP
`Attorneys for Petitioners
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`Dated: April 27, 2015 By: /Anthony F. Lo Cicero/
` New York, New York Anthony F. LO CICERO
` Registration No.: 29,403
`
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`----------------------------------)
`SHARP CORPORATION, )
`SHARP ELECTRONICS )
`CORPORATION, and SHARP )
`ELECTRONICS MANUFACTURING )
`COMPANY OF AMERICA, )
` Petitioner, )
` )
` vs. ) Case IPR2015-
` ) Patent 7,202,843 B2
`SURPASS TECH INNOVATION, )
`LLC, )
` Patent Owner. )
`----------------------------------)
`
` INITIAL TELEPHONE CONFERENCE
` April 7, 2015
`
`Before: Sally C. Medley, Bryan F. Moore and
` Beth Z. Shaw, Administrative Patent Judges
`
`Reported by: BONNIE PRUSZYNSKI, RMR, RPR, CLR
`JOB NO. 92229
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`A P P E A R A N C E S:
`
`AMSTER ROTHSTEIN & EBENSTEIN
`Attorneys for Petitioner
` 90 Park Ave
` New York, New York 10016
`BY: Anthony Lo Cicero, Esq.
` Mark Berkowitz, Esq.
`
`DAVIDSON BERQUIST JACKSON & GOWDEY
`Attorneys for Patent Owner
` 8300 Greensboro Drive
` McLean, Virginia 22102
`BY: Wayne Helge, Esq.
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` JUDGE MEDLEY: At this time, I
`would like to take a roll call.
` MR. LoCICERO: Yes. Good
`afternoon, Judge. This is Anthony
`LoCicero from Amster Rothstein,
`representing Sharp, the Petitioners.
`With me is Mark Berkowitz of our firm.
` JUDGE MEDLEY: Thank you.
` And for Patent Owner?
` MR. HELGE: Good afternoon, your
`Honor. This is Wayne Helge from the law
`firm of Davidson Berquist Jackson +
`Gowdey on behalf of Surpass Tech
`Innovation, the Patent Owner.
` JUDGE MEDLEY: Okay. Thank you.
` This is the initial conference call
`in regards to IPR2015-00021. And we
`understand that we -- you know, we
`provided the initial conference call be
`optional for the parties, and the
`Petitioner has taken advantage of that,
`and that they wanted to go -- have this
`initial call to discuss the matters in
`this proceeding.
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` So, we have received the parties'
`motion list in preparation for the
`conference call. We have discussed and
`considered those motions.
` And before we discuss the
`re-hearing request, the hearing date and
`the standing order -- the scheduling
`order, excuse me, we understand,
`essentially, that neither party seeks
`leave to file a motion at this time.
` Is that correct?
` MR. LoCICERO: That's correct for
`Petitioner.
` MR. HELGE: Also correct for Patent
`Owner, your Honor.
` JUDGE MEDLEY: Okay. So, getting
`to the issues that are highlighted by the
`parties' submissions, we understand the
`Petitioner has filed a re-hearing request
`of the decision instituting a review and,
`of course, we will consider the request
`and render a decision in due course. We
`just want to remind the parties that a
`request for re-hearing does not
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`automatically mean we will take an
`action. So, if you don't hear from us,
`keep things still moving along. Don't
`wait for us to make a dissent or render a
`decision, just keep moving along
`towards -- towards the due dates that are
`made per the scheduling order.
` In that same vein, we understand
`that Patent Owner would like to file an
`opposition to the re-hearing request.
`The panel's impression, at this point, we
`don't need nor want an opposition at this
`time. If we change our minds, we will
`let you know.
` Okay. We further understand that
`Petitioner wants to modify the hearing
`date, basically bumping it out a week
`from December 1st to December 7th.
` Can you elaborate a little bit on
`that, please?
` MR. LoCICERO: Yes, Judge.
` The current schedule is
`December 1st and that's the Tuesday
`following the Thanksgiving holiday. It's
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`no more complex than that.
` JUDGE MEDLEY: Okay. Well, you
`know, I appreciate that, and we knew that
`when we set this up. I mean, we all have
`families and we all -- we all are going
`to probably take time off Thursday and,
`some of us, Friday, but we still feel
`that, you know, things need to move
`along; and, having considered that, we
`set the date for that Tuesday,
`December 1st.
` Looking at the hearing calendar
`schedule for the board for December 8th,
`it's packed that day. There is no way
`that they could accommodate another
`hearing.
` One thing we would consider is a
`telephonic hearing on that date if the
`parties are amenable to that. And I will
`direct that question to Petitioner.
` MR. LoCICERO: This is Anthony
`LoCicero for the Petitioner.
` No, no. Actually, your Honor, we
`would much rather have a live hearing.
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` JUDGE MEDLEY: Okay. We are going
`to stick with the hearing date. Of
`course, we just want to remind the
`parties, too, that each side, you have
`multiple participants, multiple counsel
`representing your clients. So, if one
`can't make it, we would sure expect that
`another person could make it.
` All right. Moving on to the issue
`of the scheduling order, we agree that
`there is a typographical error there
`indicating that the involved patent is
`not amenable to -- to amendment. That
`was an inadvertent error on our parts.
`We apologize for that. That's one the
`pitfalls of cutting and pasting previous
`scheduling orders. So, in any event, we
`are going to come out with a new
`scheduling order anyway. As you probably
`are aware, the director came out in a
`blog recently indicating that there would
`be some changes to the trials that were
`to occur immediately. Specifically, on
`motions to amend, the page limit is
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`relaxed so that motions to amend are now
`limited to 25 pages. Patent Owner's
`reply or oppositions to the motion to
`amend is similarly altered, and other
`things have been adjusted. For example,
`Petitioner's reply has now been
`augmented, so that a reply is now 25
`pages.
` So, we are going to send out a new
`order, scheduling order reflecting these
`changes because this review was just
`recently instituted. And so we feel like
`-- and to be in compliance with what the
`director would like us to do, we are
`going to go ahead and change the
`scheduling order.
` So, I don't know if you want to
`comment on that.
` MR. HELGE: Your Honor, this is
`Wayne Helge for Patent Owner, Surpass.
`Just seeking clarification, if the board,
`excuse me, the panel, itself would like
`prior requests for permission to file a
`motion to amend from the Patent Owner or
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`whether permission, you know, should we
`desire to seek a motion to amend is
`granted by this call?
` JUDGE MEDLEY: We would still like
`to have a conference call. So, just let
`us know that you are going to file one so
`that we can talk about, in particular,
`you know, what kind of -- I like to
`discuss what kind of claim adjustments
`you are going to make, amendments to any,
`all, which claims, you know, cancellation
`of claims, that sort of thing. I think
`so we can all be on the same page it's
`better to have a conference call.
` MR. HELGE: Certainly. I
`understand, your Honor.
` Can I ask how soon prior to the
`deadline, the due date, number one, you
`would like to have that call?
` JUDGE MEDLEY: I think some panels
`are enforcing it two weeks prior to, you
`know. That certainly is amenable. I
`think if you let us know two weeks
`before.
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` Okay. Are there any other
`questions about the scheduling order?
` MR. LoCICERO: None from the
`Petitioner.
` MR. HELGE: None from Patent Owner
`either, your Honor.
` JUDGE MEDLEY: Okay.
` One other paragraph that we may or
`may not put in the scheduling order, we
`have to confer, is an ADR paragraph
`basically indicating that the parties
`can, you know, discuss off-line any
`alternative dispute resolution to resolve
`the -- the board would just like to say,
`we are not a party to any agreement
`parties make and things continues to run
`in this trial despite that what the
`parties end up doing.
` And that leads into my next
`segue -- segue into my next discussion,
`which is settlement.
` Have the parties discussed settling
`this proceeding?
` MR. LoCICERO: Yes. Yes, Judge,
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`there were -- we had some initial
`settlement discussions prior to the
`filing of the IPR and those did not
`result in settlement.
` MR. HELGE: Your Honor, this is
`Wayne Helge for Patent Owner, Surpass.
`If I can clarify, if those settlement
`discussions occurred, which I don't doubt
`Petitioner's statements, it simply -- it
`probably was with litigation counsel and
`not with me.
` MR. LoCICERO: That's correct.
`That's correct.
` MR. HELGE: All right. And that
`segues into my final question for the
`parties, and that is: What is the status
`of the related litigation?
` MR. LoCICERO: It's been stayed,
`Judge. There are, as you know, there are
`two -- at least in the Sharp case, there
`are two patents at issue, the '550 and
`this one, the '843. The case has been
`stayed in the District of Delaware so
`long as there are pending re-exams for
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`both patents and that's the case.
` JUDGE MEDLEY: Pending re-exam --
` MR. LoCICERO: I mean IPR.
` JUDGE MEDLEY: Okay.
` MR. LoCICERO: There are other
`litigations involving these patents.
`Those are likewise stayed.
` JUDGE MEDLEY: Okay. All right.
`Are there any other issues that the
`parties would like to raise for
`consideration?
` MR. HELGE: Your Honor, Wayne
`Helge, again, for Surpass, Patent Owner.
` One other issue related to
`Petitioner's statement a moment ago.
`There are a number of other IPRs that
`have been filed against both the '843
`patent, before the board in this case,
`and also the '550 patent, which was the
`subject of IPR2015-00022, the Petition of
`which was denied.
` Patent Owner intends to file
`amended mandatory notices bringing those
`other IPRs to the board's attention.
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` And also, just as a formality, our
`law firm has recently changed addresses
`and phone numbers, and I will be
`including the updated contact information
`for our firm in that amended notice.
` JUDGE MEDLEY: Okay. Good enough.
`Petitioner?
` MR. LoCICERO: Nothing further from
`us.
` JUDGE MEDLEY: Okay. I'm going to
`put you on hold. We are going to confer
`to see if there is anything we would like
`to discuss with you. If you could just
`hold for a moment and we will be right
`with you.
` (Panel conferring.)
` JUDGE MEDLEY: Okay. We have
`nothing further, so we will send out a
`short order memorializing today's
`conference call and, in addition, we will
`update the scheduling order.
` MR. HELGE: Thank you, your Honor.
` JUDGE MEDLEY: Sure thing. If
`there is nothing further, we are
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` adjourned.
` Thank you very much. Bye.
` MR. HELGE: Thank you.
` oOo
`
`
` (The telephone conference was concluded at
`2:11 p.m.)
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` C E R T I F I C A T E
` STATE OF NEW YORK )
` : SS.
` COUNTY OF NEW YORK )
`
`
` I, BONNIE PRUSZYNSKI, a Notary
` Public with and for the State of New York,
` do hereby certify:
` That such telephonic conference is a true
` record of the proceedings.
` I further certify that I am not related
` to any of the parties to this action by
` blood or marriage, and that I am in no way
` interested in the outcome of this matter.
` IN WITNESS WHEREOF, I have hereunto
` set my hand this 17th of April, 2015.
`
` ________________________
` Bonnie Pruszynski
`
`
`
`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on this 27th day of April, 2015,
`
`a true copy of the foregoing TRANSCRIPT OF APRIL 7, 2015 INITIAL CONFERENCE
`
`CALL was served via e-mail on the counsel of record for the Patent Owner at the following
`
`e-mail addresses:
`
`Wayne M. Helge (whelge@dbjg.com)
`Donald L. Jackson (djackson@dbjg.com)
`Michael R. Casey (mcasey@dbjg.com)
`
`
`
`
` By: /Anthony F. Lo Cicero/
`Dated: April 27, 2015
` New York, New York Anthony F. LO CICERO
` Registration No.: 29,403
`AMSTER, ROTHSTEIN & EBENSTEIN
`LLP
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
`
`
`
`
`
`
`
`
`
`
`
`
`
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