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` - - -
` UNITED STATES PATENT AND TRADEMARK OFFICE
` - - -
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` - - -
` TEMPORAL POWER, LTD.
` Petitioner
`
` v.
`
` BEACON POWER, LLC
` Patent Owner
` - - -
` IPR2015-00146 - Patent 8,008,804
` - - -
` Wednesday, March 18, 2015
` 3:00 p.m.
`
` - - -
`
` TELECONFERENCE IN THE ABOVE MATTER
`
` - - -
`
` BEFORE: MICHAEL R. ZECHER
` JAMESON LEE
` MICHAEL J. FITZPATRICK
` Administrative Patent Judges
` - - -
`
` VERITEXT NATIONAL COURT REPORTING COMPANY
` MID-ATLANTIC REGION
` 1250 Eye Street, NW, Suite 1201
` Washington, DC 20005
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
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`TEMP 1012
`IPR2015-00146
`
`

`

`Page 2
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`APPEARANCES:
`
` STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
` BY: ROBERT GREENE STERNE, ESQUIRE
` MICHELLE K. HOLOUBEK, ESQUIRE
` GRAHAM C. PHERO, ESQUIRE
` 1100 New York Avenue, N.W.
` Washington, D.C. 20005-3934
` 202-772-8862
` rsterne@skgf.com
` holoubek@skgf.com
` gphero@skgf.com
` Representing the Petitioner
`
` OSHA LIANG, LLP
` BY: PETER C. SCHECHTER, ESQUIRE
` 909 Fannin, Suite 3500
` Houston, TX 77010
` 713-228-8600
` schechter@oshaliang.com
` Representing the Patent Owner
`
` - - -
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` JUDGE ZECHER: Good afternoon. This
`
`is Judge Zecher. I have on the line my colleagues,
`
`Judge Lee and Judge Fitzpatrick. This is a
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`conference call for IPR2015-00146.
`
` Can I begin the call by taking a roll
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`call to see who is on the line?
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` Let's start with the Petitioner.
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` MR. STERNE: Good afternoon, Your
`
`Honor. This is Robert Sterne from Sterne Kessler on
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`for Petitioner. And, by the way, Your Honor, we
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`have a court reporter on the call as well. And with
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`me I have my backup counsel, Michelle Holoubek and
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`Graham Phero, for Petitioner.
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` MR. SCHECHTER: And for the Patent
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`Owner it's Peter Schechter from Osha Liang and I am
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`on by myself.
`
` JUDGE ZECHER: Okay. Thank you.
`
`And, Mr. Sterne, I know you've been on a couple of
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`these calls. Are you guys okay with filing a
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`transcript of the call in the record as an exhibit
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`after the call is finished?
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` MR. STERNE: Yes, Your Honor. We
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`would do this as standard course.
`
` JUDGE ZECHER: Okay. I found that
`
`it's helpful, before we speak, when the court
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`reporters are on the line, to inform him or her who
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`is speaking, so this is Judge Zecher.
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` We're going to begin the call with
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`the Petitioner. I believe they requested the call.
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`I think the content of the request is to seek
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`authorization to file a reply to the preliminary
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`response which was filed on February 5th, 2015.
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` So I'll give the floor over to
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`Mr. Sterne.
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` MR. STERNE: Good afternoon, Your
`
`Honor, and may it please the Board, the reason for
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`this call is the Patent Owner now alleges new
`
`factual information in their Patent Owner
`
`Preliminary Response regarding Temp 1007, the
`
`Lazarewicz presentation, and specifically Patent
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`Owner alleges that Temp 1007 -- and I quote -- "is
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`an incomplete draft of a presentation that was
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`actually delivered," closed quote.
`
` This alleged factual information was
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`previously unknown to Petitioner until Patent Owner
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`filed its Preliminary Response. Petitioner
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`requested a copy of the alleged "actually presented"
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`slides but learned that Patent Owner is, and I
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`quote, "not aware of the existence of even a single
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`copy of the slides actually presented," closed
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`Page 5
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`quote.
`
` Patent Owner's alleged factual
`
`statements are relevant as to whether Temp 1007 is a
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`printed publication under 102(b). We therefore
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`request an opportunity to file a reply to Patent
`
`Owner's Preliminary Response to complete the factual
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`record for the Board in light of this new alleged
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`factual information presented by Patent Owner.
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` If the Board would permit me, I would
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`like to ask my backup counsel, Michelle Holoubek, to
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`present to you more information on how this whole
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`thing developed, if that would be permissible to
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`you.
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` JUDGE ZECHER: This is Judge Zecher.
`
`Before we pass it over to your backup counsel, I
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`have a few questions, the first of which is this
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`seems to be a reply to address Patent Owner's
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`argument that this Temp 1007, which I believe is
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`Exhibit 1007, is not a prior art printed
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`publication.
`
` They filed their Preliminary Response
`
`on February 5th, 2015, and today is -- what? --
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`March 18th, 2015. I'm sure you are well aware that
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`our clock starts running once their Preliminary
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`Response gets filed. I'm curious why this wasn't
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`brought to our attention earlier.
`
` MR. STERNE: Your Honor, we have had
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`several corresponding e-mails with the Patent
`
`Owner's representative on this issue. We have been
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`working this issue diligently.
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` It's a little bit complicated in
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`terms of what is being alleged here because, in
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`fact, the document that was submitted with the
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`petition is legally sufficient for you to institute,
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`but now there is a new allegation that the
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`particular version that was presented as opposed to
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`the version that was available to the people
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`attending the conference and which was archived at
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`the Sandia National Labs, that version they don't
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`have a copy of, and so that's where this whole
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`question developed.
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` But, in fact, the petition is legally
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`sufficient on its face for institution. But we
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`wanted to bring this to ground because, frankly,
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`this is the first time that we learned about this
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`and we don't want there to be ambiguity in the mind
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`of the Board as to what the complete factual record
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`is on this issue.
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` JUDGE ZECHER: This is Judge Zecher.
`
`I guess I'm a little confused. If you're saying the
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`petition is legally sufficient on its face for us to
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`institute, then why do you need a reply to address
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`this issue?
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` MR. STERNE: Your Honor, the reason
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`we need a reply to address this issue is to address
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`the point that is now being raised by the Patent
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`Owner that, in fact, the inventor does not have a
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`copy of what was presented at the actual conference.
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`And that to us is not the issue here; the issue is
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`that what is going on is that we want to complete
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`the factual record for the case.
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` JUDGE ZECHER: Okay. Well, you said
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`your backup counsel wanted to add to what you've
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`already said?
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` MR. STERNE: Yes, Your Honor. I
`
`think it's important for the record to reflect the
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`process that we went through in order to develop the
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`petition.
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` MS. HOLOUBEK: Right. Thank you.
`
`And further to your previous question -- this is
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`Michelle Holoubek speaking -- regarding why we're
`
`requesting this information, it's mainly because in
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`the petition we presented Exhibit 1007 because it
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`was made public and we included that it was
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`presented.
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` The reason that we said that it was
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`presented is that we requested and received this
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`exhibit from Ms. Georgianne Huff at Sandia National
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`Laboratories. Ms. Huff is the conference manager
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`and records custodian for the Electrical Energy
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`Storage Applications & Technologies conference.
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`I'll refer to that as EESAT.
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` Ms. Huff confirmed to Petitioner that
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`Exhibit 1007 was presented and made public at the
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`2002 EESAT conference held April 15th through 17th,
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`2002, in San Francisco, California, along with the
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`other papers listed in the conference agenda, and
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`that corresponds with the date that is listed on the
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`face of the exhibit, the exhibit itself dated there
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`to reflect the date of April 15th through 17th,
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`2002.
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` All presentations given at EESAT,
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`including Exhibit 1007, were catalogued and saved
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`into the Sandia National Laboratories archives in
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`the normal course of business.
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` She also confirmed to us that these
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`presentation slides given to EESAT were available to
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`the public upon request and Sandia National
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`Laboratories did not otherwise edit or change
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`documents once submitted by the author and, to the
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`best of her knowledge, Exhibit 1007 was not changed
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`from its original form.
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` However, because Sandia National Labs
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`is a government agency, Ms. Huff declined to provide
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`a declaration to confirm these facts without an
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`explicit request from the Board, which is why they
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`were included in our original petition with those
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`additional facts that further support what we
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`understood from Ms. Huff.
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` Now, even without Ms. Huff's
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`declaration, Petitioner has satisfied the threshold
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`showing that Exhibit 1007 is a printed publication
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`for purposes of institution. On its face this
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`exhibit indicates that it was published as of
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`April 15th through 17th, 2002, which is the date
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`printed on the first page.
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` JUDGE ZECHER: Ms. Holoubek, let me
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`stop you there real quick. This is Judge Zecher.
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`You asked Ms. Huff -- correct, that's the lady
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`you're referring to? -- did you ask her for a
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`declaration to basically attest to this information
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`to include with your petition and she declined? Is
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`that what you're saying?
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` MS. HOLOUBEK: Yes, Your Honor. She
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`referred us to the general counsel of Sandia
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`National Labs. And we spoke with the general
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`counsel there and he indicated that he would allow
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`the declaration to be signed upon request from the
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`Board since the Board was another governmental
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`institution.
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` But being a government institution
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`themselves, without that particular request from the
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`PTO, they did not want to otherwise get involved in
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`a matter between two parties. So that's why they
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`declined at the time to sign the declaration. But
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`they said they would do so should the PTO ask for
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`that information.
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` JUDGE ZECHER: Okay. Well, it sounds
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`to me like you guys had some sort of notice that
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`this could have raised a publication issue for this
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`reference and you went ahead and proceeded with it
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`in your petition.
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` Do you want to add anything further
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`before I turn the floor over to Patent Owner?
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` MS. HOLOUBEK: Your Honor, the
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`document is dated on its face; and in terms of
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`institution and what is necessary for a document
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`indicated as publicly available for the purposes of
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`institution, it satisfies that.
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` There are several cases similar to
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`this -- for instance, IPR2013-00369, also
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`IPR2014-00682 -- where the date on the face of the
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`document that was available was sufficient to
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`institute. And should the Patent Owner then
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`challenge the publication, they could do that in an
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`objection to evidence. But at least as far as
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`institution goes, we believe that the document was
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`sufficient on its face.
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` It was not until this new allegedly
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`factual information came in in the POPR that this
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`document may not have actually been presented, that
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`another version had been presented, that we became
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`concerned. But that doesn't change the fact that it
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`was made public because it was available. This
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`particular version of the document was nonetheless
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`provided to EESAT and made available by them.
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` JUDGE ZECHER: Okay. This is Judge
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`Zecher. I think I understand your position, and I'm
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`familiar with the requirements for institution as
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`well as some of the cases that you've listed.
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` I'd like to hear from Patent Owner.
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` MR. SCHECHTER: Yes. May it please
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`the Board, this is Peter Schechter speaking. There
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`are three things I would like to mention.
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` The first is this new factual
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`information that Ms. Holoubek just mentioned that
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`there has been all this correspondence with the
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`general counsel's office or with Ms. Huff.
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` It's not necessarily that it's new
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`because correspondence with Ms. Huff between
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`Petitioner's counsel and Ms. Huff or other counsel
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`for the Petitioner was actually submitted to the
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`European Patent Office. So it's not a new issue.
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` But I have not heard until three
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`minutes ago that there were further discussions
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`about getting authorization from the Board or
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`declarations or any of that. That's all new.
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` What matters is that there was other
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`correspondence between the Petitioner and Sandia
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`National Labs, which they intentionally chose not to
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`include in the petition.
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` So all of that discussion by
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`Ms. Holoubek about what went on, they could have
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`discussed that, but they chose not to, so we had no
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`opportunity to consider any of that information or
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`respond to it in the Patent Owner Preliminary
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`Response. That's number one.
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` Number two, as far as we can tell,
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`there has never, ever been a single IPR
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`proceeding -- and we have challenged Petitioner's
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`counsel to show us one because if they could, we
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`would consent to all of this -- where this kind of
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`briefing was permitted or authorized by the Board
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`prior to institution.
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` Basically, as you heard just now,
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`what they really want is pre-institution briefing on
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`whether a particular document is or is not prior art
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`under 102(b) or whatever section of 102 they want to
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`do.
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` That is a post-institution issue in
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`the cases where the petition itself does not provide
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`enough information and we submit, as we cited in the
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`POPR, that the mere date on a set of PowerPoint
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`slides without more is not sufficient.
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` At any rate, what they want is
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`briefing on that substantive issue now; and if the
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`Board is really interested in opening the flood
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`gates of having this kind of briefing prior to
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`institution every time a patent owner says your
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`primary reference or your secondary reference is not
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`prior art because and then open the door to either
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`additional discovery or open the door to reply brief
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`after sur-reply brief after reply brief because of
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`these alleged new factual assertions.
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` All we've said is it's not prior art.
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`All right? We have reasons for that. If we have
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`to, we'll prove it later. But we think we pointed
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`out in the POPR, it's not prior art and here's why.
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` The third thing is, again, we've
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`asked for authority for this to happen and no one
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`can find any. We can't find any. We don't think
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`the Board wants it. The rules certainly don't
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`permit it and don't talk about this kind of briefing
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`or additional discovery.
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` Those situations which initially
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`Petitioner referred to as threshold issues have, in
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`fact, happened, but only in the case of true
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`threshold issues; namely, real party in interest
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`questions where the Board then doesn't even have to
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`get into the merits.
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` But here what we are talking about is
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`merits discovery or merits briefing on the substance
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`of the petition on an issue that clearly the
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`Petitioner knew about before it filed its Petition.
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` As I said, they filed this other
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`correspondence between themselves and Sandia
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`National Labs in the European Patent Office in
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`connection with a corresponding related case. So
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`it's not like it was a surprise or new that this was
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`going to come up.
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` I think we're being sandbagged, to be
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`quite honest. This whole thing about the general
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`counsel of Sandia says he'll sign a declaration if
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`the Board authorizes it, well, that's news to me.
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`And I think given the fact that we have had e-mail
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`correspondence over the last two weeks or three
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`weeks about this, I'm being completely sandbagged.
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`I mean, it's news to me, like I said.
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` So I don't think the Board should do
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`this, one, because it's outside the rules; two,
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`because it's not a surprise to anybody; and, three,
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`because for policy reasons it would be a really bad
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`idea, I think, for the Board to open up the realm of
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`either additional discovery or multiple rounds of
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`briefs on a substantive issue of whether something
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`is prior art or not prior art merely because the
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`Patent Owner in its POPR says it's not prior art.
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` JUDGE ZECHER: All right.
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`Mr. Schechter, this is Judge Zecher. I can
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`appreciate your position. What about Petitioner's
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`argument that this document has a date on its face
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`that would qualify it as prior art and that's
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`sufficient for institution?
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` MR. SCHECHTER: We have addressed
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`that in the POPR. But, again, I can't talk about
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`the circumstances of why that date is what it is or
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`isn't what it is because I would need to introduce
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`oral testimony, which I'm not allowed to do at this
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`stage, clearly I'm forbidden to do in the rules of
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`governing. So it's not an issue that I can prove
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`with documentation.
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` But if you think about it, in every
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`conference that I've ever gone to or many that you
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`may have gone to, the speakers are asked to provide
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`copies of their papers in advance, and why are they
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`asked that? In case they get run over by a bus on
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`the way to the presentation.
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` The fact is -- and, again, we talked
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`about this in the POPR -- you look at this
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`particular document and you can see that it's a
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`draft and you can see certainly the author may have
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`dated it the date of the presentation, but that is
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`not enough.
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` There is no evidence -- in fact, none
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`presented by the Petitioner here -- as to whether
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`copies were distributed, who was there, who
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`attended. Instead, what we see and what we know
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`from the European Patent Office is that this was an
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`advance copy sent to the conference organizer for
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`just that emergency purpose.
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` But so what? I mean, the fact is, it
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`was not presented. What the conference organizer
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`received as an advance copy was not presented.
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` Now, how would I prove all of this?
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`Obviously we get Mr. Lazarewicz to testify about it
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`after institution if we need to.
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` But without more, without saying who
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`was there, whether copies were distributed at the
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`thing, whether there was a poster board up, how many
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`copies were distributed, who took them, you know,
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`who was there, like all of the typical things that
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`the case law tells us to look at in the case of a
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`presentation, ephemeral presentation, of slides at a
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`conference, none of that evidence was put in in this
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`particular petition.
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` We're not dealing with a situation
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`where the evidence was put in and then the Board
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`needs to weigh that evidence in light of the case
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`law on this issue. The evidence simply wasn't put
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`in. The document is there, it has a date on it, but
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`we have information which we cannot, under the
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`rules, put in in a POPR that says that's not what
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`was presented.
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` JUDGE ZECHER: Okay.
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` MS. HOLOUBEK: Your Honor --
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` JUDGE ZECHER: This is Judge Zecher.
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`Mr. Schechter, we can appreciate your position.
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` It sounds like Petitioner has
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`something to add before the panel deliberates.
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` Ms. Holoubek, you were saying
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`something?
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` MS. HOLOUBEK: Yes, Your Honor. I
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`just want to make three quick points.
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` First of all, the Patent Owner just
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`laid out one of the reasons that we are requesting
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`this reply, because it's not simply the fact that
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`this was a presentation that may have been
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`presented. The underlying fact is that it was made
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`public. Whether or not it was the version actually
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`presented, it was made public.
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` It is indicated in our petition that
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`it was made public. Our petition also said that it
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`was a presentation. And the new factual information
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`that we were referring to was the indication in the
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`POPR that this was not presented and so that's the
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`new information that we wish to indicate.
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` And then lastly, on the authority
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`regarding the threshold issue, if you look at
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`IPR2014-01380, this is a case -- and it did deal
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`with a standing issue, which was a threshold
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`issue -- where the Petitioner was granted an
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`opportunity to respond to the POPR on a limited
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`issue that was a threshold issue.
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` Here we are not getting into the
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`merits regarding the substance of what is in the
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`exhibit at issue, but whether something is a printed
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`publication can be seen as a potential threshold
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`issue regardless of what is actually contained in
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`that document.
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` So those are the points we just
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`wanted to make, is that a publication doesn't rely
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`on it being presented. There is authority for
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`allowing in narrow circumstances a reply to the
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`POPR.
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` The new information here that we're
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`talking about isn't the fact that there was a
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`presentation out there; the new information is the
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`new allegation that the presentation was somehow
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`different from these slides that were made public by
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`the conference regardless.
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` JUDGE ZECHER: Ms. Holoubek, the IPR
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`you cited me to, I briefly got the number,
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`2014-00138, is that it?
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` MS. HOLOUBEK: No; 2014-01380, that's
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`General Electric versus TransData.
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` JUDGE ZECHER: What was the threshold
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`issue in that case that they granted a reply on?
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` MS. HOLOUBEK: The threshold issue
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`there was a matter of standing.
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` JUDGE ZECHER: Was it an RPI issue or
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`was it a 315(b) issue?
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` MS. HOLOUBEK: 315(b).
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` JUDGE ZECHER: All right. I think
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`we've heard both parties' positions. I'm going to
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`get off line and deliberate with my colleagues.
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`We're going to get back on line here in about, let's
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`say, 15 minutes, so 3:40, and we'll render our
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`decision. Thank you.
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` MR. STERNE: Thank you.
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` MS. HOLOUBEK: Thank you, Your Honor.
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` MR. SCHECHTER: Thank you, Your
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`Honor.
`
` - - -
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` (Whereupon there was a recess in the
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`proceedings.)
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` - - -
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` JUDGE ZECHER: This is Judge Zecher.
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`We're back on line with my colleagues, Judge Lee and
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`Judge Fitzpatrick. I want to take another roll call
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`real quick to make sure everybody is back on the
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`conference call.
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` Let's start with the Petitioner.
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` MR. STERNE: Good afternoon, Your
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`Honor. Robert Sterne here again and with me are my
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`backup counsel, Michelle Holoubek and Graham Phero,
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`Your Honor.
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` MR. SCHECHTER: And Peter Schechter
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`is on still for the Patent Owner.
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` JUDGE ZECHER: Okay. Thank you.
`
` The panel had a chance to deliberate
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`and consider the parties' positions. We're not
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`going to authorize a reply at this time. We felt
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`that based on the positions expressed by Petitioner,
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`that they were aware that this is an issue that
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`could have been raised by Patent Owner in the Patent
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`Owner Response.
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` We're also a little concerned about
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`the late timing in this request given that we only
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`have a month and a half before the DI is due.
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` But we do want to make clear that in
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`no way, shape, or form have we reached a decision on
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`whether or not this exhibit qualifies as a printed
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`publication.
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` You know, when the panel has a chance
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`to go through the record and conference the case and
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`render their decision, then you'll get our decision
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`in the DI. But we're not saying that it's
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`sufficient or not sufficient at this time.
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` So are there any questions from the
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`parties?
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` MR. SCHECHTER: None from the Patent
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`Owner.
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` JUDGE ZECHER: From Petitioner?
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` MR. STERNE: No, Your Honor.
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` JUDGE ZECHER: Okay. This call is
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`adjourned. Thank you.
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` MS. HOLOUBEK: Thank you, Your Honor.
`
` MR. STERNE: Thank you.
`
` MR. SCHECHTER: Thank you.
`
` - - -
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` (Whereupon the conference call
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`adjourned at 3:42 p.m.)
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` - - -
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` C E R T I F I C A T I O N
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` - - -
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`Page 23
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` I, Susan Marie Migatz, RMR, CRR, do hereby
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`certify the foregoing is a true and correct
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`transcript of the proceedings in the above-entitled
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`matter.
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`<%signature%> March 18, 2015
`
`____________________________ _________________
`
`SUSAN MARIE MIGATZ, RMR, CRR DATE
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`[& - conference]
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`&
`& 2:2 8:6
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`1100 2:4
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`1250 1:24
`15 20:12
`15th 8:10,15 9:15
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`18 1:13 23:13
`18th 5:23
`2
`20005 1:25
`20005-3934 2:5
`2002 8:10,11,16
`9:15
`2014-00138 19:23
`2014-01380 19:24
`2015 1:13 4:7 5:22
`5:23 23:13
`202-772-8862 2:5
`3
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`a
`actual 7:8
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`address 5:17 7:2,5,5
`addressed 15:24
`adjourned 22:11,17
`administrative 1:19
`advance 16:10,24
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`afternoon 3:1,8 4:10
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`agency 9:4
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`ago 12:10
`ahead 10:16
`allegation 6:10
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`alleged 4:19,22 5:2
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`allegedly 11:9
`alleges 4:12,16
`allow 10:2
`allowed 16:3
`allowing 19:13
`ambiguity 6:21
`anybody 15:11
`appeal 1:4
`appearances 2:1
`applications 8:6
`appreciate 15:20
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`april 8:10,15 9:15
`archived 6:13
`archives 8:19
`argument 5:18
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`art 5:19 13:7,21,25
`14:3 15:16,16,17,22
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`atlantic 1:24
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`attending 6:13
`attention 6:1
`attest 9:21
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`best 9:1
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`cases 10:25 11:20
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`catalogued 8:18
`certainly 14:7 16:16
`certify 23:6
`challenge 11:5
`challenged 12:25
`chance 21:10,24
`change 8:24 11:13
`changed 9:1
`chose 12:15,19
`circumstances 16:1
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`cited 13:12 19:22
`clear 21:20
`clearly 14:18 16:4
`clock 5:24
`closed 4:18,25
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`confused 6:25
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`contained 19:8
`content 4:5
`copies 16:10,21 17:8
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`copy 4:22,25 6:15
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`counsel's 12:3
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