SUBMISSION OF TRANSCRIPT OF
`DECEMBER 15, 2015 CONFERENCE CALL
`
`
`
`
`
`1 IPR2015-01400 has been joined with this proceeding.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`LG ELECTRONICS, INC., TOSHIBA CORP.,
`VIZIO, INC., HULU, LLC,
`CISCO SYSTEMS, INC., and AVAYA INC.,
`Petitioners,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
`________________
`
`Case IPR2015-001981
`Patent 6,009,469 C1
`________________
`
`
`
`
`
`

`
`Pursuant to the Board’s request during the December 15, 2015 conference
`
`call with the parties, Patent Owner Straight Path IP Group, Inc. hereby files the
`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`transcript of that conference call.
`
`
`Dated: December 17, 2015
`
`
`
`Respectfully submitted,
`
`/William Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (admitted pro
`hac vice)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`2
`
`

`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that a copy of the Submission of Transcript of December 15, 2015
`
`Conference Call is being served by electronic mail on the following counsel for the
`
`For Vizio, Inc.
`Baker & McKenzie LLP
`Kevin O’Brien (Reg. No. 30,578)
`Richard V. Wells (Reg. No. 53,757)
`Kevin.O'Brien@bakermckenzie.com
`richard.wells@bakermckenzie.com
`
`For CISCO Systems
`Wilmer Cutler Pickering hale and Dorr
`LLP
`David L. Cavanaugh (Reg. No. 36,476)
`Jason D. Kipnis (Reg. No. 40,680)
`david.cavanaugh@wilmerhale.com
`jason.kipnis@wilmerhale.com
`
`For Hulu, LLC
`Keker & Van Nest LLP
`Leo Lam
`Matthias Kamber
`llam@kvn.com
`mkamber@kvn.com
`HULU-SP-IPR@kvn.com
`
`3
`
`Petitioners:
`
`For LG Electronics, Inc.
`Finnegan, LLP
`Darren M. Jiron (Reg. No. 45,777)
`Rajeev Gupta (Reg. No. 55,873)
`darren.jiron@finnegan.com
`raj.gupta@finnegan.com
`
`For Toshiba Corporation
`Dorsey & Whitney
`Clint Conner (Reg. No. 52,764)
`Paul Meiklejohn (Reg. No. 26,569)
`Jennifer Spath (Reg. No. 51,916)
`conner.clint@dorsey.com
`meiklejohn.paul@dorsey.com
`spaith.jennifer@dorsey.com
`For Avaya Inc.
`Fish & Richardson
`Dorothy P. Whelan (Reg. No. 33,814)
`Christopher O. Green (Reg. No. 52,964)
`whelan@fr.com
`cgreen@fr.com
`
`
`
`

`
`Case IPR2015-00198
`Patent No. 6,009,469
`
`/William Meunier/
`William A. Meunier (Reg. No. 41,193)
`Michael C. Newman (admitted pro hac
`vice)
`Mintz, Levin, Cohn, Ferris, Glovsky
`and Popeo, P.C.
`One Financial Center
`Boston, MA 02111
`Telephone: (617) 348-1845
`Facsimile: (617) 542-2241
`StraightPathIPRs@mintz.com
`
`
`Dated: December 17, 2015
`
`
`
`
`4
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`

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`ATTACHMENT A
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`ATTACHMENT A
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`Page 1
` PROCEEDINGS
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
` LG ELECTRONICS, INC., TOSHIBA CORP.,
` VIZIO, INC. & HULU, LLC, CISCO SYSTEMS, INC.,
` AVAYA, INC., VERIZON SERVICES CORP., AND
` VERIZON BUSINESS NETWORK SERVICES,
` Petitioners,
` v.
` STRAIGHT PATH IP GROUP, INC.
` (FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
` TECHNOLOGIES, INC.)
` Patent Owner
` ____________________
` Case IPR2015-00196* (Patent 6,131,121)
` Case IPR2015-00198** (Patent 6,009,469)
` Case IPR2015-00209*** (Patent 6,108,704)
` ____________________
`
` *IPR2015-01397 and IPR2015-01407 have been joined
` with this proceeding.
` **IPR2015-01400 has been joined with this proceeding.
` ***IPR2015-01398 has been joined with this proceeding.
`
`Job No. 101312
`
`TSG Reporting - Worldwide 877-702-9580
`
`

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`Page 2
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`Page 3
`
` PROCEEDINGS
` APPEARANCES:
` (ALL PRESENT APPEARED VIA TELECONFERENCE)
`
` BEFORE: Honorable Kaylan K. Deshpande
` Honorable Trenton A. Ward
` Honorable Bart A. Gerstenblith
`
` ON BEHALF OF PATENT OWNER STRAIGHT PATH IP GROUP:
` Mintz, Levin, Cohn, Ferris, Glovsky and Popeo
` WILLIAM MEUNIER, ESQ.
` One Financial Center
` Boston, Massachusetts 02111
`
` - and -
`
` Straight Path Communications, Inc.
` VANDANA KOELSCH, ESQ.
` 5300 Hickory Park Drive
` Glen Allen, Virginia 23509
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` PROCEEDINGS
` APPEARANCES (CONTINUED):
`
` ON BEHALF OF PETITIONERS CISCO SYSTEMS AND AVAYA:
` WilmerHale
` DAVID L. CAVANAUGH, ESQ.
` 1875 Pennsylvania Avenue, NW
` Washington, DC 20006
`
` - and -
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` WilmerHale
` JASON LISS, ESQ.
` 60 State Street
` Boston, Massachusetts 02109
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`
`
` ON BEHALF OF PETITIONER HULU:
` Keker & Van Nest
` SHARIF JACOB, ESQ.
` 633 Battery Street
` San Francisco, California 94111
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`Page 5
` PROCEEDINGS
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` APPEARANCES (CONTINUED):
`
`
` Also Present: (Via Teleconference)
` David Jonas, CEO Straight Path
` Communications, Inc.
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`Page 4
`
` PROCEEDINGS
`
` APPEARANCES (CONTINUED):
`
` ON BEHALF OF PETITIONER VIZIO, INC.:
` Baker & McKenzie
` RICHARD WELLS, ESQ.
` 815 Connecticut Avenue, NW
` Washington, DC 20006
`
`
`
` ON BEHALF OF PETITIONERS LG AND VERIZON:
` Finnegan, Henderson, Farabow, Garrett & Dunner
` RAJEEV GUPTA, PH.D., ESQ.
` 901 New York Avenue, NW
` Washington, DC 20001
`
`
`
` ON BEHALF OF PETITIONER TOSHIBA:
` Dorsey & Whitney
` CLINT CONNER, ESQ.
` 50 South Sixth Street
` Minneapolis, Minnesota 55402
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`Page 6
`
` PROCEEDINGS
` P R O C E E D I N G S
` (2:26 p.m.)
` THE JUDGE: This is Judge Deshpande with the
` Patent Trial and Appeal Board. With me are Judges
` Ward and Gerstenblith.
` Do we have Patent Owner on the call already?
` It sounds like a yes.
` MR. MEUNIER: Yes. Bill Meunier is here for
` Straight Path, Your Honor.
` THE JUDGE: Do you have your other members
` with you?
` MR. MEUNIER: I'll ask them to speak up if
` they're here. It looks like we don't -- is the court
` reporter on at least?
` THE REPORTER: Yes.
` THE JUDGE: Okay.
` MR. MEUNIER: I think we're good to go, Your
` Honor.
` THE JUDGE: Okay. We're okay to proceed?
` MR. MEUNIER: Yes.
` THE JUDGE: Patent Owner, let me -- I forgot
` to mention this at the end of the previous call, so I
` just want to be clear. Can you please file the
` transcript for the previous call and this call within
`
`Page 8
`
` PROCEEDINGS
` Vizio, Petitioner.
` THE JUDGE: Thank you.
` MR. CAVANAUGH: This is David Cavanaugh and
` Jason Liss from WilmerHale on behalf of Cisco.
` MR. GUPTA: This is Raj Gupta from Finnegan
` Henderson on behalf of LG and Verizon.
` MR. CONNER: This is Clint Conner with
` Dorsey & Whitney on behalf of Toshiba.
` THE JUDGE: Excellent.
` Petitioner, you've requested this call and
` additional briefing. Can you tell us a little bit
` about what you're requesting and why.
` MR. JACOB: Yes, Your Honor. This is Mr.
` Jacob.
` Patent Owner sought and obtained leave to
` file the Federal Circuit's decision in the Appeal of
` Straight Path IP Group versus Sipnet. It's only fair
` to Petitioner and, really, to the Board that it have
` an opportunity to receive briefing from the parties
` on how, if at all, the decision impacts the Board's
` final written decision on unpatentability in this
` matter.
` Petitioner would like to supply some
` authority in support of supplemental briefing. In
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`Page 7
` PROCEEDINGS
` a few days.
` MR. MEUNIER: I will see what we can do. I
` think the last I heard was it was going to take,
` maybe, eight days to get the transcript, but if you
` would like -- would like us to try to expedite that,
` we will look into that.
` THE JUDGE: Okay. Yeah. If you can
` expedite that, that would -- that would help us.
` Let me check to see if we have all of the
` Petitioners that need to be here on the call. Who do
` we have from the Petitioner?
` MR. JACOB: Your Honor, this is Sharif Jacob
` of Keker & Van Nest on behalf of Petitioner. I
` represent Hulu, but I'll be speaking today on behalf
` of all Petitioners.
` THE JUDGE: Okay. Is there anybody else
` from Petitioner on the call?
` MR. WELLS: Your Honor, (inaudible).
` THE REPORTER: I'm sorry. I couldn't
` understand that.
` THE JUDGE: Can you please repeat that, sir,
` the gentleman from Baker McKinsey.
` MR. WELLS: Yes. My apologies. This is
` Richard Wells with Baker McKenzie on behalf of,
`
`Page 9
`
` PROCEEDINGS
` the Microsoft Corp. versus Proxyconn case, the
` Board's issued a final written decision, and that
` decision was appealed to the Federal Circuit. The
` Federal Circuit reversed in part and vacated in part
` the Board's decision. In its opinion, the Federal
` Circuit ruled that the Board had erred in claim
` construction and, therefore, vacated the Board's
` determination that certain claims were unpatentable.
` On remand, Petitioner requested briefing,
` and Patent Owner opposed. The Board ordered the
` parties to file supplemental briefs over Patent
` Owner's opposition, and the Board did so in Paper No.
` 18. That's IPR2012-00026.
` Petitioner submits that, in this proceeding,
` the facts are precisely the same. The Federal
` Circuit has issued a claim construction that the
` Federal Circuit found that the Board erred in its
` claim construction in the Sipnet proceeding that
` involved a similar patent.
` So Petitioner seeks what Petitioner sought
` in Proxyconn, that is the ability to brief how, if at
` all, the Federal Circuit's decision affects the
` Board's decision here on patentability.
` The Petitioner has proposed a round of
`
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`Page 10
`
` PROCEEDINGS
` briefing, that is, an opening supplemental brief no
` more than seven pages, an optional response of seven
` pages, and an optional reply of three pages.
` Petitioner proposes the following schedule
` of which we believe will not impact the -- will not
` impact the schedule that's already set. Petitioner
` is not seeking to amend or change the case management
` order issued in this proceeding.
` The supplemental brief would be due one week
` after the issuance of the Board's order resulting
` from this conference call. The optional response
` would be due one week after the opening brief, and
` the reply would be due five business days after the
` response brief.
` Petitioner does not seek to submit
` additional evidence. Petitioner is only seeking
` supplemental briefing, not the ability to submit new
` evidence.
` The Federal Circuit claims construction is
` not dispositive of obviousness in this proceeding,
` and so we believe the Board would benefit from
` argument about how, if at all, to apply the
` Board's -- the Federal Circuit's construction to each
` of the claims that contain the limitation at issue.
`
`Page 12
` PROCEEDINGS
` MR. MEUNIER: Sure. Thank you, Your Honor.
` Just as a preliminary matter here, unlike
` the call we just had in which Samsung specified what
` issues it actually wanted to address, Petitioner here
` just said it wants to file an extra brief to -- to
` somehow address the Federal Circuit's opinion, but it
` hasn't really identified what exactly it wants to
` address and why it needs to address it at this point.
` So we're at a little bit of a disadvantage
` in that, other than just a general notion that they
` want to file more briefing here, there hasn't been
` any kind of specific need that's been identified. So
` I say that from -- from the outset.
` But, assuming that Petitioner wants to
` address the claim construction that is now ruling in
` this case, the Federal Circuit's claim
` construction -- I hate to repeat myself in the
` previous call, but I think I need to, because we've
` got a separate record here.
` The Federal Circuit's claim construction of
` the is connected issue and its ilk and all of the
` patents at issue in these IPRs is the exact same as
` the one that Straight Path has advocated throughout
` these IPRs and which Petitioners have already
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`Page 11
` PROCEEDINGS
` It's also possible that the Board may wish
` to question the parties about the Federal Circuit's
` decision at the hearing on this matter. If the Board
` allows supplemental briefing, that will avoid
` disputes over whether the parties' positions are
` contained in the record.
` As of right now, the parties' positions
` about the Federal Circuit's claim construction are
` not contained in the record and, in particular, how
` the claim construction applies to each of the claims
` as they apply to the prior art, and if the Board
` wishes to examine that at the hearing, if it's not
` contained in the record, one party may object that
` new evidence or new argument is being introduced.
` So, for those reasons, Petitioner
` respectfully seeks the ability to submit supplemental
` briefing to address the Federal Circuit's decision in
` Sipnet.
` THE JUDGE: Thank you.
` Patent Owner, do you object to the
` additional briefing?
` MR. MEUNIER: Yes. Yes, we do.
` THE JUDGE: Can you explain a little bit as
` to why.
`
`Page 13
`
` PROCEEDINGS
` addressed fully.
` Again, the Federal Circuit's claim
` construction was -- is connected to the computer
` network at the time the query is transmitted to the
` server. That's at Page 13 of the Federal Circuit's
` opinion. It's the same construction that Straight
` Path advocated here which was query as to whether the
` process is connected to the computer network at the
` time of the query.
` For example, in our patent order response at
` Page 22 concerning the 704 patent, they are the same
` construction, and I haven't heard any -- any
` difference identified by the Petitioners here or
` prior to this call.
` So it's the same construction, and -- so
` it's not a new issue, and the parties have already
` addressed and briefed this exact construction
` already. In LG's petition, it relied only on the
` registered claim construction -- claim construction
` that the Federal Circuit has now rejected.
` Straight Path brought the construction up
` that the Federal Circuit has now adopted and its
` patent owner's response and explained in detail why
` the references don't teach that. I can give you the
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`Page 14
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` PROCEEDINGS
` cites, if you want, but I'm sure you're familiar with
` the record already.
` The point I want to make is, in LG's reply,
` it both argued again against the claim construction
` that the Federal Circuit has now said must rule in
` this case, but it also argued for the first time in
` the alternative -- and I'll quote from Page 15 of its
` reply brief -- WINS and NetBios satisfied the
` construction proposed by the Sipnet board, Petitioner
` and Patent Owner.
` Then, on Page 21, of its reply brief, it
` argued the combination of WINS and NetBios rendered
` the challenge claims of the 704 patent obvious, even
` under Patent Owner's erroneous claim construction.
` Now, we know Patent Owner's claim
` construction is not erroneous, because the Federal
` Circuit has sensed the correct one, but we also know
` there's no need for additional briefing here, because
` Petitioners have already addressed that claim
` construction.
` They argued that it was wrong, and to the
` extent that they wanted to try to show that it was
` somehow -- even under Straight Path's and the Federal
` Circuit's construction, that the prior art taught
`
`Page 16
`
` PROCEEDINGS
` they should not be allowed additional briefing on
` this. It's already been addressed, and the notion
` that they should -- that they are somehow agreeing to
` not rely on any additional evidence, well, that's
` fine, because you know, what they're going to do is
` point to the evidence that's of record which is these
` two references, WINS and NetBios.
` But they're going to point to -- I would
` imagine what they're going to try to do is point to
` evidence they haven't relied on yet for this argument
` of somehow WINS and NetBios satisfied this limitation
` under the Federal Circuit's and Straight Path's claim
` construction, and I would say that is unfair and
` against PTAB's own rules.
` If they are going to just rely on evidence
` they already cited to for that proposition, then
` they've already done it in a brief, and there's no
` need for additional briefing. If they haven't done
` it in a previous brief, it's too late to do so now.
` THE JUDGE: Thank you.
` MR. MEUNIER: And I -- and I just want to
` make one last point that I made earlier. The idea
` that they should get two briefs on this instead of
` just one extra brief that's against the rules and
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`Page 15
` PROCEEDINGS
` these limitations, they tried to do so in their reply
` brief.
` Now, if you look at their reply brief,
` nothing that they cite supports their argument, but
` that's why they want additional briefing here,
` because it's going to come out in oral argument that
` the cites they have in their reply brief where they
` argue that somehow this prior art teaches this
` limitation under Straight Path's and Federal
` Circuit's claim construction, it has no support
` whatsoever, and that's going to come up with the oral
` argument which hasn't happened in this case.
` So the notion that there needs to be -- one,
` that the parties have not addressed the Federal
` Circuit's claim construction is incorrect. The
` Federal Circuit's claim construction is the same as
` Straight Path's in this case, and the Petitioners had
` the opportunity to address that claim construction
` and did address that claim construction in the only
` places they are allowed to do it, in the petition and
` in the reply brief.
` At this point, they are not allowed to make
` any new arguments. They are not allowed to point to
` any new evidence to support any new arguments. So
`
`Page 17
` PROCEEDINGS
` against this party's -- I mean, this Board's prior
` art for us today I would disagree with.
` If there is going to be briefing -- and
` there's no reason there should be -- it is Straight
` Path's position they should file a brief, and then we
` should get to respond to it, and that should be the
` end of it.
` Thank you, Your Honor.
` THE JUDGE: Thank you.
` Counsel for Petitioner, the Panel wants to
` know that, if this claim construction has already
` been argued, why do we need additional briefing on
` this issue.
` MR. JACOB: Yes, Your Honor.
` So, first of all, we disagree with the
` position that the parties have addressed the Federal
` Circuit's claim construction.
` First of all, the Federal Circuit's opinion
` contains a significant amount of analysis, and the
` parties have not had -- have simply not applied the
` Federal Circuit claim construction to the terms here,
` nor have the parties applied the prior art to the
` claim construction.
` I can also tell from Patent Owner's argument
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` that there are parts of the record that need to be
` clarified. Patent Owner just took the position, for
` example, that the claim construction applies to all
` of the claims at issue here and that that's incorrect
` in the Petitioners's view.
` All of the claims do not contain the claim
` limitation that was at issue in the -- in the 704
` patent claims that were issue in Sipnet. So that's
` simply for purposes of clarifying the record as to
` that dispute.
` I also want to respond to Patent Owner's
` suggestion that we're going to submit new evidence.
` That's simply not the case. Petitioner has committed
` to not permitting new evidence.
` What Petitioner simply seeks to do is take
` the Federal Circuit's claim construction, explain to
` the Board where and where it does not apply and then
` apply that claim construction to the prior art that
` is -- that is at issue here. So, to the extent that
` Patent Owner had any confusion about what the scope
` of the briefing is, that would be the scope of the
` briefing.
` MR. MEUNIER: Your Honor, may -- may
` Straight Path briefly respond to that.
`
`Page 20
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` PROCEEDINGS
` their petition or reply brief they made the same
` argument and cited to that same evidence in support
` of that argument.
` MR. JACOB: This is Sharif Jacob on behalf
` of Petitioner.
` Just to briefly respond, Your Honor, it is
` simply incorrect that all of the claims at issue here
` contain the is connected to or the on-line.
` Petitioner disagrees with that and will point out, if
` permitted, in a supplemental briefing which -- which
` claims at issue here do not contain those
` limitations.
` Second of all, we disagree with the notion
` that the Petitioner is required in a supplemental
` brief to simply regurgitate its -- its petition.
` Petitioner believes that the new construction and, in
` particular, the new analysis that's contained in the
` Federal Circuit's decision merits a response. That
` may include new argument. It will not, however,
` include new evidence. So Petitioner will not be
` marshalling evidence that is not a part of the record
` in support of its supplemental briefs.
` THE JUDGE: Thank you. I am going to put
` both parties on hold for a moment and confer with the
`
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` THE JUDGE: Sure.
` MR. MEUNIER: Point No. 1, the Petitioner's
` argument that somehow the claim construction at issue
` in Sipnet is different from other claims, we will
` agree that some of the claims include the is
` connected type language. Other claims include
` on-line status, for example.
` Petitioners already argued and agreed that
` the construction for is connected applies to all of
` those other limitations. To the extent they wanted
` to argue they were different, they needed to do it in
` their petition and they needed to do it in their
` reply. They didn't. They did the opposite. They
` said they were the same. They should be held to
` that.
` As far as, again, this -- this notion that
` they're not going to point to any new evidence, I
` would make the same request here that I made in
` the -- in the earlier call we had regarding --
` regarding the Samsung IPRs.
` If for some reason briefing is allowed here,
` Petitioners should be required to, for every argument
` and piece of evidence that they cite to and every
` argument they make, cite to exactly where either in
`
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` PROCEEDINGS
` Panel.
` (Recess)
` THE JUDGE: Thank you. Judge Deshpande
` again.
` We're going to take all of the information
` under advisement and issue an order as to our ruling
` in due time.
` Are there any further questions from
` Petitioner at this time?
` MR. JACOB: No. Thank you, Your Honor.
` THE JUDGE: Okay. Any questions from Patent
` Owner?
` MR. MEUNIER: Just one addition that I
` neglected to make, and I just want to remind the
` Board that, in the Sipnet appeal, there can be a
` rehearing request up to December 28th. So I think
` that should affect if there is going to be
` briefing -- and, again we don't believe there should
` be or it's allowed under the rules, but that may
` affect when that briefing should take place.
` THE JUDGE: Okay. And, as I mentioned with
` the previous case, if you can file the transcript for
` these calls as soon as -- as possible, that would
` greatly be appreciated.
`
`TSG Reporting - Worldwide 877-702-9580
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` PROCEEDINGS
` MR. MEUNIER: We will try to do that, Your
` Honor.
` THE JUDGE: Also, one other just clerical
` point is that, if you receive a mandate from the
` Federal Circuit in the Sipnet case, can you also file
` that with -- with these cases.
` MR. MEUNIER: We will do so.
` THE JUDGE: That's probably our best point
` of knowing when it's -- it's in our jurisdiction
` again.
` MR. MEUNIER: Okay. Your Honor. We will do
` that.
` THE JUDGE: Thank you.
` Thanks everybody for the call. We will
` issue an order in due course and time. Thank you.
` MR. MEUNIER: Thank you.
` (Whereupon the hearing
` concluded at 2:49 p.m.)
`
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` PROCEEDINGS
` C E R T I F I C A T E
` I, Valerie Rae Johnston, Registered Professional
` Reporter, do hereby certify that the foregoing
` transcript, Volume I, is a true and accurate
` transcription of my stenographic notes taken on
` Tuesday, December 15, 2015.
`
`
`
` ________________________________
` Valerie Rae Johnston
` Registered Professional Reporter
`
` Dated: December 16, 2015
`
`
`
`
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`
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`
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`TSG Reporting - Worldwide 877-702-9580
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