Conference Call
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`Washington, D.C.
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`June 29, 2015
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`------------------------------
` :
`CORELOGIC, INC., : Case Nos.
` :
` Petitioner, : IPR2015-00219
` :
` v. : IPR2015-00222
` :
`BOUNDARY SOLUTIONS, INC., : IPR2015-00226
` :
` Patent Owner. : IPR2015-00228
` :
`------------------------------
`
` Monday, June 29, 2015
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` Telephone Conference before Judge Peter P. Chen
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`and Judge Carl M. DeFranco in the above-entitled
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`matter, commencing at 1:03 p.m., the proceedings
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`taken down by Stenotype by Catherine B. Crump,
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`stenographic court reporter, and transcribed under
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`her direction.
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`Alderson Reporting Company
`1-800-FOR-DEPO
`
`CoreLogic Exhibit 1023
`CoreLogic, Inc. v. Boundary Solutions, Inc.
`Trial IPR2015-00228
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`Page 1 of 23
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`Washington, D.C.
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`June 29, 2015
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`------------------------------
` :
`CORELOGIC, INC., : Case Nos.
` :
` Petitioner, : IPR2015-00219
` :
` v. : IPR2015-00222
` :
`BOUNDARY SOLUTIONS, INC., : IPR2015-00226
` :
` Patent Owner. : IPR2015-00228
` :
`------------------------------
`
` Monday, June 29, 2015
`
` Telephone Conference before Judge Peter P. Chen
`
`and Judge Carl M. DeFranco in the above-entitled
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`matter, commencing at 1:03 p.m., the proceedings
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`taken down by Stenotype by Catherine B. Crump,
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`stenographic court reporter, and transcribed under
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`her direction.
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`Alderson Reporting Company
`1-800-FOR-DEPO
`
`CoreLogic Exhibit 1023
`CoreLogic, Inc. v. Boundary Solutions, Inc.
`Trial IPR2015-00228
`
`Page 1 of 23
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`Conference Call
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`Washington, D.C.
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`June 29, 2015
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`Page 2
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`APPEARANCES:
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`On behalf of the Petitioner:
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` JOSEPH PALYS, ESQ.
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` Paul, Hastings, LLP
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` 875 15th Street, N.W.
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` Washington, D.C. 20005
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` (202) 551-1717
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` josephpalys@paulhastings.com
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`On behalf of the Patent Owner:
`
` LARRY EDELMAN, ESQ.
`
`Also on behalf of Patent Owner:
`
` BRUCE J. WECKER, ESQ.
`
` Hausfeld, LLP
`
` 600 Montgomery Street, Suite 3200
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` San Francisco, California 94111
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` (415) 633-1908
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` bwecker@hausfeld.com
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` P R O C E E D I N G S
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` JUDGE CHEN: May we please have a roll call
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`here, beginning with counsel for petitioner.
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` MR. PALYS: I'm Joseph Palys of Paul
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`Hastings, representing the petitioner.
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` JUDGE CHEN: Thank you. Is there anyone else
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`from your law firm or from the petitioner on the
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`line?
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` MR. PALYS: No, Your Honor.
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` JUDGE CHEN: Okay. Thank you.
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` Counsel for patent owner.
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` MR. EDELMAN: Yes. This is Larry Edelman for
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`Boundary Solutions.
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` JUDGE CHEN: Thank you, Counsel. Anyone else
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`with you, either from your firm or your client?
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` MR. WECKER: Yes.
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` MR. EDELMAN: Go ahead.
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` MR. WECKER: Yes, Your Honor. This is Bruce
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`Wecker from Hausfeld, LLP. I'm litigation counsel
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`for Boundary Solutions.
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` JUDGE CHEN: I'm sorry, Counsel. Could you
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`spell your last name?
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` MR. WECKER: W-E-C-K-E-R.
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` JUDGE CHEN: And you are District Court
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`counsel for Boundary Solutions?
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` MR. WECKER: Yes. I'm litigation counsel and
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`I intend to pro hac vice into this IPR.
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` JUDGE CHEN: Okay. We'll permit your
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`attendance on this call.
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` I understand there's also a court reporter on
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`the line.
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` COURT REPORTER: Yes, there is. This is
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`Cathy Crump with Alderson Reporting.
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` JUDGE CHEN: Thank you very much. I'll ask
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`that the transcript of this telephone conference be
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`filed in these matters as promptly as possible.
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` For the record, we are here this morning
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`pursuant to a request from counsel for patent owner.
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`These are four related IPRs titled "CoreLogic, Inc.
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`v. Boundary Solutions, Inc.", IPR 2015-00219, 00222,
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`00226, and 00228.
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` This call has been requested by counsel for
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`the patent owner regarding patent owner's filing of a
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`motion to amend. With that, let me turn it over to
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`counsel for patent owner to explain a little bit more
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`about that and I would ask that counsel for both
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`parties please identify themselves as they begin so
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`that we have a clear record for the court reporter.
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` So thank you and, patent owner, you may
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`proceed.
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` MR. EDELMAN: Okay. Your Honor, this is
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`Larry Edelman speaking.
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` We plan to be filing a motion to amend in all
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`four of the actions. There are really only three
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`patents at issue, and the amendment will be directed
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`to further defining one of the terms, possibly two of
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`the terms, in the independent claims and possibly
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`taking some of the limitations and some of the
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`dependant claims and introducing them into the
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`independent claims.
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` I can't be more specific than that at this
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`time because we are very close to retaining a new IPR
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`lead counsel, someone to replace myself as lead
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`counsel for Boundary Solutions, and I have not had
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`further discussions with him on how the claims would
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`be amended.
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` JUDGE CHEN: Okay. I appreciate that. Let
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`me just follow up and ask is Mr. Wecker, who is also
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`on the line, is that the counsel who would be new IPR
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`lead counsel?
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` MR. WECKER: Your, Honor this is Bruce
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`Wecker. I would not. I would be a backup counsel as
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`I'm not registered to practice.
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` JUDGE CHEN: Okay. I appreciate that and
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`understand that the situation is in transition with
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`patent owner's IPR counsel.
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` Mr. Edelman, do you contemplate that it will
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`be you who will be filing the motion to amend or will
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`that be the new IPR lead counsel?
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` MR. EDELMAN: I'm hoping, Your Honor, it will
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`be the new IP lead counsel.
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` JUDGE CHEN: What timeframe do you
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`contemplate transitioning to the new IPR lead
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`counsel, your replacement?
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` MR. EDELMAN: I think -- I'm unsure of the
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`timelines within the IPR rules, but meeting and
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`talking with new counsel this week, that should
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`happen very shortly. My understanding is it's
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`imminent.
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` JUDGE CHEN: Okay. Thank you for that. My
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`reasons for inquiring are twofold: One, pursuant to
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`the scheduling orders that have been entered in each
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`of these four matters, as I'm sure the parties are
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`aware, Due Date 1 is currently set for August 20th.
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`So we still have a fair amount of time before that
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`due date, which is the date on which the patent owner
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`must file a motion to amend along with any response
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`to the petition.
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` Secondly, I am thinking out loud here that
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`when the transition occurs with your replacement, Mr.
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`Edelman, we may well need to have that counsel call
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`in and hear what I'm about to tell you, because it
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`doesn't appear that you'll actually be filing this
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`and your replacement may benefit from some of the
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`background as well.
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` Let me at this point turn it over to counsel
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`for petitioner to see if they have anything to say
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`based on what's transpired so far on this call.
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` MR. PALYS: Thank you, Your Honor. This is
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`Joseph Palys again with petitioner.
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` Just one point: I think it's somewhat
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`consistent with what I heard Mr. Edelman say, but
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`patent owner's counsel reached out to us earlier this
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`month to discuss our position on a motion to amend
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`back on June 11th, and in response, we said we'd like
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`to talk with them about that, and we had a
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`conversation with Mr. Wecker, who is on the line
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`right now, about trying to get a sense of where they
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`were going with this amendment; and, you know,
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`consistent with what we heard, they're going to amend
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`some of the claims, etc., but they mentioned that
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`details were going to be coming. A few days later,
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`Mr. Edelman did provide additional details, on June
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`12th.
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` The one, I guess the point I'm getting to,
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`Your Honor, is that consistent with what we heard,
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`they mentioned that they were looking to retain
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`additional IPR counsel, but they also mentioned that
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`the information that they were informing us about
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`what they proposed to amend was basically subject to
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`change. It was considered preliminary.
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` So I raise this only to seek clarification on
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`the type of details that we heard today from counsel
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`for patent owner, whether that's going to be subject
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`to change, not just IPR counsel, but the scope of
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`what they're planning on doing on their amendments.
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` JUDGE CHEN: Okay. Thank you for that.
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` Counsel for patent owner, any response to the
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`inquiry from petitioner counsel?
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` MR. EDELMAN: This is Larry Edelman speaking.
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` I really have no response. It's my
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`expectation that the claims will be amended somewhat
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`along the lines I described. I really do not want to
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`speak ahead for counsel that has not yet appeared and
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`they'll review and come to their own conclusions on
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`how to amend the claims.
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` So I can't be more specific at this point.
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` JUDGE CHEN: All right. I certainly
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`appreciate that position.
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` I think given the circumstances which are
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`new, this new information to the board, what I will
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`do at this point is summarize just for the benefit of
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`patent owner's current counsel the board's
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`expectations on a motion to amend, and once the
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`transition is made to new counsel, if new IPR counsel
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`believes they would benefit from a further conference
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`with the board and if petitioner's counsel believes
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`that a further conference would be useful, the board
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`might make itself available to do so. We do have
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`plenty of time before Due Date 1.
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` So as counsel may be aware, there are some
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`detailed requirements on a motion to amend. Let me
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`ask Mr. Edelman whether he has been involved in
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`filing a motion to amend in any other IPRs or
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`proceedings before the board.
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` MR. EDELMAN: The short answer, Your Honor,
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`is no.
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` JUDGE CHEN: All right. Do you know whether
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`your replacement IPR counsel has had such experience?
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` MR. EDELMAN: I believe they have.
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` JUDGE CHEN: And is it patent owner's present
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`contemplation to file a response on Due Date 1 in
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`addition to the motion to amend?
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` MR. EDELMAN: Yes.
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` JUDGE CHEN: Okay. Thank you.
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` All right. Well, a couple of overarching
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`principles: Keep in mind that a motion to amend can
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`propose substitute claims or cancel claims, and those
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`are two options to have in mind as you're moving
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`toward Due Date 1. The patent owner does have the
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`burden of proof by a preponderance of evidence on
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`this motion to show patentability of either the
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`existing claims or the proposed substitute claims.
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` By virtue of recent revisions to the AIA
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`trial regulations, patent owner now has up to 25
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`pages for the motion in contrast to the prior page
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`limit of 15. Petitioner also gets 25 pages to file
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`an opposition by Due Date 2, which I believe is later
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`this fall, and then the patent owner has 12 pages on
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`its reply to petitioner's opposition to the motion to
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`amend, and that is Due Date 3, which is, I believe,
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`in December near the holidays.
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` In general, I would commend to counsel for
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`both parties Title 57 of CFR Section 121. That sets
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`out the basic requirements for motions to amend in
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`IPR proceedings. For instance, amendments must
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`respond to a ground of unpatentability that has been
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`instituted in the trial.
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`Page 12
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` We do require a claim listing for each
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`proposed substitute claim. Again, by virtue of the
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`recent revisions to the AIA trial regulation, this
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`claim listing does not count towards your 25 pages.
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`So you have 25 pages for the motion. The claim
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`listing can be in an appendix. It's not counted
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`towards the 25 pages.
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` From what I heard counsel for patent owner
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`indicate, it does sound as if the amendment will be
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`narrowing, which is also required by Section 121.
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`You cannot enlarge the scope of the claims.
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` We also require a reasonable number of
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`proposed substitute claims. The presumption as set
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`forth in Section 121 is that there is one substitute
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`claim for each original claim.
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` A couple of other things: There is a
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`requirement for a written description support for the
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`entirety of any proposed substitute claims that
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`support existing in the original disclosure, and if
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`the proposed new claims, substitute claims, introduce
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`any additional new claim terms, we require the patent
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`owner to provide a proposed claim construction in the
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`motion.
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` Let me cite to you a couple of board
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`decisions that are useful in this regard. The
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`board's most recent decision, I believe, in which a
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`motion to amend was granted at the final written
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`decision is REG Synthetic Fuels v. Neste Oil. That
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`was a decision that came out last month and I will
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`get that precise citation for you momentarily.
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` Also, last fall, we had a case involving
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`Corning Optical v. PPC Broadband, and that order on a
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`motion to amend also set forth some of the mechanics.
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`So the Corning Optical case I'm looking at is IPR
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`2014-00441 and that is at Paper 19.
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` One other point I would like to make before I
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`turn it back to counsel for any questions, you should
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`note that earlier this month, the Federal Circuit
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`Court of Appeals affirmed that the patent owner must
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`show patentability over the prior art of record. So
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`as you're making this motion and you've got your 25
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`pages, the key inquiry will be whether the claims,
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`the original claims or your proposed substitute
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`claims, are shown to be patentable over the prior art
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`of record, and the Federal Circuit stated as much in
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`Microsoft v. Proxyconn. That was an opinion that
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`issued, I believe, on the 16th of June. So I commend
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`that to counsel as well.
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` In addition, per the recent final written
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`decision in the REG Synthetic Fuels case, the board
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`did note that in addition to showing patentability
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`over the prior art of record, the patent owner does
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`retain a duty of candor that requires that it discuss
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`any relevant prior art that's not of record, but
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`known to the patent owner. So I point that out just
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`for your benefit.
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` At this point, let me ask if there are any
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`questions from the patent owner on what has been set
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`forth in the last few moments, the general
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`overarching requirements for this motion to amend
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`that is going to be filed by Due Date 1.
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` MR. EDELMAN: Your Honor, I'm just wondering
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`as far as prior art of record, does that include all
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`of the references that were cited in the original
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`petition or is that limited to those references upon
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`which the board based its decision to grant the
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`petition?
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` JUDGE CHEN: Well, it's the prior art that is
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`before us in this proceeding now. As a practical
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`matter, we have instituted on certain grounds, and
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`those references, I believe at least in the 226 and
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`228, may have comprised the sum total of the
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`references that were submitted by the petition in any
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`event. That may be true for 219 and 222 as well.
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` So what I'm saying is that in this case, I
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`don't think there is any super set of art that was
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`not involved in the institution of at least the 226
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`and 228, and I can go back and check on the 219 and
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`222 as well.
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` Before I go any further, Counsel, let me
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`before I forget give you the cite to the REG
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`Synthetic Fuels final written decision that I speak
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`of, and that is IPR 2014-00192, Paper 48; again, IPR
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`2014-00192, Paper 48.
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` At this point, anything from petitioner's
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`counsel on what's been set forth here?
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` MR. PALYS: Yes, Your Honor. This is Joseph
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`Palys again. Thank you.
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` I just would like some clarification on the
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`last discussion that I just heard in terms of the
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`prior art that a patent owner would have to identify.
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`There's several references, I guess, disclosed in the
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`background of, I believe, the declaration of our
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`expert and possibly in the petition. I apologize. I
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`don't have them in front of me to know that, but I do
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`know that there is other prior art that discloses the
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`state of the art and things of that nature that
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`patent owner is aware of, and as the board may be
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`aware, there was an underlying or there is an
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`underlying litigation. I believe it's stayed, but to
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`the extent there was invalidity contentions in prior
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`art that was identified to patent owner, I would like
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`some guidance, I guess, from the board whether the
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`petitioner -- or the patent owner is going to have to
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`address prior art that it knows about in those
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`avenues.
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` JUDGE CHEN: Yes. I appreciate that.
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` Now, to the extent there are references
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`cited, for instance, invalidity contentions and
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`related to court litigation which may be stayed,
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`again, the key terminology that we go with here is
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`prior art of record before the office. So to the
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`extent there are references that your client has
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`submitted in a District Court case that are not of
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`record for the office in this proceeding, that is not
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`included in the prior art that must be addressed by
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`patent owner on the motion to amend.
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` Now, if it has been addressed, stated by your
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`expert, if it's an exhibit in this proceeding, it is
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`then of record in this proceeding and is subject to
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`the analysis on the motion to amend.
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` MR. PALYS: Your Honor --
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` JUDGE CHEN: What I'm trying to make clear is
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`to the extent there may be invalidity contentions
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`with other references in a District Court that have
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`not been set forth by your client in any of these
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`four IPRs, that's not part of the set of prior art
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`that we require the patent owner to address in the
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`motion to amend.
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` MR. PALYS: Thank you, Your Honor. I have
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`one more question if I may.
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` JUDGE CHEN: Sure.
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` MR. PALYS: Thank you. Earlier, I heard
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`counsel for patent owner identify all four of the IPR
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`proceedings, and that's the 219, 222, 226, and 228
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`matter that they were intending to file an amendment
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`on. In his E-mail to the board, however, he only
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`identified three of the matters.
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` I just wanted clarification or would like
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`clarification whether all four matters are going to
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`be subject to an amendment or just the three that
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`counsel has identified in their E-mail to the board.
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` JUDGE CHEN: That's a fair question. So let
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`me turn that over to counsel for patent owner,
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`because as this call has been going on, I remembered
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`back to the E-mail from last week.
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` So, counsel for patent owner, please clarify
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`whether it will be a motion to amend filed in all
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`four of the pending IPRs or just three.
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` MR. EDELMAN: To the extent there are
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`different independent claims at issue in two of the
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`IPRs dealing with the 352 patent, for now, I will say
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`that we'd be filing an amendment in each one of those
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`pending IPR actions separately.
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` JUDGE CHEN: All right. Counsel for
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`petitioner, does that respond to your inquiry?
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` MR. PALYS: Yes. As I understand it, all
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`four matters will be subject to amendment.
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` MR. EDELMAN: Your Honor --
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` JUDGE CHEN: Yes. Please go ahead, Counsel.
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` MR. EDELMAN: And forgive me. My question is
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`based on my lack of experience in this matter, but we
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`will be filing a motion in the matter up to the 25
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`pages of brief in support. We'll also be filing a
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`patent owner's statement.
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` It appears there will be a lot of overlap.
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`I'm just wondering how the board would like us to use
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`the pages we have in the response. How does that
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`differ, really, from support of the amendment?
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` JUDGE CHEN: Yes. Thank you, Counsel.
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` Keep in mind your response is a response to
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`the petition. Remember that the petition was filed
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`and then you, as counsel for patent owner, filed what
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`we call a preliminary response, and the board
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`reviewed the preliminary response in light of the
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`petition in order to institute.
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` Now that we have instituted on the four IPRs,
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`patent owner has an additional opportunity to respond
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`to the petition, and so that response really focuses
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`on the assertions in the petition and the references
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`cited in that petition against your original claims
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`in your patents that are issue in these four IPRs.
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` So the response focuses on the content and
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`language of your original claims. You are also
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`permitted to file an expert declaration to support
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`that response. So you should keep in mind that,
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`substantively, there is a distinction between what is
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`sought in that response versus what is sought in the
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`motion to amend.
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` The motion to amend is going to focus, I
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`would suspect, on what you indicated earlier in this
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`call. I think you alluded to further defining some
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`terms and independent claims, perhaps moving
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`limitations from the dependent claims to the
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`independent claims.
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` So the motion to amend will be 25 pages for
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`you to address the patentability of these amended
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`claims over the prior art of record; whereas, your
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`response will be focused on the petition itself and
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`the language of the original claim.
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` MR. EDELMAN: Thank you for that explanation,
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`Your Honor.
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` JUDGE CHEN: Okay. With that, let me ask if
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`there are any additional questions from counsel for
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`patent owner at this time.
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` MR. EDELMAN: No, Your Honor.
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` JUDGE CHEN: Any additional questions or
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`comments from counsel for petitioner?
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` MR. PALYS: No, Your Honor.
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` JUDGE CHEN: All right. So I'm going to do
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`this: I'm going to ask counsel to please stay on the
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`line. I'm going to mute my line and confer very
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`briefly with Judge DeFranco and we'll be back. So
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`please stay on the line and we'll be back shortly.
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` Thank you.
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` [Pause.]
`
` JUDGE CHEN: This is Judge Chen. Judge
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`DeFranco and I are back on the line.
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` We appreciate the information from the
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`parties on this telephone call. A written order on
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`Page 22
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`this call will be issued shortly, in the next day or
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`so. I ask again that the court reporter please file
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`promptly the transcript of this call and also for
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`patent owner to notify the board as soon as practical
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`once the transition to new IPR counsel is effected.
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` With that, any other final questions or
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`comments from patent owner?
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` MR. EDELMAN: No, Your Honor.
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` JUDGE CHEN: Any more from counsel for
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`petitioner?
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` MR. PALYS: No, Your Honor. Just to clarify,
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`though, we will probably be the ones filing the
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`transcript. We'll get it from the court reporter and
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`submit it as an exhibit.
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` JUDGE CHEN: Yes. Right. I appreciate that.
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`Thank you very much.
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` With that, thanks again, and this call is
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`adjourned.
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` [Whereupon, at 1:30 p.m., the matter was
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`adjourned.]
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`CERTIFICATE OF NOTARY PUBLIC
`
`I, CATHERINE B. CRUMP,
`
`the officer before
`
`whom the foregoing deposition was taken, do hereby
`
`testify that the witness whose testimony appears in the
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`foregoing deposition was duly sworn by me;
`
`that the
`
`testimony of said witness was taken by me
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`stenographically and thereafter reduced to typewriting
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`under my direction;
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`that said deposition is a true
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`record of the testimony given by said witness:
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`that
`
`I am
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`neither counsel for, related to, nor employed by any of
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`the parties to the action in which this deposition was
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`taken; and further,
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`that
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`I
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`am not a relative or employee
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`of any attorney or counsel employed by the parties
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`hereto nor financially or otherwise interested in the
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`outcome of the action.
`
`CATHERINE B. CRUMP
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`Notary Public in and for the
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`Commonwealth of Virginia
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`Notary Registration No. 252644
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`My Commission Expires: May 3l, 2017
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`Page 23 of 23
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`Page 23 of 23
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