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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`Case No. IPR2015-00632
`U.S. Patent No. 8,727,773 B2
`________________________________________
`US ENDODONTICS, LLC,
` Petitioner,
` v.
`GOLD STANDARD INSTRUMENTS, LLC,
` Patent Owner.
`________________________________________
`
` Teleconference
` New York, New York
`
` May 20, 2015
` 11:00 a.m.
`
` Transcript of Proceedings
`
`
`
`
`
`(212) 279-9424
`
`VERITEXT LEGAL SOLUTIONS
`www.veritext.com
`
`(212) 490-3430
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`1 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`Case No. IPR2015-00632
`U.S. Patent No. 8,727,773 B2
`________________________________________
`US ENDODONTICS, LLC,
` Petitioner,
` v.
`GOLD STANDARD INSTRUMENTS, LLC,
` Patent Owner.
`________________________________________
`
` Teleconference
` New York, New York
`
` May 20, 2015
` 11:00 a.m.
`
` Transcript of Proceedings
`
`
`
`
`
`(212) 279-9424
`
`VERITEXT LEGAL SOLUTIONS
`www.veritext.com
`
`(212) 490-3430
`
`1 of 35
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`IPR2015-00632 - Ex. 1028
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`A P P E A R A N C E S:
`
`Presiding:
` The Honorable JOSIAH COCKS,
` Administrative Law Judge
`
`Attorneys for US ENDODONTICS, LLC:
` JEFFREY S. GINSBERG, ESQ.
` Kenyon & Kenyon, LLP
` One Broadway
` New York, New York 1004-1007
`
`Attorneys for GOLD STANDARD INSTRUMENTS,
`LLC:
` STEVEN LIEBERMAN, ESQ.
` JOSEPH A. HUNDS, ESQ.
` ELIZABETH BRENNER-LEIFER
` Rothwell Figg Ernst & Manbeck PC
` 607 14th Street NW
` Suite 800
` Washington, DC 20005-2005
`
`ALSO PRESENT:
`JUDGE TIMOTHY GOODSON
`JUDGE HYUN JUNG
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` HON. COCKS: Hi, this is Judge
` Cocks and on the call is Judges
` Goodson and Jung. Let's do a roll
` call. Who else is here starting with
` the Petitioner? Do we have counsel
` for the Petitioner? All right. Do we
` have counsel for the Patent Owner?
` MR. LIEBERMAN: We do. This is
` Steve Lieberman from Rothwell, Figg,
` Ernst. With me are lead counsel,
` Joseph Hynds and back-up lead counsel,
` Elizabeth Brenner-Leifer.
` HON. COCKS: Thank you, Mr.
` Lieberman.
` THE COURT REPORTER: And also,
` Judge, this is Lisa Sansone, the court
` reporter from Veritext.
` HON. COCKS: All right. Thank
` you.
` MR. GINSBERG: Hi, everyone.
` This is Jeff Ginsberg of Kenyon &
` Kenyon for the Petitioner joining the
` call.
` HON. COCKS: All right. Good
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` -Proceeding-
` morning, Mr. Ginsberg. This is Judge
` Cocks. We have on the call Judges
` Goodson and Judge Jung. And we also
` have counsel for the Patent Owner. If
` you could please introduce yourself
` again?
` MR. GINSBERG: Yes, this is Jeff
` Ginsberg of Kenyon & Kenyon.
` HON. COCKS: I am sorry. I
` meant counsel for the Patent Owner. I
` apologize.
` MR. LIEBERMAN: Steve Lieberman,
` Joe Hynds and Elizabeth
` Brenner-Leifer.
` HON. COCKS: And, Mr. Lieberman,
` will you be representing the Patent
` Owner today on this call?
` MR. LIEBERMAN: I will, Your
` Honor.
` HON. COCKS: I believe you have
` a have motion for pro hac vice
` admission; is that correct?
` MR. LIEBERMAN: That's correct.
` It was filed on February 20, 2015,
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` that as far as we know has not been
` acted on.
` HON. COCKS: Yes, we are aware
` that yet has not been acted on.
` Mr. Ginsberg, do you have any
` objection to Mr. Lieberman speaking on
` the call today?
` MR. GINSBERG: I do not.
` HON. COCKS: Okay. All right.
` Well, we received two e-mails from the
` Petitioner. The first requesting a
` motion to alter or add two real
` parties-in-interest and the second,
` involving some objection to the
` exhibits. Mr. Ginsberg, can you
` perhaps fill us in on the background
` of the e-mail?
` MR. GINSBERG: Yes, Your Honor.
` And if I may, I did arrange for a
` court reporter to be on the call. And
` I just would inquire, is there a court
` reporter on the call?
` THE COURT REPORTER: Yes. It is
` Lisa Sansone from Veritext.
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` MR. GINSBERG: Thank you very
` much.
` HON. COCKS: And just as a
` reminder, once a transcript of this
` call becomes available, please file it
` using your next available exhibit, Mr.
` Ginsberg.
` MR. GINSBERG: We will, Your
` Honor.
` HON. COCKS: Thank you. All
` right. Proceed, go ahead.
` MR. GINSBERG: So in Patent
` Owner's preliminary response to
` Petitioner's request for inter partes
` review of the 773 patent, the Patent
` Owner asserts that none of the grounds
` should be instituted since the
` Petitioner allegedly failed to
` identify all real parties-in-interest.
` Specifically, the Patent Owner alleges
` that End Endo and Guidance Endo should
` have been named as real parties in
` interest. They continue on page 55 of
` their paper, the Patent Owner alleges
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` that Petitioner seems to evade the
` time bar and estoppel provisions of 35
` U.S.C. 315(b) and (e) by not
` identifying End Endo and Guidance
` Endo.
` Now, Petitioners dispute that
` either End Endo or Guidance Endo are
` real parties-in-interest. Neither End
` Endo nor Guidance exercise control or
` could have exercised control over US
` Endo's participation in the procedure.
` They are separate entities that had no
` involvement in the preparation and
` filing of the petition.
` With that said, to avoid having
` this issue take up any unnecessary
` time and expense, the Petitioner seeks
` permission to add those two entities
` to the proceeding. This would fulfill
` the goals of 37 CFR 42.1(b) to have a
` just, inexpensive result here.
` Now, Petitioner's request is
` being made less than one year before
` the related district court litigation
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` was filed so that there is no time
` bar. And Petitioner maintains that
` there would be no prejudice to Patent
` Owner in permitting the Petitioner to
` add End Endo and Guidance to the
` proceeding. Accordingly, we request
` the Board's permission to do so.
` HON. COCKS: Okay. Thank you,
` Mr. Ginsberg. Let me ask when were
` you served with respect to that
` pending litigation?
` MR. GINSBERG: I believe it was
` June 24, 2014.
` HON. COCKS: Okay, thank you.
` Now, Mr. Lieberman, I guess I
` gather from the e-mail that you object
` or would oppose this motion; is that
` correct?
` MR. LIEBERMAN: That is correct,
` Your Honor.
` HON. COCKS: If I just
` understood correctly and I think I
` did, there's no 315(b) bar issued at
` this time, although it sounds like in
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` the preliminary response that that was
` one of the issues raised. Can you
` give me a little explanation about the
` nature of the objection?
` MR. LIEBERMAN: Of course, Your
` Honor. Just to give a very brief
` amount of background, US Endo filed
` this IPR petition on January 30th of
` 2015. About two weeks after that,
` they had asked to correct the
` mandatory disclosures by adding two
` IPRs. We didn't object to that. So
` they already had one shot at naming
` the correct real parties-in-interest.
` I'm sorry, two shots, their initial
` filing and then when they asked leave
` to correct the mandatory disclosures.
` We believe that the real
` parties-in-interest that were named
` were still deficient. There's a
` fellow named Chuck Goodess who the
` record shows owns 70 percent of US
` Endo and we believe the record
` supports the conclusion that he owns
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` End Endo and Guidance, both of the
` entities we believe should have been
` named as real parties-in-interest.
` End Endo, by the way, is the entity
` that the allegedly infringing product
` is made for by US Endo and they then
` sell the product to the public.
` Here is how we would submit the
` analysis should it go. Under Rule
` 42.106(b), if there's an incomplete
` petition including a failure to name
` all of the real parties-in-interest,
` the petition should be dismissed if
` it's not corrected within one month.
` There is, however, a provision for
` excusing late action and that is Rule
` 42.5 C3, but in order to excuse a late
` action, the Board must find that
` there's been a showing of good cause
` by the Petitioner, or the Board has to
` issue a decision that consideration on
` the merits would be in the interest of
` justice.
` So those are the two
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` requirements, alternative requirements
` for allowing a late action. Here we
` would submit number one, they have
` made no showing of good cause and made
` no showing of cause at all as to why
` they didn't name these individuals in
` their initial submission and why they
` didn't name them on February 13th when
` they asked leave to correct their
` mandatory disclosures.
` And the policies that underlie
` the rules regarding naming a real
` party in interest strongly militate
` against allowing this further
` amendment. Here is why. If a
` Petitioner were permitted to simply
` wait until a Patent Owner's
` preliminary response challenge is met
` with the initial real party in
` interest and then add any real
` parties-in-interest that are named in
` the Patent Owner's preliminary
` response, that is going to encourage
` either A, concealment or B sloppiness.
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` That is if you get a free shot at not
` naming the real parties-in-interest
` without any consequences, what is
` going to happen is I would submit,
` Petitioners will be motivated to
` identify the real parties-in-interest
` only with the most crabbed and
` conservative approach knowing that
` they get a free pass because if they
` are challenged in the Patent Owner's
` preliminary response, they can just
` fix it.
` We don't believe that that is
` consistent with the policy's
` underlying rules. This Board's
` decisions in the past have made very
` clear that there's a strong
` responsibility on counsel to name the
` real parties-in-interest correctly.
` Here we believe that was not done and,
` therefore, will be asking as to the
` following:
` Number one, that the Petitioner
` be required to make a written
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` submission showing good cause as to
` why their late action should be
` excused.
` Number two, once they make that
` submission that we be entitled a very
` limited focused discovery on that
` issue and specifically what we would
` ask for is they seem to be denying
` that these two entities are properly
` identified as real
` parties-in-interest. We would ask for
` an equivalent to Rule 30(b)(6)
` deposition of each of the two parties.
` I would say the deposition would be
` probably no more than two to three
` hours per entity and my guess is they
` would probably put up the same
` individual for each of the two. So
` you are probably talking about one
` deposition. We would then respond to
` their submission as to whether or not
` they show good cause and the panel
` could rule on the question of whether
` they have met the requirement of Rule
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` 42.5 C3. So that is what we are
` requesting.
` HON. COCKS: I want to hear from
` Mr. Ginsberg as to his thoughts, but I
` guess I'm a little -- just to clarify,
` the Petitioner is seeking a motion to
` add -- that is part of what the call,
` they are seeking leave to file a
` motion to add the two parties and it
` sounds like you are going to oppose
` and would you file an opposition to
` that motion, aside from these other
` requests that seem to be getting a
` little bit ahead of ourselves?
` MR. LIEBERMAN: If what they are
` seeking is leave to file a motion so
` they could establish good cause as to
` why their late action should be
` excused, then we don't have a problem
` with them filing that motion so long
` as we get a chance to adequately
` explore the assertions that they are
` making for the two depositions I
` articulated and put in a response to
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` that. But we submit that they need to
` show good cause in order to add these
` two additional entities as real
` parties-in-interest.
` HON. COCKS: Okay.
` Mr. Ginsberg, do you have any
` thoughts?
` MR. GINSBERG: Your Honor, what
` Mr. Lieberman is not identifying is
` what is the prejudice here. We can
` identify these two entities now. They
` are saying that in their papers the
` Patent Owner states that the
` Petitioner is seeking to evade the
` time bar and estoppel provisions of
` sections 315(b) and (e) by not
` identifying End Endo and Guidance to
` Patent Owner's substantial prejudice.
` Now, neither End Endo or
` Guidance Endo makes the accused
` products that are at issue. They sell
` the products. These are process
` patents. We do maintain that they are
` separate entities. They do have -- We
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` did identify Charles Goodess as one of
` the Petitioners. Now he does own End
` Endo and he owns a percentage of US
` Endo, but they are separate entities.
` And our point is this is just
` creating unnecessary time and expense.
` Mr. Lieberman does not deny that there
` is no time bar here. If we are forced
` to file a new petition, we will do
` that. With that said, what purpose
` does that serve? Here we could simply
` add these two parties. We maintain
` that they are not real
` parties-in-interest but to avoid any
` issue, to avoid the unnecessary time
` and expense to go through the
` discovery, the precise discovery that
` Mr. Lieberman is saying he wants, it's
` just creating unnecessary time and
` expense to the parties. This could
` all be avoided if we simply can just
` add End Endo and Guidance Endo to the
` proceeding.
` MR. LIEBERMAN: Your Honor,
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` -Proceeding-
` might I respond?
` HON. COCKS: Yes.
` MR. LIEBERMAN: The prejudice
` falls into three categories. The
` first is prejudice to the entire
` system. That is what Mr. Ginsberg is
` asking for is a rule that Petitioners
` get not just one but two free passes.
` They don't have to name the real
` parties-in-interest with accuracy and
` completeness because if that is
` challenged, all they have to do is
` move for leave to amend to add them
` after the Patent Owner's preliminary
` response. And I have articulated why
` that is a problem because it
` encourages carelessness, sloppiness
` and it would be a motivation for
` counsel to be more crabbed in their
` analysis as to who the real
` parties-in-interest are.
` There's also substantial
` prejudice that results not just to the
` system but to the Patent Owners in
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` that circumstance. And here there's a
` specific prejudice. Patent Owners are
` forced when there isn't a proper and
` complete identification of real
` parties-in-interest to raise that
` issue and brief that issue and use
` their very precious pages in dealing
` with that issue. It would be, for
` example, here we had to use four or
` five pages to deal with this issue.
` Now, we didn't particularly have
` a page problem because we thought that
` the rest of our submission was
` sufficiently succinct, but in most
` cases as Your Honor knows, the Patent
` Owners go right up to the limit. The
` page limits are tight. And if Mr.
` Ginsberg's rule were adopted what you
` would have is you would have a
` situation where a Petitioner would
` cause a Patent Owner to use in every
` case the least pages on issues that
` they could then just fix after the
` Patent Owner's preliminary response
`
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`18 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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`
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`Page 19
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` goes in.
` So I would submit that you are
` both specific and systematic prejudice
` if you adopt a rule that Mr. Ginsberg
` has proposed.
` MR. GINSBERG: Your Honor, if I
` may?
` HON. COCKS: Just a minute, Mr.
` Ginsberg.
` MR. GINSBERG: I'm sorry, Your
` Honor.
` HON. COCKS: One question to Mr.
` Lieberman. You say specific
` prejudice, but it sounds like all of
` your items are really a general
` prejudice. Is there any specific
` prejudice regarding the Patent Owner
` in this case --
` MR. LIEBERMAN: Yes.
` HON. COCKS: -- or is it more of
` a general nature?
` MR. LIEBERMAN: No, there's
` specific prejudice here. We had to do
` the work and spend the money, the
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`19 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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` resources to prepare the argument
` which we think is very, very
` important. We think it's really
` critical because one of the two
` entities that we are talking about
` here is the entity that is actually
` selling the product. So, the scope of
` estoppel is critical here, but we had
` to spend the money and the time to do
` that work and it was not in
` substantial. This is not a throwaway
` argument as you can see from the fact
` that Mr. Ginsberg is seeking to try to
` take it off the table. You understand
` that there's some issues here?
` HON. COCKS: Okay, thank you.
` Mr. Ginsberg, I will hear from
` you briefly and then the Panel will
` confer on the call just to discuss
` while the parties are still here.
` Actually, before we do that, Mr.
` Ginsberg, you can have a few words and
` if you can raise the issues of the
` exhibits, the second e-mail and we
`
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`20 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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` will consider that as well whatever
` you are requesting but go ahead.
` MR. GINSBERG: Thank you, Your
` Honor. Petitioner does dispute that
` Patent Owner has experienced any
` prejudice. As Mr. Lieberman concedes,
` there was no page limit issue here.
` They address this issue in a few
` pages. The amount of work compared to
` they filed a district court litigation
` against the Petitioner where they have
` spent substantial time, money and
` effort in trying to enforce this
` patent that we believe is -- has many
` issues. And we maintain that there is
` no general prejudice to or no specific
` prejudice to the Patent Owner.
` There's no time bar. If we are
` forced to, we will submit a new
` petition, but that I do not think will
` serve the purposes of the Code of
` Federal Regulations that seeks to have
` just, speedy and inexpensive
` resolution of the dispute.
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`21 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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`Page 22
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` With that, I can move to the
` next issue and that pertains to our
` request concerning the issues that we
` have with the Patent Owner's
` preliminary response where they do
` cite to the voluminous record that has
` been established in connection with
` the preliminary injunction motion that
` they filed. Now, what they have done
` in their responsive paper is that they
` cite to just select portions of the
` transcript. Many of the pages are
` submitted by the inventor himself who
` they have used as the expert, their
` validity expert in their case and they
` cite to select passages but not
` providing the complete context of the
` statements and do not cite to passages
` of the transcript that contradict the
` propositions that they are citing.
` And the rules provide they do
` follow the Board's rules, you follow
` the Federal Rules of Evidence here and
` we submit that the full transcripts --
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`22 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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`Page 23
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` they should replace the exhibits that
` they have cited with full copies of
` the transcript so that the Board can
` consider the same.
` HON. COCKS: Let me ask, Mr.
` Ginsberg, do you have currently the
` full copies of what you are asking the
` Patent Owner to submit into the
` record?
` MR. GINSBERG: Yes, we do have
` the full copies of the transcript,
` both parties do.
` HON. COCKS: Okay. Mr.
` Lieberman, do you have some thoughts?
` MR. LIEBERMAN: I do.
` MR. COCKS: Thank you.
` MR. LIEBERMAN: And I will deal
` with them very succinctly. First,
` there's a procedural problem here
` which is Mr. Ginsberg raised this
` issue with the Board without raising
` it with us. He never asked us whether
` we would be willing to submit complete
` copies of exhibits. He never
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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`Page 24
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` identified any specific exhibits that
` he thought was incomplete. He never
` told us what additional pages he
` thought should have been submitted or
` why. He simply sent the e-mail to Mr.
` Baker, the trial paralegal. So I
` think the request is premature and
` there's a procedural issue.
` Number two, we submitted a total
` of 185 exhibits. If we did not
` exercise discretion in what we
` submitted what would have been
` attached is about 1,200 pages. I
` don't think the Board wants to again
` set a precedent that full copies of
` any exhibits should be submitted to
` the Board because you will find
` yourself buried in paper. Any judge I
` have ever practiced in front of wants
` you to submit the relevant pages.
` Now, certainly if there is
` something that Mr. Ginsberg can show
` and they can show to us that there's
` some particular page that should have
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`24 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
`
`
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`Page 25
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` been submitted that wasn't, we are not
` going to have an objection to dealing
` with that, but he didn't do that. He
` came right to the Board and said full
` copies of all the exhibits without any
` explanation.
` Rule 106 of the Federal Rules of
` Evidence is very clear on submitting
` the remainder of or related writings
` or recorded statements. In order for
` the remainder of a writing or recorded
` statement to be submitted, to be
` required to be submitted, the language
` is, it ought in fairness to be
` considered contemporaneous with it.
` There has to be such a showing. Mr.
` Ginsberg has not made a showing. He
` hasn't even identified the exhibits
` that he's talking about.
` With that being said, if the
` Panel wants to have 1,200 pages, I'm
` happy to dump 1,200 pages on the
` Panel. We tried to make it easier for
` the Panel as we do whenever we make
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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`Page 26
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` submissions by submitting the relevant
` portions. So whatever the Panel
` wants, we are fine with, but again, I
` would submit there's a preliminary
` procedural problem and Mr. Ginsberg
` did not even bother to raise this
` issue.
` HON. COCKS: Okay, thank you.
` Two points. Generally the best
` approach and we not only encourage but
` ask that the parties before contacting
` the Board with an issue get together
` and see if they can resolve it without
` Board involvement, that is just a
` practical matter of efficiency.
` The second point, Mr. Ginsberg,
` I can tell you the Panel is not going
` to sought through exhibits on their
` own that aren't part of a response.
` So what is the real issue here?
` MR. GINSBERG: There are several
` arguments that the Patent Owner has
` made in connection with their response
` where they cite to the transcript
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`26 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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`Page 27
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` pages for certain propositions which
` are directly contradicted by other
` passages that they did not cite. So
` we can specifically identify those.
` Federal Rules of Evidence 106 provides
` that "if a party introduces all or
` part of a writing or recorded
` statement, an adverse party may
` require the introduction, at that
` time, of any other part that in
` fairness should be considered."
` So, my concern is we can
` identify specifically these passages
` to the Patent Owner and then Mr.
` Lieberman presumably will make a
` subjective determination whether or
` not he thinks in fairness they should
` be submitted and we are going to be
` back before the Board.
` We did put this e-mail to the
` Board because we knew we were having
` the call today. Mr. Lieberman never
` contacted me, did not say all right,
` let's identify which specific passages
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`27 of 35
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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` you would like to discuss. We are
` happy to do that with him and we have
` those passages because there are
` numerous statements in there where
` they selectively put in transcript
` pages without identifying the other
` pages that they are aware of that
` contradict the statements that they
` have advanced.
` HON. COCKS: So help me
` understand at this point, simply
` inserting the exhibits or the portions
` of the exhibits that you are seeking
` into the record, what good is that
` going to be for the Panel at this
` point? Are you asking for some sort
` of response to the preliminary
` response so that you can identify what
` you consider to be inconsistences?
` MR. GINSBERG: I guess as an
` initial matter we would like the
` record to be complete. If they are
` citing certain passages from the
` transcript to support a proposition,
`
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`IPR2015-00632 - Ex. 1028
`US ENDODONTICS, LLC., Petitioner
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` we would like the pages that also
` relate to those issues to be part of
` the record for the Board's
` consideration.
` HON. COCKS: Okay, I think we
` have heard both sides. I'm going to
` confer with the Panel, if the parties
` would please remain on the line. I'm
` going to put you on mute. It should
` be a few minutes. Is that understood?
` MR. GINSBERG: Thank you, Your
` Honor.
` MR. LIEBERMAN: Thank you, Your
` Honor.
` HON. COCKS: Okay. Thank you.
` Putting you on mute. Thank you.
` (There was a pause in the
` proceeding.)
` HON. COCKS: Again, I am back
` with the Panel. Do I still have
` everybody with me? Mr. Ginsberg?
` MR. GINSBERG: I am here.
` HON. COCKS: Mr
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