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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` - - -
` CISCO SYSTEMS, INC., CIENA CORPORATION, CORIANT
`OPERATIONS, INC., CORIANT (USA), INC., and FUJITSU
` NETWORK COMMUNICATIONS, INC.,
` Petitioners
` v.
` CAPELLA PHOTONICS, INC.
` Patent Owner
` CASE NO. IPR2014-01166 (merged with IPR2015-00816)
` CASE NO. IPR2014-01276 (merged with IPR2015-00894)
`
` - and -
`
` FUJITSU NETWORK COMMUNICATIONS, INC.,
` Petitioner
` v.
` CAPELLA PHOTONICS, INC.
` Patent Owner
`
` CASE NO. IPR2015-00726
` CASE NO. IPR2015-00727
` - - -
` Wednesday, September 23, 2015
` 3:00 p.m.
`
` - - -
`
` TELECONFERENCE IN THE ABOVE MATTER
`
` BEFORE: JAMES A. TARTAL
` JOSIAH C. COCKS
` KALYAN K. DESHPANDE
` Administrative Patent Judges
` - - -
`
` VERITEXT NATIONAL COURT REPORTING COMPANY
` MID-ATLANTIC REGION
` 1250 Eye Street, NW, Suite 1201
` Washington, DC 20005
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`Capella 2009
`Fujitsu v. Capella
`IPR2015-00727
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`

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`1 APPEARANCES:
`2
`
` COOLEY, LLP
`3 BY: WAYNE STACY, ESQUIRE
` 380 Interlocken Crescent, Suite 900
`4 Broomfield, CO 80021-8023
` 720-566-4125
`5 wstacy@cooley.com
` Representing the Petitioner Cisco Systems,
`6 Inc.
`7
`
` LATHAM & WATKINS, LLP
`8 BY: CHI CHEUNG, ESQUIRE
` BOB STEINBERG, ESQUIRE
`9 355 South Grand Avenue
` Los Angeles, CA 90071-1560
`10 213-891-8989
` chi.cheung@lw.com
`11 bob.steinberg@lw.com
` Representing the Petitioner Ciena
`12 Corporation
`13
`
` BANNER WITCOFF, LTD.
`14 BY: J. PIETER VAN ES, ESQUIRE
` MICHAEL S. CUVIELLO, ESQUIRE
`15 Ten South Wacker Drive, Suite 3000
` Chicago, IL 60606-7407
`16 312-463-5000
` pvanes@bannerwitcoff.com
`17 Representing the Petitioner Coriant
` Operations, Inc., and Coriant (USA), Inc.
`
`18
`19 MILBANK, TWEED, HADLEY & McCLOY, LLP
` BY: NATHANIEL BROWAND, ESQUIRE
`20 CHRISTOPHER CHALSEN, ESQUIRE
` 28 Liberty Street
`21 New York, NY 10005
` 212-530-5380
`22 nbrowand@milbank.com
` cchalsen@milbank.com
`23 Representing the Petitioner Fujitsu Network
` Communications, Inc.
`
`24
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`1 APPEARANCES: (Continued)
`2
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` STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`3 BY: ROBERT GREENE STERNE, ESQUIRE
` NICHOLAS J. NOWAK, ESQUIRE
`4 1100 New York Avenue, N.W.
` Washington, D.C. 20005-3934
`5 202-371-2600
` rsterne@skgf.com
`6 nnowak@skgf.com
` Representing the Patent Owner
`
`Page 2
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`Page 4
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`1 JUDGE TARTAL: Good afternoon. This
`2 is Judge Tartal. With me are Judges Cocks and
`3 Deshpande.
`4 This call is in regard to a series of
`5 inter partes review cases: IPR2014-01166,
`6 IPR2015-00726, IPR2014-01276, and IPR2015-00727.
`7 Can counsel for Patent Owner please
`8 identify yourself?
`9 MR. STERNE: Good afternoon, Judge
`10 Tartal. This is Robert Sterne from Sterne Kessler
`11 on for the Patent Owner, and with me is my
`12 colleague, Nick Nowak, who is on with me today.
`13 JUDGE TARTAL: Thank you. And have
`14 you provided a court reporter for today's call?
`15 MR. STERNE: Yes, Your Honor, we
`16 have. Her name is Susan. She's on the line now.
`17 She has everyone's name from counsel side and we
`18 will have a transcript available to the Board and to
`19 everyone else by Friday, if that would be
`20 sufficient.
`21 JUDGE TARTAL: Yes, and that will be
`22 entered. Thank you. Thank you for providing the
`23 transcript.
`24 Beginning with the 2014-01166
`25 proceeding, who do we have on for Petitioner?
`
`Page 3
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`Page 5
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`1 MR. STACY: This is Wayne Stacy for
`2 Cisco.
`3 JUDGE TARTAL: And do we have anybody
`4 else on the call in regard to the 01166 case?
`5 MR. BROWAND: Yes. This is Nathaniel
`6 Browand on behalf of Fujitsu Network Communications,
`7 and with me is Christopher Chalsen.
`8 JUDGE TARTAL: Thank you.
`9 In regards to -- I'm sorry.
`10 MR. van ES: Your Honor, this is
`11 Pieter van Es on behalf of the Coriant entities, and
`12 with me also on the phone is Mike Cuviello from my
`13 law firm as well.
`14 MR. CHEUNG: And this is Chi Cheung
`15 of Latham & Watkins and with me is Bob Steinberg for
`16 Ciena.
`17 JUDGE TARTAL: And for the Case
`18 2015-00726, who do we have for Petitioner?
`19 MR. BROWAND: Again, Your Honor, it's
`20 Nathaniel Browand and Christopher Chalsen on behalf
`21 of Petitioner Fujitsu Network Communications.
`22 JUDGE TARTAL: Okay. Thank you.
`23 And I believe it would be the same
`24 counsel, but to confirm, is there anyone else on the
`25 call for either the IPR2014-01276 or the
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`1 IPR2015-00727 for any of the parties?
`2 - - -
`3 (No response.)
`4 - - -
`5 JUDGE TARTAL: Okay. Then I believe
`6 Patent Owner requested the call and so we will begin
`7 by turning it over to Patent Owner to address the
`8 issue they have of concern.
`9 MR. STERNE: Good afternoon, Your
`10 Honors, and may it please the Board, this is Robert
`11 Sterne again, and thank you very much, Your Honors,
`12 for making yourselves available for this call.
`13 Patent Owner Capella seeks
`14 authorization to file motions to compel routine
`15 discovery related to inconsistencies between known
`16 facts and the real party in interest statements made
`17 by Cisco, Ciena, Coriant, and Fujitsu in their
`18 respective petitions.
`19 In this motion, which we seek
`20 authorization to file, Capella will ask the Board to
`21 compel routine discovery -- I repeat, routine
`22 discovery -- from Petitioners proving or disproving
`23 at least three things:
`24 Number one, whether JDS Uniphase, the
`25 supplier of the alleged infringing devices that are
`Page 7
`
`1 at issue in the related District Court litigation,
`2 is obligated to indemnify Petitioners for
`3 infringement; and, if so, whether such obligations
`4 provide JDS Uniphase with an opportunity to fund
`5 and/or control the petitions or the defense of the
`6 litigation.
`7 The second point is whether JDS
`8 Uniphase supplied at least two primary prior art
`9 references -- specifically, Your Honors, the
`10 Bouevitch and Smith references, which are patents --
`11 to Petitioners in an effort to control the grounds
`12 of unpatentability set forth in the petitions.
`13 And, three, whether, as a result of
`14 agreeing in the District Court litigation to be
`15 bound by the estoppels applicable to Cisco's
`16 petitions, Ciena, Coriant, and Fujitsu helped to
`17 fund or control the Cisco petitions.
`18 Now, Your Honor, after meeting and
`19 conferring, Petitioners have denied Capella routine
`20 discovery into these issues and, rather, assert that
`21 such discovery comes too late and/or constitutes
`22 additional discovery.
`23 But in its motion Capella intends to
`24 show the Board that the requested discovery is, in
`25 fact, routine discovery and that Capella has been
`
`Page 8
`
`1 diligent in seeking it.
`2 Your Honors, I understand that we're
`3 not here to argue the merits of the motion and only
`4 to seek authorization to file, but if you would
`5 like, I can go into the facts around each of these
`6 three bodies of evidence, if you would like.
`7 JUDGE TARTAL: Thank you, counsel.
`8 First I would like to just clarify, are you no
`9 longer including in your request any requests for
`10 additional discovery?
`11 MR. STERNE: That's correct. We are
`12 seeking routine discovery.
`13 JUDGE TARTAL: And --
`14 MR. STERNE: Your Honors, our
`15 position, as I can explain now and also in the
`16 motion, is that we are of the view that this is
`17 routine discovery. If the Board wants us to address
`18 whether this would constitute additional discovery,
`19 we definitely believe we've complied with the Garmin
`20 factors and we can show that in our motion as well.
`21 JUDGE TARTAL: Well, I think it's for
`22 the party to determine whether they're requesting
`23 routine or additional discovery or both, and so I
`24 will leave that to your discretion as to how you
`25 would address it.
`
`Page 9
`
`1 But on the routine discovery, can you
`2 briefly address what the basis is for your request
`3 in light of what the requirements are for routine
`4 discovery, and in particular what it is that you
`5 contend supports the belief that there is
`6 information in regards to inconsistent statements
`7 that has not been disclosed?
`8 MR. STERNE: Yes, Your Honor, and it
`9 falls into three categories, and I'd like to briefly
`10 walk through that.
`11 Again, our position is that it's
`12 routine discovery because Petitioners' real party in
`13 interest statements are inconsistent with the
`14 following facts.
`15 Let's look at indemnification first.
`16 JDS Uniphase sold each of the Petitioners the
`17 devices they are accused of infringing in the
`18 District Court litigation. Now, as a result, under
`19 California Commercial Code Provision 2312 Subsection
`20 3, JDS Uniphase is obligated to indemnify
`21 Petitioners for patent infringement. And if not
`22 under the California Commercial Code, we contend, it
`23 is highly likely that JDSU is obligated, instead, to
`24 indemnify Petitioners under an express sales
`25 agreement, as is typically customary in the
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`1 industry.
`2 While we understand that an
`3 obligation to indemnify without more is not
`4 dispositive with respect to whether the indemnitor
`5 exercises or could exercise control under the IPR
`6 proceedings, the determination of whether a party is
`7 a real party in interest is a fact-dependent
`8 inquiry, as the Board well knows, and under certain
`9 circumstances has recognized indemnifying third
`10 parties as real parties in interest.
`11 The second body of evidence, Your
`12 Honor, is what we call sharing prior art and working
`13 in concert. In addition to the obligation to
`14 indemnify, Capella also believes that JDSU and
`15 Petitioners have, in fact, worked in concert to find
`16 prior art and to draft and file the petitions that
`17 are the subject of our call today.
`18 At least Fujitsu and Cisco have
`19 admitted in the District Court litigation that JDSU
`20 is in possession of relevant prior documents,
`21 witnesses, and materials related to alleged prior
`22 art systems; and, indeed, it turns out that
`23 Petitioners' primary prior art references, the Smith
`24 and the Bouevitch patents, are assigned to JDSU and,
`25 in fact, the Bouevitch patent was invented by five
`Page 11
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`1 JDSU employees.
`2 Moreover, the primary prior art
`3 references and arguments raised by Cisco in its
`4 invalidity contentions in the District Court
`5 litigation and in its IPRs are virtually identical,
`6 virtually identical to the primary combined
`7 references of alleged prior art and arguments that
`8 JDSU raises in its own inter partes petitions.
`9 So we contend that due to the
`10 similarities between the Cisco and JDSU petitions,
`11 as well as the similarity between the JDSU positions
`12 and Cisco's invalidity contentions, we contend the
`13 known facts also show that Cisco and JDSU have been
`14 and are working in concert.
`15 JUDGE TARTAL: Can I ask you,
`16 counsel, what basis in law do you have to support
`17 your contention that even if they are working in
`18 concert or even if they shared prior art references,
`19 they are therefore real parties in interest to one
`20 another?
`21 MR. STERNE: Your Honor, we recognize
`22 that joint defense groups routinely work at some
`23 level together. What we are presenting today is a
`24 group of evidentiary pointers that we think support
`25 our basis to obtain authorization to file the
`
`Page 12
`1 motion. We are not contending that based on what we
`2 know right now, this alone would be necessarily
`3 sufficient.
`4 And I'd like to talk about the third
`5 body of evidence in a moment concerning the
`6 estoppels in the District Court and the stay.
`7 Our position, Your Honors, is that
`8 put together, all of this evidence clearly points to
`9 sufficient basis for the motion to be authorized.
`10 JUDGE TARTAL: Counsel, can you
`11 address the timing of the request? I can tell from
`12 the filings, it looks like the Patent Owner response
`13 in the 2014-01166 case was filed back in May of
`14 2015, and subsequent to that we have had the
`15 Petitioners' reply to that response filed. I
`16 believe we also have a hearing scheduled for
`17 November 5. Why is this request being raised at
`18 this point in time and why wasn't it raised earlier
`19 in the proceeding?
`20 MR. STERNE: Your Honor, we have
`21 tried everything we could to bring it up earlier and
`22 despite our very best efforts and everything we've
`23 done, we find ourselves in the position we are in
`24 today, and we wish that it was not so late in the
`25 proceedings for many reasons. So let me address
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`Page 13
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`1 your question directly.
`2 We first approached Cisco by letter
`3 about this issue on April 28. We received no
`4 response at all from Cisco.
`5 We followed up on June 1 and we
`6 finally got a response from Cisco the next day,
`7 indicating that they would not provide, they would
`8 not provide the requested discovery.
`9 We approached Ciena, Coriant, and
`10 Fujitsu by letter first on June 18 and again after
`11 receiving no response followed up again on August 5.
`12 Ciena, Coriant, and Fujitsu finally responded on
`13 August 12, also indicating that they are unwilling
`14 to provide the requested discovery.
`15 We have been corresponding with the
`16 Petitioners and attempting to arrange this
`17 conference call since that time, but Petitioners
`18 have variously been unwilling to provide convenient
`19 dates and times or even to address these matters on
`20 a consolidated call. Very difficult to work with
`21 this group, frankly, Your Honor.
`22 Capella has been diligent in raising
`23 the issues in our petition. We are only able to do
`24 so now with the Board because of the delay that we
`25 have encountered, which is created by Petitioners'
`4 (Pages 10 - 13)
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`Page 14
`1 own making, and indeed the Board has previously
`2 noted that 35 U.S.C. 312(a) is an ongoing
`3 requirement that must be complied with during the
`4 pendency of the petition.
`5 So our position, Your Honor, under
`6 the circumstances here, Capella has raised this
`7 issue with the Board as soon as it was practicable.
`8 JUDGE TARTAL: You indicated you had
`9 some comments with regards to the third category,
`10 estoppel. Can you address that at this point?
`11 MR. STERNE: Yes, Your Honor. This
`12 is another important category of evidence that the
`13 Board should consider for the authorization.
`14 Fujitsu and Ciena and Coriant agreed
`15 to be bound by Cisco's estoppels to get the District
`16 Court to stay the litigation. And now,
`17 specifically, in order to meet the District Court's
`18 requirements for receiving a stay, Fujitsu, Ciena,
`19 and Coriant filed a joint notice with the Court
`20 indicating that they agree to be bound by any and
`21 all estoppels applicable to Cisco for Cisco's IPRs.
`22 So our position is because they are
`23 bound by any such estoppels, Ciena, Coriant, and
`24 Fujitsu have a significant active interest in
`25 Cisco's IPR trials and as a result have likely taken
`Page 15
`1 an opportunity to control and direct these IPRs.
`2 Your Honor, it's very difficult, as
`3 the Board knows, for a Patent Owner to prove
`4 something unless they can find a smoking gun, as
`5 it's often called, and we have done our very best.
`6 We've looked at this case very
`7 carefully. We've tried everything. These are the
`8 reasons we believe that the routine discovery is
`9 warranted. In our motion we will lay out very
`10 focused discovery that we're seeking about these
`11 inconsistent positions.
`12 We are not on a fishing expedition.
`13 We have not brought this late in the proceeding. We
`14 have been diligent. And we need to pursue this
`15 inquiry because it goes to the heart of the matter.
`16 JUDGE TARTAL: Thank you, counsel.
`17 Counsel for Petitioner Cisco --
`18 MR. STACY: Yes.
`19 JUDGE TARTAL: -- could you please
`20 respond?
`21 MR. STACY: Yes. This is Wayne Stacy
`22 and let me start with the timing issue first. I'll
`23 just take them backwards.
`24 We received the letter from
`25 Mr. Sterne himself on April 28. The closing line in
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`Page 16
`1 that letter says: "Capella requests Cisco provide
`2 this information by May 4, 2015, or Capella will
`3 pursue all legal avenues available."
`4 So that's what they told us on
`5 April 28. They waited until September 18 to
`6 schedule this hearing. The interesting thing about
`7 that is it coincided with the exact day that our
`8 motions for observations were due. So they waited
`9 until everything was closed up before they actually
`10 pursued any of this discovery.
`11 So I have to quarrel with
`12 Mr. Sterne's representations that they've been
`13 diligent and done everything possible. They could
`14 have contacted me on May 4 and said let's get a
`15 Board hearing and we could have done that on May 7,
`16 May 6. Instead, they waited five months to take
`17 care of this. So not even close to being diligent
`18 on that front.
`19 Now, as we go back to the routine
`20 discovery -- because I understand that counsel
`21 dropped the request for additional discovery, but
`22 under routine discovery -- Mr. Sterne laid out three
`23 separate issues and, first of all, I would like to
`24 point out that all three of these issues are legally
`25 insufficient, even if they can prove them up. So it
`Page 17
`1 does look like a fishing expedition and it means
`2 that we don't need to go forward on this at all.
`3 Cisco filed its petition and that's
`4 the time frame we're looking at. Who were the real
`5 parties in interest at that point in time? A lot of
`6 the material that Mr. Sterne points to is actually
`7 things that happened afterwards that other people
`8 like the work that Cisco did and wanted to pile on.
`9 But that has nothing to do with the real party in
`10 interest and I guarantee you, none of them had any
`11 control over me when I filed that.
`12 So if you go in order, the
`13 indemnification, what Mr. Sterne is proposing is a
`14 huge expansion of routine discovery. He's basically
`15 saying that if you have a company selling products
`16 that's subject to the Uniform Commercial Code, you
`17 know, the old warranty of merchantability, it's in
`18 every UCC statute across the country, that that
`19 necessarily triggers an indemnification and that
`20 justifies moving forward with routine discovery.
`21 Well, the Board has already rejected
`22 a much narrower position by saying that, well,
`23 indemnification agreements alone don't justify
`24 additional discovery or don't justify discovery.
`25 And you can see that in the Broadcom
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`1 case at IPR2013-00601, Paper 23, it's a great
`2 example of that. And then there's the Apple case,
`3 IPR2013-00080, at No. 18. They both go through
`4 that.
`5 So the indemnification, just the
`6 sheer application of the UCC can't make things
`7 routine discovery. I mean, that would just swallow
`8 the rule about routine discovery.
`9 Number two, the sharing of prior art,
`10 I think you hit that already. Even if there was
`11 prior art shared, what does that have to do with
`12 control? Really that's more about the joint defense
`13 group in the litigation.
`14 So, again, what Mr. Sterne is trying
`15 to say is that, well, if there's a joint defense
`16 group in the litigation and they're working together
`17 in the litigation, then that makes this routine
`18 discovery and we should get to go look. So he's
`19 just taking very common events in litigation and
`20 trying to turn them into routine discovery.
`21 You know, the fact that he points to
`22 JDSU being one of the key pieces of prior art,
`23 that's a publicly available piece of prior art. It
`24 comes up in a search if you do Google patent
`25 searches. It's these kind of little things that
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`Page 19
`1 Mr. Sterne is using to expand routine discovery.
`2 And then he points out that there are
`3 similarities between what JDSU filed many months
`4 later to what Cisco filed early on. Well, that's
`5 flattering that they liked my work enough to copy
`6 it, but that has nothing to do with whether they had
`7 any control over Cisco at the time the petition was
`8 filed.
`9 And then the third piece and the
`10 final thing that Mr. Sterne pointed to at making
`11 this routine discovery was something about the
`12 estoppel and stay. That's other people agreed to be
`13 bound by Cisco's IPR results in the District Court.
`14 Well, again, think about the timing
`15 on that. They signed up afterwards. That doesn't
`16 indicate at all that they had any control over the
`17 IPR. All it indicates is that the District Court
`18 mandated that everybody agree to be joined if you
`19 wanted a stay. And, again, that is incredibly
`20 common in District Court litigation.
`21 So what Mr. Sterne has pointed to is
`22 three incredibly common things and saying that,
`23 well, if one or more of these exist, it's routine
`24 discovery, so we get to penetrate deeply into
`25 everything that's been going on in this case.
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`Page 20
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`1 Mr. Sterne finalized his presentation
`2 by saying he'd be very focused and very narrow. I'm
`3 looking at his letter from April 28. It's five
`4 pages single-spaced with 27 individually numbered
`5 requests that will undoubtedly require depositions.
`6 Many of them probably implicate privileged
`7 discussions.
`8 There's nothing about this that looks
`9 remotely simple from what Mr. Sterne has already
`10 asked for. And at this point in time I would
`11 expect, so late in the proceeding, that maybe the
`12 real issue about waiting this long is to try to
`13 derail the hearing to investigate this and press
`14 this off a little further into the distance.
`15 So with that in mind, I understand,
`16 again, that the additional discovery request has
`17 been dropped. There's nothing here that Mr. Sterne
`18 has laid out that even comes close to meeting the
`19 threshold requirements for looking for routine
`20 discovery. So I think if we move forward briefing
`21 this, it's just going to be a waste of the parties'
`22 resources and the Board's resources in having to
`23 read this.
`24 JUDGE TARTAL: Thank you, counsel.
`25 In IPR2015-00726, on behalf of
`
`Page 21
`1 Petitioner Fujitsu, counsel, do you have anything to
`2 add to the argument that Mr. Stacy made?
`3 MR. BROWAND: Thank you, Your Honor.
`4 This is Nathaniel Browand and we agree with the
`5 comments made by Mr. Stacy. I would just make a
`6 couple additional points for purposes of the record
`7 as related to the 00726 and 00727 IPRs.
`8 We agree that there has been no
`9 showing of any inconsistent statements and none of
`10 the three areas of proof that Mr. Sterne has
`11 identified would, in fact, show any inconsistent
`12 statements.
`13 We received a letter on June 18 and
`14 that letter, for purposes of the record, had 30
`15 requests from counsel for Patent Owner and, similar
`16 to the requests identified by Mr. Stacy, would
`17 require burdensome discovery, and there's been no
`18 showing as to why this information could not have
`19 been raised much, much earlier.
`20 JUDGE TARTAL: Okay. Thank you,
`21 counsel.
`22 MR. BROWAND: As to the estoppel
`23 issue, that was an issue that, again, took place a
`24 long time ago, in March of this year, with regard to
`25 the District Court litigation, and as Your Honor
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`1 knows, the Cisco IPRs were filed last summer, in
`2 July and August of 2014.
`3 So there's just no way that this
`4 evidence would show in any way that any of the other
`5 Petitioners had any control or direction over
`6 Cisco's IPRs because Cisco's IPRs had been set into
`7 motion much before our involvement.
`8 JUDGE TARTAL: Thank you, counsel.
`9 Returning to counsel for Patent
`10 Owner, Mr. Sterne, would you like to briefly respond
`11 if you have anything to add?
`12 MR. STERNE: Yes, Your Honor, a few
`13 things.
`14 First of all, the real party in
`15 interest really matters. That's why it was put in
`16 the law. There are eight IPRs filed against our two
`17 patents. We are told that this is a waste of
`18 resources. It is a waste of resources for us. We
`19 have to deal with eight IPRs. There's no
`20 cooperation between Cisco and the rest of these
`21 Petitioners. Trying to get them on a single call
`22 has been a real, real challenge, Your Honor.
`23 The reason there has been so much
`24 delay is because it's deliberate. It's absolutely
`25 deliberate by Petitioners. We've tried everything
`Page 23
`1 we can do. We're not on a fishing expedition. What
`2 we're trying to do is show that they are hiding the
`3 ball, Your Honor, on this RPI issue.
`4 We're asking for routine discovery.
`5 We're asking for documents and we have some
`6 interrogatories. They're very, very focused on the
`7 issues at hand. We're not trying to delay the
`8 hearing. To the contrary. That's not our purpose
`9 here.
`10 We have been thwarted. We have been
`11 prevented from getting before the Board on these
`12 issues by all kinds of rope-a-dope actions, to use
`13 the famous boxing analogy, that has occurred when we
`14 tried to get these parties to agree to a single
`15 Board call.
`16 So we have our Board call today and
`17 all we're seeking is permission to get authorization
`18 to file the motion. We're not here to argue the
`19 merits of this. We're here to get the authorization
`20 and we think we've met that burden. Thank you.
`21 JUDGE TARTAL: Mr. Sterne, can you
`22 address again, other than the broad proposition that
`23 some sort of the information in the three categories
`24 that you're requesting may show support for the idea
`25 that someone else is a real party in interest, what
`
`Page 24
`
`1 is the actual inconsistency other than sort of that
`2 general concept that you can identify, if any, that
`3 supports the request for the discovery at this
`4 point? Is there anything that you are aware of that
`5 you know is inconsistent?
`6 MR. STERNE: Well, Your Honor, I
`7 mean, we are looking at a whole pattern of behavior
`8 here. I mean, all we can do is look. We have no
`9 idea what has happened here. But we do know how
`10 industry operates. We know that JDSU provides these
`11 units.
`12 We have been in other situations
`13 before the Board where we have shown that
`14 indemnification -- namely, the GE case -- where
`15 there was indemnification that led to control of the
`16 litigation and to the IPRs.
`17 So for counsel to say to us that
`18 there is no cooperation other than a normal joint
`19 defense agreement begs the issue. What we want to
`20 know is what was the level of cooperation, what is
`21 the level of indemnification, what actually
`22 happened.
`23 We're not on a fishing expedition and
`24 we're not trying to waste the Board's time. But
`25 here we are at a huge disadvantage in trying to come
`
`Page 25
`
`1 to grips with whether the real party in interest
`2 requirement has not been met, and that's why we
`3 believe that we have satisfied the requirement for
`4 authorization to file this motion.
`5 And, as I said earlier, as we said in
`6 our letters, we have been very specific in what
`7 we've asked. The other side hasn't provided any of
`8 it. And so that's why we're here today.
`9 JUDGE TARTAL: Okay, counsel. Thank
`10 you.
`11 MR. STACY: Your Honor?
`12 JUDGE TARTAL: Yes.
`13 MR. STACY: This is Wayne Stacy. If
`14 I could have 30 seconds?
`15 JUDGE TARTAL: Very briefly, please.
`16 MR. STACY: Less than 30.
`17 I just wanted to point out, when you
`18 asked Mr. Sterne about if he can identify the
`19 inconsistency, you got a long answer, but the meat
`20 of the answer was, no, he could not identify a
`21 single inconsistency. Instead, he just pointed to,
`22 well, we know how the world works, it must be. And
`23 that's not a routine discovery standard by any
`24 means.
`25 JUDGE TARTAL: Thank you, counsel.
`7 (Pages 22 - 25)
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`1 Just to clarify, is there anything
`2 else to add from counsel for Ciena or Coriant? I
`3 assume that you are in agreement with Cisco's
`4 counsel and that that's sufficient, but to confirm.
`5 MR. STEINBERG: This is Bob Steinberg
`6 for Ciena and that's correct.
`7 MR. van ES: And, Your Honor, this is
`8 Pieter van Es with the Coriant entities. We agree,
`9 yes.
`10 JUDGE TARTAL: Okay. The panel will
`11 take it under consideration. We are going to stay
`12 on the call and we'll return to the call in just a
`13 few minutes after we've had a chance to discuss. So
`14 if you can just stay on the line and we will rejoin
`15 you shortly. Thank you.
`16 - - -
`17 (Whereupon there was a recess in the
`18 proceedings.)
`19 - - -
`20 JUDGE TARTAL: Good afternoon,
`21 counsel. This is Judge Tartal. The panel has had
`22 an opportunity to confer.
`23 I want to just first confirm that we
`24 still have counsel for Patent Owner, Mr. Sterne?
`25 MR. STERNE: Yes, Your Honor, we're
`Page 27
`
`1 here.
`2 JUDGE TARTAL: And counsel for
`3 Petitioner Cisco, Mr. Stacy?
`4 MR. STACY: Yes, I'm here.
`5 JUDGE TARTAL: And counsel for Ciena,
`6 Coriant, and Fujitsu?
`7 Mr. Chalsen?
`8 MR. CHALSEN: We're here.
`9 JUDGE TARTAL: And Mr. van Es?
`10 MR. van ES: Yes, I'm here.
`11 JUDGE TARTAL: And Mr. Browand?
`12 MR. BROWAND: Yes, Your Honor.
`13 JUDGE TARTAL: Okay. Thank you for
`14 your patience in giving us the opportunity to
`15 discuss the request that's pending.
`16 The panel has discussed the request
`17 and understands that it's a request for
`18 authorization to file a motion at this time, not for
`19 a grant of that motion, but has concluded that
`20 au