Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` FUJITSU NETWORK COMMUNICATIONS, INC.,
` Petitioner
` V.
` CAPELLA PHOTONICS, INC.
` Patent Owner
` CASE NO. IPR2015-00726
` CASE NO. IPR2015-00727
`
` - - - - -
` Thursday, October 29, 2015
` 1:33 p.m.
` - - - - -
`
` TELECONFERENCE IN THE ABOVE MATTER
` BEFORE: JAMES A. TARTAL
` JOSIAH C. COCKS
` KALYAN K. DESHPANDE
` Administrative Patent Judges
`
`REPORTED BY:
` SUSAN D. GUNELSON, Certified Court Reporter
`(License No. 30XI00076300), Registered Professional
`Reporter, Certified Realtime Reporter, Certified
`LiveNote Reporter and Notary Public of New Jersey,
`Pennsylvania and Delaware.
`
` VERITEXT NATIONAL COURT REPORTING COMPANY
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`Capella 2010
`Fujitsu v. Capella
`IPR2015-00727
`
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`Page 4
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`1 side of this discussion.
`2 THE COURT REPORTER: Okay. Thank
`3 you.
`4 (Brief pause.)
`5 (The following was taken in the
`6 telephonic presence of Judges Tartal,
`7 Cocks and Deshpande:)
`8 JUDGE TARTAL: Good afternoon.
`9 This call is in regards to Fujitsu
`10 Network Communications, Incorporated versus
`11 Capella Photonics, Incorporated, IPR2015-00726 and
`12 00727. With me on the call today are Judges Cocks
`13 and Deshpande.
`14 And can we begin with counsel for
`15 Petitioner, identify who will be on the call?
`16 MR. STERNE: Thank you, Your Honor.
`17 It's Nathaniel Browand. With me is Christopher
`18 Chalsen, on behalf of Petitioner Fujitsu Network
`19 Communications.
`20 JUDGE TARTAL: Thank you, and
`21 welcome.
`22 And can we have counsel for Patent
`23 Owner identify who will be speaking on the call
`24 today?
`25 MR. STERNE: Good afternoon, Your
`Page 5
`1 Honor. This is Robert Sterne from Sterne Kessler
`2 representing Patent Owner Capella, and on the call
`3 with me today are counsel Jason Eisenberg, Nik --
`4 Nicholas Nowak, Jonathan Tuminaro and Tyler
`5 Dutton.
`6 And we have a court reporter on the
`7 line, Your Honor, that Patent Owner engaged, and
`8 we will be providing the Board and the Petitioner
`9 with a transcript of this Board call, if you so
`10 request.
`11 JUDGE TARTAL: Yes, please include
`12 as an exhibit the filing for a copy of the
`13 transcript of the call. That would be
`14 appreciated.
`15 MR. STERNE: Not a problem, Your
`16 Honor.
`17 JUDGE TARTAL: Okay. Petitioner
`18 requested the call and so we will turn it over to
`19 Petitioner to address the issues that they have.
`20 MR. BROWAND: Thank you, Your
`21 Honor.
`22 I wish we were here under different
`23 circumstances. But at this time we would seek the
`24 Board's relief and request to, in the first
`25 instance, forego cross examination under the
`2 (Pages 2 - 5)
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`A P P E A R A N C E S
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`Page 2
`
`12
`
`34
`
` MILBANK, TWEED, HADLEY & McCLOY, LLP
` BY: NATHANIEL BROWAND, ESQUIRE
`5 nbrowand@milbank.com
` and
`6 CHRISTOPHER CHALSEN, ESQUIRE
` cchalsen@milbank.com, ESQUIRE
`7 One Chase Manhattan Plaza
` 47th Floor
`8 New York, New York 10005-1413
` COUNSEL FOR PETITIONER FUJITSU NETWORK
`9 COMMUNICATIONS, INC.
`10
`11
`
` STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`12 BY: ROBERT GREENE STERNE, ESQUIRE
` rsterne@skgf.com
`13 and
` NICHOLAS J. NOWAK, ESQUIRE
`14 nnowak@skgf.com
` and
`15 JASON EISENBERG, ESQUIRE
` jasone-ptab@skgf.com
`16 and
` JONATHAN TUMINARO, ESQUIRE
`17 jtminaro-ptab@skgf.com
` and
`18 TYLER DUTTON, ESQUIRE
` tdutton-ptab@skgf.com
`19 1100 New York Avenue, N.W.
` Washington, D.C. 20005-3934
`20 (202) 371-2600
` COUNSEL FOR THE PATENT OWNER
`
`21
`22
`23
`24
`25
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`Page 3
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`1 (The following was taken out of the
`2 telephonic presence of Mr. Broward, Mr.
`3 Chalsen, Judges Tartal, Cocks and
`4 Deshpande:)
`5 MR. STERNE: So I'm Rob Sterne, and
`6 I'll be speaking for the Patent Owner. We also
`7 have Jason Eisenberg, Nicholas Nowak, Jonathan
`8 Tuminaro, and finally but not last but least,
`9 Tyler Dutton. So that's our team for Patent
`10 Owner.
`11 And we'll have others on the call
`12 shortly, and we'll get you the judges' names.
`13 We're going to want this transcript
`14 ASAP, please.
`15 (Brief pause.)
`16 (The following was taken in the
`17 telephonic presence of Mr. Broward, Mr.
`18 Chalsen but out of the telephonic presence
`19 of Judges Tartal, Cocks and Deshpande:)
`20 THE COURT REPORTER: Mr. Browand,
`21 do you want a copy of today's transcript?
`22 MR. BROWAND: Yes, please, yeah.
`23 MR. CHALSEN: Also, this is Chris
`24 Chalsen, Mr. Browand's colleague, and I may speak
`25 also. Nate will primarily be handling Fujitsu's
`
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`Page 6
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`1 circumstances of Petitioner's declarant's sudden
`2 and untimely death. We've made the offer to
`3 Patent Owner as a mutual labor of cross
`4 examination of each side's expert in connection
`5 with the case. That's our initial request, Your
`6 Honor.
`7 As a secondary request, we believe
`8 that it's appropriate under the circumstances, and
`9 I'd like to explain sort of the factual background
`10 leading up to this, but we would believe it
`11 appropriate for Petitioner to submit substitute
`12 declarations and if necessary, substitute petition
`13 to reference the -- the new declaration.
`14 We would propose to submit them in
`15 accordance with the authority in Corning Gilbert V
`16 PPC Broadband, which is IPR2013-347 paper number
`17 20. There's a procedure that's outlined there for
`18 substitute petitions when the declarant becomes
`19 unavailable. So if it's all right with Your Honor
`20 I'd like to sort of explain the circumstances
`21 under which our declarant became unavailable.
`22 I'd like to make clear that
`23 throughout the entire time Petitioner advised
`24 Patent Owner about the -- what we knew of
`25 Dr. Drabik's condition. As soon as we learned new
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`Page 7
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`1 information, we passed that along. And the
`2 sequence of relevant events is as follows:
`3 On the FNC's IPRs were instituted
`4 on August 24th, 2015.
`5 On September 11th, Patent Owner
`6 requested a deposition of Dr. Drabik for the last
`7 week of October. We -- although Dr. Drabik would
`8 have been available for a deposition in September,
`9 Patent Owner could have requested that, but Patent
`10 Owner chose to wait until the end of October.
`11 On September 16th, Your Honor,
`12 Petitioner informed Patent Owner that a deposition
`13 of Dr. Drabik the last week of October should
`14 work, and at that time Petitioner had no
`15 information about Dr. Drabik's condition and we
`16 fully expected that he would be available for
`17 deposition as requested.
`18 On September 24th, Dr. Drabik
`19 signed a declaration in two other IPRs. It was
`20 IPR2015-01958 and IPR2015-01961, and I mention
`21 that simply to show that Dr. Drabik was available
`22 to perform work at that time.
`23 On September 28th we learned --
`24 Petitioner learned that Dr. Drabik was sick. We
`25 informed the Patent Owner that same day that the
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`Page 8
`1 deposition would have to be rescheduled. At that
`2 time on September 28th Petitioner fully expected
`3 that Dr. Drabik would recover in a timely manner
`4 and that he would be able to sit for a deposition.
`5 Petitioner and Patent Owner
`6 discussed the possibility of extending due date
`7 one at that time to allow for Dr. Drabik to
`8 recover so Petitioner could take his deposition
`9 before submitting responses to the petition. The
`10 Patent Owner requested that we provide updates to
`11 them regarding Dr. Drabik's conditions every week
`12 or two and Petitioner did exactly that.
`13 On October 8th Petitioner informed
`14 Patent Owner that Dr. Drabik had been admitted to
`15 the hospital. At that time, based on the
`16 information we had received from a contact of
`17 Dr. Drabik, Petitioner fully expected that
`18 Dr. Drabik would still recover.
`19 On October 15th, Petitioner called
`20 counsel for Patent Owner and informed them that we
`21 did not expect Dr. Drabik would be available for
`22 deposition. We asked whether -- at that time on
`23 the call we asked whether Patent Owner would agree
`24 to forego cross examination and as an alternative,
`25 Petitioner proposed obtaining permission from the
`Page 9
`1 Board to submit substitute declarations signed by
`2 another expert if Patent Owner demanded having --
`3 taking cross examination. Counsel for Patent
`4 Owner at the time told us that they would consider
`5 these issues and provide us with responses.
`6 We waited, and while we were
`7 waiting for a response from Patent Owner,
`8 Petitioner learned that unfortunately and suddenly
`9 Dr. Drabik passed away.
`10 On October 26th, Petitioner
`11 informed Patent Owner that Dr. Drabik had passed
`12 away, and we reiterated our request to forego
`13 cross examination or obtain permission to submit
`14 substitute declarations by another expert in
`15 accordance with the authority in the Corning IPR.
`16 On October 27th Petitioner and
`17 Patent Owner had a meet and confer to discuss
`18 these issues and to seek the Board's guidance.
`19 We again offered Petitioner to
`20 forego cross examination and we extended the
`21 offering that Petitioner would agree to forego
`22 cross examination if Patent Owner would agree to
`23 forego cross examination.
`24 We also reiterated our request to
`25 obtain permission to submit substitute
`3 (Pages 6 - 9)
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`Page 10
`1 declaration. And on the call, Patent Owner did
`2 not agree to those offers.
`3 So at this time we have identified
`4 a substitute expert who we would believe would be
`5 able to come up to speed quickly on the matter and
`6 we would request the Board's permission to, if in
`7 fact, Patent Owner does not agree to forego cross
`8 examination, we would in fact seek the Board's
`9 permission to file substitute declarations that
`10 would be identical to those on -- already on file
`11 by Dr. Drabik, in accordance with the procedure
`12 outlined in the Corning IPR, and we would propose
`13 to do that within two weeks. I guess
`14 November 12th would be the date.
`15 And after that filing, we would
`16 make the substitute expert available for
`17 deposition at a mutually convenient time and we
`18 would be willing to agree to a reasonable
`19 extension of due date one to accommodate the
`20 Patent Owner.
`21 So I'm happy to address any
`22 questions, or if you want to turn it over to the
`23 Patent Owner.
`24 JUDGE TARTAL: Thank you, Counsel.
`25 I think it would be helpful to hear
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`Page 11
`1 from counsel for Patent Owner at this point. So
`2 let's hear their views at this point.
`3 MR. STERNE: Thank you, Your Honor.
`4 This is Robert Sterne.
`5 This is an unfortunate
`6 circumstance, obviously, and we do not want to
`7 take any advantage of this. But I think it's
`8 important for the Board to realize that we have
`9 been attacked in multiple IPRs. Our Patent Owner
`10 is a small company from the Silicon Valley, and we
`11 have been attacked by the some of the largest
`12 companies in electronics in the world. And we're
`13 trying to defend our patent rights, we're trying
`14 to adequately deal with the charges that have been
`15 made on the record, and we submit to Your Honor,
`16 and I will explain this in more detail in a
`17 moment, that the Corning case that has been
`18 referred to repeatedly by my opponent is not
`19 controlling here in -- either in the facts or in
`20 terms of the result obtained.
`21 In that case, the deponent was
`22 sick. They tried to get an 18-month trial date.
`23 That was turned down by Judge Jameson Lee in paper
`24 number 18, and then they moved on to a possible
`25 substitution. They ended up having to take the
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`Page 12
`1 deposition of the original declarant in a modified
`2 schedule.
`3 Here we cannot do that. So saying
`4 that this case is controlled, as I believe my
`5 opponent has said several times, by that Board
`6 panel decision is not accurate.
`7 As you are aware, Dr. Drabik did
`8 pass away on October 26th. Unfortunately, his
`9 passing came after he signed and submitted
`10 declarations on behalf of Petitioner but before we
`11 had, as Patent Owner, an opportunity to dispose --
`12 to depose him.
`13 Regardless of the tragic nature of
`14 these circumstances, we submit that the current
`15 situation could have been entirely avoided but for
`16 the actions of Petitioner. And let me explain,
`17 'cause I realize that's quite a charge.
`18 We have reason to believe that
`19 Petitioner was aware at least as in early
`20 September that Dr. Drabik would most likely never
`21 be in a position to be deposed and that despite
`22 knowing this, Petitioner failed to make us aware
`23 and do anything to make sure that we had an
`24 opportunity to depose him before he passed on
`25 October 26th, less than a month before Capella's
`Page 13
`1 Patent Owner responses are due on November 24.
`2 We believe that this really
`3 constitutes negligence, not Dr. Drabik's untimely
`4 passing but that steps could have been taken to
`5 allow us to take his deposition earlier. And --
`6 JUDGE TARTAL: Let me just
`7 interrupt you, and in terms of, I understand that
`8 there are circumstances surrounding, you know,
`9 what exactly transpired in the past, but at this
`10 point in the proceeding, we need to determine how
`11 to go forward.
`12 And in order to do that, it would
`13 be particularly helpful to know what Patent
`14 Owner's position is on the two proposals that
`15 Petitioner has set forward, the first being a
`16 waiver of cross examination, and the second being
`17 a request for a substitute declaration, and
`18 obviously if Patent Owner has an alternative
`19 proposal, you're welcome to -- welcome to address
`20 that as well.
`21 MR. STERNE: Yeah, Your Honor. I
`22 would very much like to address that. And I'd
`23 also like to address the issue of expungement of
`24 the dec.
`25 So let's start, if we may, with the
`4 (Pages 10 - 13)
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`Page 14
`1 Federal Rules of Evidence, which as we all know
`2 apply to post-grant proceedings as to PTAB as
`3 indicated by 37 CFR section 42.62 Alpha, 62A.
`4 The Board had indicated that
`5 parties should treat evidentiary issues in
`6 post-grant proceedings, quote, Just as they would
`7 in a case pending before a U.S. District Court,
`8 keeping in mind the applicability of the USPTO
`9 duty of candor in 37 CFR 4211, and this comes from
`10 IPR 213-2 -- excuse me, 213-00285 paper 15,
`11 page 2.
`12 Here, without an opportunity to
`13 cross-examine Dr. Drabik, his declaration
`14 constitutes hearsay pursuant to Federal Rule 802.
`15 The only hearsay exception that is arguably
`16 relevant here is exception 804(b)(1), the
`17 exception regarding former testimony, and that
`18 question does not apply.
`19 Rule 804(b)(1) indicates that if
`20 the opportunity to cross-examine is lacking, as it
`21 is here, the prior testimony must be excluded if
`22 the opposing party has not been given a meaningful
`23 opportunity to cross-examine if it wishes to do
`24 so.
`25 The opportunity to cross-examine
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`Page 15
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`1 requirement is generally satisfied when the
`2 defense is given a full and fair opportunity to
`3 probe and expose the infirmities of testimony
`4 through cross examination, thereby calling to the
`5 attention of the fact finder the reason for giving
`6 significant weight to the witness testimony. And
`7 I can provide case law on this point, if you so
`8 request.
`9 Now, we -- we assert, Your Honors,
`10 that there is a due process violation here.
`11 Regardless of the hearsay rule as a matter of due
`12 process, Capella has a fundamental right as Patent
`13 Owner to defend their patent in -- and should be
`14 allowed to cross-examine witnesses who give
`15 adverse testimony in these proceedings.
`16 In the Supreme Court case of
`17 Goldberg -- Goldberg versus Kelly, a 1970 Supreme
`18 Court case, the Supreme Court says, quote, In
`19 almost every setting where important decisions
`20 turn on questions of fact, due process requires an
`21 opportunity to confront and cross-examine adverse
`22 witnesses. And this is found at 397 US 254 at
`23 page 269.
`24 We submit the Board's ultimate
`25 legal conclusions in this case will turn on
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`Page 16
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`1 critical questions of fact and opinion set forth
`2 by Dr. Drabik in his declaration. So as a matter
`3 of due process, Capella needs to be -- to have an
`4 opportunity to cross-examine Dr. Drabik.
`5 Now, we were never provided,
`6 obviously, with an opportunity to cross-examine
`7 him, despite the fact that he signed his
`8 declaration nearly eight and a half months prior
`9 to his death. In addition, institution occurred
`10 on August 24th, eight weeks prior to his death.
`11 There is no reason under the circumstances that
`12 Petitioner could not have proactively offered
`13 Dr. Drabik for deposition at any point during that
`14 time. Nor is there any reason that Petitioner
`15 could not have offered Dr. Drabik for deposition
`16 as soon as it learned he was ill and might not be
`17 able to testify.
`18 It was Capella instead who, without
`19 any knowledge of Dr. Drabik's condition, had to
`20 press Petitioner for information as to his
`21 availability. And it is Petitioner who simply
`22 dragged the issue out until Dr. Drabik's passing.
`23 In short, Petitioner can point to nothing that
`24 shows it made any effort to avoid the situation
`25 that the parties now find themselves in. As a
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`Page 17
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`1 result, Capella asserts that Dr. Drabik's
`2 declaration should be expunged as hearsay as well
`3 as to avoid a violation of Capella's due process
`4 rights.
`5 So that's our position first, Your
`6 Honor, about the declaration itself.
`7 Now, even if Dr. Drabik's
`8 declarations are expunged, there is no prejudice
`9 to Fujitsu. In addition to the two IPRs at issue
`10 here, Fujitsu is Petitioner in four other
`11 proceedings, four other proceedings against the
`12 '368 and '678 patents.
`13 On September 4, 2015, Fujitsu was
`14 joined as a Petitioner in IPRs initiated by Cisco
`15 and on September 25, 2015 Fujitsu and others filed
`16 additional IPR petitions against the '368 patent
`17 and the '678 patents.
`18 Now, we need, if there is a
`19 substitute expert, Your Honor, we must have the
`20 opportunity to depose that expert. And this
`21 raises all kinds of complicated questions because,
`22 first of all, we don't know if there's -- if the
`23 substitute declaration is going to be the same as
`24 the original declaration. It gives the Petitioner
`25 the opportunity to now make changes to their
`5 (Pages 14 - 17)
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`Page 18
`1 declaration to fill gaps that they may now realize
`2 they made in their original petition, now that
`3 they've seen our Patent Owner preliminary
`4 response.
`5 We have our oral hearing in the
`6 Cisco case next week. So they'll have full
`7 benefit of that.
`8 So they would be able to correct
`9 and modify this new expert's declaration to take
`10 the benefit of all this information and
`11 developments that have occurred since the --
`12 Dr. Drabik's declaration was originally filed.
`13 And we also have this JDSU case that is also
`14 proceeding.
`15 So as you can see, Your Honors,
`16 this is a very complicated and we believe case of
`17 first impression for the Board, and our rights as
`18 Patent Owner need to be protected, as I said
`19 repeatedly.
`20 We would submit that we be given
`21 authorization to file on a very fast track a
`22 motion to explain the situation and have the other
`23 side respond. And --
`24 JUDGE TARTAL: Just to clarify, at
`25 this point I still am not clear on what, if any,
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`Page 20
`1 JUDGE TARTAL: Counsel, where does
`2 that leave us? Do you want us to expunge the
`3 evidence supporting the petition and have no new
`4 evidence introduced? What -- what is that other
`5 than a request for termination?
`6 MR. STERNE: I don't see why
`7 that -- I mean, there's been an institution
`8 decision and there's been a petition. I don't see
`9 why that -- well, again, Your Honor, I mean the
`10 point is that what we're trying to protect
`11 ourselves from is the ability of the Petitioner to
`12 have the opportunity to get the benefit of
`13 everything that has developed in this proceeding
`14 so that they can use that to their benefit and to
`15 our detriment. And therefore, there needs to be
`16 full and complete safeguards to protect us so that
`17 our due process rights are observed, as well as
`18 this whole hearsay issue.
`19 So the Board needs to craft a
`20 mechanism, we submit, that will assure us that
`21 that takes place here. I mean if -- if you're not
`22 going to expunge their declaration, which by the
`23 way, in Federal District Court we submit would --
`24 would occur, because as I said, under the Federal
`25 Rules of Evidence, then we need to have the
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`Page 19
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`1 proposal you have for going forward.
`2 Is your only proposal that we
`3 terminate this proceeding?
`4 MR. STERNE: No, no. We're not
`5 saying you terminate the proceeding in the
`6 slightest. We're saying that the declaration
`7 should be expunged, and if the declaration is not
`8 expunged, then we need safeguards on the new
`9 declaration and we need the ability to take the
`10 deposition of this new declarant in this
`11 proceeding.
`12 JUDGE TARTAL: So if I understand
`13 you, you're indicating that Patent Owner agrees
`14 that the new declarant could submit a new
`15 declaration, given the opportunity to depose that
`16 declarant, and on the premise that the declarant's
`17 views are, let's say similar to but, you know, if
`18 not identical to the views expressed in the
`19 original declaration in support of the petition?
`20 MR. STERNE: No, that's not what I
`21 said, Your Honor. What I said was we want this
`22 declaration expunged and we do not think that a
`23 new declaration should be allowed nor should there
`24 be a new declarant.
`25 However, if the Board --
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`Page 21
`1 Federal Rules of Evidence apply here in a way to
`2 protect us and not just to protect them.
`3 JUDGE TARTAL: Let's just go back.
`4 Let me turn to Petitioner's counsel again, with a
`5 couple of questions.
`6 I guess the first is, is does
`7 Petitioner object to having the original
`8 declaration expunged if a new declaration is
`9 permitted from a new declarant?
`10 MR. BROWAND: Yes, Your Honor, we
`11 do. We believe there's no basis for that, for a
`12 couple of reasons.
`13 First, as I mentioned already,
`14 Dr. Drabik was available for deposition in
`15 September, and it was purely Patent Owner's
`16 request to delay their -- their seeking of the
`17 deposition until late October. There was no
`18 reason why they couldn't have requested it
`19 earlier. We had the exact same information that
`20 they had at that time. And you know, that was
`21 entirely their decision, and now they're trying to
`22 hold that against us, and we think that's totally
`23 improper.
`24 The second reason, Your Honor, is
`25 that the Board has already relied on the
`6 (Pages 18 - 21)
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`1 declaration in the institution decision which in
`2 our view, counsels for its maintenance in the
`3 record, and -- and we believe a substitute
`4 declaration which is identical to that already in
`5 the record will -- will not change the fact of
`6 institution, will allow the proceedings to operate
`7 on the same schedule that's already in effect and
`8 will allow the matter to go forward in a
`9 reasonable fashion.
`10 JUDGE TARTAL: Is it Petitioner's
`11 position that it anticipates that a new
`12 declaration from a new declarant, if permitted,
`13 that that new declaration would be essentially
`14 identical to the former declaration of Dr. Drabik?
`15 MR. BROWAND: Yes, Your Honor. You
`16 know, Patent Owner's suspicion that we would take
`17 the opportunity to change the contents of the
`18 declaration are simply false. As is outlined in
`19 the -- in the Corning IPR, we would file a
`20 substantively identical declaration with the
`21 changes being that of the qualifications of the
`22 expert. We would use the -- all of the format
`23 exactly as described in the Corning IPR, and in
`24 case you don't have that in front of you, it says
`25 that to maintain the same paragraph numbers in the
`Page 23
`1 second declaration and that the qualifications of
`2 a second expert witness would be submitted in
`3 later paragraphs and the blank spaces would occupy
`4 the paragraphs to express the qualifications that
`5 were of Dr. Drabik.
`6 So the substitute declaration would
`7 be very clear, all of the those same paragraph
`8 numbering would apply and the only thing to change
`9 would be a differences between -- between the two
`10 declarants.
`11 JUDGE TARTAL: Let me return --
`12 MR. BROWAND: And I'm sorry, Your
`13 Honor, of course, as I mentioned previously, that
`14 we would be happy to make the substitute declarant
`15 available for deposition in a timely fashion.
`16 So -- so that would alleviate any alleged due
`17 process issues or concerns regarding hearsay that
`18 the -- that the Patent Owner has -- has raised.
`19 JUDGE TARTAL: Let me return to
`20 the -- to the counsel for patent owner.
`21 Setting aside the issue of whether
`22 or not the original declaration is expunged, which
`23 obviously there are arguments on -- that both
`24 parties are arguing on opposite sides of that,
`25 where does Patent Owner stand in terms of the
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`Page 24
`1 proposal that a new declarant be permitted who
`2 provides a declaration that is essentially
`3 identical to the prior declaration of Dr. Drabik
`4 and that new declarant is made available to Patent
`5 Owner for cross examination?
`6 MR. STERNE: Sir, Your Honor, you
`7 can imagine the anxiety that this is producing on
`8 our side, because we have multiple proceedings and
`9 we've got multiple experts that are all playing
`10 off of each other in these proceedings.
`11 We also have depositions coming up
`12 in the JDSU, as we call them, proceedings. So if
`13 we reschedule this, we want to make sure that
`14 our -- our expert is not being whipsawed and
`15 double teamed by every round of deposition of our
`16 expert being used against him. Not that the
`17 testimony is changing, but as this thing, as this
`18 is like multiple bites at the -- at the apple to
`19 try to take our patent claims down.
`20 Now, we don't quite understand the
`21 difference between identical declarations and
`22 essentially the same declarations or substantially
`23 the same declarations. I mean that's a big
`24 problem for us. Obviously, if there is -- if the
`25 Board grants the permission for some substitute,
`Page 25
`1 we would submit that it should be identical. And
`2 by identical, we mean the only things that can be
`3 changed, if anything, would be obviously the
`4 qualification portion, as was brought up in the --
`5 in the Corning case, but nothing on the substance.
`6 So you know, so those are the
`7 issues we're dealing with, Your Honors.
`8 We're willing, because we are
`9 asking for different things here, we're willing to
`10 provide briefing on this if the Board would
`11 consider that important. We think this is a
`12 important case that goes beyond this particular
`13 proceeding or set of proceedings, rather, but on
`14 the other hand, that's our position, if you want
`15 to rule today.
`16 JUDGE TARTAL: Thank you, Counsel.
`17 And Counsel for Petitioner, do you
`18 have anything to add? The panel would like to go
`19 discuss the issues and just wanted to give you an
`20 opportunity if there's something else you'd like
`21 to add at this time.
`22 MR. BROWAND: I --
`23 JUDGE TARTAL: And again, that's
`24 just to discuss where we stand.
`25 MR. BROWAND: Yes, Your Honor.
`7 (Pages 22 - 25)
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`Page 26
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`1 Just to address the last point raised by counsel
`2 for Patent Owner regarding briefing.
`3 We are happy to submit briefing if
`4 we believe it would help Your Honors in this
`5 matter. We believe it's totally unnecessary and
`6 would only further delay the proceedings, which we
`7 believe can be completed in a timely manner
`8 already under the offering of the substitute
`9 declarations. And so we believe that if -- if
`10 it's convenient for Your Honors to issue a ruling
`11 without briefing, we would -- we would prefer that
`12 approach.
`13 Thank you.
`14 JUDGE TARTAL: Okay. Thank you,
`15 Counsel, and we're going to drop off the call, the
`16 panel will, but we ask that the parties stay on
`17 the call, and we will dial back in to the same
`18 conference number as soon as possible. So please
`19 just hold the line and we will return.
`20 Thank you.
`21 MR. BROWAND: Thank you.
`22 (Recess from 2:02 p.m. to 2:18 p.m.)
`23 JUDGE TARTAL: This is
`24 Judge Tartal, and joining me again are Judges
`25 Cocks and Deshpande, and returning to the
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`Page 27
`1 conference call on IPR2015-00726 and 00727.
`2 Can we just confirm, is there
`3 counsel on the call for Petitioner?
`4 MR. BROWAND: Yes, Your Honor,
`5 Nathaniel Browand and Christopher Chalsen are
`6 present.
`7 JUDGE TARTAL: Thank you.
`8 And is there counsel on the line
`9 for Patent Owner?
`10 MR. STERNE: Yes, Your Honor this
`11 is Robert Sterne, again with my counsels
`12 Eisenberg, Nowak, Tuminaro and Dutton.
`13 JUDGE TARTAL: Thank you, Counsel,
`14 for your patience and the time that we had to
`15 discuss the issue as a panel.
`16 We've come to the decision that
`17 we're going to permit Petitioner to file a motion
`18 to file supplemental information. And attached to
`19 that motion should be the proposed new declaration
`20 from the new declarant, and that motion should
`21 address the circumstances under which the -- the
`22 new declaration is being sought to be entered.
`23 And in light of Petitioner's certification that it
`24 would take approximately two weeks to finalize
`25 that new declaration, we would propose that it be
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`Page 28
`
`1 filed by November 12th.
`2 And Patent Owner would only be
`3 provided an opportunity, if it so chooses, after
`4 seeing the declaration and the motion papers to
`5 file an opposition, and that opposition would be
`6 due by November 19th.
`7