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`Page 1
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` - - -
` UNITED STATES PATENT AND TRADEMARK OFFICE
` - - -
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` - - -
` JDS UNIPHASE CORPORATION,
` Petitioner.
`
` v.
`
` CAPELLA PHOTONICS, INC.,
` Patent Owner.
` - - -
` CASE IPR2015-00731 - Patent RE42,368
` CASE IPR2015-00739 - Patent RE42,678
`
` - - -
`
` Wednesday, February 24, 2016
` 3:30 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
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`Capella 2036
`JDS Uniphase v. Capella
`IPR2015-00731
`
`0001
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`Page 2
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`APPEARANCES:
`
` FAEGRE BAKER DANIELS, LLP
` BY: WALTER C. LINDER, ESQUIRE
` 90 South 7th Street
` Minneapolis, MN 55402
` 612-766-8801
` walter.linder@faegrebd.com
` and
` BY: JOEL D. SAYRES, ESQUIRE
` 3200 Wells Fargo Center
` 1700 Lincoln Street
` Denver, CO 80203
` 303-607-3589
` joel.sayres@faegrebd.com
` Representing the Petitioner
`
` STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
` BY: ROBERT GREENE STERNE, ESQUIRE
` JASON D. EISENBERG, ESQUIRE
` NICHOLAS J. NOWAK, ESQUIRE
` 1100 New York Avenue, N.W.
` Washington, D.C. 20005-3934
` 202-371-2600
` rsterne-PTAB@skgf.com
` jasone-PTAB@skgf.com
` nnowak@skgf.com
` Representing the Patent Owner
`
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`Page 3
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` JUDGE TARTAL: Good afternoon. This
`
`is Judge Tartal. With me on the call today are
`
`Judges Cocks and Deshpande. This call is in
`
`IPR2015-00731 and IPR2015-00739.
`
` Can we begin with identifying who is
`
`on the call today for Patent Owner?
`
` MR. STERNE: Good afternoon, Your
`
`Honor. This is Robert Sterne here on behalf of
`
`Patent Owner and I have with me my colleagues, Jason
`
`Eisenberg and Nicholas Nowak.
`
` We also have a court reporter on the
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`line, Your Honor, and she will provide us with a
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`transcript of this Board call if you so request.
`
` JUDGE TARTAL: Yes, counsel. Please
`
`file as an exhibit, at the conclusion of the call
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`and once you have the transcript back, a copy of the
`
`transcript of the call. That would be appreciated.
`
` MR. STERNE: No problem.
`
` JUDGE TARTAL: Thank you.
`
` And for Petitioner who do we have on
`
`the call today?
`
` MR. SAYRES: Yes. Good afternoon,
`
`Your Honor. My name is Joel Sayres. I am backup
`
`counsel for the Petitioner. With me on the call as
`
`well is lead counsel, Walt Linder.
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`Page 4
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` JUDGE TARTAL: Okay. Thank you.
`
` Patent Owner requested the call and
`
`in their request they indicated that they sought
`
`additional discovery of an unredacted version of
`
`Schedule 5.5(A). So I will allow Patent Owner to
`
`address the issue they want to raise at this time.
`
` MR. STERNE: Thank you, Your Honor,
`
`and good afternoon. Thank you for granting Capella
`
`this call.
`
` Our requested relief, Your Honor, is
`
`we have requested this call to ask the Board to
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`compel Petitioner to serve under Additional
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`Discovery Rule 42.51(b)(2) an unredacted copy of
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`Schedule 5.5(A).
`
` Now, a little bit of background
`
`because we have been discussing this before. The
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`Petitioners used Schedule 5.5(A) to represent that
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`Lumentum is now the RPI in these proceedings. On
`
`its face Schedule 5.5(A) is not about inter partes
`
`review proceedings. It only lists a District Court
`
`caption. In quotes it says: Capella v. JDSU
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`Customers.
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` This is supported by the language of
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`Lumentum's 8-K SEC filing defining the assumed
`
`actions, as they are called, to mean, quote, those
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`Page 5
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`actions in which any member of the JDSU group or any
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`affiliate of a member of the JDSU group is a
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`defendant or the party against whom the claim or
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`investigation is directed, closed quote. And this
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`is found at Page 59 of Exhibit 1037.
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` Petitioner asserted that Schedule
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`5.5(A) proves -- and we quote -- Lumentum
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`Operations, LLC, assumed responsibility of...this
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`proceeding, closed quote. And this is in
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`Petitioner's motion to recaption at Page 3.
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` But since the unredacted part of
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`Schedule 5.5(A) does not list an inter partes review
`
`proceeding, we have a contradiction here. We have a
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`contradiction because Viavi, according to Lumentum's
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`8-K SEC filing, is JDSU's direct corporate
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`descendent. And this is found at Page 2, Page 14,
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`and Page 68 of Exhibit 1037.
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` Therefore, Viavi would retain control
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`over cases not listed, over cases not listed in
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`Schedule 5.5(A) of the Contribution Agreement, and
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`from those portions of Schedule 5.5(A) we can see
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`these inter partes review proceedings are not
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`listed, they're just not listed.
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` So from what we know, how can the
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`Lumentum entities state on the record here that they
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`Page 6
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`are the only RPIs in these proceedings?
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` Capella therefore asks for additional
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`discovery in the form of an unredacted copy of
`
`Schedule 5.5(A) and if Your Honors would like, we
`
`can now explain why Capella's request satisfies the
`
`Garmin factors.
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` JUDGE TARTAL: You can address that
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`briefly. I think the first question I would have is
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`whether you can address the relevance of what you're
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`seeking in the unredacted version of Schedule 5.5(A)
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`since, by virtue of the redactions, Petitioner has
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`already made their representation that no additional
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`information on that document is relevant to this
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`proceeding.
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` MR. STERNE: Yes, Your Honor. But as
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`we said before, the 5.5(A) redacted copy, there is
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`no inter partes review proceeding listed. You know,
`
`the caption of the case is a District Court caption.
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`It's not an inter partes review caption.
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` And, as I said, if you look at
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`5.5(A), what you see, as we said before, it's the
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`JDSU group is a defendant or the party against whom
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`the claim or investigation is directed and therefore
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`this document does not speak in any way to an
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`inter partes review.
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` JUDGE TARTAL: Understood, counsel.
`
`But what is it that you're seeking discovery of from
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`that document if Petitioner has already essentially
`
`acknowledged that the only relevant information is
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`the information that's produced in the redacted
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`form?
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` MR. STERNE: You know, we have a
`
`threshold amount of information beyond speculation
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`that something useful will be uncovered. We know
`
`that 5.5(A) exists.
`
` We also know that portions left
`
`unredacted do not list an inter partes review
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`proceeding despite Lumentum's contending that
`
`Schedule 5.5(A) proves that, quote, Lumentum
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`Operations, LLC, assumed responsibility of this
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`proceeding, which was stated at Page 3 of
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`Petitioner's motion for recaption.
`
` So it's therefore useful and
`
`necessary, we submit, to see the unredacted portions
`
`of Schedule 5.5(A); and viewing 5.5(A) is favorable
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`in substantive value to Capella's contention that
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`Viavi, Your Honor, Viavi, should also be an RPI
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`listed in these proceedings.
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` JUDGE TARTAL: Counsel, do you want
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`to briefly address the Garmin factors? And, again,
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`I would ask just briefly, because at this stage you
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`are only seeking authorization to request the
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`additional discovery, so this isn't on the merits.
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` MR. STERNE: Yes, that's correct.
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`And, Your Honor, I believe that I just essentially
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`addressed the first Garmin factor, which is more
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`than a possibility and a mere allegation. So I
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`would like to address the other four.
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` Factor No. 2, of course, is
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`litigation positions and underlying positions.
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`We're not asking for litigation positions because
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`according to the Petitioner, Schedule 5.5(A)
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`includes a list of assumed actions, and that's at
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`Page 13, Exhibit 2035.
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` The third factor, the ability to
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`generate equivalent information by other means, as
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`you know, Schedule 5.5(A) is a private document.
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`Despite our best efforts, Capella has not been able
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`to obtain this information through any other means.
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` Factor No. 4, easily understood
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`instructions, the unredacted Schedule 5.5(A) is an
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`easily understandable instruction, obviously.
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` And in terms of Factor No. 5, request
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`not overly burdensome, the request is not overly
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`burdensome, we submit, because Petitioners already
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`Page 9
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`have possession of this document.
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` So we believe -- or we don't
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`believe -- we assert, Your Honor, that all of the
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`Garmin factors are satisfied here clearly. All
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`we're asking for is an unredacted version of 5.5(A).
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` JUDGE TARTAL: Okay. Thank you,
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`counsel.
`
` Let me turn to counsel for Petitioner
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`and give you an opportunity to respond, and it would
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`be helpful, to the extent that it's appropriate, for
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`you to give some indication as to the nature of the
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`information that's been redacted and your position
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`on whether or not any of that is relevant.
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` I understand in doing the redaction
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`the understanding is that you were redacting
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`information that was not relevant to this
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`proceeding. Any additional characterization you can
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`provide would be helpful. So please feel free to
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`respond at this time.
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` MR. SAYRES: Yes. Thank you, Your
`
`Honor. Again, this is Joel Sayres. I want to just
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`briefly address what counsel for Patent Owner said,
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`but also take a step back kind of, you know, setting
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`out how we got here and where we are.
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` You know, this all started with our
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`motion to recaption, you know, with an
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`administrative matter to accurately caption the
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`case, and Patent Owner is now trying to turn it into
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`an RPI issue despite no evidence and no diligence.
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` So we filed the motion to recaption
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`based on a corporate reorganization that happened
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`and we filed an updated notice on that on
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`September 15th, over five months ago.
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` With our motion to recaption we
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`submitted evidence, an 8-K, which included a
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`Contribution Agreement, which were publicly
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`available, and this evidence on which we relied for
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`our motion to recaption as to the proper RPI in this
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`case set forth that the business segment of JDSU,
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`the communications and commercial optical products,
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`which includes businesses related to optical telecom
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`equipment and lasers, which is generally a field
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`related to the challenged patents here, that that
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`business unit was spun out to the Lumentum entities.
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` So when Patent Owner today has said
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`that Petitioner used 5.5(A) to represent that
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`Lumentum is the IPR in the proceeding and that
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`Lumentum assumed responsibilities for the assumed
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`actions, this is a statement that Patent Owner has
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`made in the past, including on a conference call on
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`February 2nd among the parties and the Board, and if
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`you look at the motion to recaption, that's actually
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`not an accurate statement.
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` The motion to recaption relies on the
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`8-K and Contribution Agreement, the publicly
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`available document, and it cites to several
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`provisions that set forth how this business unit was
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`spun off from JDSU into the Lumentum entities and
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`also includes a definition of what assumed actions
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`the Lumentum entities assumed. And I'll get to that
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`in a second.
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` And we also cited to that provision,
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`that assumed action provision. We included a
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`footnote, not as meant to be a specific
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`identification as to specific actions that were to
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`be assumed, but the description of the type of
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`assumed actions, and the assumed action provision of
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`the Contribution Agreement isn't limited to what's
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`on Schedule 5.5(A).
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` So when Patent Owner says that we
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`relied on 5.5(A) and Patent Owner has said that
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`several times, that's not accurate. It was we rely
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`on the Contribution Agreement and the many
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`provisions in that Contribution Agreement.
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` Now, we submitted that and the Board
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`granted our motion to recaption. Patent Owner did
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`not oppose that motion and the Board granted it. So
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`we're beyond that issue.
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` And just as an aside, the Board also
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`in its February 5th order granting that motion said
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`it specifically did not rely on that schedule,
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`5.5(A), and on the call with the parties the
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`Petitioner agreed that it would be willing to
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`expunge that from the record. It was just meant as
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`further indication of further additional evidence.
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` Now, when the Patent Owner has
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`already raised this issue about Schedule 5.5(A),
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`it's already been decided. The Patent Owner
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`previously requested an unredacted copy of it and
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`the Board ordered it produced as part of routine
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`discovery, but in its February 5th order
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`specifically said that Petitioner was not required
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`to produce a complete unredacted copy of 5.5(A).
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` So we would submit that this issue
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`has already been decided and there's been nothing
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`new, there's been no new developments or information
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`or anything to warrant a request for additional
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`discovery.
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` But taking a step back, now that the
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`motion to recaption has been granted, what Patent
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`Owner is doing here is turning this administrative
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`issue into an RPI issue and now they're weighing
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`what we submitted to support our motion to recaption
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`and using it to weigh whether or not there is an RPI
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`issue here.
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` But as we established on the
`
`February 2nd call and as reflected in the Board's
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`February 5th order, and I'm going to quote directly
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`from the Board's order here: Patent Owner conceded
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`that it has no evidence to dispute the
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`identification of the real parties in interest
`
`provided by Petitioner. And that remains true
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`today. The only thing they're pointing to is this
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`schedule that was not what we solely relied on in
`
`our motion to recaption and we're beyond that at
`
`this point.
`
` So essentially Patent Owner is
`
`putting the cart before the horse, arguing that
`
`there's an RPI issue, when it already conceded that
`
`it has no evidence to that fact. So at least as to
`
`the first Garmin factor, it doesn't have evidence
`
`that it's already in possession of to suggest
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`there's an RPI issue.
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` Now, on to the second point, the
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`Patent Owner has said, you know, the Schedule
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`5.5(A), if you want to discuss that schedule
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`specifically, Patent Owner represented that it only
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`represents a District Court caption, and that's just
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`not true.
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` The Schedule 5.5(A) -- and you can
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`see this even from the redacted copy -- does not
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`list any District Court actions. It's not limited
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`to District Court actions. It doesn't purport to
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`identify District Court actions.
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` It states -- and we've said this
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`several times before -- it lists Capella versus JDSU
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`Customers, that statement. It doesn't limit it to
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`any District Court action.
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` And, more importantly, the assumed
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`actions provision of the contract does not limit
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`anything to District Court actions. Rather, the
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`definition of "action" is itself defined as any
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`investigation of any nature, including before
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`governmental authorities. And nothing in that
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`assumed action provision is limited to District
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`Court actions.
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` So what we have here is we produced
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`ample evidence to support our motion to recaption.
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`We did not rely, contrary to what Patent Owner said,
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`exclusively on Schedule 5.5(A). But now that we've
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`gone past this issue and the motion has been
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`granted, Patent Owner is trying to make an RPI issue
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`into it.
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` As to the other information that was
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`redacted on that, I mean, I guess what we could
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`represent to you is it lists other types of actions
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`that have nothing to do with Capella, with this
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`proceeding. They are entirely unrelated to anything
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`that has to do with this proceeding.
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` JUDGE TARTAL: Thank you, counsel.
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` If Patent Owner would like to respond
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`very briefly and, in particular, if Patent Owner has
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`any response to Petitioner's acknowledgment that
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`there is no basis for Patent Owner to assert the
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`redacted material is relevant to this proceeding;
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`that it, in fact, deals with actions that have
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`nothing to do with Capella. If Patent Owner has any
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`response, please proceed.
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` MR. STERNE: Your Honor, I mean, I'll
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`be very brief. We're talking about the Contribution
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`Agreement. We're talking about Page 34 of the
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`Contribution Agreement where at 5.5(A) it says:
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`5.5(A) Litigation; Cooperation. 5.5(A) says: As of
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`the effective time -- and we know that the
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`reorganization occurred after the filing of the
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`IPRs -- As of the effective time, Lumentum shall
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`assume and thereafter, except as provided in Article
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`5, be responsible for the administration of all
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`liabilities -- all liabilities -- that may result
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`from the assumed actions and all fees and costs
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`relating to the defense of the assumed actions,
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`including attorneys' fees and costs incurred after
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`the effective time.
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` And then it defines the assumed
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`actions, as I said before, which means those actions
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`in which any member of the JDSU group or any
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`affiliate of a member of the JDSU group is a
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`defendant -- defendant, not petitioner -- or the
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`party, or the party against whom the claim or
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`investigation is directed, closed quote, primarily
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`relating to Lumentum business or Lumentum assets
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`(including actions, if any, allocated to Lumentum
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`under the Employee Matters Agreement but excluding
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`actions allocated to JDSU under the Employee Matters
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`Agreement), and then including the actions,
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`including the actions listed in Schedule 5.5(A).
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` Now, the point here is we have a
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`corporate reorganization. RPI does not go away. We
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`haven't made this up. RPI is a critical factor
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`throughout these entire proceedings. And the fact
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`of the matter is that 5.5(A) has been given to us in
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`a redacted form. We have no idea why it has been
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`redacted.
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` But we have no idea why we should not
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`assume that when they assigned these rights from
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`JDSU to Lumentum, they didn't also assign control,
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`because if they assigned the rights, they have to
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`assign the control.
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` So this goes to issues such as
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`indemnification, and we know from other proceedings
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`before the Board that indemnification issues can
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`result in a violation of real party in interest.
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` So I do not understand what my
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`opponent is saying today that we have waived our
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`ability or right to argue this. All we want to know
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`is what's on Schedule 5.5(A).
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` JUDGE TARTAL: Thank you, counsel.
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` If both parties can hold for a
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`moment, the panel will discuss the issues and rejoin
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`the call just shortly. So please just hold the
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`call.
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` - - -
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` (Whereupon there was a recess in the
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`proceedings.)
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` - - -
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` JUDGE TARTAL: Counsel, we have
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`returned.
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` To confirm who is on the call, do we
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`have a representative from Patent Owner?
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` MR. STERNE: Yes, Your Honor, Patent
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`Owner is here.
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` JUDGE TARTAL: And for Petitioner?
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` MR. SAYRES: Yes, Your Honor,
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`Petitioner is here.
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` JUDGE TARTAL: Thank you.
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` The panel has discussed the issues
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`raised and we are denying Patent Owner's request for
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`discovery related to Schedule 5.5(A) and the reasons
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`include, first, Petitioner has represented that the
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`information that's been redacted is not relevant to
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`this proceeding and, in fact, has no relationship to
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`Capella or the IPR proceedings that are at issue, so
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`there has been no showing of any likelihood of
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`obtaining anything relevant to this proceeding from
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`that document.
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` We also note that the issues Patent
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`Owner raised suggest that Patent Owner is, in fact,
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`attempting to investigate Petitioner's compliance
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`with its identification of the real parties in
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`interest, which is a practice expressly rejected by
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`the Office during the adoption of the AIA rules, and
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`that's set forth in the Trial Practice Guide 77 Fed.
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`Reg. at 48760, Response to Comment No. 10.
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` We note that the issue that was
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`raised in the call was just whether or not Patent
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`Owner had demonstrated the necessary showing to
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`obtain discovery of an unredacted version of
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`Schedule 5.5(A).
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` Again, because there has been no
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`indication that any information that was redacted
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`was relevant to this proceeding and the information
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`that was redacted was not relied upon by either
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`Petitioner or the Board, Patent Owner's request is
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`therefore denied.
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` Are there any additional questions
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`from Patent Owner at this time?
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` MR. STERNE: Not at this time, Your
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`Honor.
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` JUDGE TARTAL: Thank you.
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` Any additional questions from
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`Petitioner at this time?
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` MR. SAYRES: No, Your Honor. Thank
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`you.
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` JUDGE TARTAL: Okay. Thank you,
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`counsel, and have a good afternoon.
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` MR. SAYRES: You as well. Thank you.
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` JUDGE TARTAL: This call is
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`adjourned.
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` - - -
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` (Whereupon the conference call
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`adjourned at 3:58 p.m.)
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` - - -
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` C E R T I F I C A T I O N
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`Page 21
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` I, Susan Marie Migatz, RMR, CRR, do hereby
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`certify the foregoing is a true and correct
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`transcript from the conference call held in the
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`proceedings in the above-entitled matter.
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`<%signature%> February 25, 2016
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`____________________________ _________________
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`SUSAN MARIE MIGATZ, RMR, CRR DATE
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`adoption 19:1
`affiliate 5:2 16:12
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`allow 4:5
`amount 7:8
`ample 14:23
`appeal 1:4
`appearances 2:1
`appreciated 3:17
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`argue 17:15
`arguing 13:18
`article 16:2
`aside 12:4
`asking 8:11 9:5
`asks 6:2
`assert 9:3 15:14
`asserted 5:6
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`assign 17:6,8
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`best 8:18
`beyond 7:8 12:3
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`bit 4:15
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`board's 13:7,9
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`businesses 10:16
`c
`c 1:18 2:3 21:2,2
`call 3:2,3,6,13,15,17
`3:21,24 4:2,9,11
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`called 4:25
`capella 1:8 4:8,21
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`communications
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`diligence 10:4
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`directed 5:4 6:23
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`document 6:13,24
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`e 21:2
`easily 8:20,22
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`equipment 10:17
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`13:19,23 15:1,2
`18:17 19:4
`issues 17:9,11,19
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`j 2:12
`james 1:18
`jason 2:11 3:9
`jasone 2:14
`jds 1:6
`jdsu 4:21 5:1,2 6:22
`10:14 11:8 14:11
`16:11,12,19 17:6
`jdsu's 5:15
`joel 2:6 3:23 9:21
`joel.sayres 2:8
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`josiah 1:18
`judge 3:1,2,14,19
`4:1 6:7 7:1,24 9:6
`15:10 17:17 18:1,7
`18:10 19:19,24 20:2
`judges 1:19 3:3
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`10:10 11:5
`kalyan 1:19
`kessler 2:10
`kind 9:23
`know 5:24 6:17 7:7
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`10:1 13:25 15:24
`17:10,15
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