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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EMERSON ELECTRIC COMPANY, )
`
`Petitioner,
`
`)
`
`)
`
`vs.
`
`) Case Nos.
`
`) IPR2015-01973
`
`) IPR2016-00984
`
`SIPCO, LLC,
`
`)
`
`Patent Owner. ) 8,013,732
`
`) Patent Nos.
`
`-------------------------- ) 8,754,780 B2
`
`PTAB CONFERENCE CALL
`
`Thursday, November 29, 2018
`
`Reported by:
`
`Stacey L. Daywalt
`
`JOB NO. 151765
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 1 of 19
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EMERSON ELECTRIC COMPANY, )
`
`Petitioner,
`
`)
`
`)
`
`vs.
`
`) Case Nos.
`
`) IPR2015-01973
`
`) IPR2016-00984
`
`SIPCO, LLC,
`
`)
`
`Patent Owner. ) 8,013,732
`
`) Patent Nos.
`
`-------------------------- ) 8,754,780 B2
`
`PTAB CONFERENCE CALL
`
`Thursday, November 29, 2018
`
`Reported by:
`
`Stacey L. Daywalt
`
`JOB NO. 151765
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 1 of 19
`
`
`
`Page 2
`
` Thursday, November 29, 2018
`
` 11:59 a.m.
`
` PTAB Conference Call, held before
`
`Administrative Patent Judges Stacey G. White,
`
`Lynne E. Pettigrew and Christa P. Zado, before
`
`Stacey L. Daywalt, a Court Reporter and Notary
`
`Public of the District of Columbia.
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`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 2 of 19
`
`
`
`Page 3
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`A P P E A R A N C E S:
`
`(All appearances are telephonic)
`
` ROPES & GRAY
`
` Attorneys for Petitioner
`
` 1900 University Avenue
`
` East Palo Alto, California 94303
`
` BY: JAMES DAVIS, JR., ESQ.
`
` GONSALVES LAW FIRM
`
` Attorneys for Patent Owner
`
` BY: GREGORY GONSALVES, ESQ.
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`TSG Reporting - Worldwide 877-702-9580
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`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 3 of 19
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`ADMINISTRATIVE PATENT JUDGE: Hello.
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`This is Judge White. With me on the line are
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`Judges Zado and Pettigrew.
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`Do we have anyone on the line for
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`Patent Owner?
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`MR. GONSALVES: Yes, this is Gregory
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`Gonsalves for the Patent Owner.
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`ADMINISTRATIVE PATENT JUDGE: Do we
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`have anyone on the line for Petitioner?
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`MR. DAVIS: Yes, Your Honor, Jim
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`Davis of Ropes & Gray is on for the Petitioner,
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`as well as Steve Pepe.
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`ADMINISTRATIVE PATENT JUDGE: Okay.
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`And did anyone arrange for a court
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`reporter?
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`MR. DAVIS: Yes, Your Honor. This
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`is Jim Davis again. We have, and they -- or
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`she's on the line.
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`And we will submit a transcript
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`after we receive the final from the court
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`reporter.
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`ADMINISTRATIVE PATENT JUDGE:
`
`Excellent. All right.
`
`Well, we're on the line today to
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 4 of 19
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`discuss issues in two cases, 2016-00984 and
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`2016-01973.
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` We will start with the 1973 IPR,
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`discuss those issues, and then move on to the
`
`984 IPR and discuss those issues. So we'll
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`handle them one at a time because the issues
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`are different.
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` So is everyone clear as to --
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` MR. DAVIS: Yes, Your Honor. This
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`is Petitioner. We're clear. Thank you.
`
` ADMINISTRATIVE PATENT JUDGE: All
`
`right. So let's start with the 1973 case.
`
` We have that one in the position now
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`where we can start getting rolling on this
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`post-Federal Circuit phase of that case. And
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`we had some preliminary discussions when the
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`decision first came out about whether there
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`would be any briefing and, if so, what sort of
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`briefing.
`
` So let's start with Petitioner.
`
`What is your current thinking as to briefing or
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`no briefing that you would be interested in in
`
`this matter?
`
` MR. DAVIS: Yes, Your Honor.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 5 of 19
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` I think our thinking -- and I think
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`I'm guessing that the parties' positions have
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`remained the same -- is that we would request
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`leave to submit a brief five-page paper with a
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`five-page response following then from the
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`Patent Owner and a two-page reply from
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`Petitioner. That's what I -- my notes say from
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`our last call back in August, and that's still
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`our position.
`
` I can explain further, if that would
`
`be helpful.
`
` ADMINISTRATIVE PATENT JUDGE: I
`
`would be interested to hear what you think the
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`scope of that briefing would be, because what
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`the Federal Circuit has directed us to do is
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`for the board to explain its analysis and to
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`provide a further elucidation on what our
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`thinking was to reach the conclusions that we
`
`came to.
`
` So what sort of briefing does the
`
`Petitioner think that we need in order to
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`provide the explanations required by the
`
`Federal Circuit?
`
` MR. DAVIS: Yes, Your Honor.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 6 of 19
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` And the briefing would be focused
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`solely on the issue of motivation to combine,
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`because I think that is the crux of the issue
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`that the Federal Circuit was identifying. The
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`focus of it would be solely to identify where
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`in the record the evidence and argument had
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`been made as to the motivation to combine.
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` And then, respectfully, we would, as
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`part of that, also want to submit or show that
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`that same evidence and argument concerning, you
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`know, the prior art, the admitted prior art,
`
`and the expert testimony is also before the
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`board in the 984 proceeding, with the exception
`
`of the Greeves reference, which was just used
`
`for -- as confirmatory evidence; and show how,
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`when weighing -- when those pieces of evidence
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`are considered, because I think part of what
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`the Federal Circuit was pointing out here
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`was -- in terms of a difference was in the 984
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`proceeding, passages of the Kahn reference that
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`were cited, as well as passages in the admitted
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`prior art, both of which, Petitioner believes,
`
`lead to the only possible conclusion that there
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`would have been a motivation to combine. Where
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`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 7 of 19
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`addressed in that 984 proceeding, those same
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`things were cited and that same evidence and
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`testimony was cited in the 1973 proceeding but
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`not fully addressed.
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`And I think when addressed, there
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`can only be one possible result here, and it's
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`that it would be obvious to used wireless
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`instead of wired in light of Kahn's teachings,
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`for example, juxtaposing fixed plant
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`installations, e.g. wired installations, versus
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`mobile -- e.g. wireless installations and the
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`benefits of the flexibility and
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`re-configurability identified in Kahn, as well
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`as the recognition in the admitted prior art,
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`for example, in the '732 at Column 5, Lines 54
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`to 61 of it being recognized and known in the
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`prior art that it was expensive and dangerous
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`potentially to have these fixed wired
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`installations. Both of those things, as found
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`in the 984 proceeding, would have motivated a
`
`person of ordinary skill in the art to use
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`wireless as opposed to wired.
`
`So that would be the essence of what
`
`we'd like to point out, Your Honor.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 8 of 19
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` ADMINISTRATIVE PATENT JUDGE: And I
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`think that there's a fine line here because
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`we've not been charged to enter in any sort of
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`new -- entertain any sort of new arguments at
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`this stage. It's really a matter of explaining
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`what the differences are and what they mean,
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`which is a much more limited inquiry.
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` And so I'm hesitant on what type of
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`briefing, if any, that we're going to do here
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`because I don't want to introduce anything new
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`at this point.
`
` MR. DAVIS: And I understand, Your
`
`Honor. And this is Jim Davis again.
`
` I understand that perspective, Your
`
`Honor. And all the things that I just
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`mentioned and the only things that we would be
`
`pointing to are things -- and we would point to
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`precisely where they are in the record. It
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`wouldn't be anything new.
`
` And we would respectfully ask
`
`permission to point out how they're also in --
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`that same evidence and argument, you know,
`
`almost verbatim in -- for example, in the
`
`expert testimony, and of course the Kahn
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`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 9 of 19
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`reference is the same and the specs are the
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`same between the '780 and the '732. We would
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`point out all those same things were in front
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`of the board. They were all the same. And
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`that's all we're asking permission to point
`
`out, is the things that are already existing in
`
`the record.
`
` ADMINISTRATIVE PATENT JUDGE: Okay.
`
` Patent Owner, let me hear from you
`
`on this.
`
` MR. GONSALVES: Yes, Your Honor.
`
`Thank you.
`
` My position is still the same. I
`
`interpret the Federal Circuit's remand for the
`
`board to just give an explanation as to the two
`
`different decisions in the two different IPRs.
`
` Also, with respect to motivation to
`
`combine, that issue was already fully briefed,
`
`and so there's no need to do it all over again.
`
`So my position is, given that the Federal
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`Circuit wanted an explanation from the board,
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`given that the records are different, for
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`instance, Greeves was in one and not in the
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`other and -- that's number two.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 10 of 19
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` And number three, the motivation to
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`combine issue has already been fully briefed in
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`the papers that are already on file in this
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`IPR, so there's no need to do it all over
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`again.
`
` ADMINISTRATIVE PATENT JUDGE:
`
`Petitioner, what is it that we would get from
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`this briefing that we would not get from just
`
`taking another look at the briefing that's
`
`already before us?
`
` We already have a fully briefed case
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`that's been -- that we've gone through. We've
`
`had an oral hearing, and we've definitely had
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`discussions about motivation to combine. So
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`it's not that you haven't had an opportunity to
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`make your argument.
`
` So what additional insight would we
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`get from a round of briefing that we wouldn't
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`get from just rereading the papers that we
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`already have?
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` MR. DAVIS: Yes, Your Honor. Thank
`
`you for the question. This is Jim Davis again.
`
` I think two things. One is it
`
`would -- just as in the Federal Circuit, for
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 11 of 19
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`example, as Your Honors are aware, you can get
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`notices of supplemental authority on explaining
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`kind of the -- why that's relevant.
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`Here, we have the decision in the
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`'780 that is directly on point here, so there's
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`a desire to point that out, and those
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`similarities, not just in the importance of
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`that decision but also in the identical nature
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`of the evidence.
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`And then as part of that, it would
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`be a road map that they have that that same
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`evidence is also here and dictates that same
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`results.
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`Those are the two things I think
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`that would be beneficial here.
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`ADMINISTRATIVE PATENT JUDGE: Patent
`
`Owner, what do you think about that? What is
`
`your response to that argument?
`
`MR. GONSALVES: Well, my response is
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`that the board is perfectly capable of looking
`
`at the records in the two cases and determining
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`when they're similar and when they're
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`different, that you don't need additional
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`briefing to point that out. All of that
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 12 of 19
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`information is already before you.
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` ADMINISTRATIVE PATENT JUDGE: All
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`right. Let me speak to my panel for a second.
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`I'll just put you on mute.
`
` (Recess was held from 12:10 p.m. to
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`12:11 p.m.)
`
` ADMINISTRATIVE PATENT JUDGE: This
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`is Judge White again.
`
` We have heard from the parties on
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`this. We're going to take this under
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`advisement and issue an order shortly giving
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`our decision as to whether there will be
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`briefing, and if so, what the scope and length
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`of such briefing would be, if it's allowed.
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` So we'll be addressing this in the
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`very near term so we get this case under way.
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` So unless there's any other
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`questions on the 1973, we can switch over to
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`the 984.
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` MR. DAVIS: Yes, Your Honor. This
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`is Jim Davis.
`
` We understand and appreciate you
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`hearing our position on that. Thank you.
`
` ADMINISTRATIVE PATENT JUDGE: All
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 13 of 19
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`right. Then let's switch over to the 984.
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` ADMINISTRATIVE PATENT JUDGE ZADO:
`
`Okay. This is Judge Zado. And as Judge White
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`just indicated, we're switching now to discuss
`
`IPR2016-00984.
`
` And we just had a couple questions
`
`for the parties today, or a few questions for
`
`the parties today.
`
` And I'll start with Petitioner. I
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`don't think we need to go in any particular
`
`order, but we just -- and first, we'd like to
`
`know -- and we understand there's a District
`
`Court proceeding that has been stayed involving
`
`both parties and that the '732 patent --
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`sorry -- that the '780 patent, the patent
`
`that's challenged in IPR 984, we wanted to know
`
`whether the '732 patent has been asserted by
`
`Petitioner in that case as invalidating art to
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`the '780 patent.
`
` MR. DAVIS: Yes, Your Honor. This
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`is Jim Davis. Thank you for the question.
`
` It has been that, as Your Honor --
`
`Your Honor's correct that there was a District
`
`Court litigation that was originally filed in
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 14 of 19
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`Page 15
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`Texas and then was transferred and consolidated
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`in the Northern District of Georgia. And as
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`part of the invalidity contentions there, those
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`were filed after -- those were served rather
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`after the IPRs were all -- were on file.
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` And so Emerson has incorporated by
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`reference all -- they're making the exact same
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`arguments, because it's simply incorporated by
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`reference the petitions and arguments and
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`evidence in those IPRs, that that exact same
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`argument was being made.
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` The '780 patent then was
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`subsequently -- the Patent Owner needed to do a
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`subsequent election of claims to assert, and
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`they elected to drop all of the claims
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`concerning the '780 patent that was well after
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`the IPR process was well along the way. I
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`think they made that election in December 9th,
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`2016.
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` ADMINISTRATIVE PATENT JUDGE ZADO:
`
`Okay. So then if I understand correctly, the
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`'780 patent is no longer at issue in District
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`Court?
`
` MR. DAVIS: Correct, it was dropped.
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 15 of 19
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`Page 16
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` I can't say Sipco won't try to raise
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`that again. And obviously, Emerson would
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`object if they do, arguing that it would be
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`barred.
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` But Emerson, in filing the IPR,
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`decided to raise these issues, this cause of
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`action, in front of the board and get a
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`determination on invalidity based off of the
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`'732 as to the best time.
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` ADMINISTRATIVE PATENT JUDGE ZADO:
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`Okay.
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` And Patent Owner, do you have
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`anything you want to add to that or any
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`clarification to what Petitioner has just
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`indicated?
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` MR. GONSALVES: No.
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` It's also my understanding that the
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`'780 patent is no longer at issue in the
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`District Court litigation.
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` ADMINISTRATIVE PATENT JUDGE ZADO:
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`Okay.
`
` Let me confer briefly with my
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`colleagues to see if we have any more questions
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`about the 984 case for today.
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`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 16 of 19
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`Page 17
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` (Recess was held from 12:15 p.m. to
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`12:15 p.m.)
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` ADMINISTRATIVE PATENT JUDGE ZADO:
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`Okay. Thank you, everyone, for your time today
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`in joining us on this call.
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` And unless there -- are there any
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`other issues with regard to the 984 that the
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`parties would like to raise before we adjourn?
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` Petitioner, any further questions or
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`comments?
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` MR. DAVIS: No, Your Honor.
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` Obviously, the briefing is all in.
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`And if the board would prefer to have any oral
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`argument on that, either telephonically or in
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`person, Petitioner is available. But whatever
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`the board's preference is is fine with
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`Petitioner.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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` And Patent Owner, anything else on
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`the 984?
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` MR. GONSALVES: No, other than I
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`think it's been fully briefed, and I don't
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`think an oral argument or a hearing is
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`necessary.
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`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 17 of 19
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`Page 18
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` PTAB Conference Call
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` ADMINISTRATIVE PATENT JUDGE ZADO:
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`Okay. Well, thank you both for that input.
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` And we'll go ahead and we'll
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`adjourn. Thank you, everyone.
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` (Time Noted: 12:16 p.m.)
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`TSG Reporting - Worldwide 877-702-9580
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`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 18 of 19
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`Page 19
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`District of Columbia, to wit:
`
`I, Stacey L. Daywalt, a Notary
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`Public of the District of Columbia, do hereby
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`certify that the proceedings were recorded
`
`stenographically by me and this transcript is a
`
`true record of the proceedings.
`
`I further certify that I am not of
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`counsel to any of the parties, nor an employee
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`of counsel, nor related to any of the parties,
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`nor in any way interested in the outcome of
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`this action.
`
`As witness my hand and Notarial Seal
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`this 4th day of December, 2018.
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`_______________________________________
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`Stacey L. Daywalt, Notary Public
`
`My Commission Expires: 4/14/2021
`
`TSG Reporting - Worldwide 877-702-9580
`
`Petitioner Emerson Electric Co.
`Exhibit 1014
`Page 19 of 19
`
`
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