Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`In the Matter of:
`----------------------------------------x
`PETITION FOR
`INTER PARTES REVIEW BY
`TITEFLEX CORPORATION,
`PTAB-IPR2016-00753, PTAB-IPR2016-00754,
`PTAB-IPR2016-00755
`----------------------------------------x
`
` TELEPHONE CONFERENCE
` Monday, December 12, 2016
`
`B E F O R E: JUDGE GEORGIANNA WITT BRADEN
` JUDGE TRENTON A. WARD
` JUDGE KARL D. EASTHOM
`
`Reported by:
`Amy A. Rivera, CSR, RPR, CLR
`JOB NO. 116910
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`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 1
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`In the Matter of:
`----------------------------------------x
`PETITION FOR
`INTER PARTES REVIEW BY
`TITEFLEX CORPORATION,
`PTAB-IPR2016-00753, PTAB-IPR2016-00754,
`PTAB-IPR2016-00755
`----------------------------------------x
`
` TELEPHONE CONFERENCE
` Monday, December 12, 2016
`
`B E F O R E: JUDGE GEORGIANNA WITT BRADEN
` JUDGE TRENTON A. WARD
` JUDGE KARL D. EASTHOM
`
`Reported by:
`Amy A. Rivera, CSR, RPR, CLR
`JOB NO. 116910
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`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 1
`
`
`
`Page 2
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` December 12, 2016
` 2:30 p.m.
`
` TRANSCRIPT of a telephone conference
`held before Amy A. Rivera, Certified Shorthand
`Reporter, Registered Professional Reporter,
`Certified LiveNote Reporter, and a Notary Public of
`the States of New York, New Jersey, and Delaware.
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`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 2
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`Page 3
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` TELEPHONE CONFERENCE
`A P P E A R A N C E S:
`GOODWIN PROCTER
`Attorneys for Patent Owner
` 901 New York Avenue, N.W.
` Washington, D.C. 20001
`BY: THOMAS SCOTT, ESQ.
` APRIL WEISBRUCH, ESQ.
`
`KIRKLAND & ELLIS
`Attorneys for Petitioner
` 300 North LaSalle
` Chicago, Illinois 60654
`BY: JOEL MERKIN, ESQ.
` MARCUS SERNEL, ESQ.
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`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 3
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` JUDGE BRADEN: This is in reference to
`IPR2016-00753, IPR2016-00754, and
`IPR2016-00755.
` I am Judge Georgianna Braden with the
`United States Patent and Trademark Office.
`And on the line with me are Judges Easthom
`and Ward.
` And before we go in with the substance
`of our call, go ahead and tell me who's on
`the line for patent owner, please?
` MR. SCOTT: Thomas J. Scott, Jr. I'm a
`general counsel of PMC. And with me is
`April Weisbruch of the law firm of Goodwin
`Procter or Goodwin.
` JUDGE BRADEN: Anyone else on the line
`for patent owner?
` MR. SCOTT: No, your Honor.
` JUDGE BRADEN: Very good.
` And who is the call for petitioner,
`please?
` MR. MERKIN: Your Honor, Joel Merkin
`of Kirkland & Ellis. And with me is Marc
`Sernel, also of Kirkland.
` JUDGE BRADEN: Anyone else on the line
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 4
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`
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`Page 5
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`for petitioner?
` MR. MERKIN: No one else.
` JUDGE BRADEN: Very good, thank you.
` And, obviously, we have a court
`reporter on the line, and I will expect that
`patent owner will please file a copy of the
`transcript as an exhibit in each proceeding
`in which a motion to amend is filed.
` MR. SCOTT: Yes, we will do that.
` JUDGE BRADEN: Very good, thank you.
` And I understand that this call was
`requested by patent owner regarding motions
`to amend -- to amend certain claims in the
`proceeding 753, 754, and 755. Is that
`correct?
` MR. SCOTT: That is correct.
` JUDGE BRADEN: And does patent owner
`intend to file a motion to amend in all
`three of the proceedings before the board?
` MR. SCOTT: Yes.
` JUDGE BRADEN: All right. And just to
`confirm, the deadline for the filings of the
`motions to amend per the scheduling order is
`this Friday, December 16, 2016.
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 5
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` Do you understand that to be correct?
` MR. SCOTT: Yes, we understand that to
`be correct.
` JUDGE BRADEN: All right.
` And counsel for patent owner, does
`patent owner intend to cancel any claims, or
`does patent owner plan on filing substitute
`claims?
` MR. SCOTT: In the three IPRs at issue
`here, we intend to file substitute claims.
` JUDGE BRADEN: Okay. Very good.
` So the reason why the Board likes to
`have these calls is that we'd like to cover
`some points and make sure that everyone's
`aware of the relevant rules and in certain
`cases that address motions to amend.
` Now, we understand that oral arguments
`have been held before the Federal Circuit in
`the Aqua Products case, but there hasn't
`been a ruling or a holding in that case yet.
`Therefore, the rules that I'm going to cover
`and the cases that I cover on this call are
`still in force at this time.
` And as I'm sure you probably
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 6
`
`
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`understand, considering that it's less than
`a week away, the rules that govern motions
`to amend are set forth in 35 U.S.C. Section
`316(d) and rule -- rules under 37 CFR
`421. -- I'm sorry -- .121. And under those
`rules, it is patent owner's burden for the
`motion to amend.
` That means that this is not
`prosecution. This is not a reexamination.
`There's no examination before an examiner.
`And amendments are not entered until a
`motion is granted.
` And if we grant the motion, then the
`proposed substitute claims would be added to
`the patent without examination. So it's
`important for the patent owner to show
`everything that's required by the rules that
`govern motion to amend.
` And currently you can only cancel
`claims or proposed substitute claims, and
`that means that if you request to cancel
`claims, which I understand you're not
`doing, so that's really not relevant here,
`but requests to cancel claims is not
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 7
`
`
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`contingent. However, if you request
`substitute claims to be entered, that's
`always contingent, and we're only going to
`consider those substitute claims if the
`original claims at play in the IPR are
`determined to be unpatentable after the IPR
`review. So that's the time that we would
`actually consider your motion for substitute
`claims.
` Now, in your motion, you can not
`enlarge the scope or introduce any new
`matter. Your proposed substitute claims
`have to be responsive to the grounds of
`unpatentability that have been set forth in
`the IPR petition. And you need to make sure
`that you explain to us where there is
`written descriptions support for each of
`your proposed claims.
` And if you are relying on a priority
`date back to an earlier filed application or
`patent, you need to explain to us where the
`written description support is found in
`those earlier filed applications and
`patents.
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 8
`
`
`
`Page 9
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` And you also need to make sure that
`you show support for the entire substitute
`claim as a whole and not just for any
`specific feature that you're adding.
` And what I'd like to do is point your
`attention to the Corning Optical
`Communications RF case versus PPC Broadband.
`And that case number is IPR 2014-00441,
`paper 19. It's an issued from the PTAB on
`October 30, 2014, specifically, at page 4.
` And that will go through a lot of the
`information you need to know about setting
`forth what kind of written description
`explanation you need to support the claims
`that you're providing in your motion to
`amend.
` Also, another case that you're going
`to want to make sure that you look at and
`address is the Nike vs. Adidas case and the
`case citation for that is 812 F.3d 1326.
`And that was issued this year by the Federal
`Circuit.
` And the Nike vs. Adidas really sets
`forth the burden of proof for patent owner
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 9
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`
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`and also the duty of candor that patent
`owner needs -- has the obligation to
`explain. And so, basically, under Rule
`42.11, you have a duty of candor whenever
`you're discussing the prior art and, you
`know, what kind of material prior art would
`apply to your substitute claims.
` Additionally, there's a
`nonprecedential case that came out earlier
`this year specifically on January 29th by
`the Federal Circuit that may be helpful to
`the parties. And that case is Illumina
`Cambridge Ltd. versus Intelligent
`Biosystems. That case number is 2015-1123,
`and that really kind of sets out some of the
`issues for the burden of proof and
`patentability over the prior art, and not
`just, you know, what it really means about
`prior art of the record.
` So take a look at some of those cases
`that I've cited and hopefully that will
`really help you to make sure you cover all
`of your bases that you need for a motion to
`amend.
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 10
`
`
`
`Page 11
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` Now, I'm sure aware of the rules that
`were amended last year in May, and really
`those require to you list out each of your
`proposed substitute claims in a claim
`listing, but that claim listing can be
`contained in an appendix to the motion.
` You need to explain, you know, show
`the changes that you're making in the
`substitute claims with respect to any of the
`original claims, and you really need to be
`able to address the specific knowledge
`pertaining to any features or limitations
`that you're adding.
` And I would suggest that you not do
`that in a conclusory way. Make sure you
`explain to us what kind of, you know,
`academic knowledge or conventional practices
`were known to persons of skill in the art
`and how that would relate to the features or
`limitations that you're adding.
` I would definitely suggest that you
`make sure you address the level of skill in
`the art, and we also expect you to give us
`any kind of claim construction that's
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 11
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`
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`necessary for the limitations that you're
`adding or substituting in your proposed
`claims.
` You do have a 25-page limit for your
`motion to amend, so I would try and stay as
`focused as you can, and show the things that
`you need to -- to be able to satisfy the
`rules and stay within guidelines that you
`see from these cases that we've cited to
`you.
` Does patent owner have any questions?
` MR. SCOTT: No. That was very
`thorough, your Honor, and I appreciate the
`guidance, and it was very helpful.
` JUDGE BRADEN: Petitioner, do you have
`any questions?
` MR. MERKIN: Your Honor, no questions
`about that. We did want to raise an issue
`with the Board, though, about PMC's filing a
`motion to amend.
` JUDGE BRADEN: And what issue would
`that be?
` MR. MERKIN: Sure. So we normally
`would not oppose a request to seek leave to
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 12
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`
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`Page 13
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`file the motion to amend, but here we
`actually have concerns with PMC even filing
`such a motion based on a protective order
`that the parties have agreed to in the
`parallel District Court case and wanted to
`at least raise those issues with the Board,
`if you're willing to hear more about the
`District Court protective order issues.
` JUDGE BRADEN: Doesn't patent owner
`have a statutory right to believe able to
`file a motion to amend?
` MR. MERKIN: Yes, we understand that
`in the IPR, but we do have a District Court
`protective order in place that we do think
`would, you know, bar the PMC's attorneys
`from filing such a motion to amend here or
`participating in that motion to amend.
` JUDGE BRADEN: Doesn't that actually
`violate a rule before the District Court?
`How does that violate something before the
`Board?
` MR. MERKIN: Right. So it's lead
`counsel from PMC who's not in today's call
`and I think intentionally that would be in
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 13
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`Page 14
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`violation of the District Court protective
`order potentially, not Mr. Scott who's on
`today's call. That's our concern, not, you
`know, with them filing it with Mr. Scott per
`se, but this broader, how they're able to
`even file it with the District Court
`protective order in place.
` JUDGE BRADEN: I understand your
`concern. I respect the fact that you have a
`protective order before the District Court.
`And the problem is it that that's a matter
`for the District Court, and it's not our --
`we had no authority to enforce a District
`Court's order or protective order and
`considering that patent owners in an IPR
`proceeding have a statutory right to amend,
`I don't see anyway in which us -- in which
`the Board could circumvent that statutory
`right, based on a protective order in front
`of a District Court.
` Is there a mechanism that you think
`that we would be able to use?
` MR. MERKIN: I guess my concern is you
`do have a requirement that lead counsel be
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 14
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`
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`Page 15
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`responsible for PMC's filings in this IPR,
`and so it's kind of inherently contradictory
`when PMC's lead counsel can't be on the line
`and can't be involved in any of the
`proceedings with respect to the motions to
`amend, but --
` JUDGE BRADEN: But they do have their
`backup counsel online, correct?
` MR. MERKIN: Yes, they certainly do.
` Go ahead.
` JUDGE BRADEN: Is your argument saying
`that their primary counsel should no longer
`be able to be their primary counsel in the
`IPR proceeding?
` MR. MERKIN: You know, without some
`assurances or more information from PMC,
`that's our concern. That's our issue. I
`don't see how he can, if PMC is going to
`have backup counsel file a motion to amend
`when lead counsel can't have any involvement
`with that.
` JUDGE BRADEN: Well, here's what we're
`going to do: Patent owner is authorized to
`file their motion to amend.
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 15
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`
`
`Page 16
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` You need to, and I suggest that patent
`owner and petitioner go back, discuss this
`issue, and if petitioner has a problem, they
`can either file a motion 'cause right now
`there's nothing before the Board that we can
`even act on or rule on regarding this issue
`and potentially petitioner goes back to the
`District Court and allow the District Court
`to rule on their own protective order.
` MR. MERKIN: Understood. This is Joel
`Merkin for petitioner.
` We can certainly do that.
` JUDGE BRADEN: Very good.
` Any other questions, petitioner?
` MR. MERKIN: No more questions.
` JUDGE BRADEN: Patent owner, do you
`have any questions?
` MR. SCOTT: Can I just respond to what
`Mr. Merkin said very briefly?
` JUDGE BRADEN: I actually don't
`think -- I don't think that that is
`necessary.
` MR. SCOTT: Then we'll respond to the
`district court, if needed.
`
`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 16
`
`
`
`Page 17
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` TELEPHONE CONFERENCE
` Thank you very much.
` JUDGE BRADEN: That would be perfect.
`Thank you very much.
` If we have no further questions, we
`are adjourned
` MR. MERKIN: Thank you.
` JUDGE BRADEN: Very good. Thank you.
` (Whereupon the proceedings were
`concluded at 2:47 p.m.)
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`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
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` TELEPHONE CONFERENCE
` CERTIFICATE
` I, AMY A. RIVERA, a Certified Shorthand
`Reporter, Registered Professional Reporter,
`Certified LiveNote Reporter, and Notary Public of
`the State of New York, do hereby certify that the
`foregoing is a true and accurate transcript of the
`testimony as taken stenographically by and before me
`at the time, place and on the date hereinbefore set
`forth.
` I DO FURTHER CERTIFY that I am neither a
`relative nor employee nor attorney nor counsel of
`any of the parties to this action, and that I am
`neither a relative nor employee of such attorney or
`counsel, and that I am not financially interested in
`the action.
`_________________________________________________
` Notary Public of the State of New York
` My commission expires August 28, 2017
` License No. XI00939
`Dated: December 12, 2016
`
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`PMC Exhibit 2150
`Apple v. PMC
`IPR2016-00753
`Page 18
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