throbber
Page 1
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT AND APPEAL BOARD
`--------------------------------
`APPLE, INC.,
` Petitioner,
`v.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
` Patent Owner.
`--------------------------------
`Case No. IPR2016-00755
`U.S. Patent No. 8,191,091
`---------------------------------
` TELEPHONE HEARING BEFORE
` JUDGE KARL EASTHOM
` JUDGE TRENTON WARD
` JUDGE GEORGIANNA BRADEN
` July 13, 2016
` 1:30 p.m.
`
`Reported by:
`Cassandra E. Ellis, RPR, CLR, CSR
`JOB NO. 16735
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 1
`
`

`
`Page 2
`
` TELEPHONE HEARING BEFORE JUDGE KARL
`EASTHOM, JUDGE TRENTON WARD, and JUDGE GEORGIANNA
`BRADEN, on July 13, 2016, before Cassandra E. Ellis,
`Registered Professional Reporter, Certified Court
`Reporter, Certified Livenote Reporter, Realtime
`Systems Administrator, and Notary Public within and
`for the State of Maryland.
`
`1
`2
`3
`4
`5
`6
`7
`
`8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 2
`
`

`
`Page 3
`
`APPEARANCES:
`COUNSEL FOR PETITIONER APPLE:
` BY - JOEL R. MERKIN, ESQUIRE (by telephone)
` BY - MARCUS E. SERNEL, ESQUIRE (by telephone)
` KIRKLAND & ELLIS LLP
` 300 North LaSalle Street
` Chicago, Illinois 60654
` (312) 862-2000
` joel.merkin@kirkland.com
`
`COUNSEL FOR PATENT OWNER PMC:
` BY - DOUGLAS KLINE, ESQUIRE (by telephone)
` GOODWIN PROCTER LLP
` EXCHANGE PLACE
` 53 State Street
` Boston, Massachusetts 02109
` (617) 570-1209
` Dkline@goodwinlaw.com
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 3
`
`

`
`Page 4
`
`APPEARANCES CONTINUED:
`COUNSEL FOR PATENT OWNER PMC:
` BY - JENNIFER ALBERT, ESQUIRE (by telephone)
` GOODWIN PROCTER LLP
` 901 New York Avenue, Northwest
` Washington, D.C. 20001
` (202) 346-4322
` Jalbert@goodwinlaw.com
`
`Also Present: Tom Scott (by telephone)
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 4
`
`

`
` INDEX
` PAGE
`PROCEEDINGS 6
`
`Page 5
`
` EXHIBITS MARKED
` (None)
`
`1
`2
`3
`
`4 5
`
`6
`
`7 8 9
`
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 5
`
`

`
`Page 6
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` P R O C E E D I N G S
` JUDGE EASTHOM: Good
` afternoon. This is Judge Easthom,
` from the patent office. I have on
` the line with me Judges Ward and
` Braden. We have a conference call
` scheduled for IPR 2016-00755, it's
` the U.S. Patent 8,191,091. I
` understand the petitioner, Apple,
` this case is, Apple, petitioner,
` versus Personalized Media
` Communications, PMC, we'll call
` them, for now.
` Apple, petitioner, Mr.
` Merkin instigated the call, by
` e-mail. Is Mr. Merkin on the line
` for petitioner?
` MR. MERKIN: Yes, Mr. Merkin
` is on the line.
` JUDGE EASTHOM: Great.
` Welcome, Mr. Merkin. Do you have
` anybody else with you?
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 6
`
`

`
`Page 7
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` MR. MERKIN: I do. I have
` Marc Sernel, also on behalf of
` petitioner, Apple, and I did
` arrange to have a court reporter
` on the line, as well.
` JUDGE EASTHOM: Oh, great.
` Thanks for cluing us in on that;
` is the court reporter on the line
` now?
` THE REPORTER: Yes.
` JUDGE EASTHOM: Okay. Do
` you need anything from us? Do you
` need name spellings or identify
` who's talking?
` THE REPORTER: Yes, please,
` if I could get those spellings.
` JUDGE EASTHOM: This is
` Judge Easthom, Karl, K-a-r-l,
` E-a-s-t-h-o-m, we also have
` Trenton ward, T-r-e-n-t-o-n,
` W-a-r-d, and Georgianna Braden,
` G-e-o-r-g-i-a-n-n-a, B-r-a-d-e-n.
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 7
`
`

`
`Page 8
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` THE REPORTER: Thank you.
` JUDGE EASTHOM: You're
` welcome.
` So okay, why don't we turn
`-- so I'm sorry, Mr. Merkin, you said
`Mr. Sernel, Marcus Sernel on the line
`with you, and that's it, and we have
`the court reporter, right?
` MR. MERKIN: That's correct.
` JUDGE EASTHOM: Okay.
` Great. And then for PMC who do we
` have?
` MR. KLINE: You have Doug
` Kline, here, Your Honor.
` JUDGE EASTHOM: Great. And
` then --
` MR. KLINE: I believe --
` thank you. And I believe with me,
` but not physically with me, but
` also on the line, should be
` Jennifer Albert and Tom Scott.
` JUDGE EASTHOM: Okay. Ms.
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 8
`
`

`
`Page 9
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` Albert are you there?
` MS. ALBERT: Yes, I am, Your
` Honor.
` JUDGE EASTHOM: Welcome.
` Okay, how about Mr. Scott?
` MR. SCOTT: I'm here, Your
` Honor.
` JUDGE EASTHOM: Welcome to
` you, too.
` Okay, so just so the court
` reporter is clear, and we're all
` clear, Mr. Merkin, are you going
` to present argument and then, Mr.
` Kline, are you going to respond or
` how do you want to do this?
` MR. MERKIN: Yes, that
` sounds appropriate, this is
` Mr. Merkin. I'm happy to proceed
` with argument.
` MR. KLINE: That's right.
` And this is Doug Kline. I'll
` respond for PMC. Thank you.
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 9
`
`

`
`Page 10
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` JUDGE EASTHOM: Okay.
` You're welcome. Okay.
` All right. Mr. Merkin, we
` briefly understand a little bit
` about this, but you asserted a
` challenge for claims in this
` patent, the `091 patent, we'll
` call it, and there's an assertion
` of priority that you allegedly
` relied on that went only back to
` 1987, whereas, the patent owner
` contends that you should have been
` aware that priority could have
` gone as far back as 1981, and this
` went back to some of the prior art
` in the case, I understand there's,
` I guess, one patent that would
` remain even if priority -- may
` remain. We haven't looked at the
` merits of this, at all, yet.
` So with that as background
` and understanding could you please
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 10
`
`

`
`Page 11
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` just tell us what you're looking
` for and why, and why you should be
` entitled to that, any relief,
` please?
` MR. MERKIN: Absolutely.
` Thank you, Your Honor.
` Apple is just seeking an
`authorization to file a short,
`targeted reply to address the argument
`you referred to, that PMC made in its
`preliminary response, that Apple could
`not possibly have anticipated PMC
`would make.
` Just to give you a little
`bit more background, the `091 patent
`at issue is a continuation of
`application that claim priority to a
`September 1987 date that you referred
`to, the `87 application, in turn, is a
`continuation, in part, of
`application's claim priority to
`November, 1981 --
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 11
`
`

`
`Page 12
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` JUDGE EASTHOM: Mr. Merkin,
` I'm going to stop you right there.
` I think those are all claim
` continuation status from 1987 onto
` 1981, isn't that correct? But
` it's CIP status from this patent
` to 1987.
` MR. MERKIN: I don't believe
` that's correct, no. It's --
` there's a 1981 application and
` then the 1987 -- kind of coming
` from the other direction -- the
` 1987 application was a
` continuation in part.
` JUDGE EASTHOM: Oh, okay. I
` -- okay.
` MR. MERKIN: So the `091
` patent, that application is filed
` as a continuation to the `887
` application.
` JUDGE EASTHOM: Oh, right,
` okay, okay, I had that backwards.
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 12
`
`

`
`Page 13
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` Okay, I understand. Thank you,
` effectively the same -- well,
` okay.
` MR. MERKIN: So really it's
` `81 to `87, but a continuation
` back to `87.
` JUDGE EASTHOM: Thank you
` for clarifying that. Okay, I'm
` sorry. So continue.
` MR. MERKIN: In Apple's
` petition it stated relying on
` PMC's priority assertion to 1987
` PMC had previously made clear,
` unambiguous statements, both
` throughout the prosecution of the
` `091 patent and the pending
` district court litigation that PMC
` asserted priority only to the 1987
` application and disclaimed
` priority to the 1981 application.
` And then PMC essentially did
` a complete 180 and argued in its
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 13
`
`

`
`Page 14
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` preliminary response that the `091
` patent and that the claims that
` are being challenged are entitled
` to the 1981 priority date, as you
` said, with the impact being that
` almost all references in Apple's
` petition would not be prior art.
` PMC spent about just under
` 10 pages of its preliminary
` response making this argument and
` tried to support its new argument
` using expert testimony under the
` new rules.
` But what PMC omitted from
` the Board, despite having a duty
` of candor to the Board, is that
` PMC has consistently and
` repeatedly argued, during
` prosecution and litigation, that
` it was entitled to priority to the
` `87 application and not the `81
` application.
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 14
`
`

`
`Page 15
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` To give you some examples of
`statements that PMC has made during
`prosecution, there's a submission
`dated September 5th, 1995, PMC listed
`the 1987 application as the earliest
`application that it has claimed
`priority to, and expressly stated,
`this is a quote, this application only
`claims priority to the September 11th,
`1987 filing date.
` JUDGE EASTHOM: Mr. Merkin,
` what exhibit number was that?
` MR. MERKIN: That was not an
` exhibit. Essentially we have a
` 3,000-page file history since this
` application was pending for
` several decades.
` Apple did not, in its
` petition, cite to -- we included
` excerpts from the petition that
` were relevant to our argument, and
` Apple's argument and Apple's
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 15
`
`

`
`Page 16
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` position, that the `091 entitled
` to the `87 priority date was the
` position that PMC has taken time
` and time again.
` And so we didn't -- we
` supported our reliance on that
` with an exhibit from the district
` court litigation but did not put
` in all of this prior previous
` statements because, frankly,
` there's just no way that PMC -- no
` way we could have anticipated that
` PMC would ever contend otherwise.
` JUDGE EASTHOM: That's
` December 5th, 1995, with the
` quote, and do you know the page
` number of that quote?
` MR. MERKIN: That quote is
` on page two.
` JUDGE EASTHOM: Okay. Thank
` you.
` MR. MERKIN: So then just to
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 16
`
`

`
`Page 17
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` go over kind of a few other of the
` key statements throughout the
` 3,000 page file history, there's
` an amendment dated June 10th,
` 1997. PMC likewise stated, this
` is page 11 of that June 10th, `97
` amendment, the present application
` asserts priority based on the 1987
` disclosure. Again, same
` amendments of June 10th, 1997, now
` I'm on page 21, is where PMC
` expressly disclaimed priority for
` 1991, excuse me, 1981
` specification. PMC overcame a
` double patenting rejection to
` patents that issued with the 1981
` disclosure by stating, this is a
` quote, the present application
` does not claim the benefit of
` those applications under 35 USC
` Section 120.
` PMC argued that the double
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 17
`
`

`
`Page 18
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` patenting rejection must be
` withdrawn because, again, this is
` a quote, there could never have
` been a basis for claiming the
` present subject matter in those
` applications.
` Then page 33, this is,
`again, that same June 10th, 1997
`amendment, is where, again, PMC listed
`the 1987 application as the earliest
`application that it was claiming
`priority to, essentially, PMC
`continued asserting the 1987 priority
`date, literally for decades, never
`retracting any of these statements,
`and shortly before issuance there's an
`amendment dated April 11th, 2011, now,
`where PMC explained that the
`application was the DECR or decryption
`1987 application. The page for that I
`believe it's page -- give me a minute
`--
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 18
`
`

`
`Page 19
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` JUDGE EASTHOM: I think
` there's an exhibit 1035 that has
` that nomenclature. I was kind of
` curious about the exhibit 1035, at
` page 10, it talks about a
` decryption, DECR87 group
` application.
` MR. MERKIN: That's
` consistent with that April 11th,
` 2011 amendment. There is
` essentially a -- a grouping of
` applications where PMC had labeled
` this application as a DECR
` application, short for decryption,
` and an 87, short for 1987, whereas
` there are other applications,
` related ones, where it had given
` it kind of the `81 priority date,
` and because it had consistently
` throughout the prosecution
` asserted the `81 priority date.
` So here everything
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 19
`
`

`
`Page 20
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` throughout prosecution is
` referring to the 1987 priority
` date. As you heard there's just a
` lot of clear, unambiguous
` statements only claiming priority
` to the 1987 date.
` There's also many documents
` in the district court litigation
` where PMC made the same
` statements. The one that we
` attached as an exhibit to Apple's
` petition was exhibit 1019. There,
` that was their infringement
` contentions in the district court
` litigation where PMC was required
` to identify the priority date.
` There's four patents in the
` litigation for two patents. They
` identified the 1981 priority date,
` expressly, and for the other two
` patents, including the `091
` patent, they stated that it's
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 20
`
`

`
`Page 21
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` entitled to at least the 1987 date
` but that that at least qualifier,
` which is what PMC pointed out in
` their preliminary response, is --
` essentially it's meaningless when
` the rules require them to identify
` the priority date.
` There's also a letter to the
` Court, this is a letter dated
` December 14th, 2015, it's Docket
` Number 42-1, page three, this is
` in the district court litigation,
` it's, you know, freely available,
` where PMC stated to the judge that
` two of the asserted patents
` derived priority to 1981 while,
` and this is a quote, the claims of
` the `649 and `091 patents claim
` priority to September 1987.
` PMC continued in this letter
`by stating: These dates are critical
`to both claim construction and the
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 21
`
`

`
`Page 22
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`section 101 analysis, which is what
`was at issue in that letter.
` So the bottom line is that
`Apple could not have predicted or
`anticipated that PMC would take a
`completely contradictory position
`about the priority date of the `091
`patent in its preliminary response.
` And even further, and this
`is -- this is significant, too, we,
`Apple, just could not have anticipated
`that PMC would take this contradictory
`position and not even inform the Board
`of all its prior prosecution
`statements where it expressly asserted
`priority only to the 1987 application
`and its claim priority to the 1981
`application.
` And that's troubling, here,
`Apple firmly believes that if the
`Board would see these prior statements
`that PMC made during prosecution, it
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 22
`
`

`
`Page 23
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`would reject PMC's priority argument
`out of hand and find PMC is estopped
`from claiming priority to the 1981
`application under binding federal
`circuit authority.
` There's a federal circuit
`case, it's the Bradford case, 603 F.3D
`1262, it's almost directly on point.
`In that Bradford case Bradford's
`prosecuting a continuation in part
`application, similar to what PMC was
`doing here, and the examiner rejected
`the claims for obviousness type double
`patenting, just like the examiner did
`during prosecution of PMC's `091
`patent.
` Patentee overcame that
`rejection by stating that the earlier
`application did not disclose certain
`elements and the federal circuit held
`that the applicant was estopped from
`arguing that the earlier application
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 23
`
`

`
`Page 24
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`could provide sufficient disclosure to
`support a priority claim to that
`earlier application. So that Bradford
`case seems to be directly on point and
`analogous with our set of facts here.
` Also, just want to mention,
`under the new rules 37 CFR 42.108C,
`the same rule that allowed patent
`owner to submit testimonial evidence
`with its preliminary response, that
`rule now, with the amendment that's in
`place, expressly contemplates that
`petitioner can seek leave to file a
`preliminary response upon a showing of
`good cause.
` JUDGE EASTHOM: And a reply,
` is that what you meant?
` MR. MERKIN: Yeah, I'm sorry
` if I misspoke, it contemplates the
` petitioner needs to file -- excuse
` me -- a reply to a preliminary
` response upon a showing of good
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 24
`
`

`
`Page 25
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` cause. I don't believe there's no
` doubt that good cause exists in
` this situation, here. We're just
` asking for a short reply,
` something along the lines of five
` to seven pages, even though PMC,
` you know, spent almost 10 pages on
` this argument in its preliminary
` response, just to, you know,
` address this priority issue to
` show the Board PMC's prior binding
` statements that PMC withheld and
` didn't show the Board when it
` filed its preliminary response.
` Apple can do this quickly,
`this is not something that we want to,
`you know -- we -- we wanted to set up
`this call quickly and we intend to get
`this on file quickly. We would ask
`for just a short amount of time, 5 to
`7 days to get this short, targeted
`reply on file.
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 25
`
`

`
`Page 26
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` JUDGE EASTHOM: Okay. So
` just so I understand, you're not
` going to -- you're not going to
` attempt to show any missing
` elements that -- I noticed in the
` preliminary response patent owner
` does acknowledge that by not
` showing element analysis it shows
` whether a support in 1981 withdrew
` its expert witness support I think
` at least with respect to claim 13.
` So you're not -- you're not going
` to request that, you're going to
` rely on this estoppel theory, is
` that correct?
` MR. MERKIN: We could
` actually do both, and so what we
` wouldn't do is rely on, for
` instance, expert testimony to
` support the lack of priority to
` 1981. But we do think there are
` some very clear legal arguments
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 26
`
`

`
`Page 27
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` that the -- even substantively, if
` you were to look at the elements,
` we can rebut PMC's claim that the
` claims are supported by the `81
` disclosure still within those page
` limits.
` So I would say our focus
` would be primarily on identifying
` -- showing the Board all these
` prior prosecution history
` statements that bind PMC and stop
` it from asserting otherwise.
` Space permitting, we would also
` show, look, we can show very
` easily that this actually isn't
` entitled to 1981 in any event.
` JUDGE EASTHOM: I don't want
` to tell you what to file. I was
` just trying to ask you what your
` intent was, I'm not trying to
` suggest either one is, you know,
` the way to go, but just trying to
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 27
`
`

`
`Page 28
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` get your position. I understood.
` MR. MERKIN: Okay.
` JUDGE EASTHOM: Did you want
` to finish up and let's hear from
` Mr. Kline now? Are you finished,
` Mr. Merkin?
` MR. MERKIN: I am.
` JUDGE EASTHOM: Okay, thank
` you very much.
` Let me just ask the panel if
` there's any -- anybody have a
` question? Judge Trenton or Judge
` Braden, do you want to -- okay. I
` see nothing offered online, here.
` Okay, Mr. Kline, can you
`respond, please, to Mr. Merkin and
`explain why they should not be
`entitled to this reply?
` MR. KLINE: Certainly, I
` can, Your Honor. Thank you very
` much.
` As is self-evident from
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 28
`
`

`
`Page 29
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` counsel's description, setting
` aside counsel's characterization
` or I would say mischaracterization
` of the evidence that Apple would
` purport to introduce now, and rely
` upon, self-evident from all of
` that is it has been aware of the
` existence of all of this
` information for a very long time.
` It was aware of the patent
` prosecution history that it says
` it wants to add to this record.
` It was aware of litigation
` documents that it says that it now
` wants to add to this record.
` And for whatever reason of
` Apple's own strategic choosing it
` elected not to include that
` information in its original
` petition.
` And I would submit that it
` was more likely a strategy
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 29
`
`

`
`Page 30
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
` decision by Apple, not any
` professed surprise by Apple today.
` Because we all know Apple, as the
` petitioner, has the burden to
` prove that it has a reasonable
` likelihood of prevailing on its
` argument that at least one of the
` challenged claims is unpatentable.
` That burden necessarily includes
` the burden to establish that the
` references Apple is relying upon
` are, in fact, prior art to the
` challenged claims.
` I would submit that Apple
`made no meaningful effort to try to
`prove that, the entirety of Apple's
`argument regarding priority, to which
`the `091 patent is entitled, is one
`sentence. They argued: In the
`district court PMC has asserted the
`challenged claims are entitled to a
`September 11, 1987 priority date.
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 30
`
`

`
`Page 31
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`This is at page six of their petition.
` They go onto say: For
`purposes of this IPR, only, Apple
`assumes the September 11, 1987
`priority date.
` Apple made its decision to
`assume that was the priority date.
`Now, in truth, the one document that
`Apple presented to the Board, in
`support of the assumption that it was
`making concerning priority, was PMC's
`preliminary disclosures in the
`district court litigation, in the
`Eastern District of Texas, which are
`required under the local rules, there,
`and are preliminary in nature, in
`which PMC stated that the asserted
`claims of the `091 patent are entitled
`to at least the priority date of
`September 11th, 1987.
` In that same document, which
`is exhibit -- I'm sorry, I don't have
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 31
`
`

`
`Page 32
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`that -- it's Exhibit 1019, in that
`same document PMC went on to describe
`the entire continuity chain to the
``091 patent, which does, in fact, go
`back to the November 3rd, 1981 filing
`date of what is now the `490 patent.
` So Apple was on notice in
`the litigation, it's been on notice
`since the beginning of this whole
`dispute, that the `091 case claims
`priority, as Your Honor asked, by way
`of continuation to 1987, by way of
`continuation, in part, back to 1981.
` Apple's petition, stating
`that PMC asserted priority only to
`September 11th of 1987, as opposed to
`at least as early as September 11th,
`1987, is clearly not an accurate
`characterization of the claim. And,
`in fact, Apple relied upon the 1981
`filed specification that led to the
``490 patent in its petition in support
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 32
`
`

`
`Page 33
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`of positions it's taken concerning the
`appropriate claim construction in this
`case.
` So on the one hand Apple is
`relying upon PMC's 1981 filed
`specification for claim construction
`but is assuming, and made the
`assumption in its petition, that PMC
`would not claim priority back to it.
` All of this information was
`known to Apple long before it filed
`its petition, it -- in the -- they
`identified a new document on this
`phone call, today, but in the e-mail,
`dated July 7th of 2015, they
`identified two documents, one was a
`June 10th, 1997 amendment and
`response, that was filed five years
`before the `091 case issued. All the
`claims that were pending, at the time,
`were canceled. The issued claims are
`different from those that were pending
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 33
`
`

`
`Page 34
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`at the time that amendment and
`response was submitted. And that
`amendment and response was filed
`nearly 20 years before Apple filed its
`IPR petition. And it's been part of
`the public record for a long, long
`time.
` The joint letter that Apple
`referred to in its e-mail it talks
`about Docket Number 42-1. What's
`interesting about that is that's a
`joint letter that the parties
`submitted to the Court, in Texas, in
`connection with the Court's
`consideration of a motion to dismiss
`that Apple has filed in that case,
`that it has yet been ruled upon. The
`parties jointly submitted a letter to
`the Court concerning their positions
`on claim construction.
` So Apple is a co-author of
`that letter, it cannot reasonably say
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 34
`
`

`
`Page 35
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`that's new information or it wasn't
`well aware of that information at the
`time it filed its petition.
` There's no good cause why
`Apple should be permitted to
`supplement its petition, now, with
`information that it chose to withhold
`from its petition.
` If Apple had submitted this
`information in its original petition,
`PMC could have responded. We could
`have pointed out, for example, that
`the claims that were pending at the
`time PMC made statements during
`prosecution that Apple is relying upon
`today, those claims were different
`from the claims that issued.
` We could have pointed out
`that pursuant to Judge Gilstrap's
`express rules, in the Eastern District
`of Texas, the statements made by the
`parties in that joint letter
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 35
`
`

`
`Page 36
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`concerning claim construction
`expressly are not binding on the
`parties for any purpose, because the
`judge is trying to cultivate a process
`and a discussion for resolving all the
`many, many rule -- section 101 motions
`to dismiss that he has received. But
`again, Apple chose to withhold that
`information from its petition and hold
`it until now.
` Counsel made many comments
`about the volume of material in patent
`owner's preliminary response, here,
`concerning priority. I would submit
`that, yes, that is correct, we devoted
`a significant amount of time and space
`to proving up the priority claim to
`1981, as is appropriate.
` Section five of our
`preliminary statement -- of our --
`right, preliminary statement, pages 7
`through 16, correlates all the
`
`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 36
`
`

`
`Page 37
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`elements of the challenge claims
`against disclosure from the 1981
`application. Dr. Weaver's
`declaration, paragraph 44, includes 25
`pages of claim charts correlating
`elements of the challenged claims
`against disclosure from the 1981
`application.
` Apple, if it strategically
`had made the decision to do so, could
`have, in its petition, gone through a
`similar analysis. And it could have,
`as it should have, tried to prove that
`there are ele

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket