`
`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
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` 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.
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`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 2
`
`
`
`Page 3
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`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
`
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`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 3
`
`
`
`Page 4
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`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)
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`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 4
`
`
`
` INDEX
` PAGE
`PROCEEDINGS 6
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`Page 5
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` EXHIBITS MARKED
` (None)
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`TransPerfect Legal Solutions
`212-400-8845 depo@transperfect.com
`
`APPLE Exhibit 1041
`Apple v. PMC
`IPR2016-00755
`Page 5
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` 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
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`Page 7
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` 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
`
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` 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
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`Page 9
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` 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
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`Page 10
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` 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
`
`
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`Page 11
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` 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
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`Page 12
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` 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
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` 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
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`Page 14
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` 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
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` 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
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` 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
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`Page 17
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` 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
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`Page 18
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` 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
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`Page 19
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` 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
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`Page 20
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` 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
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`Page 21
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` 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
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`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
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`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
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`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
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` 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
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` 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
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`Page 27
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` 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
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`Page 28
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` 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
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`Page 29
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` 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
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`Page 30
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` 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
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`Page 31
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`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
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`Page 32
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`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
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`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
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`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
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`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
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`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
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`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