`
`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`ARUBA NETWORKS, INC., HEWLETT PACKARD ENTERPRISE
`COMPANY, and HP, INC., and ARRIS GROUP, INC.,
`Petitioners,
`
`v.
`
`MOBILE TELECOMMUNICATION TECHNOLOGIES, LLC,
`Patent Owner
`______________________
`
`Case IPR2016-00768
`Patent 5,659,8911
`
`______________________
`
`Before the Honorable MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`
`PETITIONERS’ SUBMISSION OF TRANSCRIPT OF TELEPHONE
`CONFERENCE ON JUNE 9, 2017
`
`Pursuant to the Board’s Order (Paper 41), Petitioners file the attached
`
`transcript of the Telephone Conference with the Board dated Friday, June 9, 2017
`
`in the above-captioned matter.
`
`
`
`
`
`
`1 Case IPR2016-00766 has been joined with the instant proceeding.
`
`
`
`1
`
`
`
`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`
`Dated: June 13, 2017
`
`Respectfully submitted,
`
`By: Gabrielle E. Higgins
`Gabrielle E. Higgins (lead counsel)
`Reg. No. 38,916
`Kathryn Hong (backup counsel)
`Reg. No. 63,693
`Ropes & Gray LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`gabrielle.higgins@ropesgray.com
`kathryn.hong@ropesgray.com
`
`
`
`Attorneys for Aruba Networks Inc., Hewlett
`Packard Enterprise Company and HP Inc.
`
`
`Mailing address for all correspondence: ROPES & GRAY LLP, IPRM – Floor 43,
`Prudential Tower, 800 Boylston St., Boston, MA 02199-3600
`
`
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`2
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`IPR2016-00768
`U.S. Patent No. 5,659,891
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PETITIONERS’
`
`SUBMISSION OF TRANSCRIPT OF TELEPHONE CONFERENCE ON
`
`JUNE 9, 2017 was served on June 13, 2017 in its entirety to the following Counsel
`
`for Patent Owner via e-mail, pursuant to the parties’ agreement concerning service:
`
`
`
`Lead Counsel
`
`
`John R. Kasha
`
`
`Kasha Law LLC
`
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Phone: 703-867-1886
`
`Fax: 301-340-3022
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`john.kasha@kashalaw.com
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`Attorneys for Patent Owner Mobile Telecommunications Technologies, LLC
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`Back-up Counsel
`Kelly L. Kasha
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Phone: 240-423-8431
`Fax: 301-340-3022
`kelly.kasha@kashalaw.com
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`ROPES & GRAY LLP
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`/Crena Pacheco/
`Crena Pacheco
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` TELECONFERENCE
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
` ARRIS GROUP, INC.,
` Petitioner,
` ARUBA NETWORKS, INC.,
` HEWLETT PACKARD ENTERPRISE COMPANY and HP, INC.,
` Petitioner,
` v.
` MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
` Patent Owner.
` ___________
` Case IPR2016-00766 (Patent 5,659,891)
` Case IPR2016-00768 (Patent 5,659,891)
` * * * * * * * * * * * * *
`
`Reported by:
`Kim M. Brantley, CSR
`Job No: 125474
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` TELECONFERENCE
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
` JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS
` SYS., INC., AND RUCKUS WIRELESS, INC.
` Petitioner
` v.
` MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
` Patent Owner
` ____________
` Case IPR2017-00640
` Patent 5,659,891
` * * * * * * * * * * * * *
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
` JUNIPER NETWORKS, INC., BROCADE COMMUNICATIONS
` SYS., INC., RUCKUS WIRELESS, INC.,
` HEWLETT PACKARD ENTERPRISE COMPANY, HP INC.,
` ARUBA NETWORKS, INC., AND ARRIS GROUP, INC.
` Petitioner
` v.
` MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC
` Patent Owner
` ____________
` Case IPR2017-00642
` Patent 5,590,403
`
` TELECONFERENCE
` Friday, June 9, 2017
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`
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` TELECONFERENCE
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` June 9, 2017
` Time: 2:00 p.m.
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`Page 4
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` TELECONFERENCE, before Kim M. Brantley,
` C.S.R., Court Reporter and Notary Public of the
` District of Columbia.
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` TELECONFERENCE
` APPEARANCES:
` MEREDITH PETRAVICK,
` Administrative Patent Judge
` SCOTT DANIELS,
` Administrative Patent Judge
`
` On behalf of the Petitioners
` Hewlett-Packard, Enterprise Company,
` HP, Inc. and Aruba Networks, Inc.:
` GABRIELLE HIGGINS, ESQUIRE
` Ropes & Gray
` 1900 University Avenue
` East Palo Alto, California 94303
`
`
` On behalf of the Patent Owner:
` JOHN KASHA, ESQUIRE
` KELLY KASHA, ESQUIRE
` Kasha Law
` 14532 Dufief Mill Road
` North Potomac, Maryland 20878
`
` ///
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` TELECONFERENCE
` APPEARANCES CONTINUED:
` On behalf of Petitioner
` Juniper Networks, Inc.:
` REBECCA CARSON, ESQUIRE
` NIMA HEFAZI, ESQUIRE
` (Back-up counsel not yet admitted.)
` 840 Newport Center Drive
` Newport Beach, California 92660
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` P R O C E E D I N G S
` JUDGE PETRAVICK: This is Judge
` Petravick. I'm on the line with my
` colleague, Scott Daniels.
` I would like to know whether counsel
` for the 7685R is on the line.
` MS. HIGGINS: Good afternoon, your
` Honor. This is Gabrielle Higgins and I am
` counsel for petitioners Hewlett-Packard
` Enterprise, Hewlett-Packard, Inc., and Aruba.
` And that's in connection with the
` IPR2016-768, which was joined with the 766
` proceeding.
` And perhaps to clarify, we are not a
` party to the IRP 00640.
` JUDGE PETRAVICK: Yes, I'm getting
` there.
` MS. HIGGINS: Excellent, sorry.
` JUDGE PETRAVICK: And Ms. Higgins, you
` represent parties in the 766, or are there
` also counsel for the 766 on the line?
` MS. HIGGINS: So, your Honor, counsel
` for 766, Arris, is on the line. I will be
` speaking on behalf of 768 and 766, you know,
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` but counsel for Arris is welcome to chime in.
` JUDGE PETRAVICK: Thank you.
` For the 2017 00637...
` MS. HIGGINS: And your Honor, just to
` the extent that that comes up, while we
` weren't -- we didn't understand that that
` would be involved today as well. I will
` speak for 210, as well.
` JUDGE PETRAVICK: You are listed as
` back-up counsel in that case I have noted.
` MS. HIGGINS: I believe with respect to
` 367 I am lead counsel, your Honor.
` JUDGE PETRAVICK: Ok, thank you.
` And 640, Ms. Higgins, are you counsel
` for that case, too?
` MS. HIGGINS: No, your Honor.
` I believe that the parties
` Hewlett-Packard Enterprise, Hewlett-Packard,
` Inc., Aruba and Arris are not counsel to
` those parties, and I believe counsel for
` Juniper will be speaking on behalf of
` petitioners there.
` JUDGE PETRAVICK: Is the counsel for
` Juniper on the line?
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` MS. CARSON: Yes, your Honor. This is
` Rebecca Carson. I am counsel for Juniper
` Networks, Inc.
` JUDGE PETRAVICK: You're back-up
` counsel for Juniper Networks, and you have
` not been admitted to the these proceedings
` yet because I believe I've noted that your
` pro hac motion was not filed until last
` night, and it's not been granted.
` Is there other counsel on the line?
` MS. CARSON: So my colleague, Nima
` Hefazi, also from my firm, Irell and Manella,
` is on the line.
` MR. HEFAZI: Morning, your Honor.
` JUDGE PETRAVICK: And the last one is
` 642.
` MS. CARSON: So this is Rebecca Carson
` again. We were planning on taking the lead
` on speaking to any issues related to that
` petition. I'm on the line, as well as my
` colleague, Nima.
` JUDGE PETRAVICK: Ok, Ms. Carson, but
` you've not been admitted to these proceedings
` right now.
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` MS. CARSON: Ok. So Mr. Hefazi will
` speak on those matters.
` JUDGE PETRAVICK: You are not
` authorized to speak on those issues, but I
` don't have a lot of questions for that
` petitioner group in general.
` MS. CARSON: Understood.
` JUDGE PETRAVICK: Counsel for patent
` owner, Mr. Kasha, are you on the line?
` MR. KASHA: Yes, your Honor. Thank
` you. I am on the line. And I also have
` Kelly Kasha should be on the line, and also
` Henning Schmidt.
` JUDGE PETRAVICK: All right. It looks
` like we have the required parties are on the
` line.
` We called this meeting today to discuss
` the papers that have been filed in these
` proceedings and how they are deficient,
` according to our rules.
` We're a little disappointed that some
` of the papers came in in this fashion. So
` we're going to discuss it today and it's
` going to be put on the record in each of
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` TELECONFERENCE
` these cases so that there will be no further
` filings with these deficiencies.
` Or just to make clear that we expect
` all the rules to be followed according to the
` formatting of papers, word counts, and the
` formatting of evidence.
` In the 667, the 640 and the 642, we
` still have the majority of trial to go, and
` we don't want to see papers in this format
` again.
` So the first thing I'm going to talk
` about, and I have a list, is the petitioners'
` reply in the 768 case.
` So, according to our rules this
` petitioners' reply is only supposed to be
` 5,600 words. The word count certification in
` the petitioners' reply says the petitioners'
` reply is 5,590 words, so only 10 words under
` the count.
` However, when we reviewed the
` petitioners' reply, we see quite a few odd
` formatting choices for the citations. I'm
` going to list a few, and this is just a few
` examples. For example, on the first page,
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` TELECONFERENCE
` the word "paper" is abbreviated "pap." no
` space, "13".
` There are headings where claims are
` listed as "CLS.," no space, "one".
` "Institution decision" is abbreviated
` as "INST.," no space, "12".
` All citations to exhibits are "Ex.," no
` space, "2011".
` Paragraph signs do not have spacing on
` either side.
` "Emphasis original" has been
` abbreviated as "EMPH." no space, "ORIG".
` Section signs have been used with
` nonstandard spacing on either side, too.
` We have noticed that, because the
` citations have been squished together so that
` there is no spacing, correct spacing going
` on, that the brief is about 500 words over
` the word count limit.
` We find this particularly troublesome,
` given that all the other papers filed by the
` petitioner in these cases, including recent
` papers, do not use this kind of abbreviation
` or spacing issue.
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` TELECONFERENCE
` So, what is going to happen is that the
` petitioners' reply will need to be re-filed
` in this case, and we are going to give you
` just a very limited time to do that since the
` hearing is coming up, and it is going to need
` to use more standard per citations.
` For example, Blue Book Rule 3.3 has
` spacing on either side of paragraph signs,
` spacing after periods, and spacing after
` section signs. That means that probably some
` amount of material is going to have to be cut
` from the petitioners' reply.
` In the new petitioners' reply,
` petitioner is not allowed to add subject
` matter, is not allowed to change subject
` matter, other than to make the correct
` spacing corrections and to remove any
` material so that it is under the 5,600 word
` count limit.
` Ms. Higgins, you signed this paper and
` you signed the word count certification.
` Do you understand what we're ordering
` here today?
` MS. HIGGINS: Yes, your Honor, I do.
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` TELECONFERENCE
` JUDGE PETRAVICK: All right.
` So, we're going to give you 'till next
` Tuesday to reformat the petitioners' reply
` and to file a corrected petitioners' reply.
` MS. HIGGINS: And your Honor, that's
` Tuesday the 13th, correct?
` JUDGE PETRAVICK: Tuesday the 13th.
` MS. HIGGINS: Thank you.
` JUDGE PETRAVICK: We also want you to
` file as an exhibit a red-line copy to show us
` what has been removed and where all the
` spaces have been added.
` MS. HIGGINS: Understood, your Honor.
` JUDGE PETRAVICK: Thank you.
` Now I'd like to turn to the patent
` owner's response in the 766 case.
` We noticed that in the patent owner's
` response there are a lot of images of text,
` images that are only text.
` I'm going to point out to you and
` caution you that the Board rules specify a
` certain font and typeface and spacing for
` block quotations.
` This is 14 point high proportional
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` font, normal spacing used. Block notations
` are in 1.5 spacing. Regular formatting is in
` 2.0 spacing.
` We have noticed that you've been
` putting in these images of text, some of
` which are getting kind of blurry.
` I'm not going to make you re-file the
` patent owner's response at this time, but I
` do want you to tell me right now whether the
` words in those images are counted in your
` certification?
` MR. KASHA: No, your Honor, they are
` not.
` JUDGE PETRAVICK: They are not.
` Your certification is under, is what
` you're telling me? Because they do not count
` the words in the images? You're under your
` word count limit right now.
` So what we're going to do for this
` patent owner's response in the 766 case,
` because if we were to change the formatting
` of those text images, that would move the
` pages substantially. So what I'm going to
` have you do is, you're going to have to go
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` and count the words.
` I have done a rough estimate myself. I
` believe you're still under your word count.
` What I want you to do is file a new
` certificate in this proceeding with a correct
` word count.
` Do you understand that?
` MR. KASHA: Yes. Sorry, your Honor,
` yes.
` JUDGE PETRAVICK: You can do that by
` next Tuesday?
` MR. KASHA: Yes, thank you.
` JUDGE PETRAVICK: If it is over the
` word count, which I don't believe it will be,
` based on the fact that I counted all the
` words, then you are going to have to re-file
` the patent owner's response. But at that
` time, if it is over, you need to contact us
` again.
` I do not want to see ex number of
` papers with images of text in them.
` MS. HIGGINS: Your Honor --
` JUDGE PETRAVICK: I'm sorry, who is
` speaking?
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` MS. HIGGINS: Your Honor, this is
` Gabrielle Higgins.
` If I just may ask, I had a question.
` The patent owner's response filed
` January 9, 2017, we didn't see that it had a
` word count certification.
` JUDGE PETRAVICK: It's on the last
` page. I'm looking and I'm going to go
` double-check right now.
` (Brief pause.)
` JUDGE PETRAVICK: Mr. Kasha --
` MS. HIGGINS: So, your Honor, we're
` looking at the file that was filed in 768,
` and we don't see a certification.
` JUDGE PETRAVICK: Give me a minute to
` bring it up. My system is a little slow.
` MS. HIGGINS: Sure.
` MR. KASHA: Your Honor, this is John
` Kasha --
` JUDGE PETRAVICK: Oh, it is missing the
` word count certification in the patent
` owner's response.
` MR. KASHA: Your Honor, this is John
` Kasha --
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` JUDGE PETRAVICK: Oh, it is missing the
` word count certification in the patent
` owner's response.
` MR. KASHA: Your Honor, this is John
` Kasha.
` That's correct. We failed to provide
` the word count, and actually Meghan Raymond,
` who was the back-up counsel at the time,
` emailed me, and I emailed her the
` certification of the word count on January
` 20th.
` JUDGE PETRAVICK: And so is it filed in
` this case?
` MR. KASHA: It is not filed in this
` case, your Honor.
` JUDGE PETRAVICK: Oh, great. Then you
` can file a word count certification in this
` case by next Tuesday.
` MR. KASHA: We will do that, your
` Honor.
` JUDGE PETRAVICK: Do you believe it
` will be over?
` MR. KASHA: Your Honor, I believe it
` will be over.
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` JUDGE PETRAVICK: Ok.
` At this point I want to continue down
` my list of deficiencies and then I'm going to
` take a minute to speak with my fellow
` colleague judge on the line after we finish
` talking about the deficiencies about that
` matter.
` All right, so, in your patent owner
` preliminary responses in the 367, 640 and
` 642, I know I saw at least one word count
` certification in those cases that they said
` they were under, they were around 11,000
` each.
` They also have a large number of images
` as text, or text as images, and some of them
` are blurry. They're in a variety of fonts
` and a variety of spacing.
` In those case, you need to re-file
` those patent owner preliminary responses with
` the same parameters. You can remove
` materials, but you cannot add materials or
` make any other substantive changes, other
` than fixing the -- taking the images of the
` text and making them actual words, and you
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` need to re-file the word count certification.
` MR. KASHA: Your Honor, this is --
` JUDGE PETRAVICK: Ok.
` MR. KASHA: Sorry. Your Honor, this is
` John Kasha. Yes, we understand.
` The one question I would have is, in
` some of the drawings we have quite a few
` words.
` Is that also something you want us to
` correct?
` JUDGE PETRAVICK: Yes. I notice that
` you have quite a few words. I would like
` those counted in the word count
` certification.
` MR. KASHA: Ok, but can we keep them --
` JUDGE PETRAVICK: I notice that there
` are images that you took. The font spacing
` is from the declaration.
` Is that correct?
` MR. KASHA: Yes, your Honor.
` JUDGE PETRAVICK: Right. Why don't we
` leave it that way for right now. You don't
` have to redo the declaration. You need to
` redo the patent owner's preliminary response,
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` and in particular as though it's block quote
` of text, and provide another word count
` certification.
` MR. KASHA: Yes, your Honor. We will
` do that. What's the due date for that?
` JUDGE PETRAVICK: Let's see, those are
` not due -- the preliminary responses are not
` due for a while, so I will give you 'till
` next week, next Friday. The other deficiency
` with those responses is that there is some
` evidence cited by URL and not by exhibit
` number.
` As you're aware, all evidence must be
` submitted in the form of an exhibit, so that
` needs to be corrected also, and as long as
` you're making changes to the patent owner's
` preliminary response in those cases, you can
` change the URL to the correct exhibit number.
` MR. KASHA: Yes, your Honor, we will do
` that.
` JUDGE PETRAVICK: All right, I'm going
` to take one minute and confer with my
` colleague on the matter of the patent owner's
` preliminary response in the 766 case.
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` (Brief recess taken.)
` JUDGE PETRAVICK: All right, I have
` consulted with my colleague, and Mr. Kasha,
` this is what we want you to do with respect
` to the patent owner's response in the 768
` case, 768/766 case: You need to remove those
` images of text in those cases so that they
` are in words and that they are counted.
` If it is under 14,000 words, then you
` need to re-count the words and file a new
` certificate certifying the word count.
` You do not need to file a new patent
` owner's response, because it will be very
` inconvenient for the Board right now to look
` at the petitioners' reply which cites the
` patent owner's response and then have the new
` cases in a new corrected patent owner's
` response. I'm quite sure that the page
` numbing is going to change.
` If it is over 14,000 words, the limit
` in our rules, then you must file a new patent
` owner's response.
` Again, the patent owner's response will
` need to remove materials to be under the word
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` count limit, and then like the petitioners,
` you will have to file a red-line version of
` the patent owner's response as an exhibit.
` And also, for the convenience of the
` Board, you will need to file a listing as an
` exhibit listing all the citations in the
` patent owner's response that's in the
` petitioners' reply and any new page numbers
` that that material falls on.
` Do you understand that?
` MR. KASHA: This is John Kasha. Your
` Honor, I do. However should it refer to the
` petitioners' new reply or the old reply?
` So the old reply, right? Because I
` won't have the new reply.
` JUDGE PETRAVICK: You can refer to the
` petitioners' old reply.
` MR. KASHA: Yes, I understand.
` JUDGE PETRAVICK: All right.
` So that is all the deficiencies that I
` have noticed in this case.
` As I mentioned, this panel is very
` disappointed that practitioners who are
` subject to the Bar of the Patent Office
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` cannot follow the rules, and we take these
` matters very seriously, and we are very
` disappointed.
` We do not think that these deficiencies
` were made by mistake. I want to caution you
` that, if such things as this continue in
` these cases, there may be a chance that you
` will not be allowed to file the papers.
` The Board is starting to take these
` matters very seriously. I'm going to refer
` you to Google versus Maggore, IPR 2016-01535,
` Paper 8, for a very, very similar situation.
` In particular the fact that the word
` count has been certified and signed by
` counsel, we find that particularly bad.
` So, I would like Ms. Higgins and Mr.
` Kasha, who signed these papers, to tell me
` that they are aware of the formatting rules
` and that they will be followed.
` MS. HIGGINS: Your Honor, this is Ms.
` Higgins, and I am aware of the rules and they
` will be followed.
` I will say that we do believe that we
` did comply with the certification
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` requirements, and I did the certification
` based on 37 CFR 32.24(d).
` However I understand the Board's
` concerns, and we will follow your
` instructions and be aware of the Board's
` guidance in connection with future filings.
` MR. KASHA: Your Honor, this is John
` Kasha. I'm aware of the rules and I will
` follow the rules, the Board's instructions.
` JUDGE PETRAVICK: Thank you.
` Ms. Higgins, I just want to say that we
` find that the fact that your citations were
` particularly bad in this case, particularly
` when compared to other papers that you filed
` in this case that do not use that kind of
` spacing or abbreviations in your
` certification.
` So, that is all we're going to say
` about this matter today. I will be issuing
` an order either today or on Monday morning
` discussing what we talked about here today
` and setting the -- you know, recording the
` deadline for these new filings. However,
` your time starts now for the filing.
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` So the last matter I want to say is
` that the transcript should be filed in the
` 768 case -- the 640, the 642 and the 637.
` And Ms. Higgins, for cases that you are not
` counsel, I'm assuming that you'll be able to
` share those with Mr. Kasha. So you can share
` that transcript with Mr. Kasha so that Mr.
` Kasha can make sure that it's filed in the
` other cases.
` MS. HIGGINS: Yes, your Honor. We most
` definitely can. As soon as we get the
` transcript from the reporter we can share it.
` I just want to respectfully point out
` that the original petition in 768 was filed
` by a different firm, so that could explain
` certain portions.
` JUDGE PETRAVICK: Yes, Ms. Higgins --
` MS. HIGGINS: I understand.
` JUDGE PETRAVICK: I'm sorry -- I'm
` speaking right now.
` MS. HIGGINS: Sorry.
` JUDGE PETRAVICK: I understand that the
` original petition was filed differently, but
` I've also looked at motions and papers that
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` were filed by you, too. I see exhibit filed,
` "File Ex. No".
` But I'm not going to sit here and argue
` with you about it. We've all ready made our
` decision, we've made our ruling, and we are
` going to go forward in these cases under the
` presumption that all of our formatting rules
` will be followed from here on out.
` MS. HIGGINS: Understood, your Honor.
` JUDGE PETRAVICK: All right.
` The last thing, I want to ask is a
` question, and I believe -- you'll forgive me
` for a minute. There are a lot of numbers in
` this case.
` We sent you an email about pro hac
` motions that we requested in some of these
` cases. And I've noticed that one from Ms.
` Carson was filed last night, that there were
` other people that wanted -- that are listed
` on the mandatory notices that need pro hac
` admission.
` Will those motions be filed soon?
` MR. HEFAZI: Your Honor, this is Nima
` Hefazi. They will. I believe we're
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` coordinating with some of the other counsel
` and they'll be filing those motions very
` shortly.
` JUDGE PETRAVI
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