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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
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`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
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`Petitioner,
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`v.
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`LEGEND3D, INC.,
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`Patent Owner.
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`__________
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`IPR2016-01243
`U.S. Patent No. 7,907,793
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`__________
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`TRANSCRIPT OF JANUARY 16, 2018 TELEPHONIC HEARING
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10438219
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`Dated: January 30, 2018
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`IRELL & MANELLA LLP
`By: /s/ Joshua Glucoft
`Joshua Glucoft, Reg. No. 67,696
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Ste. 900
`Los Angeles, CA 90067
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`Attorneys for Petitioner
`Prime Focus Creative Service Canada Inc.
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`10438219
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`- 1 -
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`IPR2016-01243
`U.S. Patent No. 7,907,793
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. sections 42.6 that a complete copy of
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`the TRANSCRIPT OF JANUARY 16, 2018 TELEPHONIC HEARING is being
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`served by electronic mail, as agreed to by the parties, the same day as the filing of
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`the above-identified documents in the United States Patent and Trademark
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`Office/Patent Trial and Appeal Board, upon:
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`Daniel N. Yannuzzi, Reg. No. 36,727
`Trevor J. Quist, Reg. No. 75,856
`Sheppard Mullin Richter & Hampton LLP
`12275 El Camino Read, Ste. 200
`San Diego, A 92130 (858)720-8924
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`dyannuzzi@sheppardmullin.com
`tquist@sheppardmullin.com
`Sheppard-Legend3DIPR@sheppardmullin.com
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` /Susan M. Langworthy/
` Susan M. Langworthy
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`January 30, 2018
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`10438219
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`- 2 -
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`IPR2016-01243
`U.S. Patent No. 7,907,793
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`·1· · · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
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`·2· · · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·3· · · · · · · · · · · · · ·- - -
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`·4
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`·5
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`·6 PRIME FOCUS CREATIVE SERVICES· ) Case IPR2016-01243
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`·7 CANADA INC.,· · · · · · · · · ·) Patent No. 7,907,793 B1
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`·8· · · · · · · · ·Petitioner,· · )
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`·9· · · · · vs.· · · · · · · · · ·)
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`10 LEGEND3D, INC.,· · · · · · · · )
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`11· · · · · · · · ·Patent Owner.· )
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`12 -· -· -· -· -· -· -· -· -· -· ·)
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`13
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`14
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`15· · · · · · · TRANSCRIPT OF TELEPHONIC HEARING
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`16· · · ·BEFORE KAMRAN JIVANI AND LYNNE E. PETTIGREW,
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`17· · · · · · · ·ADMINISTRATIVE PATENT JUDGES
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`18· · · · · · · · ·TUESDAY, JANUARY 16, 2018
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`19· · · · · · · · · · · · 12:30 P.M.
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`20
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`21
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`22
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`23 Reported by:
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`24· · · · · TERI J. NELSON
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`25· · · · · CSR NO. 7682, RPR
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`·1· · · · · Reporter's Transcript of Telephonic Hearing,
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`·2 Tuesday, January 16, 2018, 12:30 P.M., before
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`·3 Kamran Jivani and Lynne E. Pettigrew, Administrative
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`·4 Patent Judges, before Teri J. Nelson, CSR No. 7682, RPR.
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`·5
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`·6 APPEARANCES (All Telephonic):
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`·7
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`·8 ADMINISTRATIVE PATENT JUDGES:
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`·9· · · · · JUDGE KAMRAN JIVANI
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`10· · · · · JUDGE LYNNE E. PETTIGREW
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`11
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`12 FOR PETITIONER PRIME FOCUS CREATIVE SERVICES CANADA INC.:
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`13· · · · · IRELL & MANELLA LLP
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`14· · · · · BY:· MICHAEL R. FLEMING, ESQ., OF COUNSEL
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`15· · · · · · · ·JOSHUA GLUCOFT, ESQ.
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`16· · · · · 1800 Avenue of the Stars
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`17· · · · · Suite 900
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`18· · · · · Los Angeles, California 90067-4276
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`19· · · · · 310-277-1010
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`20
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`21
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`22
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`23
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`24
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`25
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`·1 APPEARANCES (All Telephonic)(Continued):
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`·2
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`·3 FOR PATENT OWNER LEGEND3D, INC.:
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`·4· · · · · SHEPPARD, MULLIN, RICHTER & HAMPTON
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`·5· · · · · BY:· DANIEL N. YANNUZZI, ESQ.
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`·6· · · · · · · ·TREVOR J. QUIST, ESQ.
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`·7· · · · · 12275 El Camino Real
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`·8· · · · · Suite 200
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`·9· · · · · San Diego, California 92130
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`10· · · · · 858-720-8900
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`11
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`12
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`13
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`14
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`15
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`16
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`17
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`18
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`19
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`21
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`22
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`24
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`25
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`·1· · · · · · · TUESDAY, JANUARY 16, 2018
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`·2· · · · · · · · · · · 12:30 P.M.
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`·3
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`·4· · · · · JUDGE JIVANI:· All right.· It's 3:30, so let's
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`·5 begin.
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`·6· · · · · This is a conference call in IPR2016-01243,
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`·7 Prime Focus Creative Services Canada, Inc., Petitioner,
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`·8 versus Legend3D, Inc., Patent Owner.
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`·9· · · · · Petitioner has requested this call in order to
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`10 seek authorization to file a motion for sanctions.
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`11· · · · · We'll begin with appearances.
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`12· · · · · Do we have counsel for Petitioner?
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`13· · · · · MR. GLUCOFT:· Yes, Your Honor.
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`14· · · · · This is Joshua Glucoft of Irell & Manella, and
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`15 I'm joined by my colleague Mike Fleming.
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`16· · · · · JUDGE JIVANI:· Thank you.
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`17· · · · · Mr. Glucoft, other than Mr. Fleming, is there
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`18 anyone else on the line for Petitioner?
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`19· · · · · MR. GLUCOFT:· No, Your Honor, although we were
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`20 the party that arranged for the court reporter.
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`21· · · · · JUDGE JIVANI:· Thank you for that.
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`22· · · · · Counsel for Patent Owner, who do we have?
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`23· · · · · MR. QUIST:· Yes, Your Honor.
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`24· · · · · MR. YANNUZZI:· Good afternoon, Your Honors.
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`25· · · · · This is Daniel Yannuzzi from Sheppard, Mullin
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`
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`·1 representing the Patent Owner, and with me, although on a
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`·2 separate line, is Trevor Quist.
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`·3· · · · · JUDGE JIVANI:· Quist.
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`·4· · · · · All right.· And Mr. Yannuzzi, who will be
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`·5 presenting argument on Patent Owner's behalf?
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`·6· · · · · MR. YANNUZZI:· Mr. Quist will be presenting.
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`·7· · · · · JUDGE JIVANI:· Thank you.
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`·8· · · · · And other than Mr. Quist, is there anyone else
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`·9 on the line for Patent Owner?
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`10· · · · · MR. YANNUZZI:· No, there is not.
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`11· · · · · JUDGE JIVANI:· Great.
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`12· · · · · All right.· We'll begin with Petitioner.
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`13· · · · · Mr. Glucoft, before we hear substantive
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`14 statements directed to the basis of the motion and the
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`15 specific sanction you seek, I'd like to dispense with a
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`16 preliminary matter.
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`17· · · · · Have you complied with the service and timing
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`18 requirements of 42.11(d)(2)?
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`19· · · · · MR. GLUCOFT:· Yes, Your Honor.
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`20· · · · · We served Legend with our motion in -- I believe
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`21 it was December 22nd, which is well over 21 days.
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`22· · · · · JUDGE JIVANI:· Very good.
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`23· · · · · So as I mentioned a moment ago, the purpose of
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`24 the call is to seek authorization.
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`25· · · · · It's not an opportunity to argue the motion in
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`·1 full, but we would like to understand the basis for the
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`·2 motion and specific sanction you seek.
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`·3· · · · · If -- as you know, since you've been part of
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`·4 these calls, if we grant authorization, you would then
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`·5 file the motion, Patent Owner would have an opportunity
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`·6 to oppose, and normal briefing practice would proceed
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`·7 from there.
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`·8· · · · · With that, we'll turn the floor over to you for
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`·9 a brief statement.
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`10· · · · · MR. GLUCOFT:· Thank you, Your Honor.
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`11· · · · · And this is Joshua Glucoft from Irell speaking.
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`12· · · · · In short, a motion for sanctions requires three
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`13 things, sanctionable conduct, harm and proportionate
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`14 sanctions, and I will just briefly walk through why this
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`15 clears all of those hurdles.
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`16· · · · · So the first element of sanctionable conduct,
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`17 that's easy, and this is probably one of the most
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`18 straightforward instances of misconduct that we will ever
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`19 see.
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`20· · · · · Literally on the first page of the prosecution
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`21 history is a non-publication request that certifies that
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`22 the patent cannot claim priority.
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`23· · · · · The Patent Office then warned the applicant
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`24 during prosecution twice, in writing, that it was
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`25 improper to disclaim priority and also maintain a claim
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`
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`·1 for priority at the same time.
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`·2· · · · · That's exactly what they did here.· They did it
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`·3 in a preliminary response, we conferred with them, we
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`·4 said that this wasn't okay, and they did it again in
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`·5 their formal response.
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`·6· · · · · They've never explained why they think it was
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`·7 okay to claim priority because they can't.· That's why
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`·8 they didn't show up to the oral argument that they
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`·9 requested.· You can just ask them on this call why they
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`10 think it was proper to present the priority issue given a
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`11 certified disclaimer of priority, and they won't give you
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`12 a straight answer.
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`13· · · · · So the first element --
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`14· · · · · JUDGE JIVANI:· So Mr. Glucoft, let me interrupt
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`15 you for a minute there.
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`16· · · · · So I believe you've raised this argument in your
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`17 briefing leading up to our final written decision in
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`18 which we considered your argument, and we did not accord
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`19 priority.
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`20· · · · · Why should we hear this motion now?
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`21· · · · · MR. GLUCOFT:· Yes, Your Honor.
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`22· · · · · So we first -- again, this is Joshua Glucoft.
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`23· · · · · We first raised the improper claim of priority
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`24 in the initial conference call where we said "This is
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`25 improper.· They cannot maintain it."
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`·1· · · · · At the time, the Board said "If you believe
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`·2 there has been misrepresentation, you can raise these
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`·3 misrepresentations in your reply," which is exactly what
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`·4 we did.
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`·5· · · · · Now, the reply is substantive only.
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`·6· · · · · A motion for sanctions has to be, by rule, its
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`·7 own paper.
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`·8· · · · · So in our perspective, the Board took a look at
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`·9 the substance of the claim, and the Board found, in fact,
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`10 that priority does not attach.
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`11· · · · · And now, in a separate motion as required, we
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`12 are asking the Board to take a look at the procedural
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`13 background of their claim of priority to find that it is
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`14 sanctionable.
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`15· · · · · We raised it in the reply as the Board had
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`16 requested, but we weren't at the time able to sort of
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`17 highlight the procedural improprieties.
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`18· · · · · It was just another fact that supported our
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`19 argument substantively that priority did not attach.
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`20· · · · · JUDGE JIVANI:· So assume for a moment that we
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`21 were to agree with you that one, that we were interested
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`22 in hearing your motion as a stand-alone motion pursuant
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`23 to our rules and that we consider that there is a
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`24 sanctionable violation here, would not there be a lack of
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`25 harm since -- since priority has not attached?
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`·1· · · · · MR. GLUCOFT:· Well, Your Honor, the harm is
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`·2 exactly the harm that we were concerned about when we
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`·3 raised this issue on the initial conference call, which
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`·4 is if you look at their response, for example, of the
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`·5 21 pages in their formal response, 20 pages are dedicated
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`·6 to the argument of priority and the subsidiary issues
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`·7 that only relate to priority.· For the vast majority of
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`·8 their claim, they raised no argument at all other than
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`·9 priority.
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`10· · · · · So not only have we wasted time and resources
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`11 briefing and on expert discovery for an issue that was
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`12 improper to raise, but the Board itself has wasted its
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`13 time by looking at the substance of an argument that was
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`14 frivolous to make.
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`15· · · · · So the harm, unfortunately, has just come to
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`16 pass, and now we have time and expense that cannot be
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`17 recovered because the vast majority of the disputes in
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`18 the proceedings were frivolous from the get-go.
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`19· · · · · So if anything, Your Honor, I mean the fact that
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`20 some claims have -- that the priority does not attach
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`21 doesn't sort of rectify the harm that's been caused
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`22 because we shouldn't have had to argue this in the first
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`23 place, and that's exactly what we did.
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`24· · · · · In our initial conference call, we only asked
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`25 for priority to be established up front to prevent them
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`
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`·1 from making the frivolous argument.
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`·2· · · · · Now that the whole trial has gone through, we're
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`·3 asking essentially for a way to rectify all the harm that
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`·4 has been caused.
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`·5· · · · · And I think that leads sort of nicely into the
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`·6 third element, which is the notion of whether or not
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`·7 these sanctions are proportionate.
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`·8· · · · · As Your Honors are aware from our E-mail, we are
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`·9 seeking adverse judgment as to the few surviving claims,
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`10 and there's a reason why that is proportionate to the
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`11 harm that they've caused.
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`12· · · · · First, I'd like to highlight the fact that these
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`13 parties are repeat players, so there's already been two
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`14 completed IPR proceedings in addition to this IPR
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`15 proceeding.· There's also another one going on of which
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`16 the Panel is well aware because there is an overlap, and
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`17 we are just days away from filing yet another IPR.· Their
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`18 patent family is huge.· We're already repeat players, we
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`19 will continue to be repeat players, and if they think
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`20 that they can get away with murder, then there's just no
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`21 end to the litigation games that they're going to play.
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`22· · · · · And the other point as to why the sanctions that
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`23 we're seeking are proportionate to the harm that they've
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`24 caused is the fact that they've done this repeatedly.· So
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`25 they raised the priority argument in their preliminary
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`
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`·1 response, we conferred with them, we said "There is a
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`·2 non-publication request, you've expressly certified that
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`·3 priority does not attach, cannot make this argument, and
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`·4 we're going to ask the Board to confirm," then they did
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`·5 it again anyway in their response, even though we told
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`·6 them that it was sanctionable.
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`·7· · · · · So they had notice that we didn't believe it was
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`·8 proper to be doing this, and then they just repeated it
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`·9 again.
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`10· · · · · They will never provide an explanation as to why
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`11 it's appropriate to argue for priority when they
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`12 expressly disclaimed it.· They cannot justify it, and
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`13 they're just playing games.
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`14· · · · · It's -- it's, I guess, beyond us how this kind
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`15 of behavior could go entirely uncorrected without some
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`16 sort of rectifying sanctions, and that's why we're --
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`17 we're here today, Your Honor.
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`18· · · · · Our motion is just over six pages, it's not
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`19 complicated, it's very straightforward because it really
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`20 is that black and white, and it hones in on the fact that
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`21 there is an unequivocal misrepresentation of claimed
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`22 priority.· There was harm to us in arguing the issues
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`23 over claims that otherwise had no argument other than
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`24 priority, and it -- it demonstrates that because we are
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`25 repeat players, and because they continue to make the
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`·1 frivolous misrepresentation, sanctions any less than
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`·2 adverse judgment would just not be sufficient.
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`·3· · · · · JUDGE JIVANI:· Counsel, I'll tell you candidly
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`·4 that this sounds very much like the motion and arguments
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`·5 that we heard during the initial conference call in this
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`·6 matter, and we addressed your proposed motion for
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`·7 sanctions there, and in particular, we were quite
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`·8 concerned about the motion because essentially you were
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`·9 seeking acceleration of the entire trial and imposing a
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`10 very heavy burden, a significant briefing on this issue
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`11 that has developed through the course of the trial
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`12 leading to our final.
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`13· · · · · I'm not fully persuaded at this moment, sitting
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`14 here, and I won't speak for Judge Pettigrew, but I'll
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`15 tell you candidly I'm not fully persuaded that the harm
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`16 that you have described, if it exists, the cost of trial,
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`17 essentially, on this matter on the issue of priority is
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`18 somehow related to claims that survived where we rejected
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`19 a claim for priority.
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`20· · · · · I'll give you a moment to respond to that before
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`21 we hear from Patent Owner.
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`22· · · · · MR. GLUCOFT:· Thank you, Your Honor.
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`23· · · · · And again, this is Joshua Glucoft.
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`24· · · · · So first, Your Honor, we -- we were not trying
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`25 to short-circuit the entire trial.
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`·1· · · · · Rather, we only wanted to keep the trial to the
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`·2 battlegrounds that were fair, and the one battleground
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`·3 that was unequivocally off limits based on express
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`·4 representation was priority, so we -- we -- we think it's
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`·5 fair at least for the Board and -- and certainly us to
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`·6 demand that the Patent Owner be held to the
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`·7 representations it made to the Patent Office and it was
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`·8 expressly warned about by the Patent Office during
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`·9 prosecution.
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`10· · · · · We're not trying to shortchange a trial in the
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`11 sense that the argument was frivolous and it never should
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`12 have been made in the first place in the same vein that
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`13 you wouldn't accuse -- you wouldn't sort of be upset with
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`14 a party for shortchanging a trial if I had made some sort
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`15 of ridiculous claim that had nothing to do with the
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`16 proceedings.
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`17· · · · · This was just black and white out of bounds from
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`18 what could have been raised in the trial, and then they
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`19 raised it anyway.
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`20· · · · · So I -- I do think that there's an important
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`21 distinction here in the sense that we're not just looking
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`22 at the substance.
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`23· · · · · We're looking at the procedure as to whether or
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`24 not it was okay for them to raise this argument in the
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`25 first place.
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`
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`·1· · · · · And the second point, Your Honor, is whether or
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`·2 not the harm, which, again, we maintain absolutely is
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`·3 real in the sense that we argued these things that need
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`·4 not have been argued, the harm does relate to the claims
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`·5 that survived in the sense that these claims survived
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`·6 based on the Board's ruling on combinability, which is an
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`·7 argument that Legend never raised.
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`·8· · · · · And so now what's -- what's happened is that
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`·9 Legend, by virtue of sort of extending the proceeding
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`10 with its frivolous arguments, has benefitted from the
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`11 Board's hard analysis on an argument that Legend never
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`12 put forth.· Legend never challenged the combinability of
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`13 the alleged parents with Sullivan, and now Legend, as the
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`14 wrongdoer, is piggybacking on the Board's work and taking
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`15 advantage of this argument that it never raised.
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`16· · · · · So you're -- I --
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`17· · · · · JUDGE JIVANI:· Okay.· I've heard enough.
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`18· · · · · Thank you.
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`19· · · · · MR. GLUCOFT:· Thank you, Your Honor.
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`20· · · · · JUDGE JIVANI:· Counsel, as you may be well
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`21 aware, it is Petitioner, you, who brought this matter and
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`22 bear the burden of proof and persuasion.
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`23· · · · · We understand your position on the motion.
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`24· · · · · We'll hear now from counsel for Patent Owner,
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`25 Mr. Quist.
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`·1· · · · · MR. QUIST:· Thank you so much, Your Honors.
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`·2· · · · · Again, this is Trevor Quist from Sheppard,
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`·3 Mullin for Patent Owner Legend3D.
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`·4· · · · · Petitioner has gone -- has pointed out several
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`·5 things on this call, and I want to -- I want to hit on
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`·6 each one of them, but before I dive into each substantive
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`·7 point, I want to take a step back and direct the Board to
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`·8 what I think is a jurisdictional issue.
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`·9· · · · · I'd like to point the Board to a relevant case
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`10 that I think is on point here and shows why the Board
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`11 shouldn't authorize this motion on jurisdictional
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`12 grounds.
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`13· · · · · JUDGE JIVANI:· Certainly.
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`14· · · · · What's the cite?
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`15· · · · · MR. QUIST:· The cite is Symantec Corp. v.
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`16 Finjan, Incorporated, it's IPR2015-01897, and the paper
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`17 I'm looking at is the decision on institution.
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`18· · · · · And in that matter, the Petitioner argued that
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`19 the Patent Owner had made misrepresentations to the PTO
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`20 during prosecution when it had petitioned the U.S. PTO to
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`21 accept a petition for an unintentionally delayed priority
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`22 claim.
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`23· · · · · So a little bit of a different issue, but it
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`24 still turned on this idea of some misrepresentation being
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`25 made during the course of prosecution.
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`
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`·1· · · · · The Petitioner took the position -- took the
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`·2 position that the delayed priority claim was actually
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`·3 intentional, which would, of course, be a violation of
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`·4 the duty of candor during prosecution, but in the Board's
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`·5 decision denying institution, they agreed with the Patent
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`·6 Owner, who took the position that the -- the Petitioner
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`·7 was essentially alleging inequitable conduct by
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`·8 questioning the truth of the Patent Owner's statements to
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`·9 the U.S. PTO during prosecution.
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`10· · · · · And the Board noted that it's not a court of
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`11 general jurisdiction.
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`12· · · · · It's an administrative tribunal whose
`
`13 jurisdiction is limited statutorily in the context of
`
`14 IPRs to determinations of patentability under 102 and
`
`15 103.
`
`16· · · · · They -- they close out by saying:
`
`17· · · · · · · · ·"We do not make any determination with
`
`18· · · · · respect to Petitioner's allegations regarding
`
`19· · · · · the veracity of Patent Owner's statements to the
`
`20· · · · · Office in prior proceedings."
`
`21· · · · · And Prime's arguments here are just the very
`
`22 same tack.· They're asking the Board to investigate an
`
`23 alleged act of inequitable conduct that occurred in a
`
`24 separate proceeding during the prosecution, and its --
`
`25 its only argument here is that Legend has basically again
`
`
`
`·1 violated a duty of candor in this proceeding by
`
`·2 presumably perpetuating that alleged act of misconduct by
`
`·3 just defending itself in the claim of priority in this
`
`·4 proceeding, and that's just insufficient to support their
`
`·5 motion.
`
`·6· · · · · The board in Symantec also stated:
`
`·7· · · · · · · · ·"Petitioner's doubts and inferences
`
`·8· · · · · regarding Patent Owner's past actions and
`
`·9· · · · · motives are insufficient bases for us to
`
`10· · · · · question Patent Owner's candor in this
`
`11· · · · · proceeding."
`
`12· · · · · That's exactly what we've got here.· Just
`
`13 setting aside all of the points that Mr. Glucoft made, I
`
`14 submit that this case -- the Symantec case should be
`
`15 taken under consideration in denying to authorization
`
`16 file the motion for sanctions purely on jurisdictional
`
`17 grounds.
`
`18· · · · · Now, turning now to some of the
`
`19 non-jurisdictional points I'd like to make in rebuttal to
`
`20 the points that Mr. Glucoft has raised, I wanted to point
`
`21 out hey, you know, Petitioner argues that the -- the PTO
`
`22 tried to -- you know, warned Legend that it couldn't
`
`23 claim priority after allegedly disclaiming priority and
`
`24 that -- that we would have no answer if you were to ask
`
`25 us a question as to why we think we can claim priority.
`
`
`
`·1· · · · · And to be clear, the PTO never warned Legend
`
`·2 that it couldn't claim priority after it had already
`
`·3 disclaimed priority.
`
`·4· · · · · The warning was that there was an inconsistency
`
`·5 that needed to be resolved in the prosecution history,
`
`·6 and the suggestion was that the way to resolve the issue
`
`·7 was to rescind the non-publication request, which
`
`·8 basically assumes that the priority claim was valid, not
`
`·9 that the non-publication request was, you know, meant to
`
`10 destroy all claims to priority.
`
`11· · · · · So I think that there's a huge overstatement
`
`12 being made by Petitioner here that -- that somehow the
`
`13 way that they view what happened in the -- in the
`
`14 prosecution history is the only -- is the only real way
`
`15 it can possibly be viewed, and that's simply not --
`
`16 that's simply not true.
`
`17· · · · · What is -- what the reality is is there was a
`
`18 mistake made during prosecution.
`
`19· · · · · We had a priority claim, and we also had a
`
`20 non-publication request.
`
`21· · · · · Those two things were inconsistent.
`
`22· · · · · The MPEP in Section 1122 states that:
`
`23· · · · · · · · ·"While applicant can't undo the fact that
`
`24· · · · · an improper certification was made, any
`
`25· · · · · applicant who made such a mistake should
`
`
`
`·1· · · · · promptly file a rescission of the
`
`·2· · · · · non-publication request and note that the
`
`·3· · · · · original certification was improper."
`
`·4· · · · · And the -- the patent agent at the time failed
`
`·5 to do that, but the rule doesn't say that if you fail to
`
`·6 correct that mistake that that will necessarily result in
`
`·7 a finding that any inconsistent priority claims will be
`
`·8 deemed a per se intentional misrepresentation to the U.S.
`
`·9 PTO, but that's the way that the Petitioner would have
`
`10 you look at the facts, that there's no other way to view
`
`11 this other than that this claim to priority is
`
`12 absolutely, in all cases, always going to be a
`
`13 misrepresentation to the PTO, and that's simply not true.
`
`14· · · · · They also act as though we raised the claim of
`
`15 priority for the first time in this IPR proceeding, which
`
`16 I think is the only real hook they -- you know, that
`
`17 could be looked to as -- as being the piece that this
`
`18 Board would have jurisdiction to look at, but in reality,
`
`19 that's simply just -- they -- that would require the
`
`20 Board to just then go back and look at a whole bunch of
`
`21 other facts that were outside the context of this
`
`22 proceeding, so I think it's improper.
`
`23· · · · · The other thing that the Board men- -- that you
`
`24 mentioned, Your Honors, and that I just want to reiterate
`
`25 is that you've already given Prime the opportunity to
`
`
`
`·1 flesh out these -- these arguments, and they -- they set
`
`·2 them out in their reply.
`
`·3· · · · · We -- we disagreed with -- with some of -- with,
`
`·4 of course, the facts that they alleged were true in their
`
`·5 reply, but nevertheless, they got the opportunity to go
`
`·6 ahead and hash those out, and authorizing this motion for
`
`·7 sanctions would just give them a second bite at the
`
`·8 apple.
`
`·9· · · · · So for -- for all those reasons, in addition to
`
`10 several more that we don't have to go into now, I can
`
`11 reserve for our reply in the event that you -- or our
`
`12 response in the event that you authorize Prime to brief
`
`13 this motion, we believe that the motion shouldn't be
`
`14 authorized in the first place.
`
`15· · · · · JUDGE JIVANI:· Thank you for your statement.
`
`16· · · · · Mr. Glucoft, the proposed Movant, we'll hear
`
`17 from you on reply with regard to authorization.
`
`18· · · · · Please limit to just a few minutes as the call's
`
`19 been running a little long.
`
`20· · · · · MR. GLUCOFT:· Thank you, Your Honor.
`
`21· · · · · And again, this is Joshua Glucoft.
`
`22· · · · · Quickly, just before I get into the substance,
`
`23 to make sure we're on the same page, in other
`
`24 proceedings, we have been asked to file the transcript
`
`25 from conference calls.
`
`
`
`·1· · · · · Would Your Honors like us to do the same in this
`
`·2 case?
`
`·3· · · · · JUDGE JIVANI:· We would.· We were going ask at
`
`·4 the end of our deliberation, but yes, please do file.
`
`·5· · · · · MR. GLUCOFT:· Yes, Your Honor.
`
`·6· · · · · JUDGE JIVANI:· And with regard to the timing for
`
`·7 it, we ask that you file it within a week of receiving it
`
`·8 from the court reporter.
`
`·9· · · · · MR. GLUCOFT:· Absolutely, Your Honor.
`
`10· · · · · Thank you.
`
`11· · · · · And so just quickly addressing what Mr. Quist
`
`12 brought up in their opposition, I want to make two
`
`13 points.
`
`14· · · · · First is they're admitting that there's an
`
`15 inconsistency between the non-publication request and the
`
`16 claim of priority and further that they're aware of the
`
`17 MPEP section that requires correction of that -- of that
`
`18 inconsistency.· They're aware of it because we pointed it
`
`19 out to them on our confer over a year ago.
`
`20· · · · · And what's happened, though, is that even after
`
`21 they decided to maintain the claim of priority, they
`
`22 never told the Patent Office that the non-publication
`
`23 request was supposedly in error, they never provided any
`
`24 evidence from the patent agent saying this was a mistake,
`
`25 they have no basis for claiming there was a mistake, and
`
`
`
`·1 they didn't do anything about it when they realized --
`
`·2 when we told them that there was an issue, and now they
`
`·3 suggest that a mistake has been made.
`
`·4· · · · · So the actual behavior by Patent Owner does not
`
`·5 suggest that there was actually a mistake, certainly not
`
`·6 one that can be now corrected after it benefitted from
`
`·7 the non-publication request because the application was,
`
`·8 in fact, not published until it issued.
`
`·9· · · · · So point number one is just that they
`
`10 acknowledge there's a mistake, they've never taken any
`
`11 action to rectify the mistake, and they've benefitted
`
`12 from this alleged mistake, a mistake that they can't even
`
`13 support by evidence from the person who filed the
`
`14 non-publication request who was former counsel for the
`
`15 Patent Owner in this IPR.
`
`16· · · · · The second issue is the Symantec case, which I
`
`17 happen to be very familiar with because I'm presently
`
`18 adverse to Finjan in another matter, and although we can
`
`19 address this in reply briefing, I'll just say quickly
`
`20 that the issue there has nothing to do with what's going
`
`21 on here.· We are not saying that there was a
`
`22 misrepresentation about priority during prosecution, and
`
`23 therefore, this Panel should sanction that
`
`24 misrepresentation.· That's what happened in Finjan.· We
`
`25 are not saying that.
`
`
`
`·1· · · · · What we are saying is there was a representation
`
`·2 made during prosecution, and there was a
`
`·3 misrepresentation made in this IPR.· That is why that
`
`·4 case has nothing do with this case because the
`
`·5 misrepresentation is what had happened in this IPR.· They
`
`·6 literally told Your Honors that they could claim priority
`
`·7 after they expressly disclaimed priority, and the
`
`·8 examiner, during prosecution, went ahead and looked at
`
`·9 references that postdate the alleged parent, so everyone,
`
`10 during prosecution, was on board that there was no
`
`11 priority, it was examined by the examiner assuming that
`
`12 the priority was as of its filing date, and they never
`
`13 rescinded the non-publication request, even though they
`
`14 told -- Patent Office told them that it was inconsistent,
`
`15 wanted to maintain priority, that they should.· They
`
`16 didn't.
`
`17· · · · · So as of the time this patent was issued, it was
`
`18 clear priority did not attach, and in this proceeding,
`
`19 they have now made a misrepresentation, and that's the
`
`20 conduct that we believe is sanctionable.
`
`21· · · · · JUDGE JIVANI:· Very well.
`
`22· · · · · Will you all please hold the line while the
`
`23 Panel confers?
`
`24· · · · · (Pause in proceedings.)
`
`25· · · · · JUDGE JIVANI:· Okay.· The panel has conferred,
`
`
`
`·1 and we're going to take the request for authorization
`
`·2 under advisement.
`
`·3· · · · · Counsel for Petitioner, as we mentioned during
`
`·4 the argument, you're directed to file the transcript of
`
`·5 this call within seven days of receiving it from the
`
`·6 court reporter.
`
`·7· · · · · Thereafter, a written decision on authorization
`
`·8 will issue.
`
`·9· · · · · Anything else from Petitioner's counsel?
`
`10· · · · · MR. GLUCOFT:· No, Your Honor.
`
`11· · · · · JUDGE JIVANI:· Anything else from Patent Owner's
`
`12 counsel?
`
`13· · · · · MR. QUIST:· No, Your Honor.
`
`14· · · · · Thank you for your time.
`
`15· · · · · JUDGE JIVANI:· Thank you all.
`
`16· · · · · This call is adjourned.
`
`17· · · · · MR. GLUCOFT:· Thank you.
`
`18· · · · · (Proceedings adjourned at 12:57 P.M.)
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
`·1 STATE OF CALIFORNIA· · · ·)
`
`·2· · · · · · · · · · · · · ·) ss.
`
`·3 COUNTY OF LOS ANGELES· · ·)
`
`·4
`
`·5· · · · · I, TERI J. NELSON, CSR NO. 7682, RPR, in and for
`
`·6 the State of California, do hereby certify:
`
`·7· · · · · That said proceedings were recorded
`
`·8 stenographically by me at the time and place therein
`
`·9 named, and thereafter transcribed, and the same is a
`
`10 true, correct and complete transcript of said
`
`11 proceedings.
`
`12· · · · · I further certify that I am not interested in
`
`13 the event of the action.
`
`14· · · · · WITNESS MY HAND this 26th day of January, 2018.
`
`15
`
`16
`
`17
`
`18
`
`19· · · · · · · · · · · · · · · · TERI J. NELSON
`
`20· · · · · · · · · · · · · · · · CSR No. 7682, RPR
`
`21
`
`22
`
`23
`
`24
`
`25
`
`
`
`
`
`1*. mPHONIC HI
`
`TRANSCRIPJ. OJ:
`
`
`
`EARING — 01/16/2018
`
`11
`
`accuse
`1 3:1 3
`
`act
`16:23 17:2
`
`actions
`17:8
`
`addition
`10:14
`
`addressed
`12:6
`
`administrative
`16:12
`
`advantage
`14:15
`
`adverse
`10:9 12:2
`
`afternoon
`4:24
`
`ago
`5:23
`
`agree
`8:21
`
`agreed
`16:5
`
`allegations
`16:18
`
`alleged
`14:1316:2317:2
`
`allegedly
`17:23
`
`alleging
`16:7
`
`analysis
`14:11
`
`answer
`7:12 17:24
`
`anyway
`11:513:19
`
`appearances
`4:1 1
`
`applicant
`6:23 18:23,25
`
`appropriate
`11 :11
`
`4
`
`42.11(d)(2)
`5:18
`
`able
`8:16
`
`absolutely
`14:2
`
`acceleration
`12:9
`
`accept
`15:21
`
`accord
`7:18
`
`12:10 14:22
`
`argue
`5:25 9:2211:11
`
`argued
`14:3,415:18
`
`argues
`17:21
`
`arguing
`11:22
`
`argument
`5:5 7:8,16,18 8:19 9:6,
`8,1310:1,2511:3,23
`13:11,2414:7,11,15
`16:25
`
`arguments
`12:414:1016:21
`
`arranged
`4:20
`
`aside
`17:13
`
`asked
`9:24
`
`asking
`8:1210:316:22
`
`assume
`8:20
`
`assumes
`18:8
`
`attach
`8:10,19 9:2011:3
`
`attached
`8:25
`
`authorization
`4:10 5:24 6:417:15
`
`authorize
`15:11
`
`aware
`
`10:8,1614:21
`
`back
`15:7
`
`background
`8:13
`
`based
`13:3 14:6
`
`bases
`17:9
`
`basically
`16:25 18:8
`
`basis
`5:14 6:1
`
`battleground
`13:2
`
`battleg rounds
`13:2
`
`bear
`14:22
`
`behalf
`5:5
`
`behavior
`11 :15
`
`beHeve
`5:20 7:16 8:1 11:7
`
`benefitted
`14:10
`
`beyond
`11 :14
`
`bit
`15:23
`
`black
`11:2013:17
`
`board
`8:1,8,9,12,15 9:1211:4
`13:515:7,9,1016:10,22
`17:6
`
`Board's
`14:6,11,1416:4
`
`bounds
`13:17
`
`brief
`6:9
`
`briefing
`6:6 7:17
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