`
`Transcript of Conference Call
`
`Date: June 20, 2017
`Case: Taiwan Semiconductor Manufacturing Co., LTD -v- Godo Kaisha IP Bridge 1
`(PTAB)
`
`Planet Depos
`Phone: 888.433.3767
`Email:: transcripts@planetdepos.com
`www.planetdepos.com
`
`WORLDWIDE COURT REPORTING | INTERPRETATION | TRIAL SERVICES
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`------------------------------------X
`TAIWAN SEMICONDUCTOR MANUFACTURING )
`COMPANY, LTD., )
` Petitioner, )
` V ) Case No.
`GODO KAISHA IP BRIDGE 1, ) IPR2016-01246
` Patent Owner, )
`------------------------------------X
`
` Motions Conference Call
` Tuesday, June 20, 2017
` 4:00 p.m.
`
`Job No.: 149161
`Pages 1 - 34
`Reported by: Dianna C. Kilgalen
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`2
`
` Motions conference call in the above-
`captioned matter before the following:
` Judge Arbis
` Judge Fitzpatrick
` Judge Chagnon
`
` Pursuant to agreement, before Dianna C.
`Kilgalen, Notary Public for the State of Maryland.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`3
`
` A P P E A R A N C E S
`ON BEHALF OF THE PETITIONER:
` JOSHUA GOLDBERG, ESQUIRE
` J. PRESTON LONG, ESQUIRE
` FINNEGAN, HENDERSON, FARABOW, GARRETT &
` DUNNER, LLP
` 901 New York Avenue, Northwest
` Washington, DC 20001-4413
` 202.408.4000
` ON BEHALF OF THE PATENT OWNER:
` NEIL F. GREENBLUM, ESQUIRE
` MICHAEL J. FINK, ESQUIRE
` GREENBLUM & BERNSTEIN, PLC
` 1950 Roland Clarke Place
` Reston, Virginia 20191
` 703.716.1191
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`4
`
` E X H I B I T S
`(No exhibits marked.)
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`5
`
` JUDGE ARBIS: This is Judge Arbis, along
`with Judge Fitzpatrick and Judge Chagnon. This is
`a conference call in Case IPR2016-01246. Is
`counsel for Petitioner on line?
` MR. GOLDBERG: Yes. This is Joshua
`Goldberg for Taiwan Semiconductor Manufacturing
`Company. I also have with me my colleague J. P.
`Long.
` JUDGE ARBIS: Counsel for Patent Owner?
` MR. GREENBLUM: Good afternoon. This is
`Neil Greenblum and Mike Fink, Michael Fink, and I
`believe is also on the line if not now then shortly
`should be Arnie -- Arnold Turk.
` JUDGE ARBIS: Great. Thank you. I
`understand we have a court reporter on the line
`today.
` THE REPORTER: Yes. This is Dianna
`Kilgalen with Planet Depos.
` JUDGE ARBIS: Counsel for Patent Owner, I
`believe you were the ones that requested the court
`reporter?
` MR. GREENBLUM: We did.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`6
`
` JUDGE ARBIS: Please file a copy of the
`transcript after the call as soon as you get it. I
`believe the conference call today was requested by
`Patent Owner to discuss an issue with Petitioner's
`reply. So we can hear from Patent Owner first.
` One note for the parties before we begin.
`I just wanted to note again the proper procedure
`for e-mail to the board. I do ask that the parties
`confer with each other and make sure that the issue
`has been fully addressed by the parties and both
`sides are aware of each others' position before
`e-mailing the board to request a conference call to
`seek some sort of relief.
` So if you could do that in the future, it
`can avoid multiple e-mails to the board, we would
`appreciate it.
` Counsel for Patent Owner, would you like
`to go first and explain what you are requesting?
` MR. GREENBLUM: Thank you. Just one
`question; you said you wanted a transcript
`immediately. Do you want the rough ASCII or do you
`want to wait for the expedited transcript?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`7
`
` JUDGE ARBIS: Why don't we wait until the
`end of the call and then we can decide.
` MR. GREENBLUM: Okay. Thank you. Thank
`you very much for taking the call today. We are
`asking -- Patent Owner is asking that the reply and
`declaration be struck in large or in its entirety,
`as well as most of the 35 new exhibits, if not all
`of them.
` We are still going through them to try to
`figure out exactly which ones may have been
`mentioned earlier on.
` The reason we are asking for this, I mean,
`it's quite unusual to see 35 new exhibits show up
`in a reply in any context. But I thought that I
`would start off by first referring to a decision
`that the board directed our attention to, the
`Arioso case.
` And the Arioso case, it can be cited on, I
`guess, a number of different things. But I will
`start off by pointing on page 14 of the case, it
`refers to complexity. You look at complexity in
`deciding how much has to be in the initial
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`8
`
`petition.
` And they say: Given the complexity in
`this area and how seemingly small differences might
`be significant, dot, dot, dot. And we think that
`this is a complex case, and we have said that in
`our filings and we continue to maintain that.
` Second of all, on the same page, Arioso
`says -- now this is the CAFC speaking to the board
`and instructing the board -- they are saying that
`the petition did not explain how or where the
`references differ from the challenged claims, how
`one of ordinary skill in the art would go about
`combining their disparate elements.
` Your Honor, that is the key here as far as
`we are concerned in our initial -- in our response.
`We very heavily emphasized the fact that there was
`a requirement for how to combine the elements and
`that there was none provided in the initial
`petition.
` And then finally, I will just sort of jump
`a little bit to the end but then come back just to
`say, you know, this as you of all know best that
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`9
`
`the proceeding here is an accelerated proceeding.
`And reading again from Arioso: Congress assigned
`to challenger as Petitioner the burden of
`persuasion in the dispute. That burden together
`with the procedural rules impartially applied means
`that in some cases, a challenge can fail even if
`different evidence and arguments might have led to
`success.
` And I sort of sense in reading their reply
`it's like: Oh, come on. We missed it the first
`time around, but there are 35 more documents that
`show that we are right.
` The issue here, going to the crux of what
`is at stake here, is that initial rejection which
`was Lee or Lowery or Nobel or Ogawa, I will just
`shorthand it and say that was basically an A in
`view of B rejection, Lee in view of Nobel, Lee in
`view of Ogawa, A in view of B.
` And what the reply has done is to entirely
`change the argument, to shift it so that it's now
`either A in view of B as modified by C, or just
`simply A in view of C. And they provide 35
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`10
`
`documents. I say 35. It's somewhere between 30
`and 35 which are totally new, and 90 pages of
`declaration testimony.
` Now, before they said take B as it is and
`all you have to do is substitute it into the device
`of A that they pointed to. Add some other device
`in some other embodiment in B, add some other
`device in some other exhibit, but not the one that
`they focused us on and directed us to.
` Now they say change B as in any one of
`these 30 or so documents or maybe all of them. I
`don't know.
` JUDGE ARBIS: Counsel, can you give us an
`example, your best example, where you said A in
`view of B as modified by C or in view of C, can you
`give us an example of what C is?
` MR. GREENBLUM: Okay. So I will
`address -- I will direct -- I will direct the board
`to page 17 of the Petitioner's reply. I'm sorry.
`Page 19. My apologies. Do you have that in front
`of you?
` JUDGE ARBIS: I do, yes.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`11
`
` MR. GREENBLUM: On page 19, right below
`the modified Lee Figure 11, it says instead of
`Locos -- Locos would be Lee or Lowery -- instead of
`Locos raised FTI 113 is formed by any of the
`well-known processes discussed above. Those are
`the 30 or 35.
` So that goes exactly to the core of the
`argument here. They are not saying any more, just
`take in B and combine it in to A or the device of B
`into A. They are saying take the device of B or
`just -- and modify it as any one of these 35
`references would do, and then combine that modified
`version into A.
` And they did the same thing with respect
`to Lowery. Now, I -- so we find that to be, of
`course, very objectionable. The entire thrust of
`their argument has now changed in light of what
`they have put in their reply.
` I would direct the board to the NuVasive
`case in that regard. They originally said it was a
`simple substitution. Just substitute the device of
`B into A and now they changed the whole structure
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`12
`
`of the argument.
` Now, what I find surprising, troubling and
`incomprehensible is that on page 17 of their reply,
`they say that these other references -- and this is
`page 17 -- it says: Although these additional
`cited references are duplicative of what's in the
`petition and not essential to any obviousness
`finding.
` So what we have here is 30 to 35 new
`exhibits that are duplicative and not essential
`that are being added into the mix, which
`constitutes an entirely new argument, and which now
`puts the burden on us to try to somehow deal with
`35 documents -- I say 35. I keep meaning 30 to
`35 -- under an accelerated proceeding and it just
`can't be done under the timelines that are involved
`here.
` A reply -- the reply that they filed
`should only respond to arguments raised in the
`Patent Owner's response. That is 37 CFR Section
`42.23 B, which I'm sure the board is well aware of.
` Now, I get the idea that they want to
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`13
`
`respond. But -- and when they respond, they cannot
`shift to an entirely different argument. When
`there are new and impermissible issues, the CAFC --
`this is in the Intelligent Bio-Systems case -- says
`neither we nor the board should have to sort them
`out.
` I mean, we have been trying to sort them
`out, but it's virtually impossible. I will add
`that the declaration that has been added in
`connection with these 35 documents is 90 pages long
`on the reply.
` I mean, that almost -- what do they say --
`ipso facto says that it can't possibly just be a
`response to argument. These new teachings go to
`how the devices are to be combined. That's what
`this whole briefing is now about.
` Now, both the Petitioner and, with all due
`respect, the board -- I will speak for the
`Petitioner first -- the Petitioner was very, very
`definite. They don't have to say how. And that
`was the role they took in their first petition --
`in their petition.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`14
`
` We objected to that. They never moved to
`add evidence, to substitute evidence, or to
`supplement in any way. And here we are. The board
`seems to feel as well that the requirement to say
`how the devices are to be combined was not
`necessary.
` So then if that's the case and what they
`are adding in is duplicative of what was there
`before and not necessary, not essential to the
`argument, there should be absolutely no reason at
`all that this reply should not be stricken.
` We ask that we be permitted to file a
`motion to strike.
` JUDGE ARBIS: Okay. Why don't we hear
`from the Petitioner. Before we do, just to make
`sure I understand the request, this is a request
`for authorization to file a motion to strike both
`the reply brief, the expert declaration and the
`exhibits all in their entirety?
` MR. GREENBLUM: Well, you know, we are
`trying to parse it as best as possible. It is
`possible that the last ten pages of the reply may
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`15
`
`go just to rebutting our argument, and -- but what
`concerns me greatly is all it takes is one sentence
`in there that says and based upon the other
`documents we have cited herein, and suddenly they
`all come into the case.
` That is the only reason why I'm being a
`little hesitant. I hope you understand.
` JUDGE ARBIS: Okay. I want to hear from
`Petitioner now. And then we will give the Patent
`Owner the last word. Counsel for Petitioner, would
`you like to respond?
` MR. GOLDBERG: Thank you, your Honor.
`This is Joshua Goldberg for Petitioner again. I
`want to start by just letting your Honors know that
`we appreciate the point that you made at the
`beginning about making sure that issues were fully
`vetted before they came to the board.
` And we would submit that this issue has
`not been fully vetted. This is the first we have
`heard of any of these cases, of any of these
`specifics, of any of these discussions.
` The entirety of the information that was
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`16
`
`sent to us about this last night that counsel for
`Patent Owner forwarded to the board and said we
`told them about it, I quote: It will be asserted
`in our request for authorization to file a motion
`to strike the reply, that the entirety of the reply
`and evidence except for the end of the reply, the
`part beginning at page 42, raises new grounds of
`rejection. That argument is not in the scope of
`the original petition and is an improper reply.
` So this is the first that we are hearing
`of any of these details today. I will try the best
`I can just based on my memory of some of the cases
`that he was referring to, try to address them.
` And then I have also got my co-counsel
`here who can get into the details of some of the
`substantive points that counsel for Patent Owner
`was trying to make.
` JUDGE ARBIS: Counsel, I understand the
`point about the procedural posture of this. What I
`would be curious to hear is why is the substance of
`what you argue in the reply, why is that proper
`under 42.23?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`17
`
` Counsel has requested authorization to
`file a motion to strike. Why do you oppose that?
` MR. GOLDBERG: So we oppose that
`because -- the simple reason is what we said,
`everything is responsive to what was in our Patent
`Owner response. You know, he, at the very end of
`Patent Owner's discussions, this is the very first
`time he brought up 42.23 and started talking about
`how it wasn't responsive. But at the same time, he
`spent a little time -- or a large portion of the
`time talking about how there has been this back-
`and-forth issue between the parties about whether
`the process matters or not for the claim, and
`that's something that has been on the table for a
`while.
` And under the case which we actually cited
`in our reply, one of the things that is important
`under the APA is that the issues be fully vetted.
`And our understanding is that the point of a reply
`is so that a petitioner has an opportunity to
`respond to what the Patent Owner said in their
`Patent Owner response.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`18
`
` In fact, the rules actually provide for
`the fact that evidence can be filed with replies.
`That is why there can be depositions after replies.
`And that is why there can be observations after
`those depositions.
` At its core, the big issue that has been
`in play here is whether or not these processes
`matter. The Patent Owner made that an issue in the
`Patent Owner response. Our reply is simply
`responding to that.
` Now, I will let my co-counsel, J. P. Long,
`go through some of the specifics and we can talk
`about the individual pages and whatnot that Patent
`Owner's counsel is pointing to, why each of our
`arguments are directly responsive to what Patent
`Owner was stating in the Patent Owner response
`based on what is appropriate here.
` And if your Honors are interested, we can
`talk a little bit about the Arioso and NuVasive
`cases, too.
` JUDGE ARBIS: Let's go over maybe one
`example, if you could respond to one of the
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`19
`
`examples that Patent Owner has pointed to. Then I
`may ask a couple other questions.
` MR. LONG: Sure this is J. P. Long for the
`Petitioner. Two of the arguments that the Patent
`Owner makes in its response is that, quote: It is
`not simply possible to start with Nobel's or
`Ogawa's trench isolation without first forming the
`gate dielectric and gate conductor because
`Nobel/Ogawa's trench isolation formation depends on
`in the availability of the gate dielectric and the
`conductor.
` As Josh mentioned, you know, one of the
`issues that Patent Owner has put into place in
`these proceedings is whether a process is needed to
`show the obviousness of a structure. Our position
`has not changed. It is that the structure, the FTI
`structure shown in Nobel and Ogawa, is
`substitutable, is a functionally equivalent item
`that can be replaced, and to the Lee and Lowery
`devices. That has not changed what we are arguing.
` In fact, all we are doing is responding to
`the argument that that would have been impossible,
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`20
`
`which was an argument that Patent Owner raised in
`its response. It's simply not accurate unless you
`are attempting to make a literal physical
`combination of particular embodiments, the
`references.
` All we are doing is showing what was well
`known about how one makes the structures shown in
`Nobel and Ogawa, including, for example, references
`that are specifically incorporated by reference for
`that teaching that show it is entirely consistent
`with what we are showing.
` If you will note the example shown on page
`19, all we are doing is illustrating what we said
`in the petition, which is a substitution for FTI,
`which is the block shaped isolation modified in
`figure 191 or the more Nobel shape print isolation
`in Figure 11.
` Why Patent Owner believes that we have
`changed our position and are somehow making widely
`different accusations here with this is beyond me,
`because this is pretty much as straightforward as
`it gets.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`21
`
` If you notice, we cite the petition
`specifically where we explain very clearly in no
`uncertain terms the substitution we are making. In
`other words, how the references would be modified
`and also why they would be modified. I think we
`have applied pages and pages.
` JUDGE ARBIS: Would you respond to the
`Patent Owner's argument about the explanation of
`how you would combine two references? If Patent
`Owner is correct that that was not in the
`petitions, why is that appropriate to come in on
`reply?
` MR. LONG: Why specifically -- I'm sorry.
`Could you repeat the question?
` JUDGE ARBIS: Sure. If the Patent Owner
`has said that the petition did not explain in
`detail how you would combine the references, how
`you would combine A and B, and that that
`explanation has come in for the first time with the
`reply and that that is improper, why do you believe
`that that is proper to do that?
` MR. LONG: Well, we briefed this. In
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`22
`
`fact, the entire Section 2B of our reply addresses
`that precise argument. I would like to point out
`that although there is no new evidence cited there,
`we are particularly just responding to legal
`arguments. That is also part of what Patent Owner
`is trying to strike in our reply.
` But there is no requirement that how it is
`specifically a process performing a structure. The
`question is simply whether a person of ordinary
`skill in the art would reasonably expect to succeed
`in making the alleged substitution.
` And we provided ample evidence in the
`petition explaining that these were substitutes.
`They were well-known substitutes. Various examples
`explained that you could use one rather than the
`other.
` The process isn't particularly at issue,
`because a person of ordinary skill would know how
`to do that. And we also identified examples, for
`example, the admitted prior art. And this was all
`discussed.
` Actually, on page 16, we show a summary of
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`23
`
`evidence of record that actually shows how these
`things specifically were made. But the particular
`processes for showing the substitutability of a
`device claim has never been a requirement, only
`reasonable likelihood of success.
` For something like this where it is so
`trivial that there is ample evidence suggesting
`they were functionally equivalent substitutes and
`that everyone knew that, and numerous references
`are explaining that they are interchangeable, why
`we would need to fill out a particular way --
`process for doing that is not the legal
`requirement.
` It's like saying, you know, someone knows
`how to make a chair because one references making
`the legs before the back, one references just
`making the back before the legs. Therefore,
`someone would know to substitute the back of one
`chair for the back of another chair simply
`because -- you know, it's just not something that a
`particular process is needed to explain, because it
`was known that these were substitutable.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`24
`
` It's only because the Patent Owner has
`chosen to try to make this an issue by taking a
`very, very narrow reading of the prior art and
`ignoring, in fact, evidence from -- evidence we
`cited of what a person of ordinary skill in the art
`would know, including the prior art in the patent.
` Only by ignoring all of that evidence and
`the processes for making the FTI, and focusing
`particularly on specific embodiments, only by doing
`that does Patent Owner even have any argument to
`make.
` I will just point out the processes that
`Nobel and Ogawa specifically use are exactly like
`the other processes. They just skip a step at the
`very end of the normal FTI fabrication process.
`That is part of the admission.
` JUDGE ARBIS: Okay. Counsel, I think we
`understand your position. Again, the call today is
`to discuss the request for authorization for motion
`to strike.
` So what I would like to do now is we will
`give Patent Owner the last word if you would like
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`25
`
`to respond to Petitioner. Then the panel will
`confer. Counsel for Patent Owner?
` MR. GREENBLUM: I will make it brief. The
`reason that the briefing focused in on Ogawa and
`Nobel is because that is what the Petitioner
`asserted. And they asserted the ones that were
`different than all the others. You just heard it.
` They are the ones where the order is
`different than the others. And that's what we
`responded to. And now we are being told: Well,
`there's 35 others that do it a different way and we
`should know about -- and you should take that into
`account.
` What I also heard now in the argument is
`the petition itself has ample evidence therein.
`The evidence of record is sufficient. Now -- we
`are told in the briefing that this new material is
`duplicative and nonessential.
` It seems to me the decision is very easy
`to strike the reply today. Somebody who says it's
`nonessential, it doesn't make a difference, but I'm
`going to submit 90 pages that the Patent Owner is
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`26
`
`going to now have to work through and it's going to
`take a lot of time, I think the answer is very
`simple: Strike it.
` I think -- I will stop there. I don't
`want to get worked up here.
` JUDGE ARBIS: Okay. We would like -- the
`panel would like to confer briefly. So we will go
`on mute. All parties can stay on the line. We
`will be back shortly.
` (Thereupon, there was a recess taken at
`4:27 p.m.)
` (Thereupon, the proceedings were resumed
`at 4:30 p.m.)
` JUDGE ARBIS: This is Judge Arbis. Is
`everyone on the line?
` MR. GREENBLUM: Yes.
` MR. GOLDBERG: Yes, your Honor.
` JUDGE ARBIS: The panel will take this
`matter under advisement. We would like to confer
`further before making a decision. We will issue an
`order with a decision on Patent Owner's request for
`authorization to file a motion to strike.
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`27
`
` Patent Owner, if you can file a transcript
`of today's call as soon as possible, we would
`appreciate it. Please wait until the complete
`transcript is available, not the rough copy. But
`again, if you could file that as soon as possible,
`that would be great.
` We will issue an order as soon as possible
`after that. Any questions or other issues from the
`parties today?
` MR. GREENBLUM: Your Honor, this is Neil
`Greenblum for Patent Owner. There is a whole -- we
`have a schedule that the board has set out and this
`reply has thrown a monkey wrench into our
`scheduling and the way we would do things.
` There is -- you know, the question of
`surreply comes up, the question of the length of
`any motion, but certainly surreply. We have got a
`motion -- we have got a reply here with 90 pages of
`declaration.
` Do we get a surreply? How long may it be?
`Is this premature to discuss at this point?
` JUDGE ARBIS: Well, it was my
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`28
`
`understanding that Patent Owner was just requesting
`authorization today for a motion to strike. Are
`you also requesting authorization for a surreply?
` MR. GREENBLUM: If your Honors would
`prefer, I could make a separate request so that
`Petitioner has an opportunity to object to that. I
`don't want to surprise them on this in any way.
` MR. GOLDBERG: This is Petitioner. We
`kind --
` JUDGE FITZPATRICK: Let me just go back to
`the panel real quick. What would be the point of a
`surreply if the whole point of what I'm
`understanding your argument to be is that part or
`all of Petitioner's reply is improper? Why would
`more argument alleviate that situation?
` MR. GREENBLUM: That's exactly right. I
`have been asking this question for the last two
`days. But it's my understanding that we won't get
`a decision on the motion to strike until the final
`decision.
` So if there -- so I have to protect
`myself. Did I answer the question?
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`29
`
` JUDGE FITZPATRICK: It sounds like you
`have a procedure -- a tactical reason for wanting
`it, but not -- I don't understand the legal
`justification for it.
` MR. GREENBLUM: Well, if my motion gets
`denied, I guess I have to somehow respond to the
`reply. I have to -- there were 35 new documents in
`there. Now, maybe I'm mis --
` JUDGE FITZPATRICK: This is the way I have
`dealt with this in the past. This issue has come
`up in other cases. Maybe this will be the way we
`end up -- this panel decides, is that we are not
`going to have any more briefing of any kind.
` And you are free to -- at oral hearing,
`assuming you request one, you are free to point
`this out. We know when we are reading the
`petition. We know what the petition will read and
`the reply.
` You know, we are conscious of what's in
`what papers when we go to rule, when we decide
`issues.
` So adding more papers just so that you can
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`30
`
`respond to something that you think that they
`shouldn't -- something that they shouldn't have
`said in the first place because it was too late
`doesn't seem to me to fix the situation. It seems
`it would make the situation worse.
` MR. GREENBLUM: Your Honor, you are the
`judge. It seems that that is the way I might have
`done it in another instance. But if that's what
`you would prefer, then I can only say that I would
`hate to come in to the trial and have to talk about
`34 documents or something and not know where I
`stand.
` JUDGE FITZPATRICK: Right. Well, here's
`where I would say you would stand, is if this is
`improper argument and improper, you know, late --
`too-late evidence -- basically, I think in a
`nutshell, you are saying they are trying to make a
`prima facie case in their reply brief.
` MR. GREENBLUM: That is correct.
` JUDGE FITZPATRICK: If that is, in fact,
`the case, and you point that out to us and you are
`correct, we are going to agree with you, and you
`
`1 2 3 4 5 6 7 8 9 1
`
`0
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`
`PLANET DEPOS
`888.433.3767 | WWW.PLANETDEPOS.COM
`
`
`
`Transcript of Conference Call
`Conducted on June 20, 2017
`
`31
`
`are going to see a decision that accords with that
`if that's truly what's going on here.
` And it's possible we make the mistake and
`perhaps we don't. And then you are going to have
`that argument in the federal circuit to say that we
`screwed up.
` But that's how I have dealt with it in the
`past. I don't think you need to -- if those 30 or
`those 3
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
