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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC., ) Case:
`) IPR2016-01257
`Petitioner, )
`) Patent 8,457,113
`vs. )
`)
`FOCAL IP, LLC, )
`)
`Patent Owner. )
`_____________________________)
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`(Caption continued on next page)
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`TRANSCRIPT OF PROCEEDINGS
`HELD VIA CONFERENCE CALL
`Thursday, October 12, 2017
`
`Before:
` BARBARA PARVIS, Presiding,
` SALLY MEDLEY
` and
` JONI CHANG,
`Administrative Patent Judges
`
`Reported by:
`Carol L. Naughton, RPR, CCR
`Job Number 132114
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`TSG Reporting - Worldwide 877-702-9580
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 1
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC., ) Case:
`) IPR2016-01257
`Petitioner, )
`) Patent 8,457,113
`vs. )
`)
`FOCAL IP, LLC, )
`)
`Patent Owner. )
`_____________________________)
`
`(Caption continued on next page)
`
`TRANSCRIPT OF PROCEEDINGS
`HELD VIA CONFERENCE CALL
`Thursday, October 12, 2017
`
`Before:
` BARBARA PARVIS, Presiding,
` SALLY MEDLEY
` and
` JONI CHANG,
`Administrative Patent Judges
`
`Reported by:
`Carol L. Naughton, RPR, CCR
`Job Number 132114
`
`TSG Reporting - Worldwide 877-702-9580
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 1
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 2
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`(Caption continued from previous page)
`YMAX CORPORATION, ) Case:
` ) IPR2016-01258
` Petitioner, )
` ) Patent 7,764,777
` vs. )
` )
`FOCAL IP, LLC, )
` )
` Patent Owner. )
`_____________________________)
`
`(Caption continued on next page)
`
` October 12, 2017
` 3:00 p.m.
`
` Transcript of proceedings, held
` telephonically, before Carol L. Naughton,
` RPR, CCR, a Notary Public of the
` Commonwealth of Virginia, at Large.
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 2
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
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`YMAX CORPORATION, ) Case:
` ) IPR2016-01260
` Petitioner, )
` ) Patent 8,457,113
` vs. )
` )
`FOCAL IP, LLC, )
` )
` Patent Owner. )
`_____________________________)
` )
`BRIGHT HOUSE NETWORKS, LLC ) Case:
`WIDEOPENWEST FINANCE, LLC ) IPR2016-01261
`KNOLOGY OF FLORIDA, INC. )
`BIRCH COMMUNICATIONS, INC. ) Patent 8,457,113
` )
` Petitioner, )
` )
` vs. )
` )
`FOCAL IP, LLC, )
` )
` Patent Owner. )
`_____________________________)
` )
`BRIGHT HOUSE NETWORKS, LLC ) Case:
`WIDEOPENWEST FINANCE, LLC ) IPR2016-01262
`KNOLOGY OF FLORIDA, INC. )
`BIRCH COMMUNICATIONS, INC. ) Patent 7,764,777
` )
` Petitioner, )
` )
` vs. )
` )
`FOCAL IP, LLC, )
` )
` Patent Owner. )
`_____________________________)
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 3
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 4
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`A P P E A R A N C E S:
`
` BAKER BOTTS
` Attorneys for Cisco Systems
` 101 California Street
` San Francisco, California 94111
` BY: SARAH GUSKE, ESQUIRE
`
` BRYAN CAVE
` Attorneys for YMAX Corporation
` 1290 Avenue of the Americas
` New York, New York 10114-3300
` BY: JOSEPH RICHETTI, ESQUIRE
`
` DUANE MORRIS
` Attorneys for BRIGHT HOUSE NETWORKS GROUP
` 505 9th Street, N.W.
` Washington, D.C. 20004-2166
` BY: CHRISTOPHER TYSON, ESQUIRE
`
` NELSON BUMGARDNER
` Attorneys for Patent Owner
` 3131 West 7th Street
` Fort Worth, Texas 76107
` BY: JOHN MURPHY, ESQUIRE
` BRENT BUMGARDNER, ESQUIRE
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 4
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
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`Page 5
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` PROCEEDINGS
` THE COURT: Hello, everyone. This
`is a call pertaining to five cases. All
`the cases involve challenges to patents
`owned by FOCAL IP, LLC.
` The cases are:
` IPR2016-01258 and 01260, and the
`petitioner is YMAX corporation;
` IPR2016-01257, and the petitioner is
`Cisco Systems, Incorporated;
` And IPR2016-01261 and -01262, and
`petitioner is Bright House Networks, LLC,
`WideOpenWest Finance, LLC, Knology of
`Florida, Incorporated, and Birch
`Communications, Incorporated. We'll refer
`to that as Bright House Networks Group.
` I'm Administrative Patent Judge
`Parvis. Judges Medley and Chang also are
`on the line.
` Let's do a rollcall. Who is
`representing Petitioner YMAX Corporation?
` MR. RICHETTI: Good afternoon, Your
`Honor. It's Joseph Richetti from Bryan
`Cave representing YMAX.
` THE COURT: Who is representing
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 5
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
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` PROCEEDINGS
`Petitioner Cisco Systems?
` MS. GUSKE: This is Sarah Guske from
`Baker Botts for Cisco.
` THE COURT: Who is representing
`Petitioner Bright House Networks Group?
` MR. TYSON: Your Honor, this is
`Chris Tyson on the line for Bright House
`Networks Group.
` THE COURT: And who is representing
`patent owner?
` MR. MURPHY: Your Honor, this is
`John Murphy. I'm also joined by Brent
`Bumgardner.
` THE COURT: Is there a court
`reporter on the line?
` THE COURT REPORTER: Yes, ma'am.
`This is Carol Naughton.
` THE COURT: Whoever arranged for the
`court reporter, can you file the transcript
`at the end of the call?
` MR. MURPHY: Yes, Your Honor.
`That's the final transcript; correct?
` THE COURT: When it's available.
` MR. MURPHY: Understood.
`
`TSG Reporting - Worldwide 877-702-9580
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 6
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
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`Page 7
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` PROCEEDINGS
` THE COURT: Great. Thanks.
` The call today is to give the
`parties an opportunity to discuss the
`impact of the federal circuit en banc
`decision in Aqua Products, Incorporated
`versus Matal. The federal circuit decision
`came out October 4, 2017.
` And more specifically, we would like
`to hear from the parties as to whether
`additional briefing is warranted. We'll
`start by giving Petitioner YMAX Corporation
`a chance to provide info.
` MR. RICHETTI: Yes. Thank you, Your
`Honor. This is Joseph Richetti for YMAX.
` Petitioner YMAX does believe that
`additional briefing is required under the
`original order, which was entitled Guidance
`on Motion to Amend Claims.
` The board set forth that the burden
`was on patent owner to prove patentability,
`and since Aqua Products now calls that into
`question and has shifted that burden,
`Petitioner YMAX would like an opportunity
`to be able to brief that, to be able to
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 7
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 8
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`provide, you know, why the claims are
`unpatentable and would suggest that
`Petitioner YMAX would at least have the
`same briefing framework that was provided
`patent owner, where we would have an
`opening brief, patent owner would have an
`opposition, and then we would have a reply.
` THE COURT: And how many pages and
`how much time do you suggest?
` MR. RICHETTI: Your Honor, this is
`Joseph Richetti again for YMAX. We would
`believe that we could do it on an expedited
`schedule, if the Court has any suggestions
`or timing concerns, but we would suggest
`that at least one month for us to be able
`to put in our opening paper, however much
`time patent owner's needs require, and then
`we can file a reply within two weeks or
`three weeks as to their opposition.
` From a page standpoint, we would
`think that it would be appropriate to at
`least follow the prior page limits; 25
`pages for the opening, 25 pages for an
`opposition, and 12 for the reply.
`
`TSG Reporting - Worldwide 877-702-9580
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 8
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
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`Page 9
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` THE COURT: Okay. Is there anything
`else that Petitioner YMAX would like to
`add?
` MR. RICHETTI: The only other thing,
`Your Honor, would, of course, be the
`opportunity to put in an expert declaration
`alongside the motion.
` THE COURT: With the opening brief?
` MR. RICHETTI: Exactly.
` THE COURT: Okay. I'll give
`Petitioner Cisco Systems a chance to --
` MS. GUSKE: Thank you, Your Honor.
`This is Sarah Guske for Cisco.
` From an initial perspective, an
`agreement about the pattern of briefing
`proposed by YMAX where there's a new brief
`for petitioner, patent owner be given a
`response, and then with -- because of the
`burden on the petitioner, the petitioner
`would also be given a reply, I think we
`have a bit of a differing view from YMAX
`about the length of time needed as well as
`the length of that briefing because we
`would also like to put in expert testimony
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 9
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
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`Page 10
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`and would presume that patent owner would
`as well.
` The ability to get additional expert
`depositions scheduled and queue up experts
`to help in this process, I think, will take
`longer than a month. I mean, I think
`ideally we will be looking at a pattern of
`three months for the opening briefs, three
`months for response, and two months for
`reply.
` I have not done the math. I'm not
`entirely certain we can get that done
`within the statutory time framework. So
`perhaps there's some wiggle room there.
` Also, in terms of brief lengths,
`because we're now in a position where --
`with the changed burden and we're having to
`address all of the claim limitations and
`hear what patent owner has proposed for the
`amendments, have added a significant amount
`of words and elements to the claims, I
`would think something more along the line
`of -- this is effectively going to be a
`petition.
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 10
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
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`Page 11
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` So the briefing length that's
`available for petition -- opening brief of
`14,000 words and then the parallel for
`response for patent owner and then the
`current word limit for reply, I think would
`give us the appropriate amount of space.
` THE COURT: Okay. We'll give Bright
`House Networks Group a chance to let us
`know whether additional briefing is
`warranted.
` MR. TYSON: Thank you, Your Honor.
`This is Chris Tyson.
` We agree with both YMAX and Cisco
`that we do think additional briefing is
`required with the change in burden. We
`also agree, kind of, with the structure
`that both defendants are setting forth that
`we'd have an opening brief, an opposition,
`and a reply. We also agree that expert
`testimony should be warranted.
` And on that basis -- and really, I
`guess the other component of this is that
`the motion to amend page limits that were
`set forth were based on the patentability
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 11
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
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`Page 12
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`standard where the patent owner would only
`really need to argue what limitations were
`allegedly missing from the prior art;
`whereas, as Ms. Guske identified, in an
`unpatentability scenario, we're going to
`have to address every claim limitation in
`the claims.
` This claim has been lengthened by
`the patent owner. So we do think that we
`would require additional time and allow
`additional time for the expert depositions
`to take place.
` Just looking at, you know, the math
`and with respect to the statutory deadline,
`we would prefer something kind of in
`between what YMAX had suggested and what
`Cisco had suggested. I think if we did 60
`days for the opening brief, which would put
`us at around December 12, 60 days for
`patent owner's opposition, which would be
`around February 12, and 30 days after that,
`which would be March 12, the statutory
`deadline, as we see it, I think, based on
`my calculation, is around June 3rd, 2017,
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 12
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
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`Page 13
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`for these IPRs. And so that's the window
`that we were looking at. It seemed to be
`able to fit in with that timeline.
` And I guess, as an initial proposal,
`we'd agree with Cisco that we'd be looking
`at the -- essentially, it's a petition here
`for these claims, and we'd be looking at
`the word limit that's set forth for a
`petition, 14,000 words; the patent owner
`would have the same for his opposition; and
`then our reply would be the same as the
`reply, which would be 5,600 words.
` THE COURT: For Petitioner Cisco
`Systems and Petitioner Bright House
`Networks, if you were to submit your -- if
`you were to submit the claim charts that
`you previously submitted, would that change
`your proposal on the word limit?
` MR. TYSON: Your Honor, this is
`Chris Tyson. What I'd say is that, first
`of all, I don't believe that Cisco actually
`provided claim charts.
` MS. GUSKE: That's not correct.
` MR. TYSON: With respect to us, the
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 13
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
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`Page 14
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`purpose of the claim charts was they
`were -- we basically took what patent owner
`had alleged was its 112 support for the
`claims and identified the similar
`disclosure in each of the references that
`we had disclosed.
` There was no argument provided in
`the claim charts. There was no, you know,
`additional explanation of that -- of that
`disclosure and its impact, and we also
`didn't explain that or describe that in the
`expert declaration.
` So the claim chart was really
`showing 112 support in the references
`compared to what the patent owner was
`providing for the various limitations.
` So obviously, you know, we would
`require additional description and
`additional argument for all of those
`limitations, which I think is what -- where
`I was going with why I believe we need --
`you know, I was proposing something in the
`effect of having a petition.
` MR. RICHETTI: And, Your Honor, this
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 14
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`IPR2016-01258
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`is Joseph Richetti from YMAX, if I could.
` THE COURT: Go ahead.
` MR. RICHETTI: Listening to
`everyone's proposals, where our view was,
`just at a minimum, kind of the prior
`briefings, you know, page numbers for that
`and, you know, that was preexisting, but,
`Your Honor's point about the ability to
`have claim charts would obviously be
`something that I think would help, you
`know, potentially.
` Maybe it doesn't need to be as big,
`but giving us the ability to file claim
`charts is typically a way of allowing us to
`lay these out in a way that's helpful to
`the board.
` So we're absolutely open to that
`suggestion if Your Honors believe it's an
`effective way to package it, where we have
`the motion but also the ability to submit,
`as an exhibit, claim charts that map the
`prior-art references onto the claims --
`substantive claims.
` THE COURT: YMAX has not previously
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 15
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`IPR2016-01258
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`submitted a claim chart; is that right?
` MR. RICHETTI: We did not submit a
`claim chart as a separate exhibit, Your
`Honor, but our expert had provided certain
`claim charts in his declaration, and the
`board found that since the, you know --
`those were struck as part of the -- one of
`the orders, in part because of redundancy
`but in part because that information wasn't
`presented that way in our reply.
` THE COURT: Okay. I'll let patent
`owner have an opportunity to respond.
` MR. MURPHY: Thank you, Your Honor.
`This is John Murphy on behalf of patent
`owner.
` We believe that the issues of
`patentability and unpatentability have
`already been fully briefed. Therefore, we
`believe that there is no additional
`briefing on the substantive issues that is
`warranted.
` There was no intervening change in
`the law. The majority of the en banc
`judges found that there was never a statute
`
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 16
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`IPR2016-01258
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`or rule that ever required the burden be
`placed on the patent owner with respect to
`showing the patentability in the proposed
`substantive claim.
` Furthermore, to the extent that
`there was a change in the law, petitioner
`should have reasonably anticipated the
`outcome in Aqua Products. Indeed, the
`petitioners have already represented to the
`board that they did anticipate the outcome
`in Aqua Products on a call with the board
`on July 6th, 2017.
` The petitioners had their
`opportunity to argue on patentability
`already. For petitioners to not argue on
`patentability in the prior briefing was
`unreasonable on their part, and they should
`not get a do-over to reargue on
`patentability.
` Furthermore, the board's order in
`MasterImage precedential opinion sets forth
`the framework for motions to amend prior to
`the ruling in Aqua Products. Page 3 of the
`order in MasterImage states that once a
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 17
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 18
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` PROCEEDINGS
`patent owner has set forth a prima facie
`case of patentability on narrow substantive
`claims over the prior art of record, the
`burden shifts to petitioner.
` The MasterImage opinions also inform
`us as to, once the burden was shifted to
`petitioner, what's required of them. They
`are required to show that the proposed
`substantive claims are unpatentable in
`light of the prior art.
` Under pre-Aqua Products, there was
`already an obligation, or at least a risk
`of obligation, on behalf of the petitioner
`that the burden did get shifted to them.
`They already were required to do a showing
`of unpatentability of the entire proposed
`substantive claim in its entirety. They
`get each respective piece of prior art that
`they want to bring forward.
` Accordingly, petitioners are in the
`same shoes after Aqua Products as they were
`prior to Aqua Products in regard that there
`always was a requirement, or at least a
`likelihood that there would be requirement
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 18
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 19
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` PROCEEDINGS
`on them that they had to show
`unpatentability.
` In this regard, Aqua Products does
`not alleviate petitioner's obligation to do
`a proper invalidity analysis for each and
`every claim in the proposed substantive
`claims when the options are already before
`them.
` If the patent owner has already
`argued in our brief and in oral argument,
`all the petitioners' arguments regarding
`the unpatentability of the proposed
`substantive claims are wholly deficient
`because now petitioners' opposition motions
`do the proper invalidity analysis of
`showing unpatentability.
` THE COURT: I'm going to ask some
`questions of petitioners again.
` Can each of the petitioners -- we'll
`start with YMAX. Would you like to provide
`any -- sort of another option of a more
`consolidated approach? And in particular,
`we're hearing that patent owner doesn't
`require any additional briefing.
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 19
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 20
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` PROCEEDINGS
` So, for example, maybe forego the
`opening brief, and then obviously there
`wouldn't be a need for an opposition.
`Would petitioners -- each of the
`petitioners like to weigh in on that,
`whether you could propose something that
`maybe would have a petitioner -- a single
`petitioner briefing, or if that won't work
`at all, then do you have some other --
`would petitioners like to give us something
`else that's more consolidated? One of
`these, I think, is eight months for just
`the motions to amend.
` Let's start with Petitioner YMAX.
` MR. RICHETTI: Yes, Your Honor. If
`patent owner doesn't need a brief, then
`that could eliminate the opposition and the
`reply.
` THE COURT: I think petitioner is
`going to file two. Then maybe patent
`owners will want one. Right?
` MR. RICHETTI: Understood.
` THE COURT: Right.
` MR. RICHETTI: So I think from
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 20
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 21
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` PROCEEDINGS
`YMAX's perspective, Your Honor, I guess,
`then, if there's three briefs, we're happy
`with the proposal that the -- the last
`proposal of two months. If the Court needs
`it to be sooner, we're open to that. I
`think it's -- having enough pages and/or
`the ability to put in claim charts is just
`critical so that the board can have a full
`record.
` We believe that patent owner
`misinterprets the burden of production
`verse burden of persuasion. So there's
`clearly been a change in law, and the
`burden of persuasion is now on us.
` And so where before it would be
`appropriate to demonstrate the deficiencies
`in their motion to amend -- patent owner --
`now the burden, after the federal circuit's
`decision, is for us to now affirmatively go
`through them and demonstrate not just --
`now we have to actually demonstrate why the
`claims -- the substantive claims are
`unpatentable.
` So that will definitely take some
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 21
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 22
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` PROCEEDINGS
`space, and I think -- whether it's, you
`know, a two-month time frame for the first
`paper -- that's acceptable to YMAX. If the
`Court believes we need to do it sooner, if
`it was six weeks, we could do it in six
`weeks, Your Honor.
` THE COURT: Let's assume you're
`supplementing the original briefing. So is
`this a one brief -- how many pages would
`you then want?
` MR. RICHETTI: If Your Honor is
`amenable to allowing us to have an exhibit
`that's claim charts, then I think we
`wouldn't need, you know -- I think, for at
`least YMAX, 30 pages would be enough, as
`long as we could have claim charts as
`exhibits.
` THE COURT: I think you had a brief
`of 25 pages.
` MR. RICHETTI: What we were saying,
`Your Honor, is, at a minimum, the 25s. But
`even at 25, as long as we can have claim
`charts that can supplement the written
`analysis, we'd be okay with that.
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 22
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 23
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` PROCEEDINGS
` THE COURT: Okay. Petitioner Cisco
`Systems, would you like to offer maybe a
`more consolidated approach, something more
`expedited?
` MS. GUSKE: So in terms of an
`expedited briefing, the time frame that
`Bright House set out of the two months'
`time frame for the initial paper and so
`forth, that would be fine.
` I have concerns about YMAX's
`proposal on 30 pages or 30 pages plus claim
`charts because, as YMAX actually put it,
`the burden of persuasion has changed in
`view of Aqua. So it's not really an issue
`of supplementation. We're having to go
`through every claim element and the
`grounds, and 30 pages is awfully tight.
` THE COURT: I guess one
`consideration for the petitioners is, if we
`consider your proposal, we'll take your
`proposals under advisement, but say we take
`your proposals under advisement and we
`think that you're just asking for more. So
`I guess what I'm trying to do is give you a
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 23
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 24
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` PROCEEDINGS
`chance to give us something else that, you
`know, is more expedited, a supplementation
`of your original briefs -- your original
`brief, you know, for example, sur-reply, a
`page limit, and an amount of time for that
`that we can consider so that we have all of
`your proposals. Otherwise, we may give you
`something a lot less than maybe you really
`would want.
` So it's just an opportunity for you
`to give us something less. We understand
`what your persuasion is.
` MS. GUSKE: Understood. And I think
`potentially we could try -- what we had
`proposed was 14,000 words for initial
`briefs and response and then 5,600 for
`reply. There's perhaps a way to scale that
`back on a word basis. I think if you cut,
`from the opening and the response brief,
`2,000 words, that substantially reduces the
`effective page numbers, and that would be a
`potential shortening to make this a little
`bit more concise.
` THE COURT: Did you say 2,000 words?
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 24
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 25
`
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` PROCEEDINGS
` MS. GUSKE: Cut 2,000. So it would
`be 12,000 and 12,000 and then something a
`little less on the reply; if we're at
`5,600, maybe 4,500.
` THE COURT: Why is it that you don't
`feel that you can rely on your current
`opposition at all?
` MS. GUSKE: Well, on the current
`opposition, we were rebutting the
`information put forth by the patent owner
`under the old burden. There wasn't expert
`testimony about reasons to combine
`additional testimony. There wasn't going
`through and --
` THE COURT: And the reasons to
`combine -- why wouldn't that testimony have
`been submitted with the opposition?
` MR. TYSON: Your Honor, this is
`Chris Tyson for Bright House. And let me
`talk a little bit about this.
` As the state of the law was prior to
`Aqua Products and what our opposition brief
`has is a -- what we're doing is we're
`responding to the two claim limitations
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 25
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 26
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` PROCEEDINGS
`that the patent owner identified as
`allegedly providing patentability to the
`amended claims. There were only two
`limitations they identified. That did not
`require a full Graham analysis. It simply
`required a rebuttal to say that these
`limitations are found in the prior art.
` THE COURT: In your opposition, for
`example, you rely on either combinations of
`art that were the same basic claims, in
`which case, there was all the requirement
`in the petition; you had -- and then you
`added art.
` And I guess I'm having difficulty
`understanding why the petitioners think
`that there's no -- that you only had a
`response to two limitations and that no
`Graham analysis was required.
` MR. TYSON: Well, Your Honor, with
`the burden of establishing patentability on
`the patent owner, that was their burden of
`arguing that the claims were -- that these
`limitations were not found and that the
`claims were patentable, meaning that they
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 26
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 27
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` PROCEEDINGS
`are not obvious over the prior art.
` In our petition, we set forth the
`Graham factors. Why? Because we had the
`burden of showing unpatentability. We had
`to show why the claims were either
`anticipated or not because our petition was
`all based on obviousness. So we applied
`that same Graham analysis, and we applied
`the -- to every limitation of the claim.
` THE COURT: Now, you did the Graham
`analysis for the -- that was the same. I
`mean, you had done it for the petition. So
`you did it in opposition to the motion to
`amend; is that right?
` MR. TYSON: No, Your Honor. The
`patent owner had the burden of establishing
`that the claims were patentable. They
`identified two limitations as saying these
`were not found in the prior art.
` THE COURT: Was the patent owner
`silent on the reasons to combine?
` MR. TYSON: They didn't provide --
`they didn't provide the Graham analysis.
`They didn't provide the full Graham
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 27
`Transcript of Conference Call (Oct. 12, 2017)
`IPR2016-01258
`
`
`
`Page 28
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` PROCEEDINGS
`analysis of all the limitations of the
`claims in saying that this was not met.
`They didn't -- and they never argue that --
`they may have one sentence or so that says,
`"And none of these references can be
`combined." But there's no analysis that's
`required there. They didn't provide that.
` THE COURT: The position is that the
`patent owner didn't say enough and that --
`and then, for that reason and other
`reasons, petitioner only had to address two
`limitations. Is that the petitioner's
`position?
` MR. TYSON: Well, we addressed those
`two limitations, Your Honor, and then we --
`that's correct. If they're not making a
`complete Graham-analysis argument on
`patentability, then we don't need to rebut
`it. We could say nothing, and we would win
`because if those claim limitations are
`found in the prior art, then they're found
`in the prior art, and they don't have an
`argument that would overcome that.
` THE COURT: Do you want to offer
`
`TSG Reporting - Worldwide 877-702-9580
`
`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2074 - 28
`Transcript of Conference Call (Oct. 12, 201
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