`
`Case IPR2016-01268
`Patent 8,365,742
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`______________
`
`
`Case IPR2016-01268
`Patent No. 8,365,742
`
`
`______________________________________________________________
`
`NOTICE OF FILING OF SEPTEMBER 13, 2017
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`TELECONFERENCE TRANSCRIPT
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`
`
`Date: September 20, 2017
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`
`
`
`
`Case IPR2016-01268
`Patent No. 8,365,742
`
`
`Respectfully submitted,
`
`/ Michael J. WISE /
`Michael J. Wise, Reg. No. 34,047
`Perkins Coie LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
`Facsimile: 310-788-3399
`Email: MWise@PerkinsCoie.com
`
`Counsel for Patent Owner
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`1
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`CERTIFICATE OF SERVICE
`
`Case IPR2016-01268
`Patent No. 8,365,742
`
`
`The undersigned hereby certifies that service on Petitioner was made as
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`follows, in accordance with 37 CFR 42.6(e):
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`Persons served:
`
`Date of service:
`Manner of service:
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`September 20, 2017
`1. Electronic submission through the USPTO Patent Trial
`and Appeal Board End-to-End System
`2. Electronic mail
`Document(s) served: NOTICE OF FILING OF SEPTEMBER 13, 2017
`TELECONFERENCE TRANSCRIPT
`Ralph J. Gabric, Lead Counsel
`Robert Mallin, Back-up Counsel
`Yuezhong Feng, Backup Counsel
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 Cityfront Plaza Drive
`Chicago, IL 60611-5599
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
`
`
`/Amy Candeloro /
`Amy Candeloro, Paralegal
`Perkins Coie LLP
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`
`
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`
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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· ·R.J. REYNOLDS VAPOR COMPANY,· ·) Case IPR2016-01268
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`·7· · · · · · · · · ·Petitioner,· · ) Patent No. 8,365,742
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`·8· · · · · · vs.· · · · · · · · · ·)
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`·9· ·FONTEM HOLDINGS 1 B.V.,· · · · )
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`10· · · · · · · · · ·Patent Owner.· )
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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· · · · · · · ·TRANSCRIPT OF TELEPHONIC HEARING
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`16· · · ·BEFORE JO-ANNE M. KOKOSKI, BRIAN J. McNAMARA AND
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`17· · · · ·JEREMY PLENZLER, ADMINISTRATIVE PATENT JUDGES
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`18· · · · · · · · ·WEDNESDAY, SEPTEMBER 13, 2017
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`19· · · · · · · · · · · · · 3:00 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· ·before Jo-Anne M. Kokoski, Brian J. McNamara and
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`·3· ·Jeremy Plenzler, Administrative Patent Judges, Wednesday,
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`·4· ·September 13, 2017, 3:00 P.M., before Teri J. Nelson,
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`·5· ·CSR No. 7682, RPR, pursuant to Notice.
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`·6
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`·7· ·APPEARANCES (All Telephonic):
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`·8
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`·9· ·ADMINISTRATIVE PATENT JUDGES:
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`10· · · · · · JUDGE JO-ANNE M. KOKOSKI
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`11· · · · · · JUDGE BRIAN J. McNAMARA
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`12· · · · · · JUDGE JEREMY PLENZLER
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`13
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`14· ·FOR PETITIONER R.J. REYNOLDS VAPOR COMPANY:
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`15· · · · · · BRINKS GILSON & LIONE
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`16· · · · · · BY:· RALPH J. GABRIC, ESQ.
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`17· · · · · · · · ·YUEZHONG FENG, ESQ.
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`18· · · · · · NBC Tower
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`19· · · · · · 455 North Cityfront Plaza Drive
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`20· · · · · · Suite 3600
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`21· · · · · · Chicago, Illinois 60611
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`22· · · · · · 312-321-4200
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`23
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`24
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`25
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`·1· ·APPEARANCES (Continued)(All Telephonic):
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`·2
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`·3· ·FOR PATENT OWNER FONTEM HOLDINGS 1 B.V.:
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`·4· · · · · · PERKINS COIE LLP
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`·5· · · · · · BY:· JOSEPH HAMILTON, ESQ.
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`·6· · · · · · 1888 Century Park East
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`·7· · · · · · Suite 1700
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`·8· · · · · · Los Angeles, California 90067-1721
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`·9· · · · · · 310-788-9900
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`10· · · · · · -and-
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`11· · · · · · PERKINS COIE LLP
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`12· · · · · · BY:· NATHAN R. KASSEBAUM, ESQ.
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`13· · · · · · 2901 North Central Avenue
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`14· · · · · · Suite 2000
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`15· · · · · · Phoenix, Arizona 85012-2788
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`16· · · · · · 602-351-8000
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`18
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`·1· · · · · · · · WEDNESDAY, SEPTEMBER 13, 2017
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`·2· · · · · · · · · · · · 3:00 P.M.
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`·3
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`·4· · · · · · JUDGE KOKOSKI:· Good afternoon.
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`·5· · · · · · This is Judge Kokoski, and I have with me on the
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`·6· ·line Judges McNamara and Plenzler.
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`·7· · · · · · This call concerns IPR2016-01268.
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`·8· · · · · · Who do I have today for the Petitioner?
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`·9· · · · · · MR. GABRIC:· Good afternoon, Your Honor.
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`10· · · · · · You have Ralph Gabric and Yuezhong Feng on
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`11· ·behalf of Petitioner.
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`12· · · · · · JUDGE KOKOSKI:· Okay.· Thank you.
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`13· · · · · · Who do I have for Patent Owner?
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`14· · · · · · MR. HAMILTON:· Good afternoon, Your Honor.
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`15· · · · · · Joseph Hamilton from Perkins Coie for Patent
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`16· ·Owner.
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`17· · · · · · I was expecting a few others on the line, I
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`18· ·don't know if they are, Michael Wise and Nathan
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`19· ·Kassebaum.
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`20· · · · · · Are either of you on the line?
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`21· · · · · · They may not be joining us.
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`22· · · · · · MR. KASSEBAUM:· Nathan is here.
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`23· · · · · · MR. HAMILTON:· Okay.· So Joe Hamilton and Nathan
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`24· ·Kassebaum.
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`25· · · · · · JUDGE KOKOSKI:· Okay.· Thank you.
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`
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`·1· · · · · · Is there a court reporter on the line today?
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`·2· · · · · · THE REPORTER:· Yes, Your Honor.
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`·3· · · · · · This is Teri Nelson from DTI.
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`·4· · · · · · JUDGE KOKOSKI:· Okay.· Thank you.
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`·5· · · · · · Which party hired the court reporter for today?
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`·6· · · · · · MR. HAMILTON:· Patent Owner arranged for the
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`·7· ·court reporter, and -- and the parties have agreed to
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`·8· ·split the cost on the court reporter, but we will submit
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`·9· ·a transcript as soon as it's available.
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`10· · · · · · JUDGE KOKOSKI:· That was what I was going to
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`11· ·ask.
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`12· · · · · · Thank you very much.
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`13· · · · · · MR. HAMILTON:· Um-hum.
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`14· · · · · · JUDGE KOKOSKI:· Okay.· So I understand that
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`15· ·Petitioner requested this call to seek authorization to
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`16· ·file a motion to submit the deposition transcript of
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`17· ·Patent Owner's expert Richard Meyst from the related
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`18· ·IPR2016-01692 as supplemental information in this
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`19· ·proceeding and to file observations on that testimony.
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`20· · · · · · We'll start with the motion to submit the
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`21· ·supplemental information.
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`22· · · · · · Petitioner, would you like to start?
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`23· · · · · · MR. GABRIC:· Yes, Your Honor.
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`24· · · · · · Thank you.
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`25· · · · · · I don't have a whole bunch to add to the E-mail,
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`
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`·1· ·and I'll try not to be repetitive, but you know, under
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`·2· ·the relevant standard, I think we need to show two
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`·3· ·things, that the testimony was unavailable previously,
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`·4· ·and that is the case, this deposition took place a couple
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`·5· ·of weeks after we filed our reply in the '742 IPR, and
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`·6· ·the other thing we need to show is would it be in the
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`·7· ·interest of justice to -- to include this information of
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`·8· ·record, and we think it would be for probably the most
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`·9· ·important reason is that some of this testimony
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`10· ·undermines and in our view is inconsistent with some of
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`11· ·the opinions offered in the '742 IPR.
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`12· · · · · · For example, one of the main issues in the
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`13· ·'742 IPR is whether or not the cavity wall in the prior
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`14· ·art referenced the Hon 043 provides support
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`15· ·for the porous body.
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`16· · · · · · The Patent Owner's expert has opined in the
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`17· ·'742 IPR that it does not.
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`18· · · · · · Some of the testimony given during this
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`19· ·deposition is inconsistent with that opinion, in our
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`20· ·view.
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`21· · · · · · I suspect Patent Owner would disagree with that.
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`22· · · · · · So that's one example.
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`23· · · · · · And so in the interest of justice, we think it's
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`24· ·extremely important that the Board have this testimony
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`25· ·not only to evaluate the weight to be afforded the
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`·1· ·opinions of this expert on a particular issue, but to
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`·2· ·evaluate the overall credibility of this expert generally
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`·3· ·because, you know, at the end of the day, this is, in
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`·4· ·many respects, a -- kind of a he said, she said, it's a
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`·5· ·battle of experts, and so we think this testimony's
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`·6· ·important.
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`·7· · · · · · The one thing that's not in my E-mail, and I'd
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`·8· ·like to bring the Board's attention to this case, it's
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`·9· ·out of the Federal Circuit, August 28th, 2017, it's the
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`10· ·Ultratec case versus CaptionCall, and I only have a slip
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`11· ·opinion right now, it's 2016-1706, 1707 -- or I'm sorry.
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`12· ·It relates to IPR2016-1706.· Or is that -- maybe -- no.
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`13· ·It actually -- that's -- I'm sorry.
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`14· · · · · · Ms. Court Reporter, it's slip opinion
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`15· ·number 2016-1706.· There's some other numbers here.
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`16· · · · · · But basically what the Federal Circuit said here
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`17· ·it was reversible error in some IPRs where the Petitioner
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`18· ·had -- I'm sorry, the Patent Owner moved to submit
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`19· ·supplemental information of trial testimony of an expert
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`20· ·that was purportedly inconsistent with the IPR
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`21· ·declaration testimony.
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`22· · · · · · This testimony did not come into being until
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`23· ·about three to four weeks before the oral hearing in the
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`24· ·IPR.
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`25· · · · · · The Board refused to allow the Patent Owner to
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`·1· ·submit this information, and the Federal Circuit reversed
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`·2· ·saying that was -- was an error, not take a -- even look
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`·3· ·at the testimony in deciding whether or not to even allow
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`·4· ·it, and so I wanted to bring this to the Board's
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`·5· ·attention in this case.
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`·6· · · · · · JUDGE KOKOSKI:· Okay.· Thank you.
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`·7· · · · · · Patent Owner, would you like to respond?
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`·8· · · · · · MR. HAMILTON:· Sure.
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`·9· · · · · · I'll -- I'll address a few points.
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`10· · · · · · So let's start with the -- the Petitioner's
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`11· ·statement that the testimony was unavailable.
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`12· · · · · · The only reason the testimony was not available
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`13· ·at the time the reply was filed is because Petitioner
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`14· ·waited to take the deposition of Mr. Meyst.
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`15· · · · · · So to -- just to go back into the timing,
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`16· ·Petitioner has been aware of the sim- -- or the -- the
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`17· ·crossover in issues between the IPR regarding the
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`18· ·'548 patent and the IPR regarding the five -- the
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`19· ·'742 patent.
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`20· · · · · · The '548 IPR was filed one month after the
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`21· ·'742 IPR was filed, a month and a half, and on the first
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`22· ·page in the first footnote, Petitioner identifies that
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`23· ·they filed this other '742 IPR and that they're related.
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`24· · · · · · So -- so Petitioner has been aware of the issues
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`25· ·from the very beginning, you know, a year ago.
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`·1· · · · · · Patent Owner filed its response on May 25th in
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`·2· ·the '548 IPR, which included the -- a declaration from
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`·3· ·Mr. Meyst, so now Petitioner had the opportunity to
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`·4· ·depose Mr. Meyst in that IPR.
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`·5· · · · · · Petitioner's complaint here is they didn't
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`·6· ·depose Meyst until July 25th, so -- which comes after the
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`·7· ·July 5th reply in the '742 IPR.
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`·8· · · · · · So we had from Patent Owner's response that had
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`·9· ·the Meyst declaration that gave Petitioner an opportunity
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`10· ·to re- -- to depose Mr. Meyst and then have that
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`11· ·deposition prior to their reply in the '742 IPR over
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`12· ·40 days.
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`13· · · · · · Petitioner didn't ask for Mr. Meyst's deposition
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`14· ·until July 6th, a day after their reply was due in the
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`15· ·'742 IPR.
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`16· · · · · · So the only reason Petitioner is saying
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`17· ·Mr. Meyst's deposition was unavailable is because they
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`18· ·sat on it and waited to take the deposition.
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`19· · · · · · You know, you -- that -- that -- that shouldn't
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`20· ·constitute an unavailable piece of evidence that -- that
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`21· ·Petitioner should now be able to submit in this case and
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`22· ·particularly when Petitioner was aware of the crossover
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`23· ·in the cases and the fact that the issues would be very
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`24· ·similar all the way back, you know, a year ago.
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`25· · · · · · Second -- second issue is the -- whether or not
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`·1· ·it's in the interest of justice to allow the supplemental
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`·2· ·information.
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`·3· · · · · · So here we are less than a month before oral
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`·4· ·argument in the case.
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`·5· · · · · · Number one, Patent Owner deposed Mr. Meyst on
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`·6· ·July 21st.
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`·7· · · · · · If there was some inconsistency or some issue
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`·8· ·with respect to Mr. Meyst's testimony, they would have
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`·9· ·known it then, yet they sat on that deposition until
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`10· ·September 1st when they requested to file that deposition
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`11· ·transcript as supplemental evidence, and the only reason
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`12· ·they did that is they're doing it in response to Patent
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`13· ·Owner filing observations on their expert Dr. Sturges'
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`14· ·testimony, pointing out inconsistencies, and you know, I
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`15· ·assume they just want to have something to say in
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`16· ·response, but they had no intention to do anything like
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`17· ·that.· For a month and a half, you know, they sat on
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`18· ·this.
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`19· · · · · · I think that really undermines the interest of
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`20· ·justice and how important these inconsistencies that
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`21· ·Petitioner's counsel just described.
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`22· · · · · · And of course we disagree that -- with respect
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`23· ·to whether there are inconsistencies, we do not think
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`24· ·there are inconsistencies, and if there were, Patent
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`25· ·Owner -- or excuse me, Petitioner would have done
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`·1· ·something in that month and a half period as opposed to
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`·2· ·waiting until the eve of oral argument to ask to file
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`·3· ·this supplemental evidence.
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`·4· · · · · · And I'll leave it at that.
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`·5· · · · · · With respect to the case that Petitioner just
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`·6· ·cited, you know, I haven't had a chance to review that
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`·7· ·case, but the Petitioner's description of the case talks
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`·8· ·about trial testimony that came -- that truly was
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`·9· ·unavailable at the time a reply was filed.· I would
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`10· ·imagine the trial date is not set by the parties.· The
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`11· ·judge set that trial date.· They couldn't have moved that
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`12· ·up.
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`13· · · · · · That is very different from in this case where
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`14· ·Petitioner had more than 40 days to depose Mr. Meyst in
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`15· ·order to comment on him in their reply in this IPR for
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`16· ·the '742 patent.
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`17· · · · · · JUDGE KOKOSKI:· Thank you.
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`18· · · · · · I do have one question, Patent Owner.
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`19· · · · · · In your observations that you filed in this IPR,
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`20· ·is it the case that you've cited deposition testimony
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`21· ·from Petitioner's expert Dr. Sturges in the 1692 IPR?
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`22· · · · · · MR. HAMILTON:· Yes.· Yes, we did.
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`23· · · · · · JUDGE KOKOSKI:· Oh.
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`24· · · · · · MR. HAMILTON:· And -- and Petitioner's correct,
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`25· ·we pointed out the inconsistencies in his testimony, and
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`·1· ·that paper was filed on August 17th.
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`·2· · · · · · Petitioner had two weeks to respond, and they
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`·3· ·have responded to that paper.
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`·4· · · · · · JUDGE KOKOSKI:· Well, my follow-up question to
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`·5· ·you is:· Why was the designation of Sturges' testimony
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`·6· ·from another proceeding appropriate for observations in
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`·7· ·this proceeding?
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`·8· · · · · · It would not -- the -- the deposition was not in
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`·9· ·the record before your observations; is that correct?
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`10· · · · · · MR. HAMILTON:· That -- that is correct.
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`11· · · · · · JUDGE KOKOSKI:· So typically, observations are
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`12· ·for cross-examination from the same proceeding, so why --
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`13· ·why should we allow in even your -- your observations
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`14· ·from the 1692 IPR?
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`15· · · · · · MR. HAMILTON:· Okay.· Well, so let's -- let's --
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`16· ·let's talk about --
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`17· · · · · · And are -- are -- are you considering them
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`18· ·supplemental evidence, or what's the -- what's the -- you
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`19· ·know, what -- what would be the -- what would be the
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`20· ·issue there?
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`21· · · · · · I can certainly explain why -- why it's so
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`22· ·relevant to the case and why it was put in at that time.
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`23· · · · · · JUDGE KOKOSKI:· Well, I think I understand why
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`24· ·you think it's relevant.
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`25· · · · · · It's to point out the inconsistencies that you
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`·1· ·perceive in the testimony; correct?
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`·2· · · · · · MR. HAMILTON:· Yes, that's right.
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`·3· · · · · · JUDGE KOKOSKI:· So I understand that -- I think
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`·4· ·we understand the relevance of it from your perspective,
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`·5· ·but my question is it's testimony from a different
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`·6· ·proceeding, and that is typically not what observations
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`·7· ·are intended for, so I guess my question is why -- why it
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`·8· ·wasn't -- why is it appropriate to cite deposition
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`·9· ·transcripts from a different proceeding in the
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`10· ·observations as opposed to, as you said, going the
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`11· ·supplemental information route?
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`12· · · · · · MR. HAMILTON:· So you know, the -- the things
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`13· ·that we will agree on with Petitioner, the -- the two
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`14· ·patents are related, the relevant claim terms at issue to
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`15· ·some extent have some crossover in terms of the
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`16· ·substance.
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`17· · · · · · For -- for Patent Owner to -- to comment on
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`18· ·Dr. Sturges' reply -- or excuse me, Dr. Sturges'
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`19· ·deposition on reply, that's our only opportunity to do
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`20· ·that, and we wouldn't have an opportunity to --
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`21· · · · · · Well, I -- let me back up.
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`22· · · · · · I think that the point of the observations is to
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`23· ·make comments on what he's saying in -- in -- in that --
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`24· ·in that reply deposition from the case at hand just like
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`25· ·you said, and as part of those comments, I think it's --
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`·1· ·it's appropriate and relevant to point out inconsistent
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`·2· ·testimony that the -- that the Petitioner's expert has
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`·3· ·made in this, you know, directly related IPR that the
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`·4· ·parties have been aware of from the very beginning and
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`·5· ·have addressed from the very beginning of the case.
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`·6· · · · · · JUDGE KOKOSKI:· All right.· So when -- when --
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`·7· ·when you took the Sturges deposition in the 1692 case,
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`·8· ·was it designated for use in both the 1692 and this
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`·9· ·1268 IPR, or was it just for the 1692 proceeding?
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`10· · · · · · MR. HAMILTON:· You know, that's a good question.
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`11· · · · · · I don't know that offhand.
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`12· · · · · · I know we had talked about -- I believe we have
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`13· ·an agreement with RJR that the testimony can be used in
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`14· ·any case, but I would have to go back and confirm that
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`15· ·because I may be confusing that with some other IPR with
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`16· ·RJR or with some other party, but I think we did agree to
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`17· ·that right at the beginning when we scheduled multiple
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`18· ·depositions on consecutive days in these cases because we
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`19· ·have three instituted IPRs going right now, these two and
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`20· ·then one other in an unrelated application, and we
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`21· ·deposed the experts on consecutive days in the IPRs and
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`22· ·agreed the testimony could be used in both, but I may be
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`23· ·mistaken in terms of, you know, the exact -- you know,
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`24· ·which IPRs were involved in that agreement, but that was
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`25· ·the gist of the agreement from the very beginning.
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`·1· · · · · · JUDGE KOKOSKI:· Petitioner, is that your
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`·2· ·understanding of the agreement with the Patent Owner?
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`·3· · · · · · MR. GABRIC:· It's -- it's not, Your Honor, and I
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`·4· ·will -- I will have to add the caveat is I -- we have to
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`·5· ·go back and look, but this is -- this is not ringing a
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`·6· ·bell with me at all.· I'm not saying -- I -- I just can't
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`·7· ·say that Joe or Mr. Hamilton is wrong or not, but I'm not
`
`·8· ·remembering that, and I would have to double-check that.
`
`·9· · · · · · JUDGE KOKOSKI:· That -- that's fine.
`
`10· · · · · · I understand that there is a lot --
`
`11· · · · · · MR. HAMILTON:· And I would like to do the same
`
`12· ·to make sure it's right.
`
`13· · · · · · JUDGE KOKOSKI:· I understand that there's a lot
`
`14· ·of litigation going on around these patents, though.
`
`15· · · · · · I don't necessarily expect you to know that off
`
`16· ·the top of your head.
`
`17· · · · · · Petitioner, do you have any other response to
`
`18· ·Patent Owner's argument?
`
`19· · · · · · MR. GABRIC:· I'll be brief, Your Honor.
`
`20· · · · · · The -- the notion that we could have taken the
`
`21· ·deposition earlier, I'd have to go back and check
`
`22· ·calendars.· I don't even know if that was realistic, the
`
`23· ·availability, number one.
`
`24· · · · · · Number two, this Federal Circuit case addresses
`
`25· ·that situation.· That argument was raised, "Well, you
`
`
`
`·1· ·could have taken a deposition."
`
`·2· · · · · · I believe the Patent Owner may not have even
`
`·3· ·taken a deposition in the IPR.
`
`·4· · · · · · And the Federal Circuit said "Well, it doesn't
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`·5· ·matter whether you could have or would have or should
`
`·6· ·have.· What matters is the fact of the matter is the
`
`·7· ·deposition didn't take place, the evidence didn't come
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`·8· ·out until afterwards, and that's all we look at."
`
`·9· · · · · · As far as we're doing this 'cause they did it,
`
`10· ·my only response there is, you know, look, either we both
`
`11· ·get to, you know, comment on depositions in another IPR,
`
`12· ·or neither one of us should.
`
`13· · · · · · I mean that's just plain fairness.
`
`14· · · · · · I'm done.
`
`15· · · · · · JUDGE KOKOSKI:· Okay.· Thank you very much.
`
`16· · · · · · If you could hold the line for a minute, the
`
`17· ·Panel is going to confer.
`
`18· · · · · · MR. HAMILTON:· May I add one comment,
`
`19· ·Your Honor, first?
`
`20· · · · · · JUDGE KOKOSKI:· Sure.
`
`21· · · · · · Go ahead.
`
`22· · · · · · MR. HAMILTON:· In -- in terms of, you know, this
`
`23· ·fairness and comments, I think right now we're talking
`
`24· ·about whether the deposition comes in at all, and we
`
`25· ·haven't gotten to the issue of whether there will be any
`
`
`
`·1· ·comment on the deposition.
`
`·2· · · · · · And that really goes to the point of, you know,
`
`·3· ·for our next issue, we're here at the end of the case.
`
`·4· · · · · · You know, if they get to comment on this, we
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`·5· ·should be able to respond to what they say just like any
`
`·6· ·other observation or something like that.
`
`·7· · · · · · And -- and really, you know, there's no reason
`
`·8· ·to put this in as supplemental evidence if no one's going
`
`·9· ·to discuss it or comment on it, and I think that really
`
`10· ·goes to the second point that we're going to discuss
`
`11· ·after this point, possibly, depending on what the Board
`
`12· ·decides to do here.
`
`13· · · · · · JUDGE KOKOSKI:· And that's why we're taking them
`
`14· ·in serial this way.
`
`15· · · · · · So again, if you could hold the line, the
`
`16· ·Panel's going to confer, and we'll be back.
`
`17· · · · · · (Pause in proceedings.)
`
`18· · · · · · JUDGE KOKOSKI:· All right.· So the Panel's back.
`
`19· · · · · · Do we still have everybody?
`
`20· · · · · · Petitioner?
`
`21· · · · · · MR. GABRIC:· Yes, Petitioner's still here,
`
`22· ·Your Honor.
`
`23· · · · · · JUDGE KOKOSKI:· Patent Owner?
`
`24· · · · · · MR. HAMILTON:· Yes, we're here.
`
`25· · · · · · JUDGE KOKOSKI:· Okay.· So the Panel has
`
`
`
`·1· ·conferred, and what we -- we decided to I think do things
`
`·2· ·a little bit differently than maybe either party is
`
`·3· ·expecting.
`
`·4· · · · · · So we're a little bit troubled by the Patent
`
`·5· ·Owner's submission of Dr. Sturges' deposition testimony
`
`·6· ·from the 1692 IPR in this case as -- solely as
`
`·7· ·observations, so what we're going to do, and let me just
`
`·8· ·get through all of it, and then you guys, if you have
`
`·9· ·questions, we'll go through it, we're going to go ahead
`
`10· ·and expunge the Patent Owner's observations that include
`
`11· ·the 1692 IPR testimony, and we're going to let Patent
`
`12· ·Owner just re-file those observations with only
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`13· ·observations on the reply testimony in this case, no new
`
`14· ·observations, no -- you know, nothing that's not already
`
`15· ·in there, just removing the 1692 IPR testimony.
`
`16· · · · · · And then to the extent that Petitioner used that
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`17· ·1692 testimony, if they did at all in their reply to
`
`18· ·Patent Owner's observations, we're going to expunge that
`
`19· ·too and have Petitioner re-file in a similar manner.
`
`20· · · · · · We are, however, going to leave the -- the
`
`21· ·Sturges deposition from the 1692 in the record, and what
`
`22· ·we're going to do is we're going to let the Petitioner
`
`23· ·also submit the Meyst deposition from the 1692 IPR, and
`
`24· ·we're going to have the parties simultaneously brief
`
`25· ·their issues that -- that they see -- that they feel have
`
`
`
`·1· ·arisen from the 1692 testimony from the respective
`
`·2· ·experts similar to an observation, but we would like it
`
`·3· ·as briefing so you can explain things a little bit
`
`·4· ·better.· We don't want you raising any new issues,
`
`·5· ·argument -- arguing issues or pursuing any objections in
`
`·6· ·this briefing.· We want to keep it focused as on why --
`
`·7· ·why this testimony I guess is chief -- why you think the
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`·8· ·testimony is inconsistent, which seems to be the chief
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`·9· ·complaint on both sides, or creates inconsistencies.
`
`10· · · · · · So we're going to let you simultaneously brief
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`11· ·that.
`
`12· · · · · · We're going to also let you reply, and those
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`13· ·will be five pages each for the -- the original brief and
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`14· ·the reply brief.
`
`15· · · · · · So before we talk about timing on when these are
`
`16· ·going to be filed, do you have any questions on what
`
`17· ·we're talk -- what -- what we've decided?
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`18· · · · · · Petitioner?
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`19· · · · · · MR. GABRIC:· Just one question.
`
`20· · · · · · You're -- you're being very clear.
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`21· · · · · · The only question I have is with respect to the
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`22· ·observations, the -- the re-filed observations, should we
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`23· ·wait till we see these re-filed observations, or should
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`24· ·we simultaneously submit a re-filed reply or responsive
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`25· ·observation?
`
`
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`·1· · · · · · JUDGE KOKOSKI:· We can -- we hadn't thought
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`·2· ·about that.
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`·3· · · · · · I guess we could -- it can be simultaneous
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`·4· ·because we just expect you to be removing the 1692 IPR
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`·5· ·references and making no other changes --
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`·6· · · · · · MR. GABRIC:· Okay.
`
`·7· · · · · · JUDGE KOKOSKI:· -- so --
`
`·8· · · · · · But yeah, I think that's probably what we'll end
`
`·9· ·up doing unless there's a reason to not do it that way.
`
`10· · · · · · Patent Owner, do you have any questions?
`
`11· · · · · · MR. HAMILTON:· No, Your Honor.
`
`12· · · · · · JUDGE KOKOSKI:· Okay.· So we're coming up on the
`
`13· ·hearing, and we would like to have this information
`
`14· ·before the hearing starts.
`
`15· · · · · · How much time would you think you would need to
`
`16· ·put together the briefing as we have proposed?
`
`17· · · · · · Petitioner?
`
`18· · · · · · MR. GABRIC:· I mean if we could have till
`
`19· ·Monday, that would be good, but if you want it sooner,
`
`20· ·we'll do whatever --
`
`21· · · · · · You know, look, you're the folks that elicited
`
`22· ·this point.
`
`23· · · · · · We can try to get it on Friday.
`
`24· · · · · · JUDGE KOKOSKI:· Patent Owner, do you have any
`
`25· ·suggestions?
`
`
`
`·1· · · · · · MR. HAMILTON:· No.
`
`·2· · · · · · We can do it as soon as -- as soon as you need
`
`·3· ·it.
`
`·4· · · · · · JUDGE KOKOSKI:· Okay.· Well, I don't think we
`
`·5· ·need it by Friday, so we can give you a little bit more
`
`·6· ·time than that.
`
`·7· · · · · · Why don't you take a week from today, get it in
`
`·8· ·on September 20th, and then do the replies let's say a
`
`·9· ·week as well, by September 27th.
`
`10· · · · · · That gives us time before the hearing, which I
`
`11· ·believe is currently scheduled for October 10th, if I'm
`
`12· ·remembering right?
`
`13· · · · · · Is that reasonable?
`
`14· · · · · · MR. GABRIC:· That's appreciated.
`
`15· · · · · · Yes, Your Honor.
`
`16· · · · · · Thank you from the Petitioner.
`
`17· · · · · · JUDGE KOKOSKI:· Okay.
`
`18· · · · · · MR. HAMILTON:· That's fine for Patent Owner as
`
`19· ·well.
`
`20· · · · · · JUDGE KOKOSKI:· Okay.· Thank you.
`
`21· · · · · · So we will issue an order memorializing all of
`
`22· ·this, and of course we'll have the transcript in the
`
`23· ·record too when that is ready.
`
`24· · · · · · Do we have any other issues we need to discuss
`
`25· ·while we're on the line?
`
`
`
`·1· · · · · · Petitioner?
`
`·2· · · · · · MR. GABRIC:· Just one clarification.
`
`·3· · · · · · Do you want to set a date that we have -- we fix
`
`·4· ·our observations and our response to those observations?
`
`·5· · · · · · JUDGE KOKOSKI:· We'll put that in the order.
`
`·6· · · · · · MR. GABRIC:· Okay.
`
`·7· · · · · · JUDGE KOKOSKI:· It -- it won't be -- we won't
`
`·8· ·expect you to do it immediately, so -- but we'll put that
`
`·9· ·in the order.
`
`10· · · · · · MR. GABRIC:· Okay.
`
`11· · · · · · JUDGE KOKOSKI:· Anything else?
`
`12· · · · · · MR. GABRIC:· Nothing for Petitioner.
`
`13· · · · · · Thank you.
`
`14· · · · · · JUDGE KOKOSKI:· Patent Owner?
`
`15· · · · · · MR. HAMILTON:· Nothing from Patent Owner.
`
`16· · · · · · Thank you.
`
`17· · · · · · JUDGE KOKOSKI:· Okay.· I just have one quick
`
`18· ·question for Petitioner.
`
`19· · · · · · I think the Patent Owner has filed a
`
`20· ·pro hac vice motion that's pending in this case.
`
`21· · · · · · I forget who the person is that they are seeking
`
`22· ·to submit.
`
`23· · · · · · My question for Petitioner is whether you object
`
`24· ·to that pro hac vice application?
`
`25· · · · · · MR. GABRIC:· No objection, Your Honor.
`
`
`
`·1· · · · · · JUDGE KOKOSKI:· Okay.· Then we'll try to get out
`
`·2· ·a ruling on that shortly as well.
`
`·3· · · · · · MR. HAMILTON:· May I raise one other issue,
`
`·4· ·Your Honor?
`
`·5· · · · · · JUDGE KOKOSKI:· Sure.· Go ahead.
`
`·6· · · · · · MR. HAMILTON:· So for this request and for the
`
`·7· ·last several from Patent Owner for -- for the E-mail
`
`·8· ·requests, Patent Owner has non -- not contacted us first
`
`·9· ·to get dates or whether we oppose their request, and this
`
`10· ·happened the last six or seven times.· They had done it
`
`11· ·for the first year of this case, but now they're not
`
`12· ·doing it for some reason.
`
`13· · · · · · I think this whole process would be much more
`
`14· ·efficient, we could propose our dates to the Board that
`
`15· ·we're available for a call or maybe even resolve some
`
`16· ·issues if Patent Owner would go back to complying with
`
`17· ·that, those instructions from the Board that you get
`
`18· ·multiple dates where parties are available, you indicate
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`19· ·if a party opposes in an E-mail, and then last, that you
`
`20· ·don't include argument in your E-mails to the Board per
`
`21· ·the Board rules.
`
`22· · · · · · JUDGE KOKOSKI:· Yeah.
`
`23· · · · · · Actually, that -- that is a good point.
`
`24· · · · · · We do expect the parties to meet and confer
`
`25· ·before you bring issues to us for resolution to try to
`
`
`
`·1· ·resolve them on your own, and it definitely is helpful to
`
`·2· ·us if when you request a conference call with the Board
`
`·3· ·that you give some availability from the parties.
`
`·4· · · · · · Now, we may be able to accommodate it or not,
`
`·5· ·but it could save us time from going back and forth and
`
`·6· ·trying to find a date when everybody is available.
`
`·7· · · · · · So definitely should any further issues arise in
`
`·8· ·this case, which hopefully it will not since we're very
`
`·9· ·close to the end at this point, but to the extent you
`
`10· ·have other IPRs pending, please keep that in mind.
`
`11· ·Definitely meet and confer beforehand, resolve whatever
`
`12· ·issues that you can, and give us dates for -- to talk
`
`13· ·about the issues and times for those things you can't
`
`14· ·resolve.
`
`15· · · · · · And yes, we -- we generally do prefer that you
`
`16· ·keep the E-mails of a more administrative nature, just
`
`17· ·letting us know what the issue is and telling us your
`
`18· ·availability.
`
`19· · · · · · So if you could just keep that in mind going
`
`20· ·forward in this proceeding as well as the other IPRs that
`
`21· ·you are involved in, whether they are in this family or
`
`22· ·otherwise, as a Board, we would very much appreciate
`
`23· ·that.
`
`24· · · · · · MR. GABRIC:· Okay, Your Honor.
`
`25· · · · · · For Petitioner, understood.
`
`
`
`·1· · · · · · JUDGE KOKOSKI:· Okay.· Anything else?
`
`·2· · · · · · MR. HAMILTON:· That's it from Patent Owner.
`
`·3· · · · · · Thank you.
`
`·4· · · · · · JUDGE KOKOSKI:· Okay.· Then this call is
`
`·5· ·adjourned.
`
`·6· · · · · · Thank you.
`
`·7· · · · · · MR. GABRIC:· Thank you, Your Honor.
`
`·8· · · · · · MR. HAMILTON:· Thank you.
`
`·9· · · · · · (Proceedings adjourned at 3:34 P.M.)
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`·1· ·STATE OF CALIFORNIA· · · ·)
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`·2· · · · · · · · · · · · · · ·) ss.
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`·3· ·COUNTY OF LOS ANGELES· · ·)
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`·4
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`·5· · · · · · I, TERI J. NELSON, CSR NO. 7682, RPR, in and for
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`·6· ·the State of California, do hereby certify:
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`·7· · · · · · That said proceedings were recorded
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`·8· ·stenographically by me at the time and place therein
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`·9· ·named, and thereafter transcribed, and the same is a
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`10· ·true, correct and complete transcript of said
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`11· ·proceedings.
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`12· · · · · · I further certify that I am not interested in
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`13· ·the event of the action.
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`14· · · · · · WITNESS MY HAND this 19th day of September,
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`15· ·2017.
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`16
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`17
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`19
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`20· · · · · · · · · · · · · · · · · TERI J. NELSON
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`21· · · · · · · · · · · · · · · · · CSR No. 7682, RPR
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