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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
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`JUNIPER NETWORKS, INC.,
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`Petitioner,
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`v.
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`CHRIMAR SYSTEMS, INC.,
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`Patent Owner.
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`__________
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`IPR2016-01399
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`U.S. Patent No. 8,902,760
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`__________
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`TRANSCRIPT OF SEPTEMBER 6, 2017 TELEPHONIC HEARING
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10142446
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`Date: September 11, 2017
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`Respectfully submitted,
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`/s/ Talin Gordnia
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`Talin Gordnia, Reg. No. 76,214
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`Michael Fleming (Reg. No. 67,933)
`Nima Hefazi (Reg. No. 63,658)
`Jonathan Kagan, Pro Hac Vice
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Ste. 900
`Los Angeles, CA 90067
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`Attorneys for Petitioner,
`Juniper Networks, Inc.
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`10142446
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`- 1 -
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`Case IPR2016-01399
`Patent 8,902,760
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. sections 42.6 that a complete copy of
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`the TRANSCRIPT OF SEPTEMBER 6, 2017 TELEPHONIC HEARING is
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`being served by electronic mail, as agreed to by the parties, the same day as the
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`filing of the above-identified documents in the United States Patent and Trademark
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`Office/Patent Trial and Appeal Board, upon:
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`Frank A. Angileri (Reg. No. 36,733)
`Thomas A. Lewry (Reg. No. 30,770)
`Marc Lorelli (Reg. No. 43,759)
`Christopher C. Smith (Reg. No. 59,669)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`CHRMC0110IPR1@brookskushman.com
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`
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`Richard W. Hoffman (Reg. No. 33,711)
`REISING ETHINGTON PC
`755 West Big Beaver Rd., Ste. 1850
`Troy, MI 48084
`Hoffman@reising.com
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` /Susan M. Langworthy/
` Susan M. Langworthy
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`- 2 -
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`Case IPR2016-01399
`Patent 8,902,760
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`September 11, 2017
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`10142446
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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· ·JUNIPER NETWORKS, INC.,· · )
`· · · · · · · · · · · · · · · · ) Case IPR2016-01389
`·5· · · · ·Petitioner,· · · · · ) Patent No. 8,155,012 B2
`· · · · · · · · · · · · · · · · )
`·6· · ·vs.· · · · · · · · · · · ) Case IPR2016-01391
`· · · · · · · · · · · · · · · · ) Patent No. 8,942,107 B2
`·7· ·CHRIMAR SYSTEMS, INC.,· · ·)
`· · · · · · · · · · · · · · · · ) Case IPR2016-01397
`·8· · · · ·Patent Owner.· · · · ) Patent No. 9,019,838 B2
`· · · · · · · · · · · · · · · · )
`·9· · · · · · · · · · · · · · · ) Case IRP2016-01399
`· · · · · · · · · · · · · · · · ) Patent No. 8,902,760 B2
`10· · · · · · · · · · · · · · · )
`· · · · · · · · · · · · · · · · )
`11· ·___________________________) Pages 1 to 27
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`14· · · · · ·TRANSCRIPT OF TELEPHONIC HEARING BEFORE
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`15· · · · · · KARL D. EASTHOM, GREGG I. ANDERSON, AND
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`16· · · · · · · · · · ·ROBERT J. WEINSCHENK,
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`17· · · · · · · · ·ADMINISTRATIVE PATENT JUDGES
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`18· · · · · · · · · WEDNESDAY, SEPTEMBER 6, 2017
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`19· · · · · · · · · · · · · ·8:30 a.m.
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`22
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`23· ·REPORTED BY:
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`24· · · · · · Vickie Blair
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`25· · · · · · CSR No. 8940, RPR-CRR, CLR
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`·1· · · · · · Reporter's transcript of telephonic hearing
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`·2· · · · · · before Karl D. Easthom, Gregg I. Anderson, and
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`·3· · · · · · Robert J. Weinschenk, Administrative Patent
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`·4· · · · · · Judges, taken on Wednesday, September 6, 2017,
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`·5· · · · · · 8:30 a.m., before VICKIE BLAIR, CSR No. 8940,
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`·6· · · · · · RPR-CRR, CLR.
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`·7
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`·8· ·APPEARANCES:· (All Appearing Telephonically)
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`·9
`· · ·ADMINISTRATIVE PATENT JUDGES:
`10· · · · · · JUDGE KARL D. EASTHOM
`· · · · · · · JUDGE GREGG I. ANDERSON
`11· · · · · · JUDGE ROBERT J. WEINSCHENK
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`12
`· · ·FOR PETITIONER JUNIPER NETWORKS, INC.:
`13
`· · · · · · · IRELL & MANELLA LLP
`14· · · · · · BY MICHAEL R. FLEMING, Of Counsel
`· · · · · · · 1800 Avenue of the Stars
`15· · · · · · Suite 900
`· · · · · · · Los Angeles, California· 90067-4276
`16· · · · · · T: 310-203-7915
`· · · · · · · F: 310-556-5258
`17· · · · · · MFleming@irell.com
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`18· · · · · · IRELL & MANELLA LLP
`· · · · · · · BY TALIN GORDNIA, Associate
`19· · · · · · 1800 Avenue of the Stars
`· · · · · · · Suite 900
`20· · · · · · Los Angeles, California· 90067-4276
`· · · · · · · T: 310-203-7038
`21· · · · · · F: 310-203-7199
`· · · · · · · tgordnia@irell.com
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`·1· ·APPEARANCES:· (Continued) (All Appearing Telephonically)
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`·2· ·FOR PATENT OWNER CHRIMAR SYSTEMS, INC.:
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`·3· · · · · · BROOKS KUSHMAN P.C.
`· · · · · · · BY THOMAS A. LEWRY, Shareholder, Co-Chair
`·4· · · · · · Litigation
`· · · · · · · 1100 Town Center
`·5· · · · · · Twenty-Second Floor
`· · · · · · · Southfield, Michigan· 48075-1238
`·6· · · · · · P (248) 226-2753
`· · · · · · · F (248) 358-3351
`·7· · · · · · tlewry@brookskushman.com
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`·8· · · · · · BROOKS KUSHMAN P.C.
`· · · · · · · BY LISSI MOJICA, Principal
`·9· · · · · · 1940 Duke Street
`· · · · · · · 2nd Floor
`10· · · · · · Alexandria, Virginia· 22314
`· · · · · · · P (571) 551-7761
`11· · · · · · F (703) 548-9446
`· · · · · · · lmojica@brookskushman.com
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`·1· · ·San Gabriel, California; Wednesday, September 6, 2017
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`·2· · · · · · · · · · · · · ·8:30 a.m.
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`·3· · · · · · · · · · · · · ·---000---
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`·4
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`·5· · · · · ·JUDGE WEINSCHENK:· Good morning.· This is Robert
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`·6· ·Weinschenk, with me on the line are Judge Easthom and
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`·7· ·Judge Anderson.
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`·8· · · · · ·This is a conference call for IPR2016-1389,
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`·9· ·0139, 01397, and 01399.
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`10· · · · · ·Who do we have on the line for the petitioner?
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`11· · · · · ·MS. GORDNIA:· Hello, your Honor.· This is Talin
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`12· ·Gordnia from Irell & Manella for petitioner, and I was
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`13· ·expecting Mr. Fleming to join, as well, but I haven't
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`14· ·heard him yet, but we can continue.
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`15· · · · · ·MR. FLEMING:· Your Honor, I'm on.
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`16· · · · · ·MS. GORDNIA:· Oh, Hi, Mike.· Sorry.
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`17· · · · · ·JUDGE WEINSCHENK:· All right.· And who do we
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`18· ·have on the line for patent owner?
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`19· · · · · ·MR. LEWRY:· Your Honor, this is Tom Lewry for
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`20· ·patent owner.
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`21· · · · · ·MS.· MOJICA:· And this is Lissi Mojica for
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`22· ·patent owner.
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`23· · · · · ·JUDGE WEINSCHENK:· All right.· Welcome.
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`24· · · · · ·And did petitioner retain a court reporter for
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`25· ·this call?
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`·1· · · · · ·MS. GORDNIA:· Yes, your Honor.· Our court
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`·2· ·reporter is also on the line right now.
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`·3· · · · · ·JUDGE WEINSCHENK:· Okay.· Ms. Gordnia, you'll
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`·4· ·file a copy of the transcript when it's available?
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`·5· · · · · ·MS. GORDNIA:· We will, your Honor.
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`·6· · · · · ·WEINSCHENK:· Okay.· And, as usual, since we have
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`·7· ·a court reporter on the line, please introduce yourself
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`·8· ·before speaking.
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`·9· · · · · ·Petitioner requested this call to seek
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`10· ·authorization for a motion to stay certain
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`11· ·reexaminations of the patents at issue in some of these
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`12· ·proceedings, and also to seek authorization for a motion
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`13· ·for sanctions.
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`14· · · · · ·But, actually, let's start with patent owner.
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`15· ·I'd like to get an update on the status of these
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`16· ·reexams.
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`17· · · · · ·Now, Mr. Lewry, can you provide us with that
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`18· ·update?
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`19· · · · · ·MR. LEWRY:· Yes, your Honor.
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`20· · · · · ·We -- in response to an email that was sent to
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`21· ·the Board, we've identified the two exams by
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`22· ·reexamination number, the reexamination, there's a
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`23· ·reexamination of the '012 patient, which is part of IPR
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`24· ·1389, and the reexamination number is 90013740, and that
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`25· ·reexamination has ended in the patent office examination
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`·1· ·unit, and is now at the PTAB on appeal.· All claims were
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`·2· ·rejected, all claims and reexamination were rejected.
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`·3· · · · · ·And the second reexamination --
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`·4· · · · · ·JUDGE WEINSCHENK:· Mr. Lewry, were any of the
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`·5· ·claims amended in that first reexam you mentioned?
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`·6· · · · · ·MR. LEWRY:· I don't think so.· We are not a part
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`·7· ·of the reexam; we do not handle the reexam, and so I'm
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`·8· ·not a hundred percent certain.· I do have a copy of
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`·9· ·the -- no, that's for the '760 -- I don't know.
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`10· · · · · ·MS.· MOJICA:· So no claims have been amended in
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`11· ·that reexam.
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`12· · · · · ·MR. LEWRY:· That was Lissi.
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`13· · · · · ·MS.· MOJICA:· This is Lisa Mojica.
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`14· · · · · ·JUDGE WEINSCHENK:· Okay.· Thank you.
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`15· · · · · ·Continue, Mr. Lewry.
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`16· · · · · ·MR. LEWRY:· And then for the '760 patent, which
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`17· ·is -- the IPR for that is 1399, the reexamination number
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`18· ·is 90013802, the status of that is the patent office
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`19· ·issued a notice that it would be issuing a reexamination
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`20· ·certificate on August 7th of this year, and we are
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`21· ·awaiting that reexamination certificate, and, as I
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`22· ·mentioned at the hearing, the oral hearing, last week,
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`23· ·there are four claims that are common that were amended
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`24· ·and that are common with the reexam, the independent
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`25· ·claim being independent Claim 73, and there were three
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`·1· ·dependent claims, the dependent claims themselves were
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`·2· ·not amended, but the independent claim was amended.
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`·3· · · · · ·So that's the status of these at the current
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`·4· ·time.
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`·5· · · · · ·JUDGE WEINSCHENK:· Mr. Lewry, when did these
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`·6· ·reexams begin?
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`·7· · · · · ·MR. LEWRY:· The '012 reexam began -- I have it
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`·8· ·here.· I believe it was May -- I guess here it is,
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`·9· ·May 18, 2016, before the IPRs were filed, and the second
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`10· ·reexam -- that was for the '012 patient.
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`11· · · · · ·The second reexam for the '760 was filed on
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`12· ·August 29th of 2016.
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`13· · · · · ·Both of those were filed before our firm became
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`14· ·involved in the IPRs.
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`15· · · · · ·As I said, we are not involved in the reexams at
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`16· ·all.
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`17· · · · · ·And I also note for the record that Juniper was
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`18· ·either involved or at least had knowledge of the '012
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`19· ·reexam.· They told the District Court about it in August
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`20· ·of 2016 --
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`21· · · · · ·JUDGE WEINSCHENK:· Well, hold on, Mr. Lewry.
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`22· ·I'm not asking you about petitioner.
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`23· · · · · ·MR. LEWRY:· All right.
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`24· · · · · ·JUDGE WEINSCHENK:· Let's stick to you first, and
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`25· ·then we can get to that; all right?
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`·1· · · · · ·MR. LEWRY:· Sure.
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`·2· · · · · ·JUDGE WEINSCHENK:· So did patent owner ever, in
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`·3· ·any of their mandatory notices, identify these reexams
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`·4· ·as being related to these cases?
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`·5· · · · · ·MR. LEWRY:· We have looked through all the
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`·6· ·notices that were filed in the case, and we did not see
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`·7· ·that they were identified by patent owner.
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`·8· · · · · ·JUDGE WEINSCHENK:· Okay.· And you would
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`·9· ·certainly consider these reexams, though, to be a matter
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`10· ·that would be affected by or affect these proceedings;
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`11· ·correct?
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`12· · · · · ·MR. LEWRY:· Potentially, yes.
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`13· · · · · ·JUDGE WEINSCHENK:· And is there a reason why
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`14· ·patent owner never identified them in any of their
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`15· ·mandatory notices?
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`16· · · · · ·MR. LEWRY:· I don't know the answer to that.
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`17· · · · · ·As I say, we did not get involved in these IPRs
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`18· ·until February of this year.· We did not go back and
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`19· ·look to see whether the mandatory notices had been filed
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`20· ·properly, and we're unaware of that these have not been
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`21· ·brought to the Board's attention.
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`22· · · · · ·JUDGE WEINSCHENK:· Well, Mr. Lewry, hold on one
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`23· ·second.· Hold on.· I mean, your client has this
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`24· ·obligation, though, not just you; correct?
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`25· · · · · ·MR. LEWRY:· Absolutely.· And that's not an
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`·1· ·excuse, but you asked me whether I was aware.
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`·2· · · · · ·JUDGE WEINSCHENK:· No.· I asked you if your
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`·3· ·client was aware, and you said they were, and now I want
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`·4· ·to know why your client, either through their previous
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`·5· ·representative or you, did not file the proper mandatory
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`·6· ·notices.
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`·7· · · · · ·MR. LEWRY:· I don't have an answer to that.
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`·8· · · · · ·JUDGE WEINSCHENK:· Okay.· All right.
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`·9· · · · · ·Now let's turn to petitioner, Ms. Gordnia.
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`10· · · · · ·When did you and your client became aware of
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`11· ·these reexams?
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`12· · · · · ·MS. GORDNIA:· Your Honor, I was aware of the
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`13· ·reexams earlier this year because we file quarterly
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`14· ·status letters for the District Court judge who is in
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`15· ·the District Court case.· And so I was aware of the
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`16· ·reexaminations, but I was not aware of their content and
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`17· ·whether or not they were relevant to these IPRs.
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`18· · · · · ·Furthermore, our whole ICare team is not
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`19· ·involved in the District Court case; so, for example,
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`20· ·Mr. Fleming, who is monitoring, obviously, the Icare
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`21· ·records, he was unaware that there was even
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`22· ·reexaminations until shortly before the hearing last
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`23· ·week when I was preparing the next quarterly letters.
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`24· · · · · ·So our whole Icare team wasn't aware because the
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`25· ·patent owner never filed a mandatory notice in the IPRs
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`·1· ·regarding the reexaminations.
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`·2· · · · · ·And in addition --
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`·3· · · · · ·JUDGE WEINSCHENK:· Hold on, Ms. Gordnia.· Hold
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`·4· ·on.· Hold on, Ms. Gordnia.
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`·5· · · · · ·When you say "earlier this year," when did you
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`·6· ·or your client exactly become aware of these reexams?
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`·7· · · · · ·MS. GORDNIA:· I am certain that I was aware in
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`·8· ·February because I filed a letter with the District
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`·9· ·Court regarding the IPRs and the reexaminations, and I
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`10· ·told the District Court that these are all pending.
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`11· · · · · ·JUDGE WEINSCHENK:· Okay.· And so you knew that
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`12· ·there were reexams of the same patents that are involved
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`13· ·in these proceedings; correct?
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`14· · · · · ·MS. GORDNIA:· That is correct.
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`15· · · · · ·JUDGE WEINSCHENK:· And you did not file -- or
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`16· ·petitioner did not file updated mandatory notices
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`17· ·identifying either of these reexams; right?
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`18· · · · · ·MS. GORDNIA:· We did not, unfortunately.· It
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`19· ·wasn't clear, at least to me, that they were related;
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`20· ·and, unfortunately, like I said, Mr. Fleming was unaware
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`21· ·of them until just last week.
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`22· · · · · ·JUDGE WEINSCHENK:· Are you seriously going to
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`23· ·tell me that you don't think that a reexam of the exact
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`24· ·same patents at issue in these cases is not related?· Is
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`25· ·that your position?
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`·1· · · · · ·MS. GORDNIA:· "Related" might have been the
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`·2· ·wrong word, your Honor.· I have to admit that I was not
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`·3· ·fully -- I didn't realize that there would be amendments
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`·4· ·and other events in the reexam that would impact the
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`·5· ·IPRs and cause for there to be any sort of inconsistency
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`·6· ·between the two.
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`·7· · · · · ·So, like I said, unfortunately, it didn't occur
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`·8· ·to me to bring that up, and Mr. Fleming, because this
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`·9· ·wasn't mentioned anywhere in the IPR record.· He was
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`10· ·unaware until just last week, so --
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`11· · · · · ·JUDGE WEINSCHENK:· Well, you know, I'll say the
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`12· ·same thing I said to patent owners, Counsel, just
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`13· ·because Mr. Fleming wasn't aware, your client certainly
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`14· ·was, and you certainly were, that certainly seems to
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`15· ·trigger an obligation for you to update your mandatory
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`16· ·notices, as well.
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`17· · · · · ·So is there some reason, some excuse you have
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`18· ·for not updating your mandatory notices, other than
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`19· ·Mr. Fleming not being aware of them?
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`20· · · · · ·MS. GORDNIA:· Just my own inexperience with the
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`21· ·two -- with the reexams and IPRs and how relate to one
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`22· ·another given that it's a somewhat new proceeding, so
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`23· ·it's just -- in hindsight, I -- I wish I had realized
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`24· ·this and we had raised it to the Board's attention
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`25· ·sooner, but that doesn't -- that doesn't count.· That
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`·1· ·doesn't help us right now.· So that's pretty much -- I
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`·2· ·mean, that's the truth.
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`·3· · · · · ·It's something that I was aware of, but I didn't
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`·4· ·realize these two would have an impact on one another,
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`·5· ·and I certainly wasn't aware that there were amendments
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`·6· ·being made because all of that activity occurred after
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`·7· ·the last time I checked the reexam record, so I was
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`·8· ·unaware of that there were amendments.
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`·9· · · · · ·Had I realized that there were amendments, that
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`10· ·would have probably raised a red flag; but, again --
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`11· · · · · ·JUDGE WEINSCHENK:· I gotta stop you,
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`12· ·Ms. Gordnia.· I didn't know that it matters whether
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`13· ·there's amendments or not.· If there's claims at issue
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`14· ·in the reexam that are rejected that are at issue here,
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`15· ·I think that that's a certainly related matter that you
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`16· ·would need to identify regardless of whether there were
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`17· ·amendments being made or not.
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`18· · · · · ·So I understand that you didn't know that, but I
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`19· ·don't know that that's an excuse, either, so --
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`20· · · · · ·MS. GORDNIA:· I understand.· I understand, your
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`21· ·Honor.
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`22· · · · · ·JUDGE WEINSCHENK:· All right.· Ms. Gordnia, why
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`23· ·don't you tell us now -- I think you're the one who
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`24· ·requested some relief on this issue, so why don't you
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`25· ·tell us why we should authorize you a motion to stay or
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`·1· ·a motion for sanctions.
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`·2· · · · · ·MS. GORDNIA:· Thank you, your Honor.
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`·3· · · · · ·So, with respect to motion to stay, given that
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`·4· ·we have this information now, we're seeing, obviously,
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`·5· ·that there is a potential for an inconsistent result in
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`·6· ·the reexamination, they don't have the benefit the
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`·7· ·Board's final decision yet.
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`·8· · · · · ·As Mr. Lewry mentioned, there are common claims
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`·9· ·across the reexaminations and the IPRs, there's also the
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`10· ·same art, so the same art from the IPRs is also before
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`11· ·the examiner in the reexamination.
`
`12· · · · · ·So if the reexaminations were to be stayed now,
`
`13· ·they would reopen at a later time once the Board has
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`14· ·issued its final decision, and the examiner at that time
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`15· ·would have an opportunity to revisit their decision
`
`16· ·and --
`
`17· · · · · ·JUDGE WEINSCHENK:· Look, Ms. Gordnia, I have a
`
`18· ·question.· Did you say that the same art is involved in
`
`19· ·the reexam or different art?
`
`20· · · · · ·MS. GORDNIA:· The same.· So at least one of the
`
`21· ·references from ground two block we see a reference in
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`22· ·this initial ex parte reexamination request, and then
`
`23· ·the other -- the IPR was -- was identified to the
`
`24· ·reexamination unit at some point as part of the search
`
`25· ·for all open litigation, so that the art from the IPR is
`
`
`
`·1· ·at least referenced in the reexamination record,
`
`·2· ·although it's not necessarily discussed as -- in detail
`
`·3· ·the way it would be in the Board's Icare decision, so
`
`·4· ·there is --
`
`·5· · · · · ·JUDGE WEINSCHENK:· What exactly would be the
`
`·6· ·inconsistent result that would happen if we didn't stay
`
`·7· ·the reexams?
`
`·8· · · · · ·MS. GORDNIA:· So if, your Honor, if the Board,
`
`·9· ·were to decide that these claims are invalid in light of
`
`10· ·the art in the IPRs, the reexamination unit can, having
`
`11· ·the benefit of that decision, take a closer look at that
`
`12· ·art and decide whether their decision needs to be
`
`13· ·revisited.· They can reopen prosecution at any time
`
`14· ·depending on other art they discover, so they will have
`
`15· ·the additional information of the Board's decision and
`
`16· ·will be able to make their own decision about whether or
`
`17· ·not to proceed, for example, with the reexam certificate
`
`18· ·or to revisit the art and reconsideration the amendment.
`
`19· · · · · ·Because the amendments that are being made to
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`20· ·Claim 73 of the '760, that amendment doesn't overcome
`
`21· ·the art in the IPRs.· That amendment is basically
`
`22· ·putting Claim 73 more in line of Claim 1 with the '760
`
`23· ·patent, and the limitation that's being added is found
`
`24· ·in the prior art in Icare, and it's also discussed, for
`
`25· ·Claim 1, in the '760 petition at page 27 -- 25 through
`
`
`
`·1· ·27, so --
`
`·2· · · · · ·JUDGE WEINSCHENK:· Ms. Gordnia, how can we stay
`
`·3· ·a reexam where the patent office has already issued a
`
`·4· ·notice of intent to issue the reexam certificate?· Isn't
`
`·5· ·it too late for us to stay that?
`
`·6· · · · · ·MS. GORDNIA:· No.· My understanding, and I
`
`·7· ·welcome Mr. Fleming to speak, as well, if there's
`
`·8· ·anything he'd like to add, but my understanding is it's
`
`·9· ·not too late to stay that reexamination.· Until the
`
`10· ·certificate itself is issued, it's not too late, and it
`
`11· ·certainly isn't too late for the '012 that's on appeal.
`
`12· ·And, because there are common issues, the '012 actually
`
`13· ·references the decision in the '760, so --
`
`14· · · · · ·JUDGE WEINSCHENK:· I'm going to ask you one more
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`15· ·question:· Haven't you waived your right to a stay at
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`16· ·this point since you knew about these reexams back in
`
`17· ·February and you waited until after the oral hearing and
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`18· ·after a notice of intent to issue reexam cert was mailed
`
`19· ·to request a stay?· Haven't you waived your right to
`
`20· ·that at this point?
`
`21· · · · · ·MS. GORDNIA:· Your Honor, respectfully, I don't
`
`22· ·think we've waived it yet because it's not too late to
`
`23· ·correct the situation and to basically just put those
`
`24· ·reexaminations on hold.· Not to terminate them, but to
`
`25· ·just put them on hold until this IPR plays out to avoid,
`
`
`
`·1· ·also, the duplication of effort.· The reexamination and
`
`·2· ·certificate issues, we may have to file yet another ex
`
`·3· ·parte or some other proceeding to address the amended
`
`·4· ·claims.
`
`·5· · · · · ·So what we're suggesting we believe is the most
`
`·6· ·efficient way to handle both co-pending proceedings and
`
`·7· ·ensure that we're not having inconsistent results,
`
`·8· ·duplication of effort, and we can have -- you know, the
`
`·9· ·reexam unit will have the benefit of your decision at
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`10· ·the end.
`
`11· · · · · ·JUDGE WEINSCHENK:· Is there anything we can do
`
`12· ·about the amended claims, anyway?· They're not in this
`
`13· ·case.· You haven't put they are in your petition.· How
`
`14· ·can we consider amended claims that aren't even in this
`
`15· ·case?
`
`16· · · · · ·MS. GORDNIA:· So, your Honor, we're not asking
`
`17· ·that you consider the amended claims; we're asking that
`
`18· ·you just consider the petition as it stands.
`
`19· · · · · ·The amended claims won't exist if the reexam
`
`20· ·certificate doesn't issue, so once the current, not
`
`21· ·amended claims are addressed in your Board's decision,
`
`22· ·then, at that point, the reexamination unit can take a
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`23· ·look at your decision and decide whether the amendments
`
`24· ·that are being made even overcome the art that's in the
`
`25· ·IPRs.
`
`
`
`·1· · · · · ·JUDGE WEINSCHENK:· I understand.· I understand.
`
`·2· · · · · ·MR. FLEMING:· Your Honor, may I add a little bit
`
`·3· ·more?· The other thing is that --
`
`·4· · · · · ·JUDGE WEINSCHENK:· Mr. Fleming?
`
`·5· · · · · ·MR. FLEMING:· Yes.
`
`·6· · · · · ·JUDGE WEINSCHENK:· Okay.· Go ahead, Mr. Fleming.
`
`·7· · · · · ·MR. FLEMING:· The reexam unit is considering
`
`·8· ·limitations that are not amended in the claims as
`
`·9· ·reasons for patentability, so having the benefit of your
`
`10· ·decision may impact their final decision of whether they
`
`11· ·want to move forward with the certificate.
`
`12· · · · · ·And, as you know, the office is amenable to
`
`13· ·reopen prosecution in light of new information, so it
`
`14· ·would be of benefit to the office to ensure that there's
`
`15· ·a consistent result; but, more importantly, that,
`
`16· ·indeed, these claims are patentable.
`
`17· · · · · ·JUDGE WEINSCHENK:· Okay.· Thank you,
`
`18· ·Mr. Fleming.
`
`19· · · · · ·Ms. Gordnia, do you wish to address the motion
`
`20· ·for sanctions now?
`
`21· · · · · ·MS. GORDNIA:· So, your Honor, we don't wish to
`
`22· ·file a motion for sanctions, but we do -- if the
`
`23· ·Board -- well, I'll just stay with that, we don't want
`
`24· ·to pursue that --
`
`25· · · · · ·JUDGE WEINSCHENK:· Okay.
`
`
`
`·1· · · · · ·MS. GORDNIA:· -- at this time.
`
`·2· · · · · ·JUDGE WEINSCHENK:· Okay.· All right.
`
`·3· · · · · ·Mr. Lewry, is there anything you'd like to say
`
`·4· ·in response to Ms. Gordnia's request for a motion to
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`·5· ·stay the reexams?
`
`·6· · · · · ·MR. LEWRY:· A couple of things, your Honor.
`
`·7· · · · · ·First, it's my understanding that the
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`·8· ·reexaminations, both reexaminations, the IPRs were
`
`·9· ·identified to the reexamination examiners, so they're
`
`10· ·aware of the IPRs, and --
`
`11· · · · · ·JUDGE WEINSCHENK:· [Unintelligible] would tell
`
`12· ·us; right?
`
`13· · · · · ·MR. LEWRY:· Apparently not, and, again, I
`
`14· ·apologize for that, and I think Ms. Gordnia said it,
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`15· ·too, if we had it to do over again, we certainly would
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`16· ·have made sure the IPR would have been notified, the
`
`17· ·Board had been notified in the IPRs.
`
`18· · · · · ·But the primary art involved in both
`
`19· ·reexaminations is not the art before the Board in the
`
`20· ·IPRs.· The art -- I think Ms. Gordnia indicated that
`
`21· ·because the IPRs were referenced, the art was somehow in
`
`22· ·front of the reexamination unit; but the art itself has
`
`23· ·not been considered, and, therefore, there's no aspect
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`24· ·of the reexaminations that would be affected by the
`
`25· ·Board's decision on this art because it's not art that
`
`
`
`·1· ·the reexamination Board is considering or has
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`·2· ·considered, so --
`
`·3· · · · · ·And then to Mr. Fleming's comment that there
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`·4· ·could be a stay in light of new information, there is
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`·5· ·no -- in terms of the reexamination, having new
`
`·6· ·information, there is no new information from the
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`·7· ·reexamination perspective because all the information is
`
`·8· ·and was known to the reexamination Board examiners.· So
`
`·9· ·I don't think there's new information that could be
`
`10· ·cited as being the basis for the reexamination to be
`
`11· ·stayed.
`
`12· · · · · ·And then, of course, there is the aspect of, you
`
`13· ·know, did -- you know, except petitioners are seeking to
`
`14· ·file a motion for a stay, you know, did they wait too
`
`15· ·long to do that?· And I know I started on this, but let
`
`16· ·me conclude this, in August -- on August 26th of 2016,
`
`17· ·Ms. Gordnia signed a document entitled "Defendant's
`
`18· ·Notice of Motion and Motion to Stay by Juniper, Ruckus,
`
`19· ·Netgear, and Fortinet," in which she listed the IPRs
`
`20· ·that were pending in the '012 ex parte reexamination and
`
`21· ·stated the defendants in Texas and California, including
`
`22· ·Juniper, have petitioned for IPR and for one patent in
`
`23· ·an ex parte reexamination proceeding.· She indicated
`
`24· ·that the -- those -- the IPRs and the ex parte
`
`25· ·reexamination were the basis for the court to stay.
`
`
`
`·1· · · · · ·And so they've known about at least the '012
`
`·2· ·reexam since August of last year, and I don't think it's
`
`·3· ·appropriate for them to, at this late date, seek to stay
`
`·4· ·that reexamination, having known about it.
`
`·5· · · · · ·So '760 reexam was filed just days after this
`
`·6· ·document was filed.· We don't know for sure Juniper's
`
`·7· ·involvement in that; but, considering their close ties
`
`·8· ·to the other defendants, it's highly likely they were
`
`·9· ·aware of it near or about the time it was filed.
`
`10· · · · · ·In any event, they were certainly aware of it,
`
`11· ·as Ms. Gordnia admitted, in February of this year, and,
`
`12· ·again, did not seek a stay at that time, which would
`
`13· ·have been the appropriate time if there was going to be
`
`14· ·a stay.
`
`15· · · · · ·So our position is that they've waived their
`
`16· ·right at this stage to ask for a stay.
`
`17· · · · · ·JUDGE WEINSCHENK:· All right.· Thank you,
`
`18· ·Mr. Lewry.· One more question for you, Mr. Lewry:· Do
`
`19· ·you know, are there any claim construction issues that
`
`20· ·overlap with these reexams and these IPRs?
`
`21· · · · · ·MR. LEWRY:· Unfortunately, I do not know the
`
`22· ·answer to that.
`
`23· · · · · ·JUDGE WEINSCHENK:· Okay.· Ms. Gordnia, before
`
`24· ·you have any last remarks on the motion to stay, do you
`
`25· ·know if there's any claim construction issues that
`
`
`
`·1· ·overlap between the reexams and the IPRs?
`
`·2· · · · · ·MS. GORDNIA:· So, yes, your Honor, I've taken a
`
`·3· ·quick look at the records, and, for example, I notice in
`
`·4· ·that in, I believe it's the '012, there is a reference
`
`·5· ·by the examiner to the path being not limited to the
`
`·6· ·data terminal equipment, which impact claim construction
`
`·7· ·in our IPR, I think this was in the final decision that
`
`·8· ·was later appealed, I saw it there, and I could probably
`
`·9· ·find --
`
`10· · · · · ·JUDGE WEINSCHENK:· So there was a construction
`
`11· ·of the term "path" in one of the reexams that may be
`
`12· ·relevant to these cases?
`
`13· · · · · ·MS. GORDNIA:· Right.· And whether it's an
`
`14· ·express construction or just the way that it's
`
`15· ·presented, it is -- it is an issue that has come up in
`
`16· ·our IPRs, whether or not path is limited to the data
`
`17· ·terminal equipment, and there the examiner found that it
`
`18· ·wasn't.
`
`19· · · · · ·JUDGE WEINSCHENK:· Do you have a citation to
`
`20· ·that in the reexam?
`
`21· · · · · ·MS. GORDNIA:· So I can point you to the '012
`
`22· ·appeal -- sorry, the -- I apologize.· I have it right
`
`23· ·here.· I believe it's on page 12.· It's in the appeal --
`
`24· ·it's in the final decision by the examiner that was
`
`25· ·appealed, so I know it's in that document.· The page
`
`
`
`·1· ·numbers I have may not be right.· I believe these are
`
`·2· ·PDF page numbers, as opposed to document page numbers.
`
`·3· ·I could find it.· I could try to find it as we're
`
`·4· ·talking.
`
`·5· · · · · ·And I do want to clarify for the record that
`
`·6· ·Juniper is not involved in the ex parte reexaminations,
`
`·7· ·and we were not aware of the '760 reexamination when it
`
`·8· ·was filed.· I first learned about it, as I said earlier,
`
`·9· ·in February of this year, so we don't have any
`
`10· ·involvement in the reexamination.
`
`11· · · · · ·JUDGE WEINSCHENK:· Okay.· That's understood.
`
`12· ·All right.· Ms. Gordnia, if you can't find the cite
`
`13· ·right now, you can also email it to us in a joint email
`
`14· ·where you copy the other side.
`
`15· · · · · ·MS. GORDNIA:· Okay.· I will do that, your Honor.
`
`16· · · · · ·JUDGE WEINSCHENK:· Do you have anything else
`
`17· ·you'd like to add on the motion to stay at this time?
`
`18· · · · · ·MS. GORDNIA:· Just that to the extent the
`
`19· ·parties didn't raise this earlier, I don't think it
`
`20· ·really makes sense to point fingers.· It was -- it was
`
`21· ·an error on both sides.
`
`22· · · · · ·And as to the party with the best knowledge,
`
`23· ·that's the patent owner, they had the best knowledge
`
`24· ·about what was happening in the reexaminations and how
`
`25· ·they impacted the IPRs, and they were obligated to
`
`
`
`·1· ·disclose that to the Board earlier than the final
`
`·2· ·minutes of the hearing.
`
`·3· · · · · ·So I don't know that it makes sense to point
`
`·4· ·fingers, but the main issue right now is it's not too
`
`·5· ·late to resolve this so that, like I said, we don't have
`
`·6· ·an inconsistent result and the examination unit has the
`
`·7· ·benefit of your decision.
`
`·8· · · · · ·So we believe there's still time to correct
`
`·9· ·this, and of course it would have been better if we
`
`10· ·raised it earlier; but, at this point, we just want to
`
`11· ·have the most consistent outcome, and not to duplicate
`
`12· ·efforts with the filing of additional IPRs, additional
`
`13· ·reexaminations, and that sort of thing.
`
`14· · · · · ·JUDGE WEINSCHENK:· Okay.· And, Ms. Gordnia, just
`
`15· ·to confirm, you're withdrawing your request for
`
`16· ·authorization to file a motion for sanctions; correct?
`
`17· · · · · ·MS. GORDNIA:· Correct.
`
`18· · · · · ·JUDGE WEINSCHENK:· All right.· I'm going to
`
`19· ·place you all on a brief hold while I confer with the
`
`20· ·panel.
`
`21· · · · · · · · ·(Recess taken.)
`
`22· · · · · ·JUDGE WEINSCHENK:· All right.· This is Judge
`
`23· ·Weinschenk again.
`
`24· · · · · ·Ms. Gordnia, are you there?
`
`25· · · · · ·MS. GORDNIA:· Yes, your Honor.
`
`
`
`·1· · · · · ·JUDGE WEINSCHENK:· Mr. Lewry?
`
`·2· · · · · ·MR. LEWRY:· Yes.
`
`·3· · · · · ·JUDGE WEINSCHENK:· Okay.· So there are no
`
`·4· ·further questions on the issue regarding the motion to
`
`·5· ·stay from the panel.
`
`·6· · · · · ·We will take the issue under advisement, and we
`
`·7· ·will issue an order ordering whether we are going to
`
`·8· ·authorize the motion to stay.
`
`·9· · · · · ·Before we end this call, though, I just want to
`
`10· ·say one thing:· I feel like over the past few months in
`
`11· ·this case there's been a lot of focus between the
`
`12· ·parties and characterizing each other's behavior and
`
`13· ·sort of a general lack of cooperation, and maybe the
`
`14· ·parties have then sort of overlooked their own
`
`15· ·obligations here, for example, updating their mandatory
`
`16· ·notices.
`
`17· · · · · ·So, you know, you all are experienced attorneys.
`
`18· ·You know, I expect more from
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