Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 1
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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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` - - - - - - - - - - - - - - - X
`
` EMERSON ELECTRIC CO., :
`
` Petitioner, :
`
` v. : Case No.
`
` SIPCO, LLC, : IPR2017-00001
`
` Patent Owner. :
`
` - - - - - - - - - - - - - - - X
`
` Monday, June 19, 2017
`
` Telephone Conference before Judge
`
`Patrick Boucher, Judge Stacey White, and Judge
`
`Robert Weinschenk in the above-entitled matter,
`
`commencing at 1:01 p.m., the proceedings taken down
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`by Stenotype by ANGELA K. MCCULLOUGH, RPR, and
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`transcribed under her direction.
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 1 of 26
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`
`
`Washington, D.C.
`
`June 19, 2017
`
`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` - - - - - - - - - - - - - - - X
`
` EMERSON ELECTRIC CO., :
`
` Petitioner, :
`
` v. : Case No.
`
` SIPCO, LLC, : IPR2017-00001
`
` Patent Owner. :
`
` - - - - - - - - - - - - - - - X
`
` Monday, June 19, 2017
`
` Telephone Conference before Judge
`
`Patrick Boucher, Judge Stacey White, and Judge
`
`Robert Weinschenk in the above-entitled matter,
`
`commencing at 1:01 p.m., the proceedings taken down
`
`by Stenotype by ANGELA K. MCCULLOUGH, RPR, and
`
`transcribed under her direction.
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 1 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 2
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`APPEARANCES:
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` On behalf of the Petitioner:
`
` DONALD JACKSON, ESQ.
`
` JAMES BERQUIST, ESQ.
`
` Davidson Berquist Jackson & Gowdey, LLP
`
` 8300 Greensboro Drive, Suite 500
`
` McLean, Virginia 22102
`
` (571) 765-7700
`
` djackson@dbjg.com
`
` On behalf of the Patent Owner:
`
` DUSTIN WEEKS, ESQ.
`
` Troutman Sanders
`
` 600 Peachtree Street, NE, Suite 5200
`
` Atlanta, Georgia 30308
`
` (404) 885-3446
`
` Dustin.weeks@troutmansanders.com
`
` and
`
` GREGORY GONSALVES, ESQ.
`
` The Gonsalves Law Firm
`
` Gonsalves@gonsalveslawfirm.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 2 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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` P R O C E E D I N G S
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` JUDGE BOUCHER: So for the benefit of the
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`court reporter, when people are speaking, if they
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`could make sure to identify who they are so that we
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`can try and minimize any interruptions that the court
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`reporter might -- might otherwise have to make.
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` So my understanding is that the Patent
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`Owner requested the call. So I would ask, Mr. Weeks,
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`for you to go ahead and let us know what we're here
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`to discuss, please.
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` MR. WEEKS: Certainly, Your Honor. Thank
`
`you. And this is Dustin Weeks for Patent Owner.
`
` The Patent Owner is asking for
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`authorization from the Board to file a certificate of
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`correction to correct a mistake by the Patent Office
`
`when they printed the '661 patent, which is involved
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`in this proceeding. It's a mistake that the Patent
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`Owner became aware of and -- and issued in a
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`different IPR -- that's IPR2016-00984 -- that
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`involves essentially a great grandchild application
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`of the '661 patent.
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` And the -- the error on the -- the patent
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 3 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`is that on the -- the cover of the patent, the
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`priority claim states that the '692 patent, which is
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`the great -- or which is the grandparent of the
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`'661 -- the cover says that that '692 patent is a
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`continuation-in-part of this '517 application, which
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`is a CIP of the '178, which is a CIP of the '554,
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`which is a CIP of the '895. But, as is correctly
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`indicated on the specification of the '661 patent and
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`on the bibliographic data sheet that was submitted
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`with that patent application, the '692 should say
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`that it is a CIP of those four applications, not that
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`those four applications are CIPs of each other.
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` So, you know, to correct that issue,
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`Patent Owner simply seeks to file a certificate of
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`correction to correct a mistake by the office when it
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`printed the '661 patent.
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` JUDGE BOUCHER: Okay. I do have a couple
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`of questions. Was there -- what was on the filing
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`receipt?
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` MR. WEEKS: So on the filing receipt -- I
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`can pull that up just shortly. As I remember,
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`everything was correct.
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 4 of 26
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`Conference Call
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`June 19, 2017
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` JUDGE BOUCHER: Okay. And I guess my
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`other question, probably the more important one, is
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`what impact would this correction have on these
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`proceedings?
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` MR. WEEKS: As far as Patent Owner can
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`tell, there would have -- there would be no impact
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`whatsoever. The priority is not an issue in this
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`proceeding, and it's -- it's -- the priority was an
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`issue that was raised in the other IPR, which is how
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`we became aware of this issue. But in this
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`particular proceeding, there is no -- should have no
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`effect at all on the proceeding.
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` JUDGE BOUCHER: Okay. But it could impact
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`the -- the '984 IPR; is that correct.
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` MR. WEEKS: I -- I don't see how it -- I
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`don't think it can impact that case either because
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`it's -- it's basically the -- the -- the '780
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`patent -- or the '984 proceeding that -- we would
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`need to make separate correction in that patent.
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`Whether or not this -- this is correct, it shouldn't
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`have any effect on the other -- any other IPR.
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` JUDGE BOUCHER: Okay. It wouldn't -- it
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
`
`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 5 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`wouldn't correct a chain of priority or something
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`that the '780 patent used to rely on?
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` MR. WEEKS: I don't believe so. I mean,
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`the -- it is in the line of a '780 patent. But as
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`far as we can tell, you know, this is just simply a
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`correction that's going to occur on the cover of the
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`patent. It shouldn't have a substantive effect on
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`the priority claim, because the priority claim is
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`actually governed by what is -- what was on the
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`bibliographic data sheet.
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` JUDGE BOUCHER: Okay.
`
` Mr. Jackson, my understanding is that the
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`Petitioner opposes the request. And I think, in the
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`e-mail that you sent us, you outlined some of those
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`by reference to the '984 IPR. But, if you could,
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`explain in more detail what the basis is for posing
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`the request.
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` MR. JACKSON: So the -- the request --
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`well, first of all, I will, Your Honor. This, again,
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`is Mr. Jackson for the benefit of the court reporter.
`
` Your questions touched on, I think, some
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`of what's -- what's really going on here.
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 6 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 7
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` The correction of the priority chain or
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`the modification of the priority chain in this
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`proceeding for this patent, the '661 patent, is part
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`of what's necessary to correct the priority for other
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`patents in this -- in this larger family.
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` And it's not just the '780. There's also
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`the '732 patent, which is at issue in one other
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`pending IPR. There's also children of the '780
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`patent, which are -- are still alive and out there as
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`well. And all those patents, including the '780,
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`need this priority claim modified so that they all
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`align.
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` And this -- this relief was essentially
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`what Patent Owner asked for in the '984 proceeding.
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`In the '984 proceeding, in the e-mails that were sent
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`to the Board prior to making the formal request to
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`modify the priority claim of that particular patent,
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`they had indicated that they also needed to correct
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`priority claims in related patents. And I think that
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`in that particular e-mail, there was only one other
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`patent that was identified and that was the -- what
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`we refer to as the '732 patent.
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 7 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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` But as the -- as the petitions branch
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`noted when -- or identified when the -- when the --
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`when looking at the second petition to modify the
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`priority claim in the '780 patent, they noted that
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`there were additional errors in the priority claim of
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`preceding patents, including -- I don't think the
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`petitions branch specifically identified the '661
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`patent. It identified the earlier patent, the '692
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`patent. But certainly that priority -- those errors
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`in the priority claim or differences in the priority
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`claims were the type of things that the petitions
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`branch was focused on.
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` And so when the -- when the petitions
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`branch denied the second petition and the Patent
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`Owner went back to the -- back to the Board in the
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`'984 proceeding and asked for permission to file a
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`third petition to modify the priority claim, the
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`Board in that case issued a show cause order to
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`justify why they ought to be allowed a third time --
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`a third petition.
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` And it was in that context, the -- you
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`know, the Patent Owner did file its response to the
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 8 of 26
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`Conference Call
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`June 19, 2017
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`Page 9
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`show cause order. And the Board found that -- that
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`the Patent Owner had -- had made -- had continued to
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`make mistakes, didn't correct all of the mistakes
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`that were necessary to get the petition granted and,
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`therefore, denied the request to file the third
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`petition.
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` This is -- this is part and parcel of what
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`was going to be necessary to correct the priority
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`claim in the '780 patent. They needed to modify the
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`preceding patent priority claims as well.
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` And so, now, we're not really -- we're not
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`in the '780 proceeding, obviously. This is in a
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`different proceeding. But this is really the same
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`issue, the same underlying issue, which is the
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`failure to correct these priority claims that they
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`knew of or should've known of, certainly.
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` You mentioned the filing receipt. Some of
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`the -- some of the filing receipts in this case
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`were -- match what's printed on the face of the
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`patents. And when the Patent Owner received those
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`filing receipts, they had a duty to verify that the
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`priority claim was correct, and they didn't. And,
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 9 of 26
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`Conference Call
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`June 19, 2017
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`you know, this is now going -- this is now many, many
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`years later for many of these patents since they were
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`filed. And now they're seeking to come back and --
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`and try to correct these -- what they characterize as
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`mistakes -- mistakes by the Board -- or not by the
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`Board -- by the Patent Office incidentally, which I
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`don't think the record supports. And so we think
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`that it's -- it's too little too late on the one
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`hand.
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` Second of all, and this has been decided
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`essentially by the '780 panel.
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` And, thirdly, we think that the
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`evidence -- if you look at the evidence, including
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`what happened in the prosecution history of many of
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`these patents, you will see that there's evidence
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`showing that these -- these errors in the priority
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`claims -- so-called errors in the priority claims
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`were -- were not that. They were exactly what the
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`Patent Office -- I'm sorry -- what the Patent Owner
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`intended to file. They had ample opportunities to
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`verify that their priority claims were correct,
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`presumably did so. I -- you know, these were being
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 10 of 26
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`Conference Call
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`prosecuted by firms who do a lot of patent
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`prosecution. And they simply didn't make those
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`changes when they should have.
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` So one of the things that, you know, we
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`would like is we would like this Board to -- to take
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`this issue and -- because this Board has the
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`opportunity to look at evidence that's -- that's, you
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`know, developed in the record.
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` The petitions branch -- we're not able to
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`submit anything to that -- to that group. And so
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`they're only going to get -- as part of the petition,
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`they're only going to get whatever information the
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`Patent Owner submits. It obviously is very one-sided
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`in that context. And we think that a full and fair
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`decision can't be made without the benefit of -- of
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`all of the relevant evidence and information.
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` JUDGE BOUCHER: Okay.
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` Mr. Weeks, it -- it does seem to me that
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`there is at least the potential for any correction in
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`the priority claim in this patent to have an impact
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`on other proceedings before the Board. I think there
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`are a couple dozen proceedings involving somewhere
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 11 of 26
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`Page 12
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`around a dozen patents. And I think we might need to
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`take this under advisement to figure out what to do
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`because of the potential impact on those other
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`proceedings.
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` But I wanted to give you a chance to
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`address that before we make any decision on the call.
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` MR. WEEKS: Sure. Thank you, Your Honor.
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`This is Dustin Weeks.
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` So regarding the impact on other
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`proceedings, I still don't understand how this can
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`impact any other proceeding.
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` As counsel for Petitioner said, this is a
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`correction that needs to be made to -- in order to
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`then get a correction on the '780 patent, which is
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`involved in another proceeding. But whether or not
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`this -- we filed a certificate of correction, it
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`won't actually impact that other proceeding.
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` And then the -- the other issue I wanted
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`to raise is, is to say that Patent Owner should have
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`looked at any filing receipt, which -- I -- still, I
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`haven't seen -- I haven't -- I don't have the filing
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`receipt in this case before me to know if that error
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 12 of 26
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`Conference Call
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`Page 13
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`was on the filing receipt either. But, I mean,
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`that's certainly always the case. There's -- you
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`know, anytime there's a mistake by the Patent Office,
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`there was an opportunity that the -- the Patent Owner
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`could've caught that. And just simply because the
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`Patent Owner didn't, that's why we have these
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`certificates of correction that allow these types of
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`mistakes to be corrected.
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` While it certainly would've been easier
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`for all parties if -- if this mistake was noticed
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`earlier, the fact that it wasn't, I don't -- I don't
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`think that should serve to punish Patent Owner
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`anymore and not -- not afford Patent Owner this
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`administrative -- I want to say -- not right -- but
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`administrative ability to -- to make this correction
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`that is -- would be afforded to it in any other case
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`if its patent wasn't involved in an IPR.
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` JUDGE BOUCHER: Okay. And I just want to
`
`give Mr. Jackson a chance to respond.
`
` The -- I mean, Mr. Weeks is correct that
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`the priority claim in the specification is -- is as
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`they want it to be reflected on the face of the
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`1-800-FOR-DEPO
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 13 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`patent. And I did look at the bibliographic data
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`sheet, although I couldn't find the final receipt in
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`the prosecution history either. And it does seem
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`correct on the bibliographic data sheet, which
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`suggests to me that it was likely correct on the
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`filing receipt.
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` So, given that, isn't it fairly clear what
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`the Patent Owner intended the priority claim to be,
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`which is as reflected in the specification?
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` MR. JACKSON: Well, it -- you know, again,
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`keep in mind, Your Honor -- this is Mr. Jackson by
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`the way.
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` Keep in mind, Your Honor, this is only one
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`piece of -- of a lot of -- of other requests of a
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`larger family history. And while -- you know, I
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`don't have the file history here in front of me --
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`I'm in a conference room -- to look at the -- what
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`was in the bibliographic data sheet.
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` But I -- all I'm -- my point is that I
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`think that all of these requests should be treated as
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`a group, frankly. They've also made a request, I
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`believe, to correct the '692 and the '732 patent.
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 14 of 26
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`Washington, D.C.
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`June 19, 2017
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`And those requests were made in different
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`proceedings, although I think some of the members of
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`this panel are sitting on those other proceedings as
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`well.
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` So I think that the whole issue is -- is
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`much larger than what's being presented here. I also
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`note it's being presented as a -- you know, sort of a
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`trivial clerical error, but the reality is that it is
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`the difference as to whether certain patents are
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`valid or not if you allow these various priority
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`modifications to be made.
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` And so it's -- I don't think it's as
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`simple as saying it's just a clerical error and that
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`we ought to be allowed to make this change. They
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`shouldn't be allowed to make the change even if this
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`patent were not involved in an IPR because it is not
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`simply a clerical error.
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` So I -- you know, I think that you're --
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`you're raising the question in the context of this
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`particular patent. And in this particular patent,
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`there may be an answer that may be different from
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`what you look -- when you look at the other patents,
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`1-800-FOR-DEPO
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 15 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`which are much more inconsistent internally with
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`respect to their priority claims. And so I think
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`that there's that issue. Okay. It's a much bigger
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`issue than -- than what we're dealing with here.
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` And I think also, the fact that this
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`patent has been -- has been out there since 2008 --
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`it was filed in 2006. And for as much time has gone
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`by without them correcting the priority claim,
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`when -- you know, as you know, in the prosecution
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`history of these patents, you are reminded about the
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`priority claim several times. In fact, when the
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`patent issues, you know, you're also under a duty
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`to -- and I believe the Patent Office reminds you to
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`check the patent and make any corrections that may
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`need to be made at that time.
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` Here, they have repeatedly -- the Patent
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`Owners repeatedly failed to live up to its
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`obligations and -- and identify any supposed errors
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`at an earlier time. And I think the fact that those
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`errors were not identified when the patent issued or
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`when the application was pending is an indication
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`that the priority claim was as it was intended to be
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 16 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`certainly when the patent issued.
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` JUDGE BOUCHER: Okay. I want to give you,
`
`Mr. Weeks, a final opportunity to respond.
`
` I am going to take it under advisement.
`
`We do need to spend a little bit of time internally
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`understanding what the full scope of the issues are
`
`with the -- with -- because of the number of
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`proceedings of the patents involved.
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` And I am going to ask Mr. Jackson to file
`
`a copy of the transcript of this call as an exhibit
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`at least in this proceeding, the 000001 proceeding.
`
`And it may be a few days before we -- before we issue
`
`an order as to what we're going to do.
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` But if you have any final comments,
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`Mr. Weeks, since you raised the issue, if you could
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`just make those before we conclude, please.
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` MR. WEEKS: Yes, Your Honor. Thank you.
`
`This is Dustin Weeks.
`
` So just, I think, two quick points.
`
` But the first one, as Your Honor just
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`asked Petitioner, isn't it -- you know, isn't it
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`clear that -- what -- what the priority claim was
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 17 of 26
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`
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 18
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`intended in this case, which is the one that was in
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`the specification and the one that was on the
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`bibliographic data sheet.
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` You know, Petitioner isn't -- isn't
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`offering anything to say that that isn't the actual
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`priority claim that was desired. I mean, there's
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`just -- there's nothing anywhere in any prosecution
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`record of this patent.
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` And, rather, what Petitioner is trying to
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`do is trying to cloud this whole field under this
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`series of five different -- five, six, seven
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`different patent applications, each with varying
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`degrees of perhaps a mistake that was made in the
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`priority claim, whether it be from the -- a Patent
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`Office printing mistake or an error by the Patent
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`Owner in -- in making the claim.
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` And then, again, to go -- to go back to
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`the point of this is a mistake that Patent Owner
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`should have -- should've caught earlier, I mean,
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`again, I'll just reiterate. Of course Patent Owner
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`wishes that this is a mistake that would've been
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`caught earlier because we wouldn't be going through
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 18 of 26
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`
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`this process.
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` But to that effect, to show the subtly of
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`this error, I mean, these are patents that have been
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`litigated for years that have been challenged in IPRs
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`even by this petitioner, and it's a mistake that even
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`this petitioner didn't catch in this case. While
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`they caught a prior -- an error -- a different error
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`in a different -- in a different priority claim of
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`another patent, it wasn't a mistake that was caught
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`in this one, which certainly would've made their
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`petition -- their -- their challenge in the petition
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`much easier if they could've denied the priority
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`claim of this patent.
`
` JUDGE BOUCHER: Okay. Thank you,
`
`Mr. Weeks.
`
` I think -- I think we have the information
`
`that we need.
`
` I just want to check with the court
`
`reporter. Is there anything you need from me before
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`we conclude?
`
` THE REPORTER: Nope.
`
` JUDGE BOUCHER: Okay.
`
`1-800-FOR-DEPO
`
`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 19 of 26
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`
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 20
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` And, Mr. Weeks, when do you think you
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`might be able to have a transcript filed in the -- in
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`the record?
`
` Sorry. Mr. Jackson. I think it was
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`Mr. Jackson who got the court reporter.
`
` MR. JACKSON: Yes. Yes, Your Honor. This
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`is Mr. Jackson.
`
` I will -- how quickly do you need it? And
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`we can expedite it if necessary. I was going to go
`
`with the standard turnaround, which is probably seven
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`or ten business days. But if you'd like it earlier,
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`we can -- we can get that done.
`
` JUDGE BOUCHER: I think earlier might be
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`helpful in this case. I don't -- I don't know
`
`whether that's -- whether it's the case. But, given
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`the potential impact on other proceedings, it may be
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`useful for APJs who are not on this call to review
`
`the transcript. So I think it would be helpful to
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`get it earlier if we could.
`
` MR. JACKSON: Okay. This is Mr. Jackson.
`
` Ms. Court Reporter, what is your standard
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`turnaround?
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 20 of 26
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`
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`Conference Call
`
`Washington, D.C.
`
`June 19, 2017
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`Page 21
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` THE REPORTER: Standard turnaround is
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`eight business days. But this is short, so I could
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`try to get it out by the end of today and maybe get
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`it to you by tomorrow.
`
` MR. JACKSON: Okay. That'll be fine.
`
` JUDGE BOUCHER: Okay. Is there anything
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`else you want to raise while we're on the call,
`
`Mr. Jackson?
`
` MR. JACKSON: One point, Your Honor, which
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`is -- actually, there are two points I'll raise.
`
` One, I do think that the Board. Both in
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`this proceeding and the other proceedings. May
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`benefit from some briefing on this issue. I think
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`there are -- depending on the particular patent
`
`you're talking about, there can be a lot of -- a lot
`
`of factors and a lot of facts that -- that can't
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`really be developed fully on a phone call such as
`
`this. And certainly you aren't able to see the
`
`information on the fly like this when we're on this
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`phone call.
`
` JUDGE BOUCHER: And that's something we're
`
`going to consider, whether or not we think we need
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
`
`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 21 of 26
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`
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`Conference Call
`
`Washington, D.C.
`
`June 19, 2017
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`Page 22
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`some briefing on the issue.
`
` MR. JACKSON: Okay. Thank you, Your
`
`Honor. And we'd like the opportunity to -- to
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`respond to anything that the Patent Owner may file,
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`including if -- if they submitted a declaration from
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`witnesses. We'd like the opportunity to
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`cross-examine those witnesses to make sure that the
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`record is fully developed for the Board before we
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`have to file our response.
`
` JUDGE BOUCHER: Right. I understand. We
`
`haven't decided yet --
`
` MR. JACKSON: Sure.
`
` JUDGE BOUCHER: -- what approach we're
`
`going to take. But we will let you know with written
`
`order what we decide to do and whether or not that
`
`includes requesting briefing from the parties or not.
`
` Is there anything else you want to raise,
`
`Mr. Weeks?
`
` MR. WEEKS: Yes. Just one quick response
`
`to that. I'm sorry, Your Honor.
`
` I would just say that to the extent that
`
`there needs to be briefing because any particular --
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 22 of 26
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`
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 23
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`any of the issues with any particular patent is
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`complex, you know, Patent Owner is happy to engage in
`
`any type of briefing requested by the Board.
`
` But, you know, in some of these patents,
`
`maybe there are more facts. But Patent Owner would
`
`just submit that in this particular patent right
`
`here, the '661 patent, it's very straightforward.
`
`It's very simple. And we don't think briefing would
`
`really be necessary in this case even if it may be
`
`necessary in other cases. We'd just ask the Board to
`
`consider that.
`
` JUDGE BOUCHER: Yeah. Okay. Understood.
`
`I think --
`
` MR. JACKSON: Excuse me, Your Honor.
`
` JUDGE BOUCHER: Okay. Mr. Jackson, go
`
`ahead.
`
` MR. JACKSON: Yes. Sorry. Thank you.
`
` I was going to make two points, and I
`
`wasn't quick enough in making my second point.
`
` My second point was that -- that Patent
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`Owner's counsel, not just when he spoke just now, but
`
`the time before that, indicated that if we had raised
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 23 of 26
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`
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 24
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`errors in the priority claim in this '661 patent.
`
`That our petition would've been much stronger. And I
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`just want to point out that that contradicts the idea
`
`that a modification of the priority claim will have
`
`no effect on any IPRs.
`
` So I think that it is understood that,
`
`certainly, modification of the priority claim is
`
`going to affect various proceedings to varying
`
`degrees. And it'll affect certain patents more so
`
`than others perhaps because of the particular claim
`
`language that's in each of the patents. And I don't
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`think it's a simple case to say that because we
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`didn't raise it in the context of this IPR, that
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`somehow it escaped us. I -- actually, the opposite
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`is true.
`
` We've been aware of a lot of priority
`
`claim issues -- I can't even say all of them, but a
`
`lot of them -- in this family for quite some time
`
`because, of course, the Petitioner is involved with
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`litigation with Patent Owner.
`
` JUDGE BOUCHER: Okay.
`
` MR. JACKSON: It was just simply in the
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`1-800-FOR-DEPO
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 24 of 26
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`
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 25
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`context that the art that we used and the arguments
`
`that we used in this proceeding, priority claim
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`issues may not have been key because the art is prior
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`art regardless.
`
` JUDGE BOUCHER: Right. Understood. I
`
`am -- we have the -- we have the information that we
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`wanted to get out of this phone call so that we could
`
`take some time to confer and decide how we're going
`
`to proceed. So I'm going to bring the discussion to
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`a close now.
`
` And I guess I don't have anything else to
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`raise. So, in that case, we are adjourned.
`
` Thank you.
`
` (Whereupon, at 1:23 p.m., the conference
`
`call concluded.)
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
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`Petitioner Emerson's Exhibit 1044
`Page 25 of 26
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`Conference Call
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`Washington, D.C.
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`June 19, 2017
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`Page 26
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`CERTIFICATE OF REPORTER
`
`UNITED STATES OF AMERICA ) ss:
`
`DISTRICT OF COLUMBIA
`
`)
`
`I, ANGELA K. MCCULLOUGH, RPR, the officer before
`
`whom the foregoing proceedings were taken, do hereby
`
`certify that the foregoing transcript is a true and
`
`correct record of the proceedings; that said
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`proceedings were taken by me stenographically to the
`
`best of my ability and thereafter reduced to
`
`typewriting under my supervision; and that I am
`
`neither counsel for, related to, nor employed by any
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`parties to this case and have no interest, financial
`
`or otherwise, in its outcome.
`
`____________________________
`
`Notary Public in and for
`
`The District of Columbia
`
`My commission expires: 01/31/2020
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`1-800-FOR-DEPO
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`www.aldersonreporting.com
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`Alderson Court Reporting
`
`Petitioner Emerson's Exhibit 1044
`Page 26 of 26
`
`
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