throbber
10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
`APPLE INC.,
`Petitioner,
`v.
`VALENCELL, INC.,
`Patent Owner
`___________________________
`PTAB Proceeding No.
`IPR2017-00315 Patent no. 8,929,965
`IPR2017-00317 Patent no. 8,989,830
`IPR2017-00318 Patent no. 8,886,269
`IPR2017-00319 Patent no. 8,923,941
`IPR2017-00321 Patent no. 8,923,941
`
` CONFERENCE CALL
` October 13, 2017
`BEFORE:
`BRIAN J. McNAMARA, Administrative Patent Judge
`JAMES B. ARPIN, Administrative Patent Judge
`SHEILA F. McSHANE, Administrative Patent Judge
`____________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`Apple 1022
`Apple v. Valencell
`IPR2017-00317
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 2
`
` APPLE v. VALENCELL
`A P P E A R A N C E S:
` STERNE, KESSLER, GOLDSTEIN & FOX, LLP
` Attorneys for Petitioner
` 1100 New York Avenue
` Washington, DC 20005
` BY: MICHELLE K. HOLOUBEK, ESQ.
` - and -
` MICHAEL D. SPECHT, ESQ.
`
` BRAGALONE CONROY PC
` Attorneys for Patent Owner
` Chase Tower
` 2200 Ross Avenue
` Dallas, Texas 75201-7924
` BY: JUSTIN KIMBLE, ESQ.
` - and -
` WILLIAM KENNEDY, ESQ.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` APPLE v. VALENCELL
` P R O C E E D I N G S
` JUDGE McNAMARA: This is Judge
` McNamara.
` MS. HOLOUBEK: Good morning.
` JUDGE McNAMARA: Judge McShane is
` on the line and Judge Arpin is here with
` me as well.
` Can I have the parties, starting
` with the Petitioner, tell me who's on the
` line.
` MS. HOLOUBEK: Good morning, Your
` Honor.
` This is Michelle Holoubek and Mike
` Specht, Sterne Kessler for Petitioner,
` Apple, and I wanted to let you know we
` also have a court reporter on the line.
` JUDGE McNAMARA: Okay, great I'm
` glad to hear that.
` And for the Patent Owner?
` MR. KIMBLE: This is Justin
` Kimble for the Patent Owner. In the
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` room with me is also Bill Kennedy and I
` believe the Patent Owner may have a
` APPLE v. VALENCELL
` couple of other attorneys that have
` dialed in from a separate location.
` JUDGE McNAMARA: All right.
` Well, the purpose of this call was
` actually initiated by us, we wanted to
` discuss the scheduling order and the
` possibility of whether or not the Patent
` Owner is going to want to provide a brief
` and response -- sorry, the Petitioner is
` going to want to provide a brief in
` response to the Patent Owner reply, which
` is not provided for in the scheduling
` order right now.
` As you probably are aware, the
` Federal Circuit has issued its decision in
` the Aqua Products case, Aqua Products
` versus Matal.
` In our original conference we had
` told you that the burden of persuasion
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 5
` with respect to the motion to amend was on
` the Patent Owner.
` We are now getting guidance by the
` Federal Circuit that the burden of
` persuasion, that we have to assess the
` APPLE v. VALENCELL
` burden of persuasion without -- we have to
` assess the motion to amend without putting
` the burden of persuasion on the Patent
` Owner.
` So the question is really directed
` to the Petitioner.
` Right now we have scheduled -- the
` motion to amend has already been filed,
` there is an opposition to the motion to
` amend that is yet to be filed, there is a
` reply to that opposition, but the question
` to the Petitioner is whether or not you
` want to incorporate into the schedule a
` surreply to that -- to the reply?
` MS. HOLOUBEK: Your Honor, this
` is counsel for Petitioner.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` As I understand there is -- when
` you are referring to the surreply, this
` would be a Petitioner's surreply to the
` Patent Owner's reply to our opposition to
` motion to amend?
` JUDGE McNAMARA: That would be
` correct.
` MS. HOLOUBEK: Okay.
` APPLE v. VALENCELL
` I think it would be helpful, we are
` digesting, of course, Aqua Products and
` thinking about it's effect on all the
` briefing.
` I am looking at the scheduling
` order right now, but I think that would be
` helpful to have a reply just because these
` are issues; that haven't been addressed
` before.
` JUDGE McNAMARA: Let me -- there
` are two things that we want to consider,
` and I will be happy to hear from the
` Patent Owner on this as well, but the
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 7
` issue is whether we did this as separate
` briefing or we did it as part of the
` briefing that's already underway.
` In our case as opposed to some
` other cases where they are further along,
` where it would be much more difficult to
` do that, we can do the briefing as part of
` briefing in the ordinary course.
` So -- but in order to do that we
` are going to have to accelerate some of
` the dates in the schedule.
` APPLE v. VALENCELL
` You, I think, currently have moved
` the date from the -- for the -- let me
` see, I guess for the Patent -- for the --
` sorry, for the Petitioner's opposition to
` the motion to amend from December 5th to
` December 28th.
` But if we are going to accommodate
` an additional brief at the end for the
` Petitioner, we would want to move that
` date back to December 5th, and then what
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 8
` we would want to do is to have the Patent
` Owner's reply, which is now due on January
` 19th, it was originally due January 4th,
` moved back to December 22nd.
` If we did that, that gets it done
` before the holidays, and then the
` Petitioner's surreply would be due on
` January 12th.
` There are -- subsequently there are
` other dates that we would revise as well
` just a little bit, just to make things
` fit, but none of those are particularly
` significant.
` You don't have to make this
` APPLE v. VALENCELL
` decision today, you can let us know, but
` that is kind of what we have in mind at
` the moment.
` MS. HOLOUBEK: Thank you, Your
` Honor, that's helpful.
` It gives us something to think
` about. I appreciate you not requiring us
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` to make a decision on the phone call
` today, we just want to think of the
` implications of the changes made.
` JUDGE McNAMARA: Right, so let me
` tell you how this would affect the rest
` of the dates.
` The motions for observation then
` would be moved to February 9th.
` That would also be the motion to
` exclude and the requests for oral
` argument, we would move all of that to
` February 9th.
` Then the response to the
` observations would be February 16th, and
` the reply to the opposition to motion to
` exclude would be February 23rd.
` The oral hearing will still remain
` APPLE v. VALENCELL
` on February 27th.
` Let me give you a little
` explanation as to why we are -- we are
` trying to allow enough time after the
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 10
` surreply for any additional depositions
` that may take place so that there may be
` observations on cross-examination of the
` reply or surreply witness.
` So that's why we moved that date,
` and then the other dates are moved just to
` accommodate that adjustment.
` MR. SPECHT: Your Honor, this is
` Mike Specht.
` Sorry, one question I have with
` respect to the schedule, is there any
` flexibility in moving the oral argument
` date out?
` JUDGE McNAMARA: No. I can
` answer that very quickly; no.
` The problem with moving the oral
` argument is if we move the oral argument,
` that gives us less time to write a final
` decision.
` MR. SPECHT: Okay, so my
` APPLE v. VALENCELL
` understanding is this was instituted
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` June 2nd, right?
` JUDGE McNAMARA: Right.
` MR. SPECHT: Okay.
` JUDGE McNAMARA: So, we like to
` have about three months to write a final
` decision, and that's about how that will
` work out.
` MR. SPECHT: Okay.
` JUDGE McNAMARA: By the way, I am
` assuming the schedule will apply to all
` of the related cases, I think I said
` that in the e-mail, that was what the
` e-mail was about, was that this will be
` the scheduling order that would apply to
` all the related cases.
` I think it's -- I forget, one might
` be not instituted, but I think it was IPR
` 2017-00315, 317, 319, 321, whatever all
` those related cases are.
` MS. HOLOUBEK: Okay, once we have
` determined a course of action, which we
` will do very quickly so we can update
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 12
` you as to dates, what do you propose the
` APPLE v. VALENCELL
` process to be if we decide not to move
` forward on the new plan and stick with
` the dates that they currently are?
` Do we need to update the Board on
` that?
` I assume if we decide to move
` forward with the new plan we would file or
` maybe request another phone call, because
` some of those dates I think we need court
` authorization to move.
` JUDGE McNAMARA: Actually, if you
` think the new plan is fine, then we will
` just simply issue a new scheduling order
` with those dates in it.
` If you prefer to stay with the
` original plan, which would not include
` briefing by the Petitioner in the context
` of a surreply, then you just simply need
` to notify us.
` MS. HOLOUBEK: Okay.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` MR. RHOADS: Your Honor this is
` Scott Rhoads, counsel for Patent Owner.
` Would it be agreeable, I haven't
` had a chance to really look at this, if we
` APPLE v. VALENCELL
` need to move the dates that you kind of
` proposed to December 5, December 22 and
` January 12th, if we just need to move
` those by a few days one way or the other
` to accommodate potentially someone
` traveling, or so forth?
` I'm assuming that wouldn't be an
` issue, as long as the parties agree.
` JUDGE McNAMARA: That's not an
` issue for me.
` Yes, as long as the parties agree.
` MS. HOLOUBEK: Okay.
` Well, thank you, Your Honor, for
` raising this.
` We need to, I think, speak a little
` bit and decide on a course of action, but
` otherwise I don't think we have any other
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` questions at this time.
` JUDGE McNAMARA: All right, let
` me ask you to reach a conclusion on this
` by a week from today?
` MS. HOLOUBEK: Certainly.
` JUDGE McNAMARA: I very much
` appreciate that, but I did want to
` APPLE v. VALENCELL
` consider the possibility so that we
` don't have to do separate briefings on
` the issue and we can just incorporate
` this into the briefing that's currently
` scheduled and incorporated in due
` course, it's just one extra brief.
` MS. HOLOUBEK: Okay.
` JUDGE McNAMARA: All right, well
` if there is nothing else, then we will
` adjourn.
` MR. KENNEDY: Your Honor, this is
` Bill Kennedy for Patent Owner.
` I had a separate issue in the 318
` IPR.
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
` We had inadvertently filed our
` Patent Owner response without page numbers
` and then we had filed a motion to expunge
` with the -- with the Patent Owner response
` added as an additional paper with page
` numbers, and I wanted to bring that to
` your attention, just when Petitioners are
` writing their response they can figure out
` which paper they need to cite to.
` JUDGE McNAMARA: Clearly one with
` APPLE v. VALENCELL
` page numbers would be the one -- I'm
` sorry if we haven't gotten to that yet,
` but --
` MR. KENNEDY: Understood.
` I just wanted to make sure that the
` record was clear on that.
` JUDGE McNAMARA: I assume they
` have no problem citing with the document
` with page numbers.
` MS. HOLOUBEK: Correct, Your
` Honor.
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`10/13/2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Page 16
`
` JUDGE McNAMARA: Okay, if there
` is nothing else, then we will adjourn.
` We look forward to hearing from you
` by a week from today.
` MS. HOLOUBEK: Thank you very
` much, Your Honor.
` We appreciate your time and for
` requesting the call.
` JUDGE McNAMARA: Thank you.
` MR. KENNEDY: Thank you.
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`www.DigitalEvidenceGroup.com
`
`Digital Evidence Group C'rt 2017
`
`202-232-0646
`
`

`

`r0lr3l2017
`
`Apple Inc., v. Valencell, Inc.
`
`Conference Call
`
`Pagre L1
`
`1
`
`2
`
`3
`
`4
`
`t
`
`6
`
`'t
`
`9
`
`10
`
`11
`
`72
`
`13
`
`14
`
`l_5
`
`16
`
`1-'7
`
`1B
`
`L9
`
`20
`
`21
`
`22
`
`APPLE V. VALENCELL
`CERTIF]CATE
`It STEPHEN J. MOORE, a Shorthand
`Public of the State of
`Reporter and Notary
`certì-f y:
`New York, do hereby
`That the transcript
`hereinbefore set forth is a true and
`accurate record of said proceedings.
`that I am not
`I further certify
`related to any of the parties to this
`action by blood or marriage; and that I am
`in no \day ínterested in the outcome of
`this matter.
`
`STEPHEN J. MOORE, RPR, CRR
`
`www.DigitalEvidenceGroup.com Digital EvidenceGroupC'rt2017
`
`202-232-0646
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket