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`Apple Inc., v. Valencell, Inc.
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`Conference Call
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`Page 1
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`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
`
`
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`10/13/2017
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`Apple Inc., v. Valencell, Inc.
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`Conference Call
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`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.
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` 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
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` 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
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`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.
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` 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
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`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
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`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
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` 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
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`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
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` 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
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`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.
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` 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
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` 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.
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` 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.
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`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.
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`Pagre L1
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`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
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`202-232-0646
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`