`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
` APPLE, INC.,
`
` PETITIONER
`
` VS.
`
` VALENCELL, INC.
`
` PATENT OWNER
`
` CASE IPR2017-00317 (Patent 8,989,830 B2)
`
` CASE IPR2017-00318 (Patent 8,886,296 B2)
`
` BEFORE SHEILA F. McSHANE, BRIAN J. McNAMARA and
`
` JAMES B. ARPIN, Administrative Patent Judges
`
` McSHANE, Administrative Patent Judge.
`
`TELEPHONIC PROCEEDING TAKEN IN AFOREMENTIONED MATTER
`
` DECEMBER 12, 2017
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`1
`
`2 3 4
`
`5
`
`6 7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`0001
`
`APL1118
`Apple v. Valencell
`IPR2017-00318
`
`
`
` I N D E X
`
` E X A M I N A T I O N P A G E
`
`Page 2
`
` P R O C E E D I N G S 5
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`1
`
`2
`
`3 4
`
`5 6 7 8 9
`
`1 0
`
`1 1
`
`1 2
`
`1 3
`
`1 4
`
`1 5
`
`1 6
`
`1 7
`
`1 8
`
`1 9
`
`2 0
`
`2 1
`
`2 2
`
`2 3
`
`2 4
`
`2 5
`
`0002
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 3
`
` APPLE, INC.,
`
` PETITIONER,
`
` vs.
`
` VALENCELL, INC.,
`
` PATENT OWNER.
`
` Proceeding held in the above matter on the 12th
`
` day of December, 2017, between the hours of
`
`1
`
`2 3
`
`4
`
`5
`
`6
`
`7
`
`8 9
`
`10
`
` o'clock in the forenoon and 3:00 o'clock in the
`
` afternoon before Pamela K. Needham, CCR, CSR (MO,
`
`11
`
` IL), in a certain cause now pending before the
`
` UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`12
`
` PATENT TRIAL AND APPEAL BOARD wherein APPLE, INC. is
`
` the Petitioner, and VALENCELL, INC. is the Patent
`
` Owner.
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0003
`
`
`
`1
`2
`
`3
`
`4
`
`5
`
`6
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`13
`14
`15
`16
`17
`18
`
`19
`
`20
`21
`22
`23
`24
`25
`
`Page 4
`
` APPEARANCES:
`
` FOR THE PETITIONER:
`
` Mr. Michael D. Specht
` Mr. Jason A. Fitzsimmons
` Sterne, Kessler, Goldstein & Fox, P.L.L.C.
` 1100 New York Avenue, N.W.
` Washington, D.C. 20005
` mspecht-ptab@skgf.com
`
` FOR THE PATENT OWNER:
`
` Mr. William Kennedy
` Mr. Jeff Bragalone
` Mr. Justin Kimble
` Bragalone Conroy, PC
` 2200 Ross Avenue, Suite 4500 - West
` Dallas, TX 75201
` wkennedy-iprbcpc-law.com
`
` ALSO PRESENT: Harper Batts
` Baker Botts, LLP
`
` The Court Reporter:
` Pamela K. Needham, RPR, IL CSR, MO CCR
` Veritext Legal Solutions
` 515 Olive Street, Suite 300
` St. Louis, MO 63101
` 314-203-2987
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0004
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 5
`
` TRANSCRIPT OF PROCEEDINGS
`
` * * * * *
`
` (On the record at 1:01 p.m. CST)
`
` JUDGE McSHANE: Who's on the line for
`
` Petitioner?
`
` MR. SPECHT: For Petitioner, this is
`
` Michael Specht, lead counsel, and also with me is
`
` Jason Fitzsimmons, back-up counsel on these matters.
`
` JUDGE McSHANE: Thank you. Anybody
`
` else?
`
` MR. SPECHT: Your Honor, we also
`
` arranged for a court reporter who is on the line, as
`
` well.
`
` JUDGE McSHANE: Okay. So before I turn
`
` to the other parties, could you get -- when you get
`
` a final copy of the transcript could you get that
`
` docketed in the cases?
`
` MR. SPECHT: Yes, Your Honor.
`
` JUDGE McSHANE: Thank you. All right,
`
` and who's on the line for Patent Owner?
`
` MR. BATTS: Your Honor, just one more,
`
` this is also Petitioner FitBit, we're in an
`
` understudy role here, but we're listening into the
`
` proceeding, this is Harper Batts from Baker Botts.
`
` JUDGE McSHANE: All right, who's going
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0005
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 6
`
` to be taking for Petitioner?
`
` MR. SPECHT: Your Honor, I will, this is
`
` Michael Specht.
`
` JUDGE McSHANE: Thank you. All right,
`
` now for patent owner, please?
`
` MR. KENNEDY: Yes, Bill Kennedy, which
`
` is a back-up counsel for patent owner, and Jeff
`
` Bragalone, back-up counsel for patent owner, and I
`
` believe also Justin Kimble, who is lead counsel for
`
` Patent Owner is on the line.
`
` MR. KIMBLE: That's correct, this is
`
` Justin Kimble, Your Honor.
`
` JUDGE McSHANE: Okay, and who's going to
`
` be speaking on behalf of Patent Owner, please?
`
` MR. KENNEDY: That would be me, Bill
`
` Kennedy.
`
` JUDGE McSHANE: All right, thank you,
`
` Mr. Kennedy. Let's see. So Patent Owner here sent
`
` an email requesting this call and wants to be
`
` granted authorization to file the sur-reply, and
`
` Petitioner here opposes this request. So what we're
`
` going to do here, since it's Patent Owner's request,
`
` we're going to have Mr. Kennedy go first, then
`
` Petitioner can respond, and then Patent Owner will
`
` have a brief final word on the request, specific to
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0006
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 7
`
` the request. Then the way that we're going to do
`
` this is the judges, we're going to meet and confer
`
` and get back to you hopefully in short order, we'll
`
` ask you to hold, and we'll either be able to come
`
` back with the decision, or we're going to take the
`
` request under advisement and then issue an order
`
` later.
`
` So Mr. Kennedy, how many issues do you
`
` have, first of all? Generally.
`
` MR. KENNEDY: I think, I have three
`
` broad categories, about five total issues.
`
` JUDGE McSHANE: All right. That's quite
`
` a few. Okay, so if we could just stick to the high
`
` points and delve into the details as much as
`
` required, that would be appreciated.
`
` MR. KENNEDY: Okay.
`
` JUDGE McSHANE: But let's try to keep it
`
` brief, and if you could please proceed.
`
` MR. KENNEDY: Sure. So I'd like to
`
` first by starting off, so this is for the -317 and
`
` -318 IPR's, and almost all of these issues overlap
`
` because, or in both of those IPR's, because of the
`
` overlap in the art between the two. So to start,
`
` there's an issue with Petitioner's reply and in fear
`
` with the Goodman reference, and Petitioner uses the
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0007
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 8
`
` Goodman reference for meaning a certain embodiment
`
` and for meeting a certain claim limitation, and they
`
` use an embodiment in Figure 2, and in the reply they
`
` switch embodiments to Figure 7A, so we would want a
`
` reply to address the switching of embodiments there
`
` where the embodiment of Figure 7A was not addressed
`
` during the petition.
`
` JUDGE McSHANE: Could you give me a
`
` citing in the reply on that? Do you happen to have
`
` that?
`
` MR. KENNEDY: Sure. If you're looking
`
` at the -318, it would be papers 32 at 11 through 12.
`
` JUDGE McSHANE: All right, you know
`
` what, I'm going to say something that's sort of
`
` different than what I said at the beginning. If you
`
` don't mind, Mr. Kennedy, what I'm going to do is as
`
` we deal with these issues one by one, if I could
`
` just have, let's get the, let's get the Petitioner
`
` to chime in on this one, okay?
`
` MR. SPECHT: Yes, this is Mike Specht,
`
` just to clarify, in terms of the pages, Bill, you're
`
` citing to, what pages were those again?
`
` MR. KENNEDY: That would be 11 and 12 of
`
` the -318 file.
`
` JUDGE McSHANE: Okay, well, let me ask
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0008
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 9
`
` another just real quick, if I may. Did you meet and
`
` confer with others before this call.
`
` MR. KENNEDY: So Patent Owner sent a
`
` request and said do you oppose, they opposed, and
`
` then Petitioner last night asked for what would be
`
` speaking about, and we sent them a list of things
`
` this morning. And they still oppose that after the
`
` list.
`
` MR. SPECHT: Shall I proceed, Your
`
` Honor?
`
` JUDGE McSHANE: Yes, please.
`
` MR. SPECHT: Sure. With respect to the
`
` Goodman issue and the list that Mr. Kennedy just
`
` referred to, on the list that he sent us there are
`
` two, two Goodman arguments, if you will, on why they
`
` believe a sur-reply is appropriate, one referring to
`
` new arguments about the conformance to the thickness
`
` of the strip, in that we reference Figure 7A.
`
` JUDGE McSHANE: Yes.
`
` MR. SPECHT: And similarly, another
`
` argument about the light source extending through
`
` the aperture where we referred to figure 7A in our
`
` reply. We are not changing our position from the
`
` petition in terms of the embodiments we rely on,
`
` what we did in the reply, and this is, starting on
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0009
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 10
`
` Page 9, is we do, indeed, talk about Figure 7A, but
`
` only to the extent that it gives us guidance in
`
` terms of the teaching of Figure 2, which is the
`
` position from this petition, and we are responding
`
` to their arguments in their Patent Owner response in
`
` terms of the shortcomings of our initial arguments.
`
` We're not relying on Figure 7A to support, or the
`
` embodiments in Figure 7A to support our arguments or
`
` make our prima facia case, that's not the case,
`
` we're just simply responding to their arguments in
`
` the Patent Owner response, and 7A sheds light on why
`
` their arguments were incorrect.
`
` JUDGE McSHANE: Okay, all right. Thank
`
` you on that issue. Okay, now Patent Owner, please,
`
` Mr. Kennedy, if you could proceed.
`
` MR. KENNEDY: So the next, the next two
`
` arguments that I'd like to address is just for the
`
` -318 IPR, so not to the -317, and it's involved, it
`
` starts at Page 18 of the -318 IPR reply, and in that
`
` instance, Petitioner is talking about several
`
` different prototypes in the Asada reference, and in
`
` the petition, Petitioner relied on one prototype,
`
` and now in reply, Petitioner is relying on a
`
` different prototype and saying that a person, our
`
` understanding is that that prototype also includes
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0010
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 11
`
` what it had previously argued was in a different
`
` prototype, so it was another, another instance of
`
` switching embodiments, which is something that we
`
` could not have anticipated in, after the petition
`
` was filed.
`
` JUDGE McSHANE: Okay, thank you. And
`
` Petitioner's reply on that one?
`
` MR. SPECHT: Yes, Your Honor, once
`
` again, we believe we are responding to arguments
`
` that they make in their Patent Owner response,
`
` arguments that appeared on I believe Page 38 and 39
`
` in their Patent Owner response, and we're just
`
` showing the Asada reference which include -- it
`
` does, indeed, include multiple embodiments in that
`
` reference. We're not changing our use of Asada,
`
` we're just looking at other portions of the Asada
`
` reference to demonstrate again why their arguments
`
` are flawed in their Patent Owner response. We're
`
` not changing our initial position.
`
` JUDGE McSHANE: Okay, thank you. Now
`
` Mr. Kennedy, next issue?
`
` MR. KENNEDY: Can I -- so I do believe
`
` that they, that they are now arguing that -- a
`
` different thing, it implicitly says in their
`
` response, in their reply: Petitioner would have
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0011
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 12
`
` understood that prototype B included the signal
`
` processer like the earlier Prototype, and that a
`
` further description of Prototype B focuses on
`
` improvement and modifications, so they're actively
`
` now talking about what Prototype B discloses instead
`
` of Prototype A, so they switched focuses there. I
`
` don't see how that's not a new argument.
`
` JUDGE McSHANE: All right, thank you,
`
` we'll consider that.
`
` MR. KENNEDY: And so the next category
`
` is, of items is a new claim construction structure
`
` position. There's a term that appears in both of
`
` the IPR's, light guiding interface, Patent Owner
`
` proposed the construction of this term, in its
`
` petition Petitioner did not offer any construction
`
` for this term. And then now in their reply
`
` Petitioner is offering a construction for the term,
`
` so we'd like an opportunity to respond to that new
`
` construction they're offering for the first time in
`
` the reply.
`
` JUDGE McSHANE: All right. And
`
` Petitioner?
`
` MR. SPECHT: Certainly, Your Honor.
`
` These arguments appear on Page 5 and 6 of our
`
` Petitioner's reply, and referring to that I mean
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0012
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 13
`
` we're specifically responding to the fact that they
`
` did propose a construction. We start out that
`
` section by noting that Valencell proposes
`
` considering light guiding interface as an interface
`
` that delivers light along the path. We go on to
`
` discuss why that -- why their proposed construction
`
` was wrong, and we offer one that's consistent to the
`
` position that we took in our petition in terms of
`
` our use in our arguments. We're not presenting new
`
` arguments other than to respond to their proposed
`
` claim construction in their patent owner response.
`
` MR. KENNEDY: But I think the issue
`
` there is that in the, in the petition, Apple argued
`
` that those terms did not need to be construed, and
`
` now they are offering a construction, so that's not
`
` something that we could have anticipated.
`
` JUDGE McSHANE: Okay, well -- okay.
`
` MR. KENNEDY: If they had this
`
` construction to start with, they should have offered
`
` it in their petition, not now.
`
` MR. SPECHT: And Your Honor, if I may
`
` respond, we don't believe a construction of the term
`
` is necessary, we believe our petition and the
`
` positions we took with respect to light guiding
`
` interface, that it is the plain and ordinary meaning
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0013
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 14
`
` and then as we applied it is appropriate. Again,
`
` here we're responding to their proposed construction
`
` with arguments why they were wrong, and countering
`
` that with a construction that's consistent with the
`
` plain and ordinary meaning.
`
` MR. BRAGALONE: Your Honor, this is Mr.
`
` Bragalone. Petitioner had an option to either stand
`
` by their prior position that no construction was
`
` necessary, or to offer a new construction, and even
`
` if they'd done it in the alternative, they've
`
` offered a new construction, we could not have
`
` anticipated that, and we should be entitled to
`
` respond to the new construction. They're making new
`
` arguments as to why their newly proposed
`
` construction is correct, and we haven't had any
`
` opportunity to respond to those, and we, we believe
`
` that we could point out to the Board why their new
`
` construction has additional problems that we did
`
` not, of course, know about and could not have
`
` addressed and did not address in our response.
`
` JUDGE McSHANE: All right. So what
`
` we're talking about here is the issue of the
`
` interface at, let's see, it's in the 318 case at the
`
` reply at Pages 5 through 8. I believe that's right.
`
` MR. KENNEDY: I believe that's correct,
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0014
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 15
`
` Your Honor.
`
` JUDGE McSHANE: All right. Next issue,
`
` please?
`
` MR. KENNEDY: So the, this is the last
`
` issue I had, I want to discuss on this call. This
`
` is more overarching, so in those IPR matters,
`
` Petitioner has submitted an extra declaration from
`
` their technical expert, Dr. Anthony, and a large
`
` part of that declaration involved responding to
`
` Patent Owner's argument about why certain prior art
`
` references should not be combined, and during the
`
` previous deposition of Dr. Anthony, Apple's expert,
`
` Dr. Anthony stated that he was aware of those
`
` reasons why not to combine detriments, but he did
`
` not include them in his original declaration. If
`
` you look at his new declaration, for example,
`
` Exhibit 1102 at Page 28, paragraph 46, Dr. Anthony
`
` states: This is evident in Valencell's reiteration
`
` of alleged detrimental implications of adding
`
` components to the Goodman's device like the ones
`
` discussed above for combination of other elements of
`
` Goodman, and the detriments are adding mass reduced
`
` disposability, reduced skin conformance, and added
`
` skin pressure. And then Dr. Anthony states: Again,
`
` I was aware of these types of alleged detriments in
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0015
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 16
`
` forming my opinion. A person of ordinary skill
`
` would have understood and considered these, as well,
`
` in my opinion, so let's combine the references.
`
` And then later on in the same exhibit,
`
` Page 20, paragraph 35 page: As I previously stated
`
` in forming the opinion for my declaration submitted
`
` with the petition, I was aware of these types of
`
` alleged detriments.
`
` So he's admitted and then Apple again
`
` admits during their reply that Dr. Anthony was aware
`
` of these reasons why the references shouldn't have
`
` been combined, but there's nothing in the original
`
` declaration that actually discusses those reasons.
`
` Now fast forward to the reply, he's submitted a
`
` couple of near 30-page declarations where he spends
`
` a lot of time talking about the reasons why he
`
` should combine those references above the detriments
`
` that we described. He already admitted he was aware
`
` of these detriments, he did not include them in his
`
` original declaration, he shouldn't be allowed to now
`
` include them in his -- in a reply declaration
`
` essentially holding those reasons back in hopes that
`
` we wouldn't come across them, he would never have to
`
` address them. Now he's finally addressed them in
`
` his recent declaration, and we are now only getting
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0016
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 17
`
` our first shot at responding to those now.
`
` JUDGE McSHANE: Okay.
`
` MR. KENNEDY: And he should have put
`
` those in his original declaration.
`
` JUDGE McSHANE: Yeah, excuse me, here's
`
` a quick question. Have you deposed Dr. Anthony on,
`
` you know, as to his supplemental declaration yet?
`
` MR. KENNEDY: No, we haven't, we're, we
`
` are going to, we are planning on deposing him, and
`
` we're working out the schedule with Petitioner right
`
` now.
`
` JUDGE McSHANE: Okay, all right.
`
` Anything else on that point, Mr. Kennedy?
`
` MR. KENNEDY: No.
`
` JUDGE McSHANE: Okay. And Petitioner,
`
` please?
`
` MR. SPECHT: Sure, I mean I think if I
`
` heard correctly when Mr. Kennedy was just speaking
`
` he indicated that Dr. Anthony's arguments here were
`
` responsive to positions they took in their Patent
`
` Owner response. That's exactly what we're supposed
`
` to do in a Petitioner's reply, and we felt it was
`
` both appropriate and necessary to now consider these
`
` detriments, the specific the detriments that they
`
` raised in their Patent Owner response. Dr. Anthony
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0017
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 18
`
` felt that wasn't necessary in our Petitioner's -- in
`
` our petition, because he weighed these things, he
`
` made arguments, or we made arguments on why a person
`
` of ordinary skill in the art would combine these
`
` references, we met that burden. Valencell attempted
`
` to show some reasons why you wouldn't combine the
`
` references, we don't believe those have any merit,
`
` Dr. Anthony puts together arguments in his
`
` declaration that show that these were technically
`
` either inaccurate positions, or a person of ordinary
`
` skill in the art would not have considered the
`
` detriments in the way in which Patent Owner was
`
` contending. I think that's perfectly appropriate
`
` and consistent with the Board's rules. I think here
`
` what we have is, is we have the notion going back
`
` from the very first PTAB decision, you know, that
`
` the Petitioner in this instance gets the last word.
`
` And the problem is Valencell doesn't like that,
`
` they've made some arguments, we provided counter
`
` arguments. That's the ebb and flow of the
`
` proceeding, and now, you know, they want another
`
` chance to be the one that has the last word. That's
`
` not how the process is set up.
`
` MR. KENNEDY: So I think the issue is,
`
` though, that Dr. Anthony and Apple have both
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0018
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 19
`
` admitted that Dr. Anthony was aware of the
`
` detriments of combining these things at the time he
`
` filed the petition, but he did not include any
`
` specific opinions about those until he filed the
`
` second, his supplemental declaration. He shouldn't
`
` be able to say he was aware of those things and not
`
` speak about them in the petition and hold those back
`
` for the reply.
`
` JUDGE McSHANE: Yeah, okay. Thank you.
`
` Thank you. Any more issues?
`
` MR. KENNEDY: I think that, I guess if
`
` the Board is considering what to do about, if we can
`
` file a sur-reply here, if the Board rules that we
`
` cannot, that Valencell cannot file a sur-reply, that
`
` we would be able to, in the alternative, file a
`
` motion to strike the new, the portions that we
`
` believe are new in the, in Apple's reply and in its
`
` declaration.
`
` JUDGE McSHANE: All right, Mr. Kennedy,
`
` on all of these issues, if we were to authorize,
`
` allow a sur-reply, would you be submitting any new
`
` evidence?
`
` MR. KENNEDY: I don't believe so, Your
`
` Honor, no.
`
` JUDGE McSHANE: Okay. And again, if we
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0019
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 20
`
` were to authorize a sur-reply, Mr. Specht, I'm going
`
` to ask a question I probably know the answer to, but
`
` would you request a sur sur-reply then, as well?
`
` MR. SPECHT: Your Honor, we would.
`
` JUDGE McSHANE: All right. Anything
`
` else?
`
` MR. KENNEDY: Your Honor, I think that
`
` we just suggest if we could have a seven-page page
`
` limit if you rule in our favor, so I think we would
`
` get our sur-reply in under that page limit.
`
` JUDGE McSHANE: All right. So I'm going
`
` to confer with the other judges, could you please
`
` hold for a second? And if we're conferring for too
`
` long, we'll get back to you and let you know, okay?
`
` (Off the record.)
`
` JUDGE McSHANE: Hello, this is Sheila
`
` McShane back on the line again. We are not going to
`
` authorize the filing of a sur-reply, you've given us
`
` information about alleged, you know, new materials
`
` that should have been in the prima facia case of
`
` Petitioner in the first place, we can discern
`
` whether something is new or is being provided in
`
` response to an argument and whether the prima facia
`
` case was existing in the first place. So we can do
`
` all that, and so we don't see any need for a
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0020
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 21
`
` sur-reply. Anything else?
`
` MR. KENNEDY: Is that also a ruling on
`
` the move to strike?
`
` JUDGE McSHANE: Yes. It is. We, that
`
` is denied, as well. Now again, you know, we, you
`
` will have the opportunity to do the deposition of
`
` Dr. Anthony, and there is the hearing that is still
`
` coming up, so any issues that come up, you know, you
`
` can always raise them to us, to the Panel, and we
`
` will consider them. So you will have more
`
` opportunities, okay? Anything else, parties?
`
` MR. SPECHT: Nothing for the Petitioner,
`
` thank you, Your Honors.
`
` JUDGE McSHANE: Okay, thank you.
`
` MR. KENNEDY: Thank you.
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0021
`
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Page 22
`
` CERTIFICATE OF REPORTER
`
` I, Pamela K. Needham, Certified Court Reporter
`
` within and for the State of Missouri, do certify
`
` that the witness whose testimony appears in the
`
` foregoing deposition was duly sworn by me; the
`
` testimony of said witness was taken by me to the
`
` best of my ability and thereafter reduced to
`
` typewriting under my direction; that I am neither
`
` counsel for, related to, nor employed by any of the
`
` parties to the action in which this deposition was
`
` taken, and further, that I am not a relative or
`
` employee of any attorney or counsel employed by the
`
` parties thereto, nor financially or otherwise
`
` interested in the outcome of the action.
`
` <%Signature%>
`
` --------------------------------------
`
` Pamela K. Needham, CSR, CCR
`
` Illinois CSR No. 084-002247
`
` Missouri CCR No. 505
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0022
`
`
`
`[& - burden]
`
`&
`
`& 4:4
`
`0
`084-002247 22:17
`1
`11 8:12,23
`1100 4:5
`1102 15:17
`12 1:22 8:12,23
`12th 3:9
`18 10:19
`1:01 5:3
`
`2
`2 8:3 10:3
`20 16:5
`20005 4:5
`2017 1:22 3:9
`2200 4:10
`28 15:17
`3
`30 16:15
`300 4:19
`314-203-2987 4:20
`317 7:20 10:18
`318 7:21 8:12,24
`10:18,19 14:23
`32 8:12
`35 16:5
`38 11:11
`39 11:11
`3:00 3:10
`4
`4500 4:10
`46 15:17
`5
`5 2:4 12:24 14:24
`505 22:18
`
`515 4:19
`6
`
`6 12:24
`63101 4:19
`7
`75201 4:11
`7a 8:4,6 9:18,22
`10:1,7,8,11
`8
`
`8 14:24
`8,886,296 1:13
`8,989,830 1:12
`9
`
`9 10:1
`
`a
`ability 22:7
`able 7:4 19:6,15
`action 22:10,14
`actively 12:4
`added 15:23
`adding 15:19,22
`additional 14:18
`address 8:5 10:17
`14:20 16:24
`addressed 8:6
`14:20 16:24
`administrative
`1:16,18
`admits 16:10
`admitted 16:9,18
`19:1
`advisement 7:6
`aforementioned
`1:21
`afternoon 3:10
`alleged 15:19,25
`16:8 20:19
`allow 19:21
`
`allowed 16:20
`alternative 14:10
`19:15
`answer 20:2
`anthony 15:8,12
`15:13,17,24 16:10
`17:6,25 18:8,25
`19:1 21:7
`anthony's 17:19
`anticipated 11:4
`13:16 14:12
`anybody 5:9
`aperture 9:22
`appeal 1:1 3:1,12
`appear 12:24
`appearances 4:1
`appeared 11:11
`appears 12:12
`22:4
`apple 1:4 3:3,12
`13:13 16:9 18:25
`apple's 15:12
`19:17
`applied 14:1
`appreciated 7:15
`appropriate 9:16
`14:1 17:23 18:13
`argued 11:1 13:13
`arguing 11:23
`argument 9:21
`12:7 15:10 20:23
`arguments 9:15
`9:17 10:5,6,8,10
`10:12,17 11:9,11
`11:17 12:24 13:9
`13:10 14:3,14
`17:19 18:3,3,8,19
`18:20
`arpin 1:16
`arranged 5:12
`
`Page 1
`
`art 7:23 15:10
`18:4,11
`asada 10:21 11:13
`11:15,16
`asked 9:5
`attempted 18:5
`attorney 22:12
`authorization 6:20
`authorize 19:20
`20:1,18
`avenue 4:5,10
`aware 15:13,25
`16:7,10,18 19:1,6
`b
`b 1:16 12:1,3,5
`b2 1:12,13
`back 5:8 6:7,8 7:3
`7:5 16:22 18:15
`19:7 20:14,17
`baker 4:14 5:24
`batts 4:13 5:21,24
`beginning 8:15
`behalf 6:14
`believe 6:9 9:16
`11:9,11,22 13:22
`13:23 14:16,24,25
`18:7 19:17,23
`best 22:7
`bill 6:6,15 8:21
`board 1:1 3:1,12
`14:17 19:12,13
`board's 18:14
`botts 4:14 5:24
`bragalone 4:9,10
`6:8 14:6,7
`brian 1:15
`brief 6:25 7:18
`broad 7:11
`burden 18:5
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0023
`
`
`
`[call - filing]
`
`c
`call 6:19 9:2 15:5
`case 1:12,13 10:9
`10:9 14:23 20:20
`20:24
`cases 5:17
`categories 7:11
`category 12:10
`cause 3:11
`ccr 3:10 4:18
`22:17,18
`certain 3:11 8:1,2
`15:10
`certainly 12:23
`certificate 22:1
`certified 22:2
`certify 22:3
`chance 18:22
`changing 9:23
`11:15,19
`chime 8:19
`citing 8:9,22
`claim 8:2 12:11
`13:11
`clarify 8:21
`combination
`15:21
`combine 15:14
`16:3,17 18:4,6
`combined 15:11
`16:12
`combining 19:2
`come 7:4 16:23
`21:8
`coming 21:8
`components 15:20
`confer 7:2 9:2
`20:12
`conferring 20:13
`conformance 9:17
`15:23
`
`conroy 4:10
`consider 12:9
`17:23 21:10
`considered 16:2
`18:11
`considering 13:4
`19:12
`consistent 13:7
`14:4 18:14
`construction
`12:11,14,15,17,19
`13:2,6,11,15,19,22
`14:2,4,8,9,11,13
`14:15,18
`construed 13:14
`contending 18:13
`copy 5:16
`correct 6:11 14:15
`14:25
`correctly 17:18
`counsel 5:7,8 6:7,8
`6:9 22:9,12
`counter 18:19
`countering 14:3
`couple 16:15
`course 14:19
`court 4:17 5:12
`22:2
`csr 3:10 4:18
`22:17,17
`cst 5:3
`
`d
`
`d 4:3
`d.c. 4:5
`dallas 4:11
`day 3:9
`deal 8:17
`december 1:22 3:9
`decision 7:5 18:16
`declaration 15:7,9
`15:15,16 16:6,13
`
`16:20,21,25 17:4,7
`18:9 19:5,18
`declarations 16:15
`delivers 13:5
`delve 7:14
`demonstrate
`11:17
`denied 21:5
`deposed 17:6
`deposing 17:9
`deposition 15:12
`21:6 22:5,10
`described 16:18
`description 12:3
`details 7:14
`detrimental 15:19
`detriments 15:14
`15:22,25 16:8,17
`16:19 17:24,24
`18:12 19:2
`device 15:20
`different 8:15
`10:21,24 11:1,24
`direction 22:8
`discern 20:21
`discloses 12:5
`discuss 13:6 15:5
`discussed 15:21
`discusses 16:13
`disposability
`15:23
`docketed 5:17
`dr 15:8,12,13,17
`15:24 16:10 17:6
`17:19,25 18:8,25
`19:1 21:7
`duly 22:5
`e
`earlier 12:2
`ebb 18:20
`
`Page 2
`
`either 7:4 14:7
`18:10
`elements 15:21
`email 6:19
`embodiment 8:1,3
`8:6
`embodiments 8:4
`8:5 9:24 10:8 11:3
`11:14
`employed 22:9,12
`employee 22:12
`entitled 14:12
`essentially 16:22
`evidence 19:22
`evident 15:18
`exactly 17:21
`examination 2:2
`example 15:16
`excuse 17:5
`exhibit 15:17 16:4
`existing 20:24
`expert 15:8,12
`extending 9:21
`extent 10:2
`extra 15:7
`f
`
`f 1:15
`facia 10:9 20:20
`20:23
`fact 13:1
`fast 16:14
`favor 20:9
`fear 7:24
`felt 17:22 18:1
`figure 8:3,4,6 9:18
`9:22 10:1,3,7,8
`file 6:20 8:24
`19:13,14,15
`filed 11:5 19:3,4
`filing 20:18
`
`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
`
`0024
`
`
`
`[final - mass]
`
`final 5:16 6:25
`finally 16:24
`financially 22:13
`first 6:23 7:9,20
`12:19 17:1 18:16
`20:21,24
`fitbit 5:22
`fitzsimmons 4:4
`5:8
`five 7:11
`flawed 11:18
`flow 18:20
`focuses 12:3,6
`foregoing 22:5
`forenoon 3:10
`forming 16:1,6
`forward 16:14
`fox 4:4
`further 12:3 22:11
`g
`generally 7:9
`getting 16:25
`give 8:8
`given 20:18
`gives 10:2
`go 6:23 13:5
`going 5:25 6:13,22
`6:23 7:1,2,5 8:14
`8:16 17:9 18:15
`20:1,11,17
`goldstein 4:4
`goodman 7:25 8:1
`9:13,15 15:22
`goodman's 15:20
`granted 6:20
`guess 19:11
`guidance 10:2
`guiding 12:13 13:4
`13:24
`
`h
`happen 8:9
`harper 4:13 5:24
`heard 17:18
`hearing 21:7
`held 3:9
`hello 20:16
`high 7:13
`hold 7:4 19:7
`20:13
`holding 16:22
`honor 5:11,18,21
`6:2,12 9:10 11:8
`12:23 13:21 14:6
`15:1 19:24 20:4,7
`honors 21:13
`hopefully 7:3
`hopes 16:22
`hours 3:9
`i
`il 3:11 4:18
`illinois 22:17
`implications 15:19
`implicitly 11:24
`improvement 12:4
`inaccurate 18:10
`include 11:13,14
`15:15 16:19,21
`19:3
`included 12:1
`includes 10:25
`incorrect 10:12
`index 2:1
`indicated 17:19
`information 20:19
`initial 10:6 11:19
`instance 10:20
`11:2 18:17
`interested 22:14
`
`interface 12:13
`13:4,4,25 14:23
`involved 10:18
`15:9
`ipr 10:18,19 15:6
`ipr's 7:21,22 12:13
`ipr2017-00317
`1:12
`ipr2017-00318
`1:13
`iprbcpc 4:11
`issue 7:6,24 9:13
`10:14 11:21 13:12
`14:22 15:2,5
`18:24
`issues 7:8,11,21
`8:17 19:10,20
`21:8
`items 12:11
`j
`
`j 1:15
`james 1:16
`jason 4:4 5:8
`jeff 4:9 6:7
`judge 1:18 5:4,9
`5:14,19,25 6:4,13
`6:17 7:12,