`
`PTAB-IPR 2018-00410
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`~~~~~~~~~~~~~~~~~~~~
`
` In Re:
`
`CANON, INC., et al.,
`
`vs.
`
`PAPST LICENSING GmbH & CO. KG.
`
`~~~~~~~~~~~~~~~~~~~~
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`Telephonic Conference Call
`
`January 9, 2018
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`11:00 a.m.
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`Veritext Legal Solutions
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`www.veritext.com
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`888-391-3376
`Exhibit 2013
`IPR2017-00415
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`1
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`10
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`1 JUDGE BISK: Before we move on to
`2 the other parties that are on the line, can I
`3 ask you a question? I have a couple lingering
`4 questions about the ZTE settlement.
`5 One question I have is there's
`6 another case, 2017-00713, involving ZTE and the
`7 same claim for the same patent, or substantive
`8 claims at least, but I haven't seen any motion
`9 to terminate or request for a motion to
`10 terminate in that case. So can you just update
`11 me on what is going on with that case?
`12 MR. DONAHUE: Your Honor, I'm glad
`13 that you brought that to my attention. There
`14 should be a request to terminate that. There's
`15 a different law firm that's handling that IPR.
`16 I will alert them immediately that they need to
`17 contact the Board and notify them of their
`18 desire to file a motion to terminate and also
`19 get permission from the Board to do so.
`20 JUDGE BISK: Okay. Thank you.
`21 That's kind of what we were figuring. I just
`22 wanted to make sure.
`23 And while we're talking about those
`24 cases, that set of cases, there's one more case,
`25 IPR2017-00714. That's the same patent as
`
`1 APPEARANCES:
`
`23
`
`Judge Bisk
`4 Judge Chang
`5 Judge Quinn
`6 Greg Donahue, Esq.
`7 David M. Maiorana, Esq.
`8 Mark Blackman, Esq.
`9 Mark Ungerman, Esq.
`10
`11 ~ ~ ~ ~ ~
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
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`24
`25
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`Page 3
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`Page 5
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`1 JUDGE BISK: Good morning. This is
`2 Judge Bisk, and I have Judges Quinn and Chang on
`3 the line with me.
`4 Can we do a roll call for who is on
`5 the line, starting with the patent owner?
`6 MR. DONAHUE: Hi, Your Honor. This
`7 is Greg Donahue for patent owner, Papst
`8 Licensing.
`9 JUDGE BISK: Okay. Thank you.
`10 And then let's do -- let's go with
`11 ZTE. Is ZTE on the phone? We don't have any
`12 representative for ZTE, who is the current -- I
`13 believe the only petitioner left in 2017-00415.
`14 MR. DONAHUE: That's right, Your
`15 Honor. This is Greg Donahue, for patent owner,
`16 speaking. That's the only one left. I think I
`17 remember seeing an e-mail suggesting they don't
`18 have a dog in this fight and they may not have
`19 anyone that attends. I'm not sure.
`20 JUDGE BISK: Okay. I noticed that
`21 the motion to terminate as to ZTE came in
`22 yesterday, is that correct, for the 415 case?
`23 MR. DONAHUE: Yes, Your Honor. I
`24 believe it came in for two cases, including the
`25 415.
`
`1 2017-00443. It looks like that case is going to
`2 continue, the 714 case. I believe Samsung is
`3 still a petitioner in that case.
`4 MR. DONAHUE: Your Honor, this is,
`5 again, Greg Donahue for patent owner. I believe
`6 that one, unlike the case that we may be talking
`7 about here, Olympus and Samsung both joined that
`8 proceeding --
`9 JUDGE BISK: Okay.
`10 MR. DONAHUE: -- in a timely
`11 fashion, and, therefore, because Samsung has not
`12 settled that one, I think that one is
`13 continuing.
`14 MS. BEYER: Your Honor, this is
`15 Carrie Beyer on behalf of the Samsung
`16 petitioner. He's correct. Samsung filed a
`17 motion for joinder and was joined into
`18 IPR2017-00714, and that one is continuing.
`19 JUDGE BISK: Okay. Thank you.
`20 We have on our schedule that there's
`21 a hearing in February, so I think the only --
`22 well, 714 is the only one that has right now a
`23 request for oral hearing in that case. Is that
`24 true, that we still want to have an oral hearing
`25 in that case?
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`1 MR. DONAHUE: So if that's the 714
`2 proceeding that involves the '399 patent, again,
`3 that's a different law firm that is handling
`4 that.
`5 JUDGE BISK: Oh, I see.
`6 MR. DONAHUE: If they filed a
`7 request, I'm sure that means that they wanted to
`8 have a hearing in that one.
`9 JUDGE BISK: Okay. Thank you.
`10 Well, we don't have to talk about that anymore.
`11 We can deal with that separately.
`12 All right. So let's find out who's
`13 on the line who are not parties right now to the
`14 415 case but are in the newly filed case -- I
`15 can't remember what it is -- 2018-00410. Who do
`16 we have on the line just for that?
`17 MR. MAIORANA: Good morning, Your
`18 Honor. This is David Maiorana. I represent the
`19 Canon petitioners in the 410 IPR and have been
`20 of record in a number of these other ones
`21 relating to Papst, and we've been before you in
`22 oral hearing a few months ago as well.
`23 JUDGE BISK: Okay. Anyone else? It
`24 sounded like Samsung. Are you also involved in
`25 the 410 case?
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`Page 8
`1 MR. DONAHUE: Yes, Your Honor, we
`2 could do that.
`3 JUDGE BISK: Okay. Thank you.
`4 So let's get to the actual reason
`5 we're on the call here, which is, I believe,
`6 Mr. Maiorana, you wanted to talk about perhaps
`7 filing a reply brief in the 415 case?
`8 MR. MAIORANA: Yes. Thank you, Your
`9 Honor. We have filed IPR2018-00410, as you
`10 mentioned, and along with that, a motion to join
`11 the 410 to the 415. And those two numbers are
`12 so close together, I know I'm going to say them
`13 backwards.
`14 JUDGE BISK: Yes. It's hard to keep
`15 track of all the numbers.
`16 MR. MAIORANA: But right now pending
`17 in the 410 IPR is a motion for joinder and a
`18 motion to waive the rules because we filed our
`19 motion for joinder outside of the one-month
`20 period.
`21 JUDGE BISK: Okay. Now, I think I
`22 know the answer to my next question, but I just
`23 want to be sure. In the 410 case, is that case
`24 time barred if it isn't joined, if you're not
`25 joined to the 415 case? Can it stand on its
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`Page 7
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`Page 9
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`1 MS. BEYER: Yes, we are.
`2 JUDGE BISK: Okay.
`3 MR. BLACKMAN: Good morning, Your
`4 Honor. Mark Blackman is also on the line on
`5 behalf of the Nikon petitioners.
`6 JUDGE BISK: Okay. Thank you.
`7 MR. UNGERMAN: Mark Ungerman, on
`8 behalf of Sanyo as petitioner.
`9 JUDGE BISK: Okay. Thank you.
`10 Do we have a court reporter on the
`11 phone?
`12 THE COURT REPORTER: Yes. Renee
`13 Pellegrino.
`14 JUDGE BISK: Can whoever arranged
`15 for the court reporter arrange to have the
`16 transcript uploaded as an exhibit?
`17 MR. MAIORANA: Yes, we will, Your
`18 Honor. This is David Maiorana.
`19 JUDGE BISK: Actually, the only
`20 problem with that is that currently -- I guess
`21 you would upload it in the 410 case because you
`22 are not a party to the 415 case, so you can't
`23 file. So maybe I could ask the patent owner if
`24 they would file the transcript in the 415 case
`25 for now.
`
`1 own?
`2 MR. MAIORANA: It cannot, Your
`3 Honor, because the original assertion of the
`4 '449 patent against the petitioners was made in
`5 2007 or 2008, depending on the --
`6 JUDGE BISK: Okay. So go ahead.
`7 I'm sorry. I interrupted you, Mr. Maiorana. Go
`8 ahead with why you want to file a reply in the
`9 415 case.
`10 MR. MAIORANA: So, Your Honor, the
`11 current schedule that is in play in the 415 IPR
`12 has a date for petitioner's reply of January
`13 5th, which was last Friday, and so we had tried
`14 to unsuccessfully set up a call, this call,
`15 earlier than January 5th, to get the Court's
`16 guidance on this, but what we're seeking to do
`17 -- because our motion for joinder is pending, we
`18 were seeking to file a contingent reply in the
`19 415 that would then, hopefully, be entered in
`20 the record if the Court was to grant our motion
`21 for joinder, and if not, and the motion for
`22 joinder is denied, then 415 would be terminated
`23 and the reply would be unnecessary and I guess
`24 could be expunged.
`25 So what we want to talk about today
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`1 is a mechanism for how to do that. We met and
`2 conferred with Mr. Donahue about their position
`3 on this, and they not only opposed the joinder
`4 motion, but also the idea of filing a contingent
`5 reply.
`6 What we would propose on today's
`7 call -- and our motivation here, Your Honor, is
`8 to keep the 415 IPR going. It's only a few
`9 months away from decision. And as you can
`10 imagine, the parties that are the petitioners in
`11 the 410 IPR have a significant interest in
`12 seeing the decision issued from the Board on the
`13 415 IPR, given that we've all been defending
`14 that patent for over ten years now.
`15 What we would propose today is to
`16 adjust the schedule in the 415 IPR to allow us
`17 to submit a reply and still allow a time for
`18 opposition from patent owner to the -- I'm
`19 sorry, still allow time for motions for
`20 observation, and all the other due dates that
`21 come after that, without changing or adjusting
`22 the oral argument date, which is currently
`23 February 13.
`24 We gave Mr. Donahue a heads-up on
`25 our call yesterday that we were going to be
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`Page 12
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`1 note that the original reply brief deadline for
`2 this proceeding was actually November 17th,
`3 2017, which was almost, I guess, two months ago.
`4 The patent owner and the original petitioners
`5 had worked together to continue to move that
`6 date back because they were finalizing
`7 settlement agreements and didn't want to incur
`8 costs and time -- spend time associated with
`9 reply briefing and depositions and whatever else
`10 went into the motion and briefing practice, and
`11 so the schedule got condensed on the back end to
`12 an unworkable schedule. That was done because
`13 it was irrelevant because the expectation was
`14 that all the parties that were in the
`15 proceeding, properly joined Olympus, timely
`16 joined Olympus, and the original petitioners,
`17 all were settling out and the expectation was
`18 that there was going to be no proceeding to
`19 continue.
`20 So the idea that we're going to have
`21 a reply brief at this late juncture, with an
`22 oral hearing scheduled now for February 13th,
`23 and condense everything that goes on between a
`24 reply brief and that in the next month I think
`25 is unrealistic, and it also is prejudicial to
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`Page 11
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`Page 13
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`1 proposing a revised schedule that just moves
`2 those dates basically by a couple of weeks or
`3 so, but maintains the February 13th date. So I
`4 can tell you what the dates are we would propose
`5 now or we can come up with another way to
`6 present that to you, but our understanding is
`7 that patent owner would oppose any efforts by
`8 the petitioners in 410 to file any kind of a
`9 contingent reply in 415.
`10 JUDGE BISK: Can I ask a question
`11 about the 410 case? I don't believe that one
`12 has been officially paneled yet. I think we
`13 discussed that last time. Have you received a
`14 notice of filing date yet in that case?
`15 MR. MAIORANA: No, we have not, Your
`16 Honor. We filed that on the 29th of December,
`17 so I think we're still within the window where
`18 we would expect to get a notice of filing date.
`19 JUDGE BISK: Okay. Thanks.
`20 Patent owner, can I get your take on
`21 this?
`22 MR. DONAHUE: Sure.
`23 I guess we'll start with the issue
`24 he just addressed, which is a contingent reply
`25 brief. I think it's important for the Board to
`
`1 the patent owner at this point.
`2 As you probably can imagine, we feel
`3 like the parties that are attempting to join six
`4 months after the joinder deadline -- and they're
`5 alleging that it's because there was some
`6 sweetheart deal given to Olympus to terminate
`7 the IPRs. We think the Board can see for
`8 themselves, by viewing the settlement agreement,
`9 that is not the case. The entire premise for
`10 which they are seeking joinder here is
`11 irrational and also irrelevant.
`12 The settlement agreements, which,
`13 again, I can't say much about because they're
`14 confidential -- the Board can see all of the
`15 settlement agreements between Huawei, LG, ZTE
`16 and the properly joined Olympus and see that all
`17 of them individually, and in the aggregate, are
`18 legitimate settlements that weren't done simply
`19 to get rid of any IPR, and that regardless,
`20 that's really not even the relevant inquiry.
`21 The Board has rules in place for
`22 joinder to avoid this type of prejudice to a
`23 patent owner, the properly joined parties, and
`24 original petitioners, and here we are almost six
`25 months after the joinder deadline.
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`1 Samsung, as you noted earlier in the
`2 call, wanted the petitioners actually joined
`3 right around the same time as the 714 proceeding
`4 with Olympus. There's no reason they couldn't
`5 have done the exact same thing in this
`6 proceeding and joined with Olympus in a timely
`7 manner. They apparently did not do so to avoid
`8 whatever estoppel consequences that come with
`9 joinder, and they're trying now to have it both
`10 ways, where they say we'll avoid estoppel by
`11 staying out and hope the proceeding goes to the
`12 final written decision without us in it, and
`13 then, oh, if everybody is settled out, we'll
`14 just seek late joinder, allege that the
`15 settlements are a sham, without admittedly ever
`16 even seeing them, and seek opportunity to join
`17 late. And I think this would be, you know, a
`18 dangerous precedence for the Board to set to
`19 allow that.
`20 So for all those reasons, we object
`21 to all of this, including any type of a
`22 contingent reply brief that would potentially --
`23 you know, the public could see that would
`24 insinuate the patent is invalid or that the
`25 Board could see that could influence it in other
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`Page 15
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`1 proceedings. So we object to really all of
`2 this.
`3 JUDGE BISK: I just want to point
`4 out, before anyone else says anything, one of my
`5 panel members has brought up a good point to me,
`6 which is that technically ZTE is still part of
`7 the 415 case and, apparently, we do not have
`8 them on the phone. Nobody indicated to us from
`9 ZTE that they didn't care about this call. So
`10 I'm feeling a little bit like we might be having
`11 an ex-parte conversation here, since we don't
`12 have any representative for the current
`13 petitioner on the 415 case. In general, that's
`14 just making me think that we should -- for the
`15 410 case, we'll deny any extra filings into the
`16 415 case for now. I just don't think it's
`17 appropriate to really even be discussing that
`18 case without the petitioner and with parties who
`19 are not a party of that case yet. So we're
`20 going to deny that request.
`21 I guess I'd like to adjourn the
`22 call, unless anyone has anything they think they
`23 can say that's not problematic.
`24 MR. MAIORANA: I don't know if this
`25 would be problematic, Your Honor, but just to
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`Page 16
`1 address the procedural point, we gave notice to
`2 ZTE's counsel that this call was happening and
`3 they chose not to attend. I guess I'm not sure
`4 that we should be prejudiced by that. It's
`5 their choice not to attend. They can't come in
`6 later and complain that they weren't part of
`7 this call, because they were given notice and
`8 opportunity to join it, but I do understand what
`9 Your Honor is saying.
`10 I guess what is left -- I just heard
`11 Mr. Donahue make substantive arguments about the
`12 joinder issue, and I wasn't going to address
`13 them on the call because we were talking about
`14 the contingent reply, but if Your Honor would
`15 like to hear from the petitioners on our view on
`16 joinder, obviously you have the written papers
`17 and there's a time frame for those to be
`18 considered by the Board.
`19 One issue is that the joinder motion
`20 briefing schedule is going to bump up against
`21 the current oral argument date in 415. So we
`22 would ask the Board to consider that perhaps an
`23 expedited briefing schedule would be useful to
`24 get that joinder motion fully briefed in advance
`25 of the February 13th date. In the event that
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`Page 17
`1 the Board does grant joinder, we would seek to
`2 participate in the oral hearing, whether it be
`3 on February 13th or some later date at the
`4 board's discretion.
`5 JUDGE BISK: Okay. Hang on. I'm
`6 going to confer with my panel. I will put you
`7 on mute. I can hear you but you won't be able
`8 to hear me.
`9 (Short recess had.)
`10 JUDGE BISK: Okay. This is Judge
`11 Bisk. I'm back. I talked to the panel and we
`12 just don't see a way to accommodate the 410
`13 petitioners in the 415 case in any way that
`14 doesn't prejudice the patent owner, so, again,
`15 we're going to deny that request to file a
`16 contingent reply. The 410 case and the motion
`17 for joinder, that's a separate issue. We'll
`18 take that up, you know, as we're actually
`19 assigned that case.
`20 Unless there's anything else, I
`21 think we are ready to adjourn. Anything from
`22 the patent owner?
`23 MR. DONAHUE: No. I just want to be
`24 clear. So the patent owner still needs to file
`25 a response to the motion for joinder in that
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`1 separate proceeding?
`2 JUDGE BISK: Right. Actually, I
`3 think -- well, I believe that there are two
`4 motions. There's a motion for joinder and a
`5 motion to waive or suspend Rule 122. So I think
`6 that patent owner has a right to at least
`7 respond to the motion for joinder and probably
`8 for the motion to waive the rule as well.
`9 MR. DONAHUE: So those deadlines are
`10 January 29th, 2018. I think the Board indicated
`11 that you've already received -- since you're the
`12 panel that's been assigned the 415, you've
`13 received (inaudible) ZTE the Papst motions to
`14 terminate, so it's at your discretion, I guess,
`15 whether you act on that before we respond to
`16 that. You don't have involvement necessarily in
`17 this other IPR, until you're assigned to it. Is
`18 that correct?
`19 JUDGE BISK: Yes, exactly.
`20 Unless there's anything else, let's
`21 adjourn.
`22 MR. DONAHUE: That's all for patent
`23 owner. Thank you, Your Honor.
`24 (Telephonic conference call adjourned
`25 at 11:22 a.m.)
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`1 CERTIFICATE
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`Page 19
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`2 3 4
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` I, Renee L. Pellegrino, do hereby certify
`5 that as such Reporter I took down in Stenotypy all
`6 of the proceedings had in the foregoing transcript;
`7 that I have transcribed my said Stenotype notes into
`8 typewritten form as appears in the foregoing
`9 transcript; that said transcript is the complete
`10 form of the proceedings had in said cause and
`11 constitutes a true and correct transcript herein.
`12
`13
`14 <%Signature%>
`15 Renee L. Pellegrino,
`16 Notary Public within and for
`17 the State of Ohio
`18
`19 My Commission expires October 12, 2020
`20
`21
`22
`23
`24
`25
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`&
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`& 1:11
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`1
`11:00 1:25
`11:22 18:25
`12 19:19
`122 18:5
`13 10:23
`13th 11:3 12:22
`16:25 17:3
`17th 12:2
`2
`2007 9:5
`2008 9:5
`2017 12:3
`2017-00415 3:13
`2017-00443 5:1
`2017-00713 4:6
`2018 1:24 18:10
`2018-00410 1:1
`6:15
`2020 19:19
`29th 11:16 18:10
`3
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`399 6:2
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`4
`410 6:19,25 7:21
`8:11,17,23 10:11
`11:8,11 15:15
`17:12,16
`415 3:22,25 6:14
`7:22,24 8:7,11,25
`9:9,11,19,22 10:8
`10:13,16 11:9
`15:7,13,16 16:21
`17:13 18:12
`449 9:4
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`5
`5th 9:13,15
`7
`714 5:2,22 6:1
`14:3
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`9
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`9 1:24
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`a
`a.m. 1:25 18:25
`able 17:7
`accommodate
`17:12
`act 18:15
`actual 8:4
`address 16:1,12
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`17:21 18:21
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`ago 6:22 12:3
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`13:12,15
`ahead 9:6,8
`al 1:7
`alert 4:16
`allege 14:14
`alleging 13:5
`allow 10:16,17,19
`14:19
`answer 8:22
`anymore 6:10
`apparently 14:7
`15:7
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`Page 1
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`18:10
`board's 17:4
`brief 8:7 11:25
`12:1,21,24 14:22
`briefed 16:24
`briefing 12:9,10
`16:20,23
`brought 4:13 15:5
`bump 16:20
`c
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`9:14,14 10:7,25
`14:2 15:9,22 16:2
`16:7,13 18:24
`canon 1:7 6:19
`care 15:9
`carrie 5:15
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`4:11,24 5:1,2,3,6
`5:23,25 6:14,14,25
`7:21,22,24 8:7,23
`8:23,25 9:9 11:11
`11:14 13:9 15:7
`15:13,15,16,18,19
`17:13,16,19
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`14:10
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`4:1,20 5:9,19 6:5
`6:9,23 7:2,6,9,14
`7:19 8:3,14,21 9:6
`11:10,19 15:3
`17:5,10,11 18:2,19
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`blackman 2:8 7:3
`7:4
`board 4:17,19
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`13:14,21 14:18,25
`16:18,22 17:1
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`[complain - hopefully]
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`complain 16:6
`complete 19:9
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`18:24
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`10:4 11:9,24
`14:22 16:14 17:16
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`
`e 3:17
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`8:12 10:8,25
`12:18,20 15:20
`16:12,20 17:6,15
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`15:5
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`greg 2:6 3:7,15 5:5
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`11:23 12:3 15:21
`16:3,10 18:14
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`h
`handling 4:15 6:3
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`7:4,18 8:1,9 9:3
`9:10 10:7 11:16
`15:25 16:9,14
`18:23
`hope 14:11
`hopefully 9:19
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`huawei 13:15
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`idea 10:4 12:20
`imagine 10:10
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`immediately 4:16
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`involving 4:6
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`10:13,16 13:19
`18:17
`ipr2017-00714
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`ipr2018-00410 8:9
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`irrational 13:11
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`issue 11:23 16:12
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`issued 10:12
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`j
`january 1:24 9:12
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`5:19 6:5,9,23 7:2
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`8:21 9:6 11:10,19
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`keep 8:14 10:8
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`l 19:4,15
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`line 3:3,5 4:2 6:13
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`
`m 2:7
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`move 4:1 12:5
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`mute 17:7
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`necessarily 18:16
`need 4:16
`needs 17:24
`newly 6:14
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`notary 19:16
`note 12:1
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`o
`object 14:20 15:1
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`ones 6:20
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`16:8
`oppose 11:7
`opposed 10:3
`opposition 10:18
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`outside 8:19
`owner 3:5,7,15 5:5
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`p
`panel 15:5 17:6,11
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`9:4 10:14,18 11:7
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`question 4:3,5
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`ready 17:21
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`representative
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`roll 3:4
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`sanyo 7:8
`saying 16:9
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`schedule 5:20 9:11
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`speaking 3:16
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`t
`take 11:20 17:18
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`5:19 6:9 7:6,9 8:3
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`12:24 13:7 14:17
`15:14,16,22 17:21
`18:3,5,10
`time 8:24 10:17,19
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`written 14:12
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`y
`years 10:14
`yesterday 3:22
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`z
`zte 3:11,11,12,21
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`zte's 16:2
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`timely 5:10 12:15
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`today 9:25 10:15
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`19:6,9,9,11
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`18:3
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`u
`understand 16:8
`understanding
`11:6
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`view 16:15
`viewing 13:8
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