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`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` ___________________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _________________________
`Valeo North America, Inc. and Valeo
` Embrayages
` Petitioner,
` v.
`Schaeffler Technologies AG & Co. KG
` Patent Owner.
` _______________
` Case IPR2017-00442
` U.S. Patent No. 8,573,374
` _______________
` TELEPHONE CONFERENCE
` April 19, 2017
` _______________
`B E F O R E : JOSIAH COCKS, ESQ.
` MICHAEL KIM, ESQ.
` JAMES MAYBERRY, ESQ.
`
` Reported by: MARY F. BOWMAN, RPR, CRR
` Job No: 122641
`
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`Valeo Exhibit 1116, pg. 1
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` ___________________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _________________________
`Valeo North America, Inc. and Valeo
` Embrayages
` Petitioner,
` v.
`Schaeffler Technologies AG & Co. KG
` Patent Owner.
` _______________
` Case IPR2017-00442
` U.S. Patent No. 8,573,374
` _______________
` TELEPHONE CONFERENCE
` April 19, 2017
` _______________
`B E F O R E : JOSIAH COCKS, ESQ.
` MICHAEL KIM, ESQ.
` JAMES MAYBERRY, ESQ.
`
` Reported by: MARY F. BOWMAN, RPR, CRR
` Job No: 122641
`
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`Valeo Exhibit 1116, pg. 1
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 2
`
` April 19, 2017
` 11:00 a.m.
`
` Telephone conference, held before
` Mary F. Bowman, a Registered Professional
` Reporter, Certified Realtime Reporter, and
` Notary Public of the State of New Jersey.
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`Valeo Exhibit 1116, pg. 2
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 3
`
` APPEARANCES:
`
`On Behalf of Petitioners Valeo North America,
`Inc. and Valeo Embrayages:
`OBLON McCLELLAND MAIER & NEUSTADT
` 1940 Duke Street
` Alexandria, VA 22314
`BY: Lisa Mandrusiak, Esq.
`
`On Behalf of Patent Owner Schaeffler
`Technologies AG & Co.:
`DAVIDSON DAVIDSON & KAPPEL
` 589 Eighth Avenue
` New York, NY 10018
`BY: CARY KAPPEL, ESQ.
` DAVID PETROFF, ESQ.
`
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`Valeo Exhibit 1116, pg. 3
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 4
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` Proceedings - 4/19/17
` (Conference commences)
` JUDGE COCKS: Do we have counsel
` for petitioner on the call?
` MS. MANDRUSIAK: Yes, Lisa
` Mandrusiak from Oblon representing
` petitioner.
` JUDGE COCKS: And do we have
` counsel for patent owner?
` MR. KAPPEL: Yes, Cary Kappel and
` David Petroff for patent owner.
` JUDGE COCKS: Thank you.
` Who arranged for the court
` reporter?
` MS. MANDRUSIAK: Petitioner did.
` JUDGE COCKS: All right, if you
` would file a transcript of the call as
` an exhibit when it becomes available.
` MS. MANDRUSIAK: Yes, we will.
` JUDGE COCKS: Mrs. Mandrusiak, I
` believe you requested the call. Why
` don't you fill us in, what you are
` seeking.
` MS. MANDRUSIAK: Thank you.
` Petitioner is requesting leave to file
`
`Valeo Exhibit 1116, pg. 4
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 5
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` Proceedings - 4/19/17
` a short reply to the patent owner's
` preliminary response under 37 CFR
` 42.108(c).
` I understand the canon of good
` cause and good cause exists here to
` allow a short directed reply because
` patent owner has raised a legal
` argument of first impression that could
` not have been foreseen.
` So to give a bit of background,
` this petition is based on a 119(c) bar
` to priority. Not to the propriety of
` claiming priority under Section 119(a).
` Section 119(c) is intended to
` mirror Article 4-D-4 of the Paris
` convention and it is intended to
` prevent situations, exactly what we
` have here, where Degler, a PTT
` application filed by the patent owner,
` was published eight days before the PTT
` filing date of 374F patent, which is
` the subject of this petition.
` But because Degler's priority
` document was the basis of Degler's
`
`Valeo Exhibit 1116, pg. 5
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 6
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` Proceedings - 4/19/17
` priority claim, it has served as a
` basis for claiming a right to priority
` and thus section 119(c) applies to
` prevent coverage of any identical
` subject matter.
` This, in and of itself, is an
` argument of first impression. We do
` not find any cases either at PTAB or
` any courts applying 119(c) in this
` particular scenario and we found no
` cases since then.
` In fact, patent owner did not
` come up with any cases addressing
` 119(c) either, and as a result, have
` added a new additional legal argument
` combining the requirements of sections
` 119(a) and 119(c).
` So, we would like to file a short
` reply to address this new legal issue
` of whether section 119(a) applies to
` 119(c) and to present arguments against
` the 119(a) case law that patent owner
` relies on in their preliminary
` response.
`
`Valeo Exhibit 1116, pg. 6
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 7
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` Proceedings - 4/19/17
` MR. KAPPEL: I would like the
` opportunity to respond.
` MS. MANDRUSIAK: I am not quite
` finished, please, your Honor.
` JUDGE COCKS: OK, go ahead.
` MS. MANDRUSIAK: Thank you. I
` just want to point out we could not
` have foreseen that patent owner would
` make these arguments because the
` situation set forth in the petition
` does not implicate section 119(a) at
` all. Section 119(a) is directed to the
` benefit of priority of foreign
` applications filed within 12 months.
` But 119(c) serves a important
` purpose totally separate from 119(a)
` preventing two patents from being
` issued that are directed to the same
` subject matter and is notably without
` this 12-month limitation.
` Thus, we cannot reasonably
` anticipate that patent owner would
` attempt to rely on case law that
` addresses only on 119(a) in this 119(c)
`
`Valeo Exhibit 1116, pg. 7
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 8
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` Proceedings - 4/19/17
` scenario.
` The whole point is this 374
` patent cannot claim the same material
` is as ultimately claimed in the U.S.
` counterpart of Degler and applying
` 119(c) prevents this from happening.
` JUDGE COCKS: Just so I
` understand, in your petition, you had
` addressed issues surrounding 119(c) --
` MS. MANDRUSIAK: Yes.
` JUDGE COCKS: -- but you are
` saying that the matter -- that new
` matter of legal impression that you had
` not anticipated to deal with 119(a), is
` that it in a nutshell?
` MS. MANDRUSIAK: That is it in a
` nutshell, yes.
` JUDGE COCKS: Mr. Kappel, why
` don't you go ahead. What is your take?
` MR. KAPPEL: Quite simply, the
` entire basis of their petition is that
` the Degler priority application would
` have been a first filed application and
` that we, therefore, should have claimed
`
`Valeo Exhibit 1116, pg. 8
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 9
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` Proceedings - 4/19/17
` priority to it or we would not have had
` a basis under 102(a).
` Petitioner, in their petition,
` did not cite single case in support of
` their proposition which was that even
` in a case where there are no common
` inventors, 102 -- 119(c) applies.
` This is not an issue of first
` impression. We cited settled case law,
` Vogel, CCTA, 1973, Boston Scientific,
` Fed Circuit 2007, and even the MPEP,
` all of which clearly state that the
` existence of a foreign -- of an
` application with different
` inventorship, even though owned by the
` same company, is irrelevant to this
` issue, and in fact, Vogel is really
` indistinguishable from this case.
` Breaking down their argument,
` they say this is a legal issue of first
` legal impression from 119(c). Well, in
` that case, they should have put that
` evidence into their petition. And if
` their argument is they did not foresee
`
`Valeo Exhibit 1116, pg. 9
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 10
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` Proceedings - 4/19/17
` us arguing about 119(a) -- and honestly
` I don't see how you can parse 119(a)
` from 119(c) in this way and I don't
` think that they clearly do that in
` their petition anyway -- then they
` should have addressed Vogel and Boston
` Scientific and the MPEP.
` What they have done is filed a
` petitions, cited no case law, no
` support on the issue, on the primary
` issue here which is their contention
` that merely by co-ownership, we are
` barred by our priority. They cited
` nothing. They waited for patent owner
` to cite the relevant and settled case
` law and now they seek a reply.
` That, to me, is not good cause.
` That argument should have been made in
` their petition, and in this case, we
` would be prejudiced because now they
` are going to essentially get to put, in
` the first instance, the arguments they
` should have made in their petition in
` reply to which we are not going to have
`
`Valeo Exhibit 1116, pg. 10
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 11
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` Proceedings - 4/19/17
` an opportunity to respond.
` So we oppose the request for
` reply. To the extent they have
` authority, they could have and should
` have cited it in the, in their
` petition.
` We did not cite any issue of
` first impression in our preliminary
` response. We cited settled law that
` has been settled since the 1970s.
` So in our view, there is no
` grounds for reply in this case.
` JUDGE COCKS: I understand your
` petition.
` Ms. Mandrusiak -- I am going to
` confer with my colleagues, but
` Ms. Mandrusiak, do you have a response?
` MS. MANDRUSIAK: Yes, I would
` like to point out that the settled law
` that they are referring to only ever
` addresses section 119(a). So to the
` extent their argument indistinguishable
` from that situation, that is simply not
` true, and we never have tried to
`
`Valeo Exhibit 1116, pg. 11
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 12
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` Proceedings - 4/19/17
` characterize the argument that Degler
` could have served as a priority
` document for the 374 patent. As they
` note, there is no common inventor, so
` that would be a moot point and it is
` outside of the 12-month window, so
` Degler could never serve as priority
` under 119(a), but that's not the point.
` The 374 patent has valid patent
` if to other subject matter as long as
` subject matter is not also claimed by
` U.S. counterpart of the 374
` application.
` And I would like to point out, we
` can make our argument in, you know,
` very small number of pages, three to
` five pages, and if patent owner feels
` that they require a surreply to our
` reply, we have no objection to that.
` JUDGE COCKS: Before I confer,
` just so we have everything down, what
` exactly are you asking -- how many
` pages are you asking pour and how much
` time are you asking for?
`
`Valeo Exhibit 1116, pg. 12
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 13
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` Proceedings - 4/19/17
` MS. MANDRUSIAK: We could do it
` in five pages within one week.
` JUDGE COCKS: OK.
` Mr. Kappel, if we were to permit
` this filing and also permit a reply
` from you, would you have objection in
` that case or would you -- do you
` maintain your objection to any reply?
` MR. KAPPEL: We object to any
` reply in this case. Their burden is to
` establish the existence of prior art in
` the petition. They have not done so.
` And they should not have the
` opportunity to now cite new authority
` that they should have cited in their
` petition.
` If the board is inclined to give
` them a reply, then we certainly would
` request, in all fairness, to have a
` surreply of equal length just as we
` would have had in the -- as we should
` have been able to do in the preliminary
` response.
` But our view, there is really no
`
`Valeo Exhibit 1116, pg. 13
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 14
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` Proceedings - 4/19/17
` basis for reply here. The argument is
` that the 102(c) argument, which we
` didn't even address, they allege, they
` should have made that in the petition.
` And the 102 -- and the case law we
` cited, again, I don't see how it is,
` can be distinguished. I think it is
` directly on point.
` JUDGE COCKS: Just so I
` understand, it is your position that
` issues surrounding 119(a), the
` petitioner should have anticipated
` having to address those and/or the case
` law that you cited before?
` MR. KAPPEL: Yes. The case law I
` cited is exactly the situation at hand
` here.
` JUDGE COCKS: OK.
` MR. KAPPEL: As far as I could
` say and this is settled case law, and
` they should have addressed it in their
` petition. And if there was no -- if a
` case of first impression on 119(c) and
` they have got some peculiar argument
`
`Valeo Exhibit 1116, pg. 14
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 15
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` Proceedings - 4/19/17
` that parses 119(A) apart from 119(c),
` then they should have made that in
` their petition so that we could have
` responded with the proper page limits
` that we had in, you know, in our
` preliminary response, and now we are
` stuck with a one-week time period to
` whatever this new legal argument they
` have got and we get five pages when,
` you know, we would have been able to
` respond fully in our preliminary
` response.
` This is all foreseeable. None of
` this is a recent case law or cases that
` just came out. This is in the MPEP for
` probably 30 years and this is 30-year
` old case law and 2007 Federal Circuit.
` JUDGE COCKS: Thank you. I think
` I have heard what I need to. If the
` parties stay on the call I will confer
` with my colleagues and we will
` determine how to proceed. Stay on the
` call.
` (Pause)
`
`Valeo Exhibit 1116, pg. 15
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 16
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` Proceedings - 4/19/17
` JUDGE COCKS: Hello, this is
` Judge Cocks. Ms. Mandrusiak, are you
` still on the call?
` MS. MANDRUSIAK: Yes, I am.
` JUDGE COCKS: Mr. Kappel, are you
` still on the call?
` MR. KAPPEL: Yes, I am.
` JUDGE COCKS: So we have
` conferred and I will be honest, the
` panel is a little bit intrigued about
` the distinction that has been raised,
` that you are raising, Ms. Mandrusiak,
` between 119(a) and (c), what the legal
` argument there is.
` So because we are so early into
` the period in which we have to decide
` whether to institute trial, we are in
` favor of granting a short reply.
` We are going to permit three
` pages due one week from now. That
` would be due by the 26th of April, and
` Mr. Kappel, we were also going to
` permit you to file a three-page
` response to that filing which will be
`
`Valeo Exhibit 1116, pg. 16
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 17
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` Proceedings - 4/19/17
` due one week from whenever it is filed,
` ostensibly on the 26th. But if it is
` filed earlier, you will have one week
` from that period to address whatever
` the argument that's being made.
` MS. MANDRUSIAK: Thank you, your
` Honor.
` MR. KAPPEL: Thank you.
` JUDGE COCKS: Anything else to
` address on this call today?
` MS. MANDRUSIAK: Not on our end,
` thank you.
` MR. KAPPEL: No, your Honor.
` JUDGE COCKS: We will generate a
` short order indicating what we have
` just permitted in terms of filing.
` MS. MANDRUSIAK: Thank you.
` JUDGE COCKS: Please file a
` transcript of the call when it becomes
` available.
` MS. MANDRUSIAK: Yes.
` JUDGE COCKS: With nothing else,
` this call is adjourned.
` - - - -
`
`Valeo Exhibit 1116, pg. 17
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
`
`Page 18
`
` Proceedings - 4/19/17
`
` CERTIFICATE
`
` I, MARY F. BOWMAN, a Registered
` Professional Reporter, Certified
` Realtime Reporter, and Notary Public do
` hereby certify:
` The foregoing is a true record of
` the testimony given by in these
` proceedings.
` I further certify that I am not
` related to any of the parties to this
` action by blood or marriage and that I
` am in no way interested in the outcome
` of this matter.
` In witness whereof, I have
` hereunto set my hand this 1st day of
` May, 2017.
`
` __________________________
` MARY F. BOWMAN, RPR, CRR
`
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`Valeo Exhibit 1116, pg. 18
`Valeo vs. Schaeffler
`IPR2017-00442
`
`
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