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` UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________________________________
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________________________________
`
` HTC AMERICA, INC.
` Petitioner
` v.
` VIRGINIA INNOVATION SCIENCES, INC.
` Patent Owner
`_________________________________________________
`Case IPR2017-00870 (Patent 7,899,492)
`Case IPR2017-00871 (Patent 8,050,711)
`Case IPR2017-00872 (Patent 9,355,611)
`Case IPR2017-00873 (Patent 9,355,611)
`Case IPR2017-00874 (Patent 8,712,471)
`Case IPR2017-00875 (Patent 9,286,853)
`Case IPR2017-00876 (Patent 8,903,451)
`Case IPR2017-00877 (Patent 8,903,451)
`Case IPR2017-00878 (Patent 8,948,814)
`Case IPR2017-00879 (Patent 9,118,794)
` TELEPHONIC CONFERENCE CALL
` Friday, February 23, 2018
` Reported By: Jackie McKone
` Job No. 138259
`
`TSG Reporting 877-702-9580
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`HTC EXHIBIT 1031
`HTC America, Inc. v. Virginia Innovation Sciences, Inc.
`IPR2017-00870
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`Page 1 of 39
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`APPEARANCES:
`
`For the Petitioner
`
`PAUL HASTINGS
`875 15th Street, N.W.
`Washington, DC 20005
`By: Joseph Palys, Esq.
` Naveen Modi, Esq.
`
`For the Patent Owner
`
`DEVLIN LAW FIRM
`1306 N. Broom Street
`Wilmington, Delaware 19806
`By: James Lennon, Esq,
` Srikant Cheruvu, Esq.
`
`PTAB: Judge Brian McNamara, Judge Christa Zado,
`Judge Jameson Lee, Judge Trevor Jefferson
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` CONFERENCE CALL
` P R O C E E D I N G S
` The following is the telephonic conference
`call commencing at 2:03 p.m. on February 23, 2018.
` * * *
` JUDGE McNAMARA: I would like, as the court
`reporter has asked, whenever you are -- whenever
`anyone is speaking, I would very much appreciate
`it if you could identify yourself, and please
`avoid interrupting each other. These are always
`difficult to conduct these kind of conferences in
`this kind of environment, but it's helpful if you
`let someone finish what they are going to say and
`then respond to it, and I will try to accommodate
`everybody so that they get enough time to deal
`with all the particular issues. Okay?
` Let's begin with the petitioner. I think
`you're the one who requested this conference; is
`that correct?
` MR. PALYS: Yes Your Honor. Thank you.
` JUDGE McNAMARA: Give me the issues that
`you want to talk about here.
` MR. PALYS: Yes. Absolutely. Good
`afternoon. Sorry to bug you on a Friday
`afternoon, but there's several issues we would
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` CONFERENCE CALL
`like to discuss as laid out generally in our
`e-mail.
` JUDGE McNAMARA: They make us work on
`Friday anyway.
` MR. PALYS: I apologize for setting it for
`a Friday anyway.
` Moving forward, in a nutshell Your Honor,
`the petitioner would like to cross examine patent
`owner's declarants in accordance with the rules
`and routine discovery, which as everyone knows
`requires patent owner's declarants be made
`variables for cross examination.
` There are really four categories I'd like
`to touch on today.
` The first relates to Chinese citizens who
`are declarants for patent owner who we understand
`that patent owner will not make available for
`deposition in United States during petitioner's
`discovery period.
` The second relates to patent owner's
`preliminary response to declarants. The third
`relates to interpreter issues, and the fourth
`relates to the declarants that patent owner will
`make available but only for a limited time.
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` So what I'd like to do Your Honor, of
`course we'll proceed as the Board wants us to, but
`I think the first issue is going to take up most
`of the time so I'll walking through that issue,
`and if you like, I can stop and we can hear from
`the Board and the patent owner on this issues, and
`then we can proceed.
` JUDGE McNAMARA: Please repeat the third
`issue you want to talk about.
` MR. PALYS: Interpreter issues for
`non-English depositions.
` JUDGE McNAMARA: Okay. Proceed them.
`Let's start with, what, I guess the Chinese
`citizens.
` MR. PALYS: That's right.
` JUDGE McNAMARA: Let me interrupt again.
`As I understand, the Chinese citizens are the
`inventors; is that correct?
` MR. PALYS: That's correct. Well, actually
`no Your Honor. Let me give you a background on
`these three witnesses.
` There are three Chinese citizens declarants
`that are at issue with respect to availability in
`the United States. Two of them are named
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`defendants. I'll give the names for the record.
`Ronald Wang, W-A-N-G, and the second witness is --
`I believe it's pronounced Ximing, I'll spell it
`for the court reporter, X-I-M-I-N-G, last name
`W-A-N-G. Those are two named inventors for the
`patents at issue. The third declarant is what we
`believe has been identified as the former attorney
`of these named declarants, and that attorney's
`name is Baigeng Jiang. I'll spell it for the
`court reporter, B-A-I-G-E-N-G, last name,
`J-I-A-N-G. So you've got to inventors and the
`former attorney with respect to this issue Your
`Honor.
` Now, as I mentioned, patent owner informed
`us that for these witnesses they will not be made
`available in the United States for a deposition in
`accordance with the rules. As we understand,
`patent owner's reasons for the limited
`availability for these witnesses are as follows.
`With respect to the former attorney, that's Mr.
`Jiang, we understand that he is not -- he will not
`be in the United States until June. That's coming
`from e-mail correspondence from patent owner.
` With respect to Ronald Wang, we understand
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`from patent owner that he has no availability for
`an in-person deposition in the United States, and
`the reason that we were informed was because he is
`scheduled to meet with Chinese government
`officials in connection with wireless
`infrastructure for the 2022 Winter Olympics, and
`we were told the meetings cannot be rescheduled.
`We don't know, and we'll let patent owner comment
`on this, why the meetings will take 30 consecutive
`days in March, but that's an issue with respect to
`that gentleman.
` The third one with respect to Ximing Wang
`we understand from patent owner he is not
`available for an in-person deposition in the
`United States because he is in his late 70s and
`unable to travel internationally.
` We've had several correspondence since
`February 1st with patent owner trying to get
`through the issues around meet and confer, and the
`offer from patent owner's is as follows: For all
`three of the witnesses, patent owner is offering
`to make these individuals available for an
`in-person deposition in China or by video in
`China, and with respect to Ronald Wang and Ximing
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`Wang, they indicated they would look into making
`them available for deposition at the US embassy in
`Beijing.
` With that background Your Honor, our
`response is as follows: We believe that patent
`owner's offers with respect to these witness with
`unacceptable and prejudicial to the petitioner.
`The rule is that the deposition is to be taken in
`the United States, and as we understand with
`respect to their offer of offering the witnesses
`in China, we understand that China prohibits
`depositions for use in foreign courts such as the
`PTAB here. We assumed the did their homework when
`they made their Chinese citizens' direct testimony
`available in this proceeding and making them
`available for deposition and cross examination in
`these proceedings. As we understand from poking
`around the US Department of State's website, we
`believe it's clear that it's not -- actually I can
`read from it to make it clear. We understand that
`they are saying China does not permit attorneys to
`take depositions in China for use in foreign
`courts. You have to go through essential
`authority, get approval, permission, and that's
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`only through a case-by-case basis. From the
`website, they are saying that the Department of
`State will not authorize the involvement of
`counsel or personnel in the deposition without
`that permission. Participation could result in
`the arrest or deportation of the American
`attorneys or other participants, which I don't
`want to be subject to nor doe anyone on this call
`wants to.
` With respect to their offer of video
`deposition, that's a really nonstarter for us Your
`Honor. We believe petitioner is entitled to cross
`examine these witnesses in person, and especially
`since there are interpreter issues, and documents,
`et cetera, we think it will be highly prejudicial
`to force petitioner to do a video deposition, and
`that's not notwithstanding the fact that even
`doing a video deposition in China -- if that's
`even allowed.
` JUDGE McNAMARA: I was going to ask that
`question. Based on what you just read to me, has
`anyone done any research? It sounds like that
`wouldn't be any more permitted under Chinese
`practice than taking a deposition there.
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` MR. PALYS: That's our understanding right
`now Your Honor. Again, it's the patent owner's
`presented the witnesses to show if they are going
`to offer that option, we'll go through them in a
`second, that that would be feasible.
` There's also an issue of timing Your Honor.
`Given that's on the other side of the world to get
`the deposition to happen in China, assuming it's
`allowed, that precludes the parties from any
`access were something to arise during a deposition
`given the time difference.
` So what are we asking for the relief? We
`are asking the Board with respect to this issues,
`as to these three witnesses, we're asking the
`Board the following: We would like an order to
`the patent owner to bring declarants for cross
`examination in the United States within
`petitioner's discovery time period, and it doesn't
`overlap with the limited availability, that I'm
`going to touch on at the end of this call. We
`believe, as I mentioned, videotaped deposition
`will be prejudicial for the reasons discussed, and
`actually Your Honor, this is brought up in a Board
`decision. Let me point that out, IPR 2014-01198.
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`That's Paper 30. There was a similar issues with
`respect to a French citizen, and there was a
`blocking statute involved in that case and this
`issue of having a videotape option versus the
`in-person was discussed and there was discussion
`on it, the prejudicial nature of forcing a
`videotaped deposition.
` Now -- that's the first form of relief.
` Now, if patent owner refuses to produce
`these witnesses in the United States within the
`discovery time period, we're asking the Board to
`exclude the direct testimony or give it no weight
`consistent with the guidance in that one case that
`I just mentioned. Because that was also discussed
`in that case.
` Third, if petitioner is forced to go
`outside the United States and wherever the
`suitable location may be, assuming it's feasible,
`we ask that patent owner pay for the reasonable
`travel cost and lodging for the attorneys to
`conduct the depositions within the discovery time
`period.
` Your Honor this isn't a new issue. This
`was discussed in another decision, IPR 2016-01444.
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`That's Paper 41, and the Board in that decision
`cites rule 42353 G point out that patent owner has
`the proponent of the direct testimony should bear
`all costs associated with that testimony or costs
`for making that witness available for cross
`examination.
` We pointed this out to patent owner, and
`they have informed us that they refuse to pay for
`that even if there's an agreement to having a
`deposition outside the United States. They are
`not willing to pay for those costs.
` I think basically that's -- let me stop
`there Your Honor. That's the first issue. I know
`I've been talking for a while, and I'll let you
`chime in and let patent owner respond.
` JUDGE McNAMARA: That's a good idea before
`we move onto the other issues with respect to the
`witnesses we're having trouble with. Let's deal
`with these three declarants and -- because the
`issue is their foreign location and that sort of
`thing.
` Let me hear from the patent owner. What do
`you have to say about all of this? It seems like
`it's a bit of an issue.
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` As I recall, and I have not spent a great
`deal of time looking at the patent owner response,
`but as I recall, it's a very significant part of
`your argument here is that you're going to try and
`antedate the references with the testimony of the
`witnesses. It seems like the it's incumbent on
`you to find a way to solve this problem.
` MR. LENNON: Thank you Your Honor. This is
`Jim Lennon for patent owner, and you're correct
`Your Honor that this issue related to antedating
`one particular prior art reference. So there are
`three inventors, and two of the inventors just the
`fact is we're told are not available to come to
`the United States. One is available for
`deposition within the United States. We could
`have just submitted the declaration of that one
`inventor and had that inventor come to corroborate
`the document or evidence that supports the
`antedating of the one reference. Out of prudence,
`it's prudent for everyone involved so we just
`included the materials from all of the inventors.
`So we have it from all the inventors.
` You'll notice that the declaration of
`Tiejun Wong, this is Exhibit 2041, it is in
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`essence the same declaration, I mean, it's -- the
`information is the same as the declaration of what
`patent referred to the person patent referred to
`as Ronald Wong. His Chinese name is Tiejun,
`T-I-E-J-U-N, Wong. So their father is Mr. Ximing
`Wong. His deposition is shorter -- sorry, his
`declaration is shorter. The reason being he
`wasn't present at the meeting with the lawyer in
`the United States. So the lawyer and these
`inventors basically they are submitting the
`testimony just to show the date for the document
`that's -- that they can corroborate the date of
`the document that establishes their date of
`conception before the primary reference. It's not
`offered for technical subject matter on the merits
`of the question of invalidity. It's offered for
`that limited purpose.
` The Board obviously follows the rules of
`federal evidence by and large, and the rules of
`federal evidence allow for considering the reasons
`for and the relative importance of a particular
`issue to the case. Here we have a very narrow
`question of whether or not the corroborative
`evidence can be dated, and so we just ask that the
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`Board evaluate -- wait to make a decision on
`whether or not it will consider these declarations
`from these two Chinese citizen declarants.
` It's a moot issue for us really, but wait
`to consider whether you're going to strike those
`or not consider those declarations until you
`evaluate the case on the merits.
` Ultimately if our date -- whether it's
`because Tiejun Wong's declaration and deposition
`are persuasive to the Board or whatever reason, if
`ultimately the Board agrees with us, this is all a
`moot point, but whatever the ultimate decision, we
`can't change the fact that the witnesses tell us
`they are unavailable to come to the United States,
`the two declarants, but the one declarant is
`available, and she's offered the same testimony as
`her brother and father.
` JUDGE McNAMARA: Okay Counsel. I
`understand your notion that we should wait and
`see, but unlike in district court, we're operating
`under a statutory deadline here, and so waiting to
`see becomes somewhat -- I want to point out to you
`that that becomes somewhat problematical because
`we are -- we don't generally expend proceedings
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`like this. So --
` MR. LENNON: Your Honor, let me clarify
`what I meant by that. I don't mean to suggest
`that you wait and see whether the depositions
`should be ordered to go forward. The fact of the
`matter is our witnesses tell us they are
`unavailable to come to depositions in the United
`States. If we are to proceed with depositions in
`China, which it sounds to me like because of
`practical pragmatic reasons patent owner doesn't
`want to pursue that as an option, I don't know
`that there's an absolute prohibition, but I'm not
`going to disagree that it's a difficult thing to
`do to schedule and carry out a deposition in
`China, but ultimately if we get to the Board
`having to evaluate the merits of the petition, our
`response, and the depositions didn't go forward,
`what I'm really suggesting you wait and see,
`decide then whether you're going to evaluate the
`declarations, and we're not -- and you might say
`it's a moot point because for this one declaration
`for Tiejun Wong we did get deposition testimony
`and we're persuaded that sufficiently corroborates
`the document or evidence that supports the data
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`conception that it reference, and you may say and
`it's corroborated by these other declarations that
`we don't have any reason to believe there's other
`declarations that would subject otherwise.
` JUDGE McNAMARA: I understand, but I can
`think of a myriad of questions that I would want
`to ask of the corroborating witness, and we're not
`going to have a opportunity to have those
`questions asked and answered. I mean, for all
`practical purposes here, if the -- it sounds like
`the witnesses in China are not going to be
`available, they are not -- they have either other
`commitments, or they have other perhaps medical
`issues and that sort of thing so they are not
`going to be available, and it sounds like from
`what I'm hearing that all other practical options,
`unless you were to take them to Israel, or Viet
`Nam, or someplace else, you wouldn't do that
`unless you couldn't get them into the United
`States. So that doesn't sound like we're going to
`be able to take the depositions in China either.
` So effectively what's happening is that the
`depositions won't be taken of those corroborating
`witnesses in which case we would almost certainly
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`exclude the declarations. So you understand that
`risk.
` You still have one witness who will testify
`based on -- and answer questions based on what was
`in that declaration, but the problem is that
`whatever questions that person is asked we will
`not be able to have another witness who can
`corroborate what happened, or what was said, or
`what was done during the meeting and that sort of
`thing, and so it's -- you know, it does present a
`problem for you.
` MR. LENNON: I get that Your Honor. I
`think that this is a unique problem of the Board
`having its mandate and not having the luxury of
`the full scope of federal civil procedure to work
`with; right? That's part of reason why there
`aren't as many issues to get resolved from the
`Board. I think it's an unusual circumstance.
` We have foreign inventors who are entitled
`to petition the United States for patent rights,
`they have been awarded patent rights, and they are
`having patent rights being threatened to be taken
`away from them if they come to the United States
`and give deposition testimony that is already
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`being corroborated.
` So if we end up in a situation where our
`available US witness declarant inventor
`corroborates documentary evidence and it's
`discounted because there isn't a second
`corroborative witness, we're -- it's almost like a
`due process for us because at district court we
`would have had Haig Convention rules at our
`disposal or some other way or time to resolve
`this. We're stuck where we are because of the
`unique circumstances of this procedure and the
`rules at our disposal.
` JUDGE McNAMARA: I'm talking about a
`practical reality here. The declaration says X
`and the witness who is going to testify about that
`declaration, which is the same almost as you
`acknowledged before as the other declarations, and
`that witness is going to testify about that.
` So to the extent that the witness is
`corroborating the declaration, that's not --
`there's not a whole lot of help on that issue, and
`so again, it goes down to the weight of this.
` What you said at the very beginning was
`that we should wait and decide whether or not we
`
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` CONFERENCE CALL
`want to strike the declarations. I'm telling you
`without some kind of cross examination of those
`witnesses, or at least one of those witnesses
`independently from the one witness who's basically
`testifying as to what's in the declaration, you do
`have -- you have corroboration problems and fact
`issues that I think almost any of us can
`understand.
` So all I'm pointing out to you is in the
`absence of some kind of a solution that brings at
`least one of these other co-inventors to the US,
`you may face difficulties. I'm not saying you
`will or he won't, but you may.
` MR. LENNON: I appreciate that. I
`understand what you're saying Your Honor. I think
`we are in agreement that the facts are what they
`are and we can't change those facts. So I have
`nothing further to add to your point Your Honor.
` JUDGE McNAMARA: I appreciate that.
` As to -- it sounds like as to issues of
`costs or that sort of thing it doesn't sound like
`those are options that we're going to be able to
`pursue anyway. So we'll set them aside at the
`moment, and I'll take this up with the other
`
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` CONFERENCE CALL
`judges and we'll figure out how to handle this
`particular issue.
` Is there anything else anyone else wants to
`say about the these declarants, these three
`declarants.
` MR. PALYS: Yes Your Honor. A couple
`points. Patent owner's counsel says that they
`have declarations from all the inventors. That's
`not the case. There's a fourth inventor that
`didn't submit direct testimony in this case.
` Second, this isn't a unique issue as patent
`owner's counsel laid out. A case I identified
`earlier, the 01198 matter, Page 5 of that decision
`address this is point pretty consistently with how
`Your Honor was laying it out. So I'll just quote
`the last sentence here, "We caution that by
`denying petitioner a fair opportunity to cross
`examine Mr. Levron," which is the witness in that
`matter, "in accordance with our rules, patent
`owner risks exclusion of it testimony," which is
`what we're dealing with here, and as to patent
`owner's point about due process, I think that's
`just not an issue because, as we all know, they
`are the ones who introduced the Chinese testimony
`
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` CONFERENCE CALL
`into the record. That's all I have to say.
` JUDGE McNAMARA: I have one more question
`before we leave this topic. If I'm correct, there
`is pending district court litigation; is that
`right?
` MR. PALYS: I believe there is on certain
`patents. We have eight patents across ten
`matters, and frankly I'm not litigation counsel in
`those matters, but I could find -- go through the
`mandatory disclosures or have my colleague do that
`in the meantime --
` JUDGE McNAMARA: The reason I'm asking the
`question is to find out from either you or the
`patent owner's counsel whether this issue has come
`up in a district court proceeding and whether
`anyone addressed it there.
` MR. PALYS: That I don't know.
` MR. LENNON: Your Honor, this is my
`understanding. We are new to the case, but my
`understanding is that there are -- there is an
`appeal to the federal circuit from district court
`litigation, and to my knowledge, the reference
`that is being antedated here, that non-reference
`was not cited in district court litigation, and so
`
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` CONFERENCE CALL
`this predating issue was not addressed in district
`court at least. That's my understanding.
` JUDGE McNAMARA: I wanted to know if a
`district court had ordered or not ordered
`depositions to take place and where that all
`stood. Apparently because we don't have an
`antedating issue in district court, then we don't
`have the same issues so there wouldn't have been a
`motion to compel depositions or anything.
` If I'm not correct, let me know. That's
`what I surmise at the moment. If that's not
`correct, that a district court has addressed the
`issue, I would very much appreciate you letting me
`know.
` MR. LENNON: We will certainly let you know
`Your Honor.
` JUDGE McNAMARA: That should close our
`discussion about the three declarants.
` We have some other issues that we need to
`take up as well.
` MR. PALYS: Yes Your Honor. Let me get to
`the second issue, which I think is relatively
`simple, but we'll hit it.
` So in patent owner's preliminary responses,
`
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`they submitted the testimony of a witness, Doctor
`Melendez, and that's a different witness and
`different expert from who they proffered in their
`patent owner response, and earlier this month we
`informed them that we intended to examine this
`witness, and during our discussions with patent
`owner, they informed us in writing and over the
`phone that patent owner does not intend to rely on
`this testimony in any way for these ten
`proceedings, and so my point here Your Honor is if
`that's the case, I'll let patent owner's counsel
`confirm that for the record, we assume that the
`Board will not consider or give weight to that
`testimony, and if that's the case, we'll agree to
`forego that cross examination.
` JUDGE McNAMARA: All right. Mr. Lennon?
` MR. LENNON: Thank you Your Honor. That is
`our position. We are not intending to rely and we
`do not intend for the Board to take into
`consideration the testimony or declaration of Mr.
`Melendez.
` JUDGE McNAMARA: One thing I want to make
`clear, and I realize there was a change of counsel
`here and as a result of the change of counsel that
`
`TSG Reporting 877-702-9580
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`may have had to do something with the change of
`expert witness, change of strategies, whatever,
`but although you do not intend to rely on the
`testimony of Doctor Melendez, I think it is still
`fair game when your current expert is being
`deposed if there are inconsistencies between what
`he said and what Doctor Melendez said I think it's
`perfectly okay for the petitioner to ask questions
`about those inconsistencies.
` Is everybody okay with that?
` MR. PALYS: Yes Your Honor. That's our
`understanding.
` MR. LENNON: Your Honor, we understand that
`to be the case as well.
` JUDGE McNAMARA: Okay. Great. So that
`issue is off the table. See how efficient I am?
` MR. PALYS: Your Honor, you may recall, and
`I'll say it again, well played.
` If you don't mind, I'll jump to the third
`issue, the interpreter issue. This is even easier
`because if we're not going to have access to these
`three Chinese declarants, which we understand are
`the only ones that have interpreter issues and we
`wanted to abide by the Board's rule that require
`
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`use to have a conference with the Board if there's
`going to be non-English deposition, if there's no
`deposition, we don't need to go into it, but I'll
`state for the record: If there are depositions
`that move forward with these three Chinese
`citizens, we understand one of them will require a
`translator, the other two may require one. So we
`intend if that proceeds to follow the Board's rule
`and the guidance in the Mariosa versus Isis
`matter, IPR 2012-00022, Paper 55, which gives a
`great summary of how to proceed with non-English
`depositions, but it may be a moot matter.
` JUDGE McNAMARA: My understanding then is
`the testimony of the witness that would be taken
`in the United States would not require a
`translator; is that right?
` MR. PALYS: Yes Your Honor. Patent owner
`has informed us that the two witnesses, which is
`the last topic I'll talk about, the one inventor
`and the one expert in the United States neither
`one will require a translator.
` JUDGE McNAMARA: The reason I ask that
`question I had a circumstance years ago when I was
`practicing where the witness spoke perfect English
`
`TSG Reporting 877-702-9580
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`but had an accent that was so pronounced, it was a
`German witness, that the court reporter was unable
`to keep up, and so we wound up having to use to
`take the deposition in German with a translator
`because that was the only way anybody could
`understand this poor fellow. If anything comes
`up, let us know.
` MR. PALYS: I don't believe that's an
`issue. I believe I heard Ms. Wang speak on the
`phone during the deposition of our expert. She
`spoke perfect English. I don't know if that's an
`issue with respect to their expert so I'll let
`patent owner's counsel comment on that.
` MR. LENNON: I don't believe that that will
`be a concern, the accents are so strong that they
`will be an impediment to accurate court reporting.
` JUDGE McNAMARA: Good. That's another
`issue off the table.
` MR. LENNON: While we're on that point, I
`think it related to the first point, Mr. Payls
`suggested the interpreter issue may be a moot
`point because of Issue Number 1, it being resolved
`that the depositions are going forward in China, I
`do want to reiterate for the record we are not
`
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`opposed to the depositions proceed

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