throbber
Page 1
`
` 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
`
`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
`
`HTC EXHIBIT 1031
`HTC America, Inc. v. Virginia Innovation Sciences, Inc.
`IPR2017-00874
`
`Page 1 of 39
`
`

`

`Page 2
`
`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
`
`TSG Reporting 877-702-9580
`
`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 2 of 39
`
`

`

`Page 3
`
`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
`
` 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
`
`TSG Reporting 877-702-9580
`
`Page 3 of 39
`
`

`

`Page 4
`
`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
`
` 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.
`
`TSG Reporting 877-702-9580
`
`Page 4 of 39
`
`

`

`Page 5
`
`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
`
` CONFERENCE CALL
` 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
`
`TSG Reporting 877-702-9580
`
`Page 5 of 39
`
`

`

`Page 6
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 6 of 39
`
`

`

`Page 7
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 7 of 39
`
`

`

`Page 8
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 8 of 39
`
`

`

`Page 9
`
`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
`
` CONFERENCE CALL
`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.
`
`TSG Reporting 877-702-9580
`
`Page 9 of 39
`
`

`

`Page 10
`
`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
`
` CONFERENCE CALL
` 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.
`
`TSG Reporting 877-702-9580
`
`Page 10 of 39
`
`

`

`Page 11
`
`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
`
` CONFERENCE CALL
`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.
`
`TSG Reporting 877-702-9580
`
`Page 11 of 39
`
`

`

`Page 12
`
`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
`
` CONFERENCE CALL
`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.
`
`TSG Reporting 877-702-9580
`
`Page 12 of 39
`
`

`

`Page 13
`
`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
`
` CONFERENCE CALL
` 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
`
`TSG Reporting 877-702-9580
`
`Page 13 of 39
`
`

`

`Page 14
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 14 of 39
`
`

`

`Page 15
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 15 of 39
`
`

`

`Page 16
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 16 of 39
`
`

`

`Page 17
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 17 of 39
`
`

`

`Page 18
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 18 of 39
`
`

`

`Page 19
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 19 of 39
`
`

`

`Page 20
`
`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
`
` 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
`
`TSG Reporting 877-702-9580
`
`Page 20 of 39
`
`

`

`Page 21
`
`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
`
` 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
`
`TSG Reporting 877-702-9580
`
`Page 21 of 39
`
`

`

`Page 22
`
`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
`
` 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
`
`TSG Reporting 877-702-9580
`
`Page 22 of 39
`
`

`

`Page 23
`
`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
`
` 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,
`
`TSG Reporting 877-702-9580
`
`Page 23 of 39
`
`

`

`Page 24
`
`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
`
` CONFERENCE CALL
`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
`
`Page 24 of 39
`
`

`

`Page 25
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 25 of 39
`
`

`

`Page 26
`
`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
`
` CONFERENCE CALL
`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
`
`Page 26 of 39
`
`

`

`Page 27
`
`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
`
` CONFERENCE CALL
`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
`
`TSG Reporting 877-702-9580
`
`Page 27 of 39
`
`

`

`Page 28
`
`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
`
` CONFERENCE CALL
`opposed to the depositions proceeding in China if
`that is petitioner's desire to run that into the
`ground, and I feel I need to state that for the
`record.
` If we have to end up

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket