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` U N I T E D S T A T E S P A T E N T A N D T R A D E M A R K O F F I C E
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` B E F O R E T H E P A T E N T T R I A L A N D A P P E A L B O A R D
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` _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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` B M W O F N O R T H A M E R I C A , L L C
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` P e t i t i o n e r
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` v .
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` S T R A G E N T , L L C
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` P a t e n t O w n e r
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` _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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` C a s e I P R 2 0 1 7 - 0 1 5 1 9 , 1 5 2 0 , 1 5 2 1 , 1 5 2 2
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` M a y 3 , 2 0 1 8
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` T E L E P H O N E C O N F E R E N C E I N T H E A B O V E M A T T E R
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` B e f o r e t h e P T A B P a n e l
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` H o n o r a b l e C h r i s t a P . Z a d o
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`Veritext Legal Solutions
`215-241-1000 ~ 610-434-8588 ~ 302-571-0510 ~ 202-803-8830
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`BMW EXHIBIT 1020
`BMW v. STRAGENT
`IPR2017-01521
`
`Page 1 of 32
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`

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`Page 2
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` A P P E A R A N C E S
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`O n b e h a l f o f P e t i t i o n e r :
`
` L I O N E L L A V E N U E , E S Q U I R E
`
` S E A N D A M O N , E S Q U I R E
`
` C O R Y B E L L , E S Q U I R E
`
` F i n n e g a n , H e n d e r s o n , F a r a b o w , G a r r e t t
`
` D u n n e r , L L P
`
` 1 1 9 5 5 F r e e d o m D r i v e
`
` R e s t o n , V A 2 0 1 9 0
`
`O n b e h a l f o f P a t e n t O w n e r :
`
` T h o m a s H . K r a m e r , E S Q U I R E
`
` O ' K e l l y , E r n s t & J o y c e
`
` 9 0 1 N o r t h M a r k e t S t r e e t , S u i t e 1 0 0 0
`
` W i l m i n g t o n , D E 1 9 8 0 1
`
`A l s o P r e s e n t :
`
` G e o r g e P a z u n i a k , E s q u i r e
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` P R O C E E D I N G S
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` * * * * * * * * *
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` HONORABLE ZADO: Okay. Good morning.
`
` This is the conference call in 2017-01519, 1520,
`
` 1521, and 1522. I'm Judge Zado. We're joined by
`
` Judges Pettigrew, Boucher, and Silverman.
`
` So who is on the call today on
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` behalf of Petitioner?
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` MR. LAVENUE: For Petitioner, Lionel
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` Lavenue and Sean Damon, Your Honor.
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` MR. BELL: And Cory Bell from
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` Finnegan.
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` HONORABLE ZADO: And I'm sorry, who?
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` MR. BELL: Cory Bell.
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` HONORABLE ZADO: Cory Bell. Thank
`
` you, Mr. Bell.
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` And who do we have on the call for
`
` Patent Owner?
`
` MR. KRAMER: Good morning. It's Tom
`
` Kramer, from O'Kelly, Ernst & Joyce, with George
`
` Pazuniak.
`
` HONORABLE ZADO: Okay. I was going
`
` to start with the issues the party raised, but
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` there was just one general housekeeping issue that
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` I just wanted to make Petitioner aware of now that
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` I hear that George Pazuniak is on the line. It
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` looks like on April 27th, 2018, Petitioner tried to
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` file a motion for pro hac vice admission
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` Mr. Pazuniak. I don't know if you are aware, but
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` the motion was not uploaded. I don't know, was
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` Petitioner aware of that?
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` MR. KRAMER: I'm sorry, do you mean
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` Patent Owner, because Mr Pazuniak --
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` HONORABLE ZADO: I'm sorry. Yes,
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` sorry, it was Patent Owner. I apologize for that.
`
` Yes.
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` MR. KRAMER: No, I was not aware of
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` that.
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` HONORABLE ZADO: Okay. Well, yeah, I
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` just wanted to -- so Patent Owner is still seeking
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` to -- admission for Mr. Pazuniak?
`
` MR. KRAMER: Yes. And my
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` understanding from communication with Petitioner's
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` counsel was that that was unopposed.
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` HONORABLE ZADO: Okay. Well, just so
`
` you're aware, that is going to need to -- the
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` declaration was entered, but if you go on PTAB End
`
` to End, you can see that the motion wasn't
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` uploaded. Just so you're aware that is something
`
` that needs to be done for us to be able to rule on
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` that motion.
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` MR. KRAMER: We'll address it. Thank
`
` you.
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` HONORABLE ZADO: Okay. And also is
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` there a court reporter on the line today?
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` COURT REPORTER: Yes, Your Honor. My
`
` name is Felicia Newland.
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` HONORABLE ZADO: All right. Hello,
`
` Ms. Newland. And just out of curiosity, was it
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` Patent Owner or Petitioner who requested a court
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` reporter or is it both?
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` MR. LAVENUE: Petitioner, Your Honor.
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` HONORABLE ZADO: Okay. Well, we just
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` ask that after today's call that the transcript be
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` uploaded into the PTAB End to End in these four
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` matters.
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` MR. LAVENUE: Petitioner will take
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` care of that, Your Honor.
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` HONORABLE ZADO: All right. Thank
`
` you.
`
` So Petitioner has requested a
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` conference call with the Board regarding two
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` issues. The first issue regards the number of
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` days to cross-examine Patent Owner's expert
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` declarant and the other issue relates to the
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` impact of the Supreme Court's recent decision in
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` SAS. Let's take these issues one at a time,
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` starting with the number of cross-examination
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` days.
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` Petitioner, because you have
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` requested this call, we will start with you.
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` MR. LAVENUE: Thank you, Your Honor.
`
` Lionel Lavenue for the Petitioner.
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` So we have requested this call
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` because we have reached an impasse with Patent
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` Owner's counsel on the number of days for a
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` deposition. We note, of course, that it is the
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` Patent Owner's burden to limit the deposition
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` time, but we can outline our positions on this.
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` There are four IPR proceedings, and for those
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` four IPR proceedings we've requested two days of
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` deposition. We've also offered as a compromise
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` one-and-a-half days with the full admission of
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` the prior deposition transcript from the previous
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` IPR proceedings, which are also relevant to these
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` new IPR proceedings.
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` The Patent Owner's counsel has
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` refused all of our offers, either the two-day or
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` the one-and-a-half day compromise, stating that
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` they will not offer their expert for any more
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` than a single day. We have attempted to resolve
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` this through numerous correspondences over the
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` last month and have been unable to do so.
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` There was an email from Patent
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` Owner's counsel that outlined their positions on
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` this issue, and we do note that there are two
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` incorrect statements. The first one is the
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` Patent Owner claims that we, the Petitioner,
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` agreed in the prior IPR proceedings to a
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` single-day deposition, and that is not true. If
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` you look at the notice of deposition in the '676
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` and '677 proceedings, Paper No. 14, on page 2,
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` our memorialized agreement of a two-day
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` deposition is listed. And so basically we're
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` asking for exactly the same amount of time for
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` these four IPR proceedings that we received in
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` the prior two IPR proceedings.
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` And, in fact, we asked for, and we
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` agreed to, 10.5 hours with seven hours on the
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` first day and three-and-a-half hours on the
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` second day. And the second day was also to be
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` coordinated around the experts. So we made all
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` of those accommodations in the prior proceeding.
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` And we're asking really for nothing more here
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` except if the prior deposition transcript is not
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` admitted, then we're asking two days, 14 hours,
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` if the prior deposition is admitted, then we're
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` asking for one-and-a-half days, so ten-and-a-half
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` hours, the same time as before.
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` The second erroneous statement by
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` the Patent Owner in the email is they say in the
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` other proceedings on these patents by the Daimler
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` Company, the Daimler Petitioner, that they agreed
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` to one day. That is incorrect. We checked with
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` Daimler's counsel yesterday and they have agreed
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` to go forward with a single day of deposition and
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` then if they're not able to complete, then they
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` would take up the issue with the Board as to a
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` second day. But we would like to resolve that
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` now, because the expert is in California and it
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` requires the travel of both the Patent Owner and
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` the Petitioner's counsel.
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` And, in fact, because the expert is
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` in California that's one of the reasons that the
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` Patent Owner's counsel has insisted that they
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` will not allow more than a single day because
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` Patent Owner's counsel has to coordinate his
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` travel to California. So for that reason, if not
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` more, we would ask that the two-day arrangement
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` be determined.
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` So as far as the reasons why we
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` need more than a single day of seven hours, here
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` we're dealing with 60 claims, and in the previous
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` proceeding where the Patent Owner agreed to 10.5
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` hours, there were only 16 claims. Here we're
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` dealing with twice as many pages of expert
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` declaration, and also we are dealing with a
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` situation here where there are similar issues
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` between the prior IPR proceeding and these IPR
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` proceedings, and so many of the questions that we
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` asked in the prior IPR proceeding, we will need
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` to address here unless the prior deposition
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` transcript is admitted.
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` And so for that reason, that's not
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` a -- that's a reason why it would actually take
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` have had more time to have gone over those issues
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` with his counsel and to have prepared, and that
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` usually takes more time and not less.
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` And my final point, Your Honors, is
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` it's interesting to note that in the prior IPR
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` proceeding, we were asked to in good faith do our
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` best to complete the deposition in a single day
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` and we were told about a soccer game that was on
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` the second day, and we did our best and we did
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` complete our deposition in the prior IPR
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` proceedings in a single day. Here, we have
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` offered to do exactly the same thing and so even
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` though we're -- we think that we can complete in
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` a single day, we would like to have the second
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` time period on the day after available so that we
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` do not have to travel back to California again.
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` And, you know, if -- if we were
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` somehow prejudiced so that by completing our
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` prior case deposition in a single day, if that's
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` being used against us, then that would be
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` inappropriate for efficiency, because obviously
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` the parties are to be efficient in their
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` deposition. And so we did in good faith complete
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` the prior deposition in a single day, we're
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` willing to do so here, but we would like to have
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` the second day available.
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` And with that, Your Honor, we have
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` gone over our points that we would like to make.
`
` Thank you very much.
`
` HONORABLE ZADO: Okay. Before we
`
` move on to Patent Owner, I just wanted to clarify
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` and make sure I heard this correctly. So
`
` Petitioner would also have to travel to California
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` or is it just Patent Owner that has to travel?
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` MR. LAVENUE: The expert is in
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` California and both the Petitioner and the Patent
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` Owner will require travel to California.
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` HONORABLE ZADO: Okay. And just so
`
` we have it on the record, what is the declarant's
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` name?
`
` MR. KRAMER: It's Dr. Jeffrey Miller.
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` HONORABLE ZADO: Okay. Thank you.
`
` So all right, Patent Owner, please
`
` go ahead and respond.
`
` MR. KRAMER: Thank you.
`
` Preliminary I would like to ask the
`
` Board whether in view of the pro hac vice
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` admission issue, Mr. Pazuniak has conducted by
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` far the bulk of the negotiation with Petitioner's
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` Counsel, and for efficiency sake, we think it
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` would be easiest if he would address the issues.
`
` Would that be acceptable?
`
` HONORABLE ZADO: Please wait for a
`
` moment and let me confer with the Panel on this
`
` issue.
`
` Okay. So we're okay hearing from
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` Mr. Pazuniak regarding just the facts of this
`
` issue because he was handling the negotiating,
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` but he's not necessarily here representing Patent
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` Owner. But please, Mr. Pazuniak, go ahead and to
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` the extent you can help describe the actual
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` negotiations, please go ahead.
`
` MR. PAZUNIAK: Thank you, Your Honor.
`
` First off, regarding the facts,
`
` Petitioner's Counsel made -- alleged that there
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` are two misstatements in the emails sent to the
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` Board. Actually Petitioner's Counsel is
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` mistaken. First, we never said that Petitioner
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` had agreed to one day in the prior '676 and '677
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` proceedings.
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` If the Board refers to .7 in the
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` e-mail sent by Mr. Kramer, it says very clearly
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` that the parties had agreed to continue past the
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` first day and into a second day. But that is
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` exactly the problem that we had observed, and
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` that is the Petitioner finished the deposition in
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` one day and apparently had -- as far as I know,
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` had plans to fly out that night, or the next
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` morning, back to the East Coast.
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` We set aside the time for the
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` second day and -- by both Dr. Miller and myself,
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` and so when we -- we found out at the end of the
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` first day that the deposition was concluded, the
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` second date had already been basically spoken
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` for. I had to wait and make -- it made no sense
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` to reschedule my flight, so I ended up in
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` California as if the deposition had continued.
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` And Dr. Miller similarly could not have scheduled
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` anything for the time that was set aside.
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` So merely saying that, oh, we'll
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` try to take it one day and then we may continue
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` to the second day still leaves a problem because
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` the second day is basically spoken for. And as
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` shown in the last deposition, that second day was
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` totally unnecessary and ended up just
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` inconveniencing Patent Owner's expert and
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` counsel.
`
` The second comment that was made
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` was that Daimler's counsel had not agreed as
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` stated in .10 of the email. That is incorrect.
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` I am in communication with Daimler's counsel and
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` the agreement as stated in .10 is in writing and,
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` you know, if that becomes an issue, I can
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` confirm, I can send the emails. You know, the
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` language is very clear, it's one day, expected
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` one day, provided that if some unexpected event
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` occurs, then we can either agree for more time or
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` go to the Board.
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` The issue, again, is we have -- it
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` is expected and agreed that the deposition would
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` be completed in a one extended day, and you're
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` not going to get a second day merely because, you
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` know, you ran out of time asking all of the
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` questions.
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` So in the -- the basic concern that
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` we have is that this is the same issues that has
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` already been tried to the Board, the same two
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` patents, the same primary prior art, the same
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` arguments, same experts. The issues has already,
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` as I said, been tried and we explained that given
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` all of those facts, we were willing to permit the
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` use of the prior deposition. That was not the
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` issue, but we wanted to limit it to one day, not
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` have the option for a second day because that
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` meant scheduling for a second day takes that day
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` out of circulation for both the expert and for
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` counsel. Our flights to California cannot be
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` changed -- you know, is not feasible really to
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` change flights at the end of the first day for a
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` next-morning flight as opposed to having planned
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` for, you know, a flight at the end of the second
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` day.
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` So because of those inconveniences
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` to the expert and to counsel and the additional
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` cost involved in all of this, and given the past
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` history that there was no problem in finishing
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` the deposition in one day, and given the
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` availability of the prior deposition, we thought
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` that a limit to one day was perfectly
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` appropriate.
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` There's no indication that anything
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` has changed materially between now and before so
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` that the one day of deposition would be
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` insufficient. That was the -- that was the
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` nature of the discussions between the parties.
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` HONORABLE ZADO: All right. And to
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` clarify for the record -- and I'm going to address
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` this question to Mr. Kramer since he's admitted to
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` represent the Patent Owner, just to be clear, is
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` Patent Owner willing to agree to admitting the full
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` admission of deposition from prior art IPR
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` proceedings to whittle down the deposition time to
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` 1.5 days?
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` MR. KRAMER: We are willing to admit
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` all of the deposition testimony from IPRs '676 and
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` '677, the prior -- the prior proceedings.
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` Are you asking me to agree to
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` one-and-a-half days?
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` HONORABLE ZADO: Well, no. This was
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` just asking if the option were between two days and
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` not admitting the previous IPR depositions versus
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` 1.5 days and admitting the prior depositions.
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` Would the Patent Owner -- you know, would the
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` Patent Owner be amenable to --
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` MR. KRAMER: The admission -- yes,
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` the admission is acceptable.
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` HONORABLE ZADO: Okay. And just so
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` to clarify with, Petitioner, when you were
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` discussing being willing to agree to the -- to
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` one-and-a-half days if there's full admission of
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` the prior IPR proceedings, which IPR proceedings
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` were you referring to?
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` MR. LAVENUE: Those were IPR
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` proceedings '676 and '677, Your Honor.
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` HONORABLE ZADO: And is that 2017?
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` 2016?
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` MR. LAVENUE: Oh, I'm sorry. 2017.
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` HONORABLE ZADO: Well, we won't
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` necessarily decide the issue on the phone, but if
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` they don't by the end of this conference call, we
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` will issue an order shortly regarding this issue,
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` but I wanted right now first to move on to the SAS
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` issue.
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` It looks as though all parties are
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` aware of the recent decision last week from the
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` Supreme Court. Petitioner had asked to raise
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` this issue. And, you know, Patent Owner, and
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` again, this is addressed to Mr. Kramer, are you
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` also familiar with the recent Supreme Court
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` decision in SAS?
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` MR. KRAMER: Yes, we are.
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` HONORABLE ZADO: Okay. So even
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` though Petitioner requested to discuss it, really,
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` you know, this is an issue that both parties, we
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` wanted to have the opportunity to discuss on this
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` call to see what impact, if any, this would have on
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` our schedule in the four IPR cases and also what
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` requests the parties seek, as far as additional
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` briefing in view of the Supreme Court's decision.
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` So actually in this case, we're
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` going to start with Patent Owner instead of
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` Petitioner, just because the Patent Owner
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` response was just filed on March 12th, the
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` Petitioner reply is due June 12, but I wanted to
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` first start with the Patent Owner to see if --
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` and just so both parties are aware, we have not
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` issued an order yet, but, in essence, we're going
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` to be instituting on all grounds and all claims
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` in these four matters.
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` So in light of that, we'll start
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` with you, Mr. Kramer, on behalf of the Patent
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` Owner, whether Patent Owner has any requests for
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` any additional briefing in light of that.
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` MR. KRAMER: It's not immediately
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` clear to us how we can proceed if the Board
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` institutes on the additional -- on the additional
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` grounds. It would appear that we would need to
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` submit a response on those grounds. Is the
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` Board -- is that an expectation or --
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` HONORABLE ZADO: So to answer your
`
` question for expectation, I -- if you're asking, we
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` are going to institute on all claims, all grounds.
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` I believe in the 1519 and 1520 cases -- and I could
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` be misremembering, so please don't -- we'd have to
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` look -- but we did institute on all grounds, but
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` not all claims, so -- I'm sorry, on all claims, but
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` not all grounds, I would have to double-check, but
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` we are going to issue an order in the four cases
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` where we're going to institute on all claims, all
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` grounds. So whatever we didn't institute on is
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` going to be brought in.
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` The order is not going to be
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` substantive because as the parties are aware, at
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` least at the preliminary stage based on the
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` petition, we felt -- or had decided that
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` Petitioner had not made a sufficient showing
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` under the reasonable likelihood standard, so this
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` decision is not going to -- when we institute on
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` all of the claims and grounds that were not
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` previously instituted on, then the decision is
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` not going to contain, you know, a substantive
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` discussion. But if the Patent Owner would like
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` to respond, then that is something that Patent
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` Owner can ask for.
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` MR. KRAMER: Okay. I think I'm
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` principally concerned with preserving our rights
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` going forward and not placing us in a position
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` where, you know, we should have created a formal
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` response to the grounds now that they're
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` instituted. It's -- again, it's not clear to me
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` how we could do otherwise.
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` HONORABLE ZADO: Okay. And so,
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` Petitioner, we're going to hear from you in a
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` moment as well, but I just wanted to clarify that
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` if we already did institute on all grounds and
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` claims -- and all claims, no order is going to go
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` out for those cases, of course, but -- and I think
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` in one of those cases, 1521, that may be the case,
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` but just for the cases where we did not institute
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` on all grounds and all claims, orders will be going
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`Page 20
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` out very soon.
`
` So yeah, certainly we're not asking
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` anyone today on this call, you don't have to
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` commit either way, but, Petitioner, we'll hear
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` from you in a moment, but just at a high level,
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` you know, what we're probably going to ask the
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` parties to do is after this call come up with,
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` you know, what each party wants, a proposed
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` schedule. Because the one thing that we're not
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` changing at this point, given how early we are in
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` the case, we're not going to be changing the
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` 12-month statutory deadline. And, you know,
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` given how early we are on the case, I don't think
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` we're going to have to change the hearing date
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` either. So the parties, you know, we'll
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` encourage you both to get together and try to
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` work out how this will fit into the schedule.
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` But, Petitioner, you know, also, we
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` would like just to hear from you on this quickly.
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` MR. LAVENUE: On this issue, Your
`
` Honor, I believe that the only additional ground
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` issue is not really an additional ground to the
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` extent that it's new prior art or something like
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` that, it's really whether or not the OSEK reference
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` is considered as a single reference or multiple
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` documents that would be considered under 103. So
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` that's -- that's the one issue that would be
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` addressed under the -- under the Board's further
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` briefing if necessary. I think that's a pretty
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` narrow issue. We thought that it was discretionary
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` for the Board, but if the Board is going to
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` proceed, then we'll certainly do whatever the Board
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` instructs.
`
` HONORABLE ZADO: Okay. Well, yeah,
`
` if that's the issue, then, of course, we're
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` going -- if the parties feel it's necessary to have
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` additional briefing, you know, like I said, after
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` this call, what -- we will send out an order with
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` that institution on all grounds and all claims, and
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` the order will probably provide a deadline, I
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` imagine, by when we'd like to hear back from the
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` parties with a joint proposed schedule for fitting
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` in additional briefing that the parties may be
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` requesting and deadlines for that.
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` If you would just wait a moment,
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` I'm going to confer with the Panel to see if the
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` Panel has any further questions, but while we're
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` doing that, were there any further issues that
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` either of the parties wanted to raise on this
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` call today?
`
` MR. LAVENUE: Would you entertain a
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` brief response on the deposition issue from
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` Petitioner to the comment by Mr. Pazuniak?
`
` Your Honor?
`
` HONORABLE ZADO: Yes, sorry. I was
`
` just -- what exactly -- if you would just tell me,
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` what exactly is Petitioner requesting?
`
` MR. LAVENUE: I just am requesting,
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` can I respond to the comments that were made by
`
` Mr. Pazuniak regarding the deposition issue?
`
` HONORABLE ZADO: Sure. Go ahead.
`
` MR. LAVENUE: Okay. It will be very
`
` quick.
`
` So on the first point that he made
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` about the scheduling of the prior depositions,
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` those were scheduled over two days, but those
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` were scheduled over a Friday and Saturday. And
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` the second deposition day, Dr. Miller had already
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` scheduled to go to a soccer game and so we don't
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` think that the expert was put out at all by
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` having the second day scheduled in this location.
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` Mr. Pazuniak said that he was unable to change
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` his flight, we do not believe that's reasonable.
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` As far as his allegation that we
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` had already preordained that it would be a
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` single-day deposition and not a two-day
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` deposition. That is incorrect. He claims that
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` we already had our returned flights scheduled for
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` Saturday. That is incorrect. I fly my own plane
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` and so, therefore, I certainly had not already
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` scheduled that, so that's clear.
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` And so the other argument by
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` Mr. Pazuniak, he claims that he does have an
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` agreement with Daimler for a single-day
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` deposition in the other IPR proceedings, and that
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` is simply not true. We spoke with Daimler's
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` counsel this morning and Mr. Pazuniak claims that
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` he has a written agreement. While he believes he
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` has a written agreement, but he and counsel for
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` Daimler are actually in debate over whether or
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` not that agreement says what he believes it says.
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` And there is an current ongoing dispute as to
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` whether or not it's one day or not. So when he
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` claims that that is a final written decision by
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` the parties in the Daimler matter, that is
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` incorrect.
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` So for all those reasons, we would
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` submit that the deposition scheduling should
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` include at least 10.5 hours over two days or two
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` days as we requested. Thank you.
`
` HONORABLE ZADO: All right. Were
`
` there any other issues that we needed to address on
`
` this call today?
`
` MR. LAVENUE: Nothing from the
`
` Petitioner.
`
` MR. KRAMER: None for Patent Owner.
`
` HONORABLE ZADO: All right. Well,
`
` thank you everyone for joining us on this call
`
` today. We will take the issues under advisement.
`
` And we'll be issuing orders shortly. Thank you.
`
` MR. LAVENUE: Thank you.
`
` MR. KRAMER: Thank you.
`
` (Whereupon, at 11:33 a.m., the telephonic
`
` PTAB hearing in the above-entitled matter
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` was concluded.)
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` CERTIFICATE OF NOTARY PUBLIC
`
` I, FELICIA A. NEWLAND, CSR, the officer before
`
`whom the foregoing telephonic PTAB was taken; that
`
`the hearing was taken by me in stenotype and
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`thereafter reduced to typewriting under my
`
`direction; that I am neither counsel for, related
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`to, nor employed by and of the parties to the action
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`in which this telephonic hearing was taken; and,
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`further, that I am not a relative or employee of any
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`counsel or attorney employed by the parties hereto,
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`nor financially or otherwise interested in the
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`outcome of this action.
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` <%Signature%>
`
` _____________________
`
` FELICIA A. NEWLAND, CSR
`
`Veritext Legal Solutions
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