`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
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`))
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`))
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` Case Nos.
`) IPR2017-01619
`) IPR2017-01620
`
`GOOGLE LLC,
`
` vs.
`
`Petitioner,
`
`BLACKBERRY LTD.,
`
`))
`
` Patent No.
`Patent Owner. ) 8,489,868 B2
`-------------------------- )
`
`PTAB CONFERENCE CALL
`Thursday, August 9, 2018
`
`Reported by:
`Stacey L. Daywalt
`JOB NO. 146156
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`TSG Reporting - Worldwide 877-702-9580
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 1
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` Thursday, August 9, 2018
` 1:30 p.m.
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` PTAB Conference Call, held before
`Administrative Patent Judges Aaron W. Moore,
`Sally C. Medley and Robert J. Weinschenk,
`before Stacey L. Daywalt, a Court Reporter and
`Notary Public of the District of Columbia.
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`A P P E A R A N C E S:
`(All appearances are telephonic)
`
` SIDLEY AUSTIN
` Attorneys for Petitioner
` 1501 K Street, NW
` Washington, DC 20005
` BY: SAMUEL DILLON, ESQ.
` SHARON LEE, ESQ.
`
` PAUL HASTINGS
` Attorneys for Patent Owner
` 875 15th Street, NW
` Washington, DC 20005
` BY: PHILLIP CITROEN, ESQ.
` JOSEPH PALYS, ESQ.
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 3
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` ADMINISTRATIVE PATENT JUDGE: Hi.
`Good afternoon, everyone. This is Judge Moore.
` Do we have representatives from both
`sides on the line?
` MR. PALYS: Good afternoon, Your
`Honor.
` This is Joseph Palys for Petitioner,
`and I'm joined with Phillip Citroen.
` ADMINISTRATIVE PATENT JUDGE: Is the
`Patent Owner on as well?
` MR. DILLON: Good afternoon, Your
`Honor.
` This is Sam Dillon for Patent Owner,
`and with me is Sharon Lee.
` ADMINISTRATIVE PATENT JUDGE: Okay.
` And we also have a court reporter?
` MR. DILLON: Yes, Your Honor, I do
`believe so. She just said hello earlier.
` ADMINISTRATIVE PATENT JUDGE: All
`right.
` Will the parties, after the call and
`in due course, get the transcript filed as an
`exhibit?
` MR. DILLON: Yes, Your Honor. This
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 4
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`is Sam Dillon for Patent Owner. We will.
` ADMINISTRATIVE PATENT JUDGE: Okay.
` So also on the line are Judge Medley
`and Judge Weinschenk.
` We are on for IPRs 2017-1619 and
`1620.
` Because Patent Owner requested the
`call, they'll go first, followed by Petitioner,
`and then we'll go back to the Patent Owner.
` So Patent Owner, please proceed.
` MR. DILLON: Thank you, Your Honor.
` So we had requested this call to
`request authorization to file a motion to
`strike certain reply arguments and reply
`evidence in Petitioner's replies in both
`proceedings. The issue in both proceedings is
`essentially the same.
` Petitioner included a certain set of
`evidence with its petition to show the public
`accessibility of the prior art Gong reference.
` Our preliminary response raised
`certain issues with the adequacy of this
`evidence.
` The institution decision found that
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 5
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`the evidence was sufficient for institution.
`And then after institution, Petitioner did not,
`for example, move to submit supplemental
`information to bolster the record.
`So in our Patent Owner responses, we
`raised these arguments again and noted that the
`evidence was, in our opinion, still deficient,
`and under a higher standard of evidence should
`be fatal to their patentability challenges.
`Now, in response in their
`Petitioner's reply, they've included, in
`addition to some arguments responding to our
`specific points, additional evidence that they
`claim supports the conclusion that Gong was
`publicly available prior to the critical date.
`Now, we think that this is improper
`reply evidence for several reasons. First and
`mainly, our argument was that Petitioner had
`failed to advance sufficient evidence to show
`that Gong is a prior art printed publication.
`And they include a kind of a top
`half of their argument that responds to this
`allegation. But then the bottom part, which
`starts: "Additional evidence supports the
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 6
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`conclusion that Gong was publicly available
`prior to the critical date," that is just mere
`supplementation. That is not responsive to our
`argument. It is just additional evidence that
`they think will cure any of the deficiencies of
`their original evidence.
` So to consider this evidence which,
`you know, should have been submitted earlier in
`the process to give us a chance to respond to,
`would be prejudicial at this point.
` And of particular note is they
`submitted two reply declarations from
`individuals. And we requested dates for these
`reply declarants, and as of yet have not
`received any response or dates for when we
`might depose them.
` Now, our motion for observations is
`due Monday, so at this point it's just not
`necessarily conceivable that we'll be able to
`depose these two reply declarants, and it's
`because these exhibits were submitted in the
`reply despite Petitioner having the burden on
`this point that we're in this situation.
` Now, just one final point.
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 7
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`Petitioner will likely make the argument that
`we've had this evidence for a longer period of
`time than just their reply. They did submit it
`as supplemental evidence shortly after the
`institution decision in response to some of our
`evidentiary objections.
` But supplemental evidence only goes
`to the admissibility of the original evidence.
`It is not substantive evidence in and of
`itself.
` Petitioner wants to submit this
`evidence as substantive evidence with the
`reply, but that changes the nature of their
`reliance on the evidence.
` And when we tried to request the
`deposition of their two declarants, we've
`received no response. And there's just a short
`amount of time between the reply and the due
`date for our motions for observation, and it
`doesn't look like we're going to be able to
`file one because we have no deposition in order
`to observe.
` So that's essentially our points.
`And I'm happy to answer any questions, Your
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 8
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`Honors, but that's, I think, all I had.
` ADMINISTRATIVE PATENT JUDGE: Okay.
` Let's hear from Petitioner.
` MR. PALYS: Phillip, are you there?
` This is Joseph Palys for Petitioner.
` MR. CITROEN: Yes, I'm here.
` MR. PALYS: Phillip Citroen is going
`to handle this argument. Thank you.
` MR. CITROEN: Yeah, thank you, Joe.
` This is Phillip Citroen on behalf of
`Petitioner Google.
` There were several points raised by
`Patent Owner that I intend to address. And
`I'll just take them in turn.
` So first of all, just kind of as a
`backdrop, the issue here deals with the public
`availability of Gong, which is a textbook which
`we've argued on its face is publicly available.
`And as the Patent Owner has indicated, we've
`submitted evidence with our petition
`establishing the public availability of this
`reference.
` As the Patent Owner also indicated,
`it filed objections after these cases were
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 9
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`instituted with respect to this evidence. And
`in response we served supplemental evidence,
`including the declarations that were identified
`addressing this issue that further established
`the public availability of these -- of the Gong
`reference.
` Now, with this backdrop, we think
`the portions of the replies in the supporting
`evidence identified by the Patent Owner are not
`at all improper, and therefore should not be
`stricken.
` First of all, throughout this
`proceeding Petitioner has maintained the
`position that the Gong textbook was publicly
`available prior to September 21st, 2000. The
`position was first presented in the petition,
`and it's further crystallized in their reply.
` In other words, this isn't a new
`issue. It's not something that the Petitioner
`raised for the first time in its replies.
` While the replies do cite some
`additional evidence that the Patent Owner has
`had since about January, this evidence -- or
`there's no rule precluding the presentation of
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 10
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`further corroborating evidence, such as the
`evidence that's at issued here. In fact, the
`Federal Circuit has explained that the
`introduction of new evidence in the course of a
`trial is to be expected, and it certainly was
`expected here.
` In its responses, the Patent Owner
`contested the sufficiency of the evidence
`submitted with the petition regarding the
`public availability of Gong.
` And as a result, it was proper for
`Petitioner to then respond to those arguments
`that were presented in the Patent Owner's
`responses. The objected to arguments and the
`evidence provided in the replies does just
`that. And for that reason the Petitioner
`believes that the Patent Owner's request for
`authorization to move to strike the portions of
`the replies and the evidence that have been
`identified should be rejected.
` And just quickly, Your Honor, if I
`may, I wanted to highlight that this result is
`supported by a number of board decisions
`concerning this very exact issue, and that is
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 11
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`whether the arguments and evidence submitted
`with the reply to show the public availability
`of a reference should be stricken.
`And I think maybe the most relevant
`is probably the Instradent v. Nobel case, which
`is IPR2015-01786, and the relevant papers are
`57 and 106. And I won't get too much into the
`weeds of that case, but just to give a high
`level overview, in that case there was similar
`evidence as at issue here submitted with their
`reply to show the public availability of a
`reference. That evidence included two
`third-party declarations, website printouts and
`e-mails from a co-inventor.
`In that case, the board denied a
`request for authorization and move to strike
`and ultimately relied on the evidence in its
`final written decision to find that the
`reference was publicly available. We believe
`that the rationale that the board used in that
`case also applies here and should be -- and so
`the evidence should be submitted and considered
`in this proceeding.
`And that's just one of several cases
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 12
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`that we saw dealing with this exact issue where
`the board denied a motion to strike and
`considered the evidence. And I won't get into
`the others in detail, but I'll just note them
`for Your Honors to consider if they would like.
` Another is IPR2015-01410, Paper 23;
`IPR2015-00059, Paper 42; and then the last one
`is IPR2016-00840, and that's Paper 44.
` So in contrast, we're not aware of
`any board decisions dealing with this issue
`that actually resulted in arguments or evidence
`being stricken. And the Patent Owner so far
`hasn't identified any today for us or the board
`to consider.
` So for these reasons, we think that
`the Patent Owner's request should be denied.
` And then, if I may, Your Honor, the
`last point, just to address an issue that the
`Patent Owner raised earlier on the call, they
`did ask for the availability of the two
`declarants, and we have been working on that.
`We actually have the availability for one, and
`we are scheduled to talk to the other declarant
`later today to get his availability as well.
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 13
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`And we're more than happy to work with the
`Patent Owner to get the depositions completed
`and extend any due dates if we need to get in
`any additional papers related to those
`depositions.
` ADMINISTRATIVE PATENT JUDGE: Okay.
` When was this evidence first made a
`part of these proceedings?
` MR. CITROEN: So they were served to
`the Patent Owner in January after they filed
`objections to evidence, but they weren't filed
`because there hasn't been any motions to
`exclude filed yet by the Patent Owner.
` So they were entered into -- let me
`correct that -- they were filed as part of our
`replies, but served much earlier, which was
`January of this year.
` ADMINISTRATIVE PATENT JUDGE: Patent
`Owner, do you want to respond?
` MR. DILLON: Just very briefly, Your
`Honor.
` So the -- our understanding of the
`issue that was being briefed between the
`parties -- and it is appropriately the topic of
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 14
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`Petitioner's reply -- is whether its showing is
`sufficient to prove the public accessibility.
`It is not the case that the issue is whether or
`not this thing is publicly accessible such that
`they can, on a reply, just submit all the
`evidence they can possibly find at that point.
`We think the board case law certainly does not
`support that proposition.
` In terms of the specific cases that
`my colleague has just cited, this is the first
`that they have mentioned any of these cases,
`and they did not mention them in the meet and
`confer process, so I don't have any, off the
`top of my head, specific comments on that.
` But it is certainly the case that
`the board's Practice Guide indicates that there
`is such a thing as improper reply evidence.
`And just evidence that goes to either the broad
`public accessibility issue or the broad issue
`of whether these claims are obvious -- you
`know, not all evidence is proper reply
`evidence, even if it fits in one of those
`buckets. So we would contest that
`characterization.
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 15
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` In terms of the deposition dates, we
`can perhaps work with Petitioner, but it is
`still a situation where submitting this
`evidence in the reply prejudices us based on
`our current motion for observations is due
`Monday. You know, this is the first time
`they've mentioned having dates. We requested
`it over a week ago.
` But we can deal with that -- we can
`deal with those issues with Petitioner,
`assuming they promptly get back to us about
`dates. But we just think it just goes to show
`the prejudice of allowing evidence to be
`submitted as part of the reply.
` ADMINISTRATIVE PATENT JUDGE: Well,
`could you have addressed this material in the
`Patent Owner's response?
` MR. DILLON: If we were aware of it
`as being in -- as substantive evidence.
` At the time it was not filed, and it
`was only something that would be at issue if we
`filed a motion to exclude. There was certainly
`no reason for us to address this evidence in
`the Patent Owner response, and so we did not.
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 16
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` But you know, even if the evidence
`had been in existence, Petitioner's arguments
`in the reply related to the evidence were not,
`so that is still also there.
` ADMINISTRATIVE PATENT JUDGE: So
`you're asking us for a motion to strike. Yes?
` MR. DILLON: Yes, Your Honor.
` But I understand that the board has
`very, very different mechanisms for handling
`this, you know, down to and including filing a
`notice that identifies the improper evidence
`for the board's further consideration in the
`final written decision.
` So Patent Owner is happy to let the
`board decide the best way of dealing with this
`situation, but we certainly have requested a
`motion to strike this evidence in argument.
` ADMINISTRATIVE PATENT JUDGE: Would
`you be satisfied instead with a sur-reply
`addressing this evidence after your
`depositions?
` MR. DILLON: If you give me a
`moment, I will confer with my co-counsel real
`quick.
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 17
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`(Recess was taken from 1:44 p.m. to
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`1:44 p.m.)
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`MR. DILLON: Hello, Your Honor.
`This is Sam Dillon again.
`I think at this point, given the
`lateness of the proceeding, we would probably
`be of the opinion that a sur-reply just kind of
`sanctions and condones this conduct. I think
`it's more of an issue of whether it's proper
`reply evidence, rather than submitting more
`briefing on the subject.
`You know, I think our position is
`this evidence should have been submitted as
`part of a motion to submit supplemental
`information. There was a mechanism for them to
`do this within the board's rules, and they
`declined to pursue it.
`So I think our position would be a
`motion to strike or some other identification
`of new evidence that we think is improper.
`ADMINISTRATIVE PATENT JUDGE: If we
`were to allow a motion, what would you be
`looking for in terms of pages and timing?
`MR. DILLON: We could file a likely
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 18
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`five-page motion within a week, would probably
`be workable on our end.
`ADMINISTRATIVE PATENT JUDGE:
`Petitioner, if we file a motion, what would be
`your opinion on length of the brief and timing?
`MR. CITROEN: Hi, Your Honor. This
`is Phillip Citroen for Petitioner.
`We think three pages would be
`sufficient, and an equal amount of time to
`respond as provided to the Patent Owner.
`ADMINISTRATIVE PATENT JUDGE: So
`three pages for both or three pages for you?
`MR. CITROEN: Three pages for both.
`ADMINISTRATIVE PATENT JUDGE: Okay.
`All right. Well, do the parties
`have anything else?
`MR. DILLON: Your Honor, this is
`Patent Owner.
`No, we do not. Thank you.
`MR. CITROEN: And nothing more for
`
`Petitioner.
`
`right.
`
`ADMINISTRATIVE PATENT JUDGE: All
`
`And do my colleagues have any
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`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 19
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`Page 20
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`PTAB Conference Call
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`questions?
`
`I will take that as a no.
`That being the case, we will take
`the matter under advisement, and we will issue
`an order shortly.
`MR. DILLON: Okay. Thank you, Your
`
`Honor.
`
`you.
`
`ADMINISTRATIVE PATENT JUDGE: Thank
`
`MR. CITROEN: Thank you.
`(Time Noted: 1:47 p.m.)
`
`TSG Reporting - Worldwide 877-702-9580
`
`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 20
`
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`Page 21
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`District of Columbia, to wit:
`I, Stacey L. Daywalt, a Notary
`Public of the District of Columbia, do hereby
`certify that the proceedings were recorded
`stenographically by me and this transcript is a
`true record of the proceedings.
`I further certify that I am not of
`counsel to any of the parties, nor an employee
`of counsel, nor related to any of the parties,
`nor in any way interested in the outcome of
`this action.
`As witness my hand and Notarial Seal
`this 21st day of August, 2018.
`
`-------------------------------------
`Stacey L. Daywalt, Notary Public
`My Commission Expires: 4/14/2021
`
`TSG Reporting - Worldwide 877-702-9580
`
`Google LLC v. Blackberry Ltd., IPR2017-01619, Patent Owner Exhibit 2006, p. 21
`
`