·1· · · · UNITED STATES PATENT AND TRADEMARK OFFICE
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`·2· · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Page 1
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`·3
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`·4· ·SUBARU OF AMERICA, INC., et al.,)
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`·5· · · · · · Petitioners,· · · · · ·)
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`·6· · · · vs.· · · · · · · · · · · · ) Case No.
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`·7· ·BLITZSAFE TEXAS, LLC,· · · · · ·) IPR2018-00090
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`·8· · · · · · Patent Owner.· · · · · ) Patent 8,155,342 B2
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`·9
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`10
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`11· · · · · · ·TRANSCRIPT OF TELEPHONIC PROCEEDINGS had in
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`12· ·the above-entitled cause on December 1, 2017, at
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`13· ·2:00 p.m. CST.
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`14
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`15
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`16· ·BEFORE:· HON. MIRIAM QUINN,
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`17· · · · · · HON. THOMAS L. GIANNETTI, and
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`18· · · · · · HON. JAMESON LEE,
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`19· · · · · · · · ·Panel, via telephonic communication.
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`20
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`21
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`22
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`23
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`24
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 1
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`·2· · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Page 1
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`·3
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`·4· ·SUBARU OF AMERICA, INC., et al.,)
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`·5· · · · · · Petitioners,· · · · · ·)
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`·6· · · · vs.· · · · · · · · · · · · ) Case No.
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`·7· ·BLITZSAFE TEXAS, LLC,· · · · · ·) IPR2018-00090
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`·8· · · · · · Patent Owner.· · · · · ) Patent 8,155,342 B2
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`·9
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`10
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`11· · · · · · ·TRANSCRIPT OF TELEPHONIC PROCEEDINGS had in
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`12· ·the above-entitled cause on December 1, 2017, at
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`13· ·2:00 p.m. CST.
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`14
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`15
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`16· ·BEFORE:· HON. MIRIAM QUINN,
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`17· · · · · · HON. THOMAS L. GIANNETTI, and
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`18· · · · · · HON. JAMESON LEE,
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`19· · · · · · · · ·Panel, via telephonic communication.
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`20
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`22
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`23
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`24
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 1
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`Page 2
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`·1· ·APPEARANCES:
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`·2
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`·3· · · · DLA PIPER LLP (US),
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`·4· · · · (444 West Lake Street, Suite 900,
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`·5· · · · Chicago, Illinois· 60606-0089,
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`·6· · · · 312-368-4000), by:
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`·7· · · · MR. MATTHEW SATCHWELL,
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`·8· · · · matthew.satchwell@dlapiper.com,
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`·9· · · · · · appeared via telephonic communication
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`10· · · · · · on behalf of Petitioners Subaru of
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`11· · · · · · America, Inc.; Mazda Motor of America, Inc.;
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`12· · · · · · and Volvo Cars of North America, LLC;
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`13
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`14· · · · PILLSBURY WINTHROP SHAW PITTMAN LLP,
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`15· · · · (725 South Figueroa Street, Suite 2800,
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`16· · · · Los Angeles, California· 90017-5406,
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`17· · · · 213-488-7100), by:
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`18· · · · MR. EVAN FINKEL,
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`19· · · · evan.finkel@pillsburylaw.com,
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`20· · · · MR. TIM RAWSON,
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`21· · · · tim.rawson@pillsburylaw.com,
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`22· · · · · · appeared via telephonic communication on
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`23· · · · · · behalf of Petitioner Mitsubishi Electric
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`24· · · · · · Corporation;
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 2
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`Page 3
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`·1· ·APPEARANCES:· (Continued)
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`·2
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`·3· · · · BIRCH, STEWART, KOLASCH & BIRCH, LLP,
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`·4· · · · (8110 Gatehouse Road, Suite 100 East,
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`·5· · · · Falls Church, Virginia· 22042,
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`·6· · · · 703-205-8000), by:
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`·7· · · · MS. LYNDE F. HERZBACH,
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`·8· · · · lynde.herzbach@bskb.com,
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`·9· · · · · · appeared via telephonic communication on
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`10· · · · · · behalf of Petitioner Mitsubishi Motors
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`11· · · · · · Corporation;
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`12
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`13· · · · QUINN, EMANUEL, URQUHART & SULLIVAN, LLP,
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`14· · · · (Pennzoil Place,
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`15· · · · 711 Louisiana Street, Suite 500,
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`16· · · · Houston, Texas· 77002,
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`17· · · · 713-221-7000), by:
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`18· · · · MR. BRETT N. WATKINS,
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`19· · · · brettwatkins@quinnemanuel.com,
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`20· · · · · · appeared via telephonic communication on
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`21· · · · · · behalf of Petitioner Daimler AG;
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`22
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`23
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`24
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 3
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`·1· ·APPEARANCES:· (Continued)
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`·2
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`·3· · · · FINNEGAN, HENDERSON, FARABOW, GARRETT &
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`Page 4
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`·4· · · · DUNNER, LLP,
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`·5· · · · (Two Freedom Square,
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`·6· · · · 11955 Freedom Drive,
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`·7· · · · Reston, Virginia· 20190-5675,
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`·8· · · · 571-203-2700), by:
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`·9· · · · MR. LIONEL M. LAVENUE,
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`10· · · · lionel.lavenue@finnegan.com,
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`11· · · · · · · · ·-and-
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`12· · · · FINNEGAN, HENDERSON, FARABOW, GARRETT &
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`13· · · · DUNNER, LLP,
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`14· · · · (901 New York Avenue, NW,
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`15· · · · Washington, DC· 20001-4413
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`16· · · · 202-408-4000), by:
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`17· · · · MR. KAI RAJAN,
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`18· · · · kai.rajan@finnegan.com,
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`19· · · · · · appeared via telephonic communication on
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`20· · · · · · behalf of Petitioner BMW of North America,
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`21· · · · · · LLC;
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`22
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`23
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`24
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 4
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`Page 5
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`·1· ·APPEARANCES:· (Continued)
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`·2
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`·3· · · · BROWN RUDNICK, LLP,
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`·4· · · · (7 Times Square, 47th Floor,
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`·5· · · · New York, New York· 10036,
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`·6· · · · 212-209-4800), by:
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`·7· · · · MR. PETER LAMBRIANAKOS,
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`·8· · · · plambrianakos@brownrudnick.com,
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`·9· · · · MR. VINCENT J. RUBINO, III,
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`10· · · · vrubino@brownrudnick.com,
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`11· · · · · · appeared via telephonic communication on
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`12· · · · · · behalf of Patent Owner Blitzsafe of
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`13· · · · · · America, Inc.
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`14
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22· ·REPORTED BY:
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`23· · · · · · DINA G. MANCILLAS, CSR, RPR, CRR, CLR
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`24· · · · · · CSR No. 84-3400
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 5
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`Page 6
`·1· · · · ·HON. QUINN:· Okay.· Let's get started here.
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`·2· ·I'll take roll call in a minute.· So we need to
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`·3· ·get started.
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`·4· · · · · · ·This is a conference call concerning
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`·5· ·IPR2018-0090.· The abbreviated caption is Subaru
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`·6· ·versus Blitzsafe.
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`·7· · · · · · ·Do I have the lead counsel on the
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`·8· ·line?
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`·9· · · · ·MR. LAMBRIANAKOS:· Yes, Your Honor.
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`10· · · · · · ·This is Peter Lambrianakos for the
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`11· ·Patent Owner, Blitzsafe.
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`12· · · · ·HON. QUINN:· And for Petitioners, do we
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`13· ·have the lead counsel present?
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`14· · · · · · ·Do we have Matthew Satchwell on the
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`15· ·line?
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`16· · · · ·MR. SATCHWELL:· Yes, Your Honor. I
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`17· ·apologize.· I was speaking into a muted phone.
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`18· ·This is Matt Satchwell.· I'm sorry.· I'm with
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`19· ·DLA Piper.
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`20· · · · · · ·I represent Petitioners Mazda, Volvo,
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`21· ·and Subaru.
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`22· · · · ·HON. QUINN:· Okay.· Now, there are three
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`23· ·additional parties that I -- or, four, rather;
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`24· ·BMW, Daimler or Mercedes, Mitsubishi, and Geely.
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 6
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`Page 7
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`·1· · · · · · ·For BMW, is anyone present?
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`·2· · · · ·MR. LAVENUE:· Yes, Your Honor.
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`·3· · · · · · ·Lionel Lavenue from Finnegan.
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`·4· · · · ·MR. RAJAN:· And Kai Rajan from Finnegan.
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`·5· · · · ·HON. QUINN:· Okay.· And from Daimler AG or
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`·6· ·Mercedes?
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`·7· · · · ·MR. WATKINS:· Yes, Your Honor.· This is
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`·8· ·Brett Watkins from Quinn Emanuel.
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`·9· · · · ·HON. QUINN:· Okay.· And for Mitsubishi, do
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`10· ·we have anyone?
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`11· · · · ·MR. FINKEL:· Your Honor, there are two
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`12· ·different Mitsubishi entities unrelated.
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`13· · · · · · ·My name is Evan Finkel of Pillsbury,
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`14· ·Winthrop, Shaw, Pittman.· And with me is Tim
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`15· ·Rawson of the same firm, and we represent
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`16· ·Petitioner Mitsubishi Electric Corporation.
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`17· · · · ·MS. HERZBACH:· And the second Mitsubishi
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`18· ·entity is Mitsubishi Motors Corporation.
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`19· · · · · · ·My name is Lynde Herzbach.· I'm with
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`20· ·the law firm of Birch, Stewart, Kolasch & Birch,
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`21· ·and we represent Mitsubishi Motors.
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`22· · · · ·HON. QUINN:· And the last entity I have
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`23· ·here is Geely, G-e-e-l-y, with various entities
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`24· ·all over the world.
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 7
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`·1· · · · · · ·Do we have anybody representing that
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`Page 8
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`·2· ·entity or is that part of Volvo?
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`·3· · · · ·MR. SATCHWELL:· Yes.· That's exactly
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`·4· ·correct, Your Honor.· That is part of Volvo.· So
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`·5· ·I represent them as well.· This is Matt
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`·6· ·Satchwell.
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`·7· · · · ·HON. QUINN:· Okay.· Now, before we move
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`·8· ·forward, we want an understanding, Mr. Satchwell,
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`·9· ·that even though you have represented that your
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`10· ·clients are Mitsubishi, Subaru, and Volvo, that
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`11· ·you are here to speak for all of these entities
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`12· ·that have filed IPRs, is that correct?
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`13· · · · ·MR. SATCHWELL:· That's exactly correct,
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`14· ·Your Honor.· Subject to Your Honor's questions, I
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`15· ·will be leading the discussion today.
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`16· · · · ·HON. QUINN:· Okay.· And everybody that is
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`17· ·in this call has agreed to be bound by your
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`18· ·representations here today?
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`19· · · · ·MR. SATCHWELL:· That is my understanding.
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`20· · · · · · ·Your Honor, excepting, of course,
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`21· ·Patent Owner.
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`22· · · · ·HON. QUINN:· Well, yes, of course.· That's
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`23· ·a good exception to make.
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`24· · · · · · ·And, Mr. Lambrianakos, is anybody else
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 8
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`·1· ·with you?
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`Page 9
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`·2· · · · ·MR. LAMBRIANAKOS:· Yes.· I have Vincent
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`·3· ·Rubino of our firm with me here today.
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`·4· · · · ·HON. QUINN:· Okay.
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`·5· · · · ·MR. RUBINO:· Good afternoon, Your Honor.
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`·6· · · · ·HON. QUINN:· All right.· Anyone who is
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`·7· ·present who did not speak and is afraid that the
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`·8· ·court reporter did not catch your attendance here
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`·9· ·today can do so after we are finished with the
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`10· ·call.
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`11· · · · · · ·So let me start by letting you know
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`12· ·that Judges Thomas Giannetti and Jameson Lee are
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`13· ·also on this call and that they are part of the
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`14· ·panel that has been assigned to this IPR.
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`15· · · · · · ·And we have received an email from
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`16· ·Petitioners' lead counsel concerning a motion to
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`17· ·expedite this IPR in light of the record in the
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`18· ·Toyota IPR, which is -- which was actually Case
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`19· ·No. IPR2016-00418.
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`20· · · · · · ·And before we start with that
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`21· ·discussion, because we received only an email
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`22· ·from Petitioner, I actually want to hear first
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`23· ·from Patent Owner on a response to the email that
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`24· ·we received.
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 9
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`·1· · · · ·MR. LAMBRIANAKOS:· Thank you, Your Honor.
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`Page 10
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`·2· ·This is Peter Lambrianakos.
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`·3· · · · · · ·Our response is that the -- that the
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`·4· ·Petitioners' request is improper and should be
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`·5· ·denied.· We don't believe there's any authority
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`·6· ·in the statutes or the regulations that would
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`·7· ·permit the Petitioner to proceed directly to file
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`·8· ·a written decision on this petition.
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`·9· · · · · · ·And we think that a statutory
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`10· ·requirement, a statutory mechanism, would have to
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`11· ·be present in order to permit this.· The statutes
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`12· ·require that the Patent Owner has certain rights,
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`13· ·such as, for example, under Section 313, to file
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`14· ·a Patent Owner's preliminary response, and we
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`15· ·don't believe there's any authority to dispense
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`16· ·with that mechanism.
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`17· · · · · · ·The rules also provide a Patent Owner
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`18· ·response conduct of discovery, and we believe
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`19· ·that these rights are part of what the Patent
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`20· ·Owner's entitled to.· And absent any specific
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`21· ·statutory or rule, statute or rule that would
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`22· ·allow the Petitioner to dispense with that, we
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`23· ·believe that we're entitled to it.· And so this
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`24· ·request would have to be denied.
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 10
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`Page 11
`·1· · · · · · ·We also believe that since the time of
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`·2· ·the Toyota IPR, that there have been some
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`·3· ·important changes in the law.· For example, at
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`·4· ·the time that we filed our preliminary response
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`·5· ·in the Toyota case, we were not permitted to
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`·6· ·submit an expert declaration in support of our
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`·7· ·arguments.· We now have that right.
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`·8· · · · · · ·There have also been some changes to
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`·9· ·the law with respect to the burdens of proof on
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`10· ·claim amendments which would be a mechanism that
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`11· ·we would consider potentially in this case.
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`12· · · · · · ·And so the current state of the law
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`13· ·also gives us certain tools that we didn't have
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`14· ·at the time and that we ought to be able to bring
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`15· ·to bear in this IPR.
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`16· · · · · · ·So for those reasons, we think that
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`17· ·there's no authority for the request, and we
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`18· ·believe that it's prejudicial to us, given the
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`19· ·change in the law that would assist us in this
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`20· ·particular action.
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`21· · · · ·HON. QUINN:· Okay.· So just a couple of
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`22· ·questions from what you said.
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`23· · · · · · ·So you don't have to tell me whether
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`24· ·you are planning or not planning on doing these
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 11
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`·1· ·things, but you are saying you want to take
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`·2· ·advantage of the opportunity to file a
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`·3· ·preliminary response with testimonial evidence,
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`Page 12
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`·4· ·is that correct?
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`·5· · · · ·MR. LAMBRIANAKOS:· Yes.· Well, we certainly
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`·6· ·want to be able to file a preliminary response,
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`·7· ·and we want the ability to at least consider it
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`·8· ·to include an expert declaration, and that's an
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`·9· ·option that we want to have available to us.
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`10· · · · ·HON. QUINN:· Okay.· And same thing with the
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`11· ·motion to amend; you didn't file one in the
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`12· ·Toyota IPR, but you may consider doing so if you
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`13· ·are a given an opportunity?
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`14· · · · ·MR. LAMBRIANAKOS:· Yes.· Yes.
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`15· · · · ·HON. QUINN:· All right.· Anything else
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`16· ·before I move on to Petitioners' request?
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`17· · · · ·MR. LAMBRIANAKOS:· That's all I have for
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`18· ·now.· Although, I'd appreciate the ability to
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`19· ·respond.
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`20· · · · ·HON. QUINN:· Sure.· Okay.· Mr. Satchwell, I
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`21· ·want to start with asking you, first of all, was
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`22· ·your request for this motion subject to an
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`23· ·institution decision, or is your motion something
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`24· ·that you're asking for us to deal with the record
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 12
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`·1· ·in the Toyota IPR without even rendering an
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`Page 13
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`·2· ·institution decision?
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`·3· · · · ·MR. SATCHWELL:· Well, I think that that's a
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`·4· ·bit of a hybrid question, Your Honor.· Let me
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`·5· ·give you the substance first.· The answer is, we
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`·6· ·have an IPR in the Toyota IPR that was complete
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`·7· ·through the hearing.
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`·8· · · · · · ·All the record was closed.· Patent
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`·9· ·Owner had the opportunity to respond to all of
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`10· ·the substantive arguments in that case.· And so
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`11· ·what we're asking the Court to do -- I think
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`12· ·procedurally there does need to be an institution
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`13· ·decision made on the current petition on all
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`14· ·grounds and then immediately a closing of the
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`15· ·record and procedure to issuing a final written
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`16· ·decision based on that record.
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`17· · · · · · ·So to be very clear, Petitioners
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`18· ·intend to rely only on the record presented in
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`19· ·the prior Toyota IPR.· The old -- the petition we
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`20· ·submitted in this case is verbatim identical to
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`21· ·the petition in that case.· The only difference
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`22· ·is that we applied the claim constructions
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`23· ·ordered by the prior panel in the petition that
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`24· ·we filed here in this IPR.
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 13
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`·1· · · · · · ·So I want to take it in two steps.
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`·2· ·The Petitioner -- or, sorry -- the Patentee
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`Page 14
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`·3· ·raised procedural grounds as their primary issue
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`·4· ·here, and we actually dispute that.· We do think
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`·5· ·the board has clear authority to follow -- to
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`·6· ·expedite the petition to close the record and to
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`·7· ·render a final decision on the merits immediately
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`·8· ·thereafter.
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`·9· · · · ·HON. QUINN:· I'm sorry.· What authority
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`10· ·would that be?
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`11· · · · ·MR. SATCHWELL:· Right.· So under 37 CFR
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`12· ·42(a), as well as 42.1(b), "The board may
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`13· ·determine a proper course of conduct in a
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`14· ·proceeding for any situation not specifically
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`15· ·covered by this part," which is the procedural
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`16· ·rules there, "and may enter nonfinal orders to
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`17· ·administer the proceeding."
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`18· · · · · · ·Our view is, this is exactly the kind
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`19· ·of situation contemplated in those sections where
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`20· ·it says in particular in 42.1(b) that, "This part
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`21· ·shall be construed to secure the just, speedy,
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`22· ·and an inexpensive resolution of every
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`23· ·proceeding."
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`24· · · · · · ·We think that is exactly this
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 14
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`·1· ·situation.· We have an IPR that, but for a
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`Page 15
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`·2· ·settlement on the eve of decision, was complete.
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`·3· ·The record was closed, and I want to turn back to
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`·4· ·that in a moment because I think that's a very
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`·5· ·important point, but we have an IPR that had
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`·6· ·proceeded throughout, obviously, the entire --
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`·7· ·you know, the briefing discovery, a full hearing.
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`·8· · · · · · ·We're not seeking a re-hearing.· We
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`·9· ·don't seek any additional oral argument.· We
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`10· ·basically are asking, if I can be colloquial, for
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`11· ·the board to pick up the proceeding that was
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`12· ·effectively suspended by the prior settlement and
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`13· ·move towards the decision that we think candidly
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`14· ·was probably, if not drafted, you know, well
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`15· ·underway at the time that the plug was pulled in
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`16· ·the prior IPRs.
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`17· · · · · · ·As to the changes in the rules that
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`18· ·Plaintiff -- I'm sorry -- that Patentee has
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`19· ·mentioned, our view is that those rules are
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`20· ·entirely procedural.· The Patent Owner had a
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`21· ·chance to submit all of its arguments and
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`22· ·evidence up to and including at the final hearing
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`23· ·in the Toyota IPR.
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`24· · · · · · ·We are surprised to hear that the
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`IPR2018-00090
`Petitioners - Ex. 1022 - Page 15
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`·1· ·Patentee wants to effectively supplement the
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`·2· ·expert record, given that we've raised no new
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`Page 16
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`·3· ·issues.· That is an effort to have a second bite
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`·4· ·at the apple and re-litigate the prior IPR.
`
`·5· · · · · · ·We deliberately were very careful not
`
`·6· ·to raise any new issues because we didn't want to
`
`·7· ·burden Patent Owner or the board with needing to
`
`·8· ·address new arguments that were not addressed
`
`·9· ·complete and fully on the record in the prior
`
`10· ·IPR.
`
`11· · · · · · ·So those issues should be disposed of,
`
`12· ·and while it's certainly true that some of the
`
`13· ·procedural rules have changed in the intervening
`
`14· ·nine months or so since the Toyota IPR was
`
`15· ·suspended and -- due to settlement, the
`
`16· ·evidentiary standards and the burden of proof for
`
`17· ·a final written decision have not changed.
`
`18· · · · · · ·So the board is able, under its
`
`19· ·statutory authority, to render a final decision,
`
`20· ·including under Section 42.5(c)(1), which states,
`
`21· ·"The board may set times by order and times set
`
`22· ·by rule or default and may be modified by order.
`
`23· ·Any modification of times will, of course, take
`
`24· ·any applicable statutory pendency goal into
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 16
`
`
`
`·1· ·account."
`
`Page 17
`
`·2· · · · · · ·And our view is that the statutory
`
`·3· ·goal of speedy, just, and inexpensive resolution
`
`·4· ·of every proceeding is exactly what's referred to
`
`·5· ·there.
`
`·6· · · · · · ·So I think that that addresses the
`
`·7· ·procedural arguments raised by Petitioner.
`
`·8· ·Subject to any questions on that, I think that a
`
`·9· ·brief -- very brief discussion of the substance
`
`10· ·here may be helpful for the board.
`
`11· · · · ·HON. QUINN:· Well, I do have a question
`
`12· ·about the procedure, and we're going to be
`
`13· ·deciding it based on procedure.
`
`14· · · · · · ·Something caught my attention on
`
`15· ·something that you said.· None of these parties
`
`16· ·that are in this current IPR were parties in
`
`17· ·the -- in the Toyota IPR.· So you're not entitled
`
`18· ·to that, to get the benefit of that record, so to
`
`19· ·speak.
`
`20· · · · · · ·So I'm troubled, though, by your
`
`21· ·assertion that somehow the rules promulgated by
`
`22· ·the board can take away from Patent Owner some
`
`23· ·entitlements they have under the statute.
`
`24· · · · · · ·And I want to find out how -- from
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 17
`
`
`
`·1· ·you, how do you think this is fair to the other
`
`Page 18
`
`·2· ·party that they bargained for a settlement in the
`
`·3· ·previous case and now they're back to living with
`
`·4· ·that record -- actually they have objected to
`
`·5· ·living with that record, and you're asking us to
`
`·6· ·compel them to live with that record in this
`
`·7· ·case.
`
`·8· · · · ·MR. SATCHWELL:· Well, I understand, Your
`
`·9· ·Honor, and let me try to address that.
`
`10· · · · · · ·I think that the position we're in
`
`11· ·right now is, you are correct.· The only common
`
`12· ·party in this IPR to the prior IPR is the
`
`13· ·Patentee.· The Patentee had a full opportunity to
`
`14· ·litigate that prior IPR throughout the prior
`
`15· ·trial.
`
`16· · · · · · ·They presented expert testimony.· They
`
`17· ·took discovery.· They appeared at the hearing and
`
`18· ·had a full argument on the record.
`
`19· · · · ·HON. QUINN:· But it sounds like you're
`
`20· ·arguing some estoppel to me as if a Patent Owner
`
`21· ·who has argued a previous case cannot re-litigate
`
`22· ·that issue in any future cases.
`
`23· · · · · · ·Is that similar to what you're saying?
`
`24· · · · ·MR. SATCHWELL:· I don't think we're asking
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 18
`
`
`
`Page 19
`·1· ·the panel to come to a decision that there's, per
`
`·2· ·se, estoppel here.
`
`·3· · · · · · ·I think what we're trying to say is
`
`·4· ·that Patentee was effectively saved by the bell
`
`·5· ·in the last case.· And the charge to the -- to
`
`·6· ·the panel, as we understand it, is the efficient
`
`·7· ·and inexpensive resolution of every proceeding.
`
`·8· · · · · · ·The prior proceeding was completely
`
`·9· ·litigated on the exact same issues raised in this
`
`10· ·proceeding.· There's nothing new here, and this
`
`11· ·was very careful.· We do not dispute that were
`
`12· ·there new issues raised in this IPR, that it
`
`13· ·would be unfair to cut Patentee off from raising
`
`14· ·their own positions on the new issues raised.
`
`15· · · · · · ·There is -- we were very careful not
`
`16· ·to raise any new issues in this IPR.· Patentee
`
`17· ·has already answered every claim raised in the
`
`18· ·prior IPR and has, therefore, answered every
`
`19· ·claim raised in this IPR.· They are the same IPR.
`
`20· · · · · · ·The only difference is a nine-month
`
`21· ·lag between the conclusion of the prior IPR where
`
`22· ·the record was closed and the board found that --
`
`23· ·the record is submitted and fully cloud.
`
`24· · · · · · ·"The matter is now committed to the
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 19
`
`
`
`·1· ·panel for determination and preparation on the
`
`Page 20
`
`·2· ·final written decision."
`
`·3· · · · · · ·And then the ability to render that
`
`·4· ·final written decision to the benefit of not just
`
`·5· ·Petitioners in that prior IPR, but to the public,
`
`·6· ·who is faced with the risk of serial litigation
`
`·7· ·on these patents, was denied, right?· The board
`
`·8· ·was robbed of their opportunity to conclude their
`
`·9· ·work on this -- on the prior IPR.
`
`10· · · · · · ·We are seeking to only reopen that so
`
`11· ·that we could immediately close the record, move
`
`12· ·this thing forward and allow the board to render
`
`13· ·the decision that they had planned to render in
`
`14· ·the prior IPR.
`
`15· · · · · · ·One of the reasons that this is
`
`16· ·necessary to the public interest is that, you
`
`17· ·know, there already is a full record before the
`
`18· ·board.· The Patent Owner participated in every
`
`19· ·stage.· And this would, frankly, avoid massive
`
`20· ·litigation costs going forward.
`
`21· · · · · · ·There were, I want to say -- Your
`
`22· ·Honor, I was involved on behalf of a different
`
`23· ·party in the prior round of litigation.· And I
`
`24· ·want to say there was four, five defendants in
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 20
`
`
`
`·1· ·that prior litigation, all of whom eventually
`
`Page 21
`
`·2· ·ended up settling those cases.
`
`·3· · · · · · ·Some of them were involved in the IPR
`
`·4· ·process, but then Patent Owner now, once those --
`
`·5· ·all of those prior litigations were resolved, has
`
`·6· ·filed eight new lawsuits this year.
`
`·7· · · · · · ·An expedited ruling in the petition --
`
`·8· ·which was -- already the record was closed,
`
`·9· ·already fully litigated.· No new issues raised
`
`10· ·here.· An expedited ruling on our petition in
`
`11· ·this case would avoid massive litigation cost
`
`12· ·which further --
`
`13· · · · ·HON. QUINN:· Well, I want to cut you right
`
`14· ·there because I was a judge in that panel in the
`
`15· ·previous case, and one of my colleagues was also
`
`16· ·in that panel in the previous case.
`
`17· · · · · · ·And we both were part of the panel
`
`18· ·that decided to terminate the cases, and none of
`
`19· ·this information was present to us at the time.
`
`20· ·And what we're getting into here is sort of
`
`21· ·getting around joinders where you want us to
`
`22· ·continue with what -- where we were at in the
`
`23· ·previous case when you don't have really a
`
`24· ·statutory entitlement to it or any kind of
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 21
`
`
`
`·1· ·procedural rule by which we can go back and
`
`·2· ·reopen that case or even use that information
`
`·3· ·that was there without the consent of both
`
`·4· ·parties.
`
`Page 22
`
`·5· · · · · · ·So I want to get to -- first of all,
`
`·6· ·our first threshold here is that there is no
`
`·7· ·proceeding on which to proceed to final written
`
`·8· ·decision yet.· We have not issued an institution
`
`·9· ·decision.
`
`10· · · · · · ·So if I'm getting your -- the gist of
`
`11· ·all of -- of what you're asking us to do presumes
`
`12· ·that we're going to institute the case in its
`
`13· ·entirety based on the same exact grounds and all
`
`14· ·of the claims that were instituted in the
`
`15· ·previous case.
`
`16· · · · · · ·And I want to hear from Patent Owner
`
`17· ·on this.· Do you plan on filing a preliminary
`
`18· ·response challenging institution on the same
`
`19· ·issues that you had in the previous case?
`
`20· · · · ·MR. LAMBRIANAKOS:· Yes, Your Honor, we do
`
`21· ·intend to file a preliminary response against the
`
`22· ·issues that are being presented here.
`
`23· · · · · · ·We note that while Petitioners have
`
`24· ·represented that the petition is identical,
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 22
`
`
`
`·1· ·except for claim constructions, I note that the
`
`Page 23
`
`·2· ·petition includes claim constructions, and there
`
`·3· ·are citations in that table to -- to proceedings,
`
`·4· ·other than the Toyota proceeding.· They include
`
`·5· ·proceedings that were instituted by Honda and
`
`·6· ·Hyundai.
`
`·7· · · · · · ·And so the operative claim
`
`·8· ·constructions for this petition are different
`
`·9· ·than those which were in play when we addressed
`
`10· ·the petition in our prior Patent Owner
`
`11· ·preliminary response.
`
`12· · · · · · ·And so we believe the issues aren't
`
`13· ·the same, but we do intend to file and to contest
`
`14· ·institution of the petition by a preliminary
`
`15· ·response.
`
`16· · · · ·HON. QUINN:· Okay.· So the threshold issue
`
`17· ·here is that, Mr. Satchwell, hearing from Patent
`
`18· ·Owner that they intend to contest the petition
`
`19· ·and take advantage of the -- at least to consider
`
`20· ·whether to file evidence that -- in support of
`
`21· ·their preliminary response, there is nothing for
`
`22· ·us to do here as far as even considering what to
`
`23· ·do with the closed record in the Toyota IPR.
`
`24· · · · · · ·So this has to run its course.· We're
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 23
`
`
`
`Page 24
`·1· ·going to have to get through where at least after
`
`·2· ·we receive the preliminary response -- and that
`
`·3· ·would be not due until January 30th of 2018 --
`
`·4· ·that we're not even going to be able to consider
`
`·5· ·any of this, if at all.
`
`·6· · · · · · ·And I caution you that we have great
`
`·7· ·skepticism as to whether this will be a proper
`
`·8· ·way to conduct the cases in a just, speedy, and
`
`·9· ·efficient manner, especially because of issues of
`
`10· ·due process of fairness that we have to very
`
`11· ·closely regard, especially as Patent Owner.
`
`12· · · · · · ·So is there anything else that we need
`
`13· ·to consider before I go back to my panel on this
`
`14· ·issue of, we need to render decision on
`
`15· ·institution and not until then can we revisit
`
`16· ·this?
`
`17· · · · ·MR. SATCHWELL:· I think there's two things
`
`18· ·I would say, Your Honor, and I'm certainly very
`
`19· ·clearly cognizant of the signals in the
`
`20· ·statements you're making.· We understand your
`
`21· ·position.· I think there's two things that we
`
`22· ·would raise.
`
`23· · · · · · ·I think there is first the question to
`
`24· ·Petitioner -- I'm sorry -- to Patent Owner of
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 24
`
`
`
`Page 25
`·1· ·what new issue is raised by this current petition
`
`·2· ·that was not fully addressed by the expert
`
`·3· ·testimony and the preliminary response in the
`
`·4· ·prior petition.· There are no new issues here.
`
`·5· · · · · · ·So there is not -- this is not a
`
`·6· ·situation where new issues were raised and Patent
`
`·7· ·Owner should get to address those.· Patent Owner
`
`·8· ·had the opportunity to litigate this case once.
`
`·9· ·Having done so, we don't know what new issues
`
`10· ·would give rise to an opportunity for additional
`
`11· ·expert testimony that was not given in the prior
`
`12· ·case.
`
`13· · · · · · ·Separately, we would suggest that
`
`14· ·before the panel render a decision, we be allowed
`
`15· ·to submit briefing on this.· Petitioners are
`
`16· ·ready to submit briefing within the next seven
`
`17· ·days.· We think an expedited briefing schedule is
`
`18· ·appropriate, and we think that the panel's
`
`19· ·decision may be better informed by a briefing on
`
`20· ·the merits of the issue as you raise them today.
`
`21· · · · ·HON. QUINN:· Okay.· Patent Owner, do you
`
`22· ·have any last remarks on this?
`
`23· · · · ·MR. LAMBRIANAKOS:· Yes, Your Honor.· We
`
`24· ·think it's clear that there's no statutory basis
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 25
`
`
`
`·1· ·for this relief.· We think that Petitioners are
`
`·2· ·looking to join in a terminated and settled IPR
`
`Page 26
`
`·3· ·petition that's no longer alive.· There's nothing
`
`·4· ·to join and that we're entitled to certain
`
`·5· ·statutory rights.
`
`·6· · · · · · ·The citations that were given here
`
`·7· ·were to regulations which clearly cannot be used
`
`·8· ·to overcome a statutory right.· And so we don't
`
`·9· ·really see any basis for this request or any
`
`10· ·reason to brief it.· Thank you.
`
`11· · · · ·HON. QUINN:· Okay.· I'm going to go
`
`12· ·offline, confer with my panel, and we'll come
`
`13· ·back with a ruling shortly.
`
`14· · · · · · · · ·(A recess was had from 2:25 p.m.
`
`15· · · · · · · · · until 2:26 p.m.)
`
`16· · · · ·HON. QUINN:· Okay.· We have one question
`
`17· ·before we continue deliberating.· This question
`
`18· ·is for Mr. Satchwell.
`
`19· · · · · · ·Is your request for this motion to
`
`20· ·expedite -- does it involve us dispensing with
`
`21· ·the preliminary response altogether?
`
`22· · · · ·MR. SATCHWELL:· That's a good question,
`
`23· ·Your Honor.· That's not one that I think we have
`
`24· ·directly addressed.
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 26
`
`
`
`·1· · · · · · ·Our view is that institution is
`
`·2· ·appropriate on the prior grounds.· We are a
`
`Page 27
`
`·3· ·little bit concerned -- well, let me ask if I can
`
`·4· ·ask for clarification, Your Honor, just so I
`
`·5· ·address your question squarely.
`
`·6· · · · · · ·Are you asking me whether Petitioners
`
`·7· ·would be comfortable with a procedure in which
`
`·8· ·Patent Owner is allowed to file their preliminary
`
`·9· ·response and then if institution is granted in
`
`10· ·due course, the IPR record would be closed at
`
`11· ·that point, and we would proceed based on the
`
`12· ·record presented in the prior case?
`
`13· · · · ·HON. QUINN:· No.· No.· My question was a
`
`14· ·very narrow one.
`
`15· · · · · · ·In your request for a motion to
`
`16· ·expedite, it says you want us to authorize to
`
`17· ·file a motion to expedite to final written
`
`18· ·determination, based upon the complete closed
`
`19· ·record from the Toyota IPR.
`
`20· · · · · · ·And from what I've heard today, that
`
`21· ·did not include the pre-institution phase of
`
`22· ·waiting for a preliminary response and us
`
`23· ·instituting, if at all, in the case.· The way I
`
`24· ·read that and I heard your comments was, it was a
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 27
`
`
`
`Page 28
`·1· ·presumption as if none of those are needed and go
`
`·2· ·to final written determination immediately.
`
`·3· · · · · · ·So my question to you is, are you
`
`·4· ·asking us to dispense with the preliminary
`
`·5· ·response that Patent Owner would have by
`
`·6· ·January 30th of 2018?
`
`·7· · · · ·MR. SATCHWELL:· Thank you, Your Honor.
`
`·8· ·That's very helpful.
`
`·9· · · · · · ·Our request is to institute based on
`
`10· ·the prior grounds without any further procedure,
`
`11· ·institute on the grounds presented in this
`
`12· ·petition which are identical to the grounds
`
`13· ·presented in the prior petition, raising a
`
`14· ·substantial question of patentability, and
`
`15· ·institute without further briefing from --
`
`16· ·without a preliminary response from the Patentee,
`
`17· ·given that they already submitted that
`
`18· ·preliminary response.
`
`19· · · · · · ·There is no -- other than
`
`20· ·re-litigating other pre-issues, there is no new
`
`21· ·issues raised here.· So we think that an
`
`22· ·immediate institution is appropriate.
`
`23· · · · · · ·To be clear, procedurally all we have
`
`24· ·asked leave from the board at this point is to
`
`IPR2018-00090
`Petitioners - Ex. 1022 - Page 28
`
`
`
`·1· ·file a motion.· We think that the board would
`
`·2· ·benefit from briefing on this.· We think we can
`
`Page 29
`
`·3· ·address the procedural issues that you've raised.
`
`·4· ·We think there are arguments to be made here on
`
`·5· ·passport precedent and statutory and regulatory
`
`·6· ·grounds.
`
`·7· · · · · · ·And so at this point, I think all
`
`·8· ·we're asking you to do is to receive our motion
`
`·9· ·and to, I would hope, entertain briefing on that,
`
`10· ·but to answer your direct question, we are
`
`11· ·planning to seek immediate institution and then a
`
`12· ·closing of the record based on the prior and
`
`13·
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