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`UNITED STATES PATENT AND TRADEMARK OFFICE
` -------
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` RIOT GAMES, INC.
` Petitioner,
`
` V.
`
` PALTALK HOLDINGS, INC.
` Patent Owner.
` --------
` Case IPR2018-00129
` Patent 5,822,523
`
` --------
`
`TELEPHONIC HEARING HELD BEFORE THE HONORABLE
` Judge Easthom
` Judge Fitzpatric
` Judge Bang
`
` March 26, 2018 - 1:02 p.m.
`
`Reported by:
`
`Tiffany Valentine
`
`Job No. 139829
`
`TSG Reporting - Worldwide 877-702-9580
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 1
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
` -------
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` RIOT GAMES, INC.
` Petitioner,
`
` V.
`
` PALTALK HOLDINGS, INC.
` Patent Owner.
` --------
` Case IPR2018-00129
` Patent 5,822,523
`
` --------
`
`TELEPHONIC HEARING HELD BEFORE THE HONORABLE
` Judge Easthom
` Judge Fitzpatric
` Judge Bang
`
` March 26, 2018 - 1:02 p.m.
`
`Reported by:
`
`Tiffany Valentine
`
`Job No. 139829
`
`TSG Reporting - Worldwide 877-702-9580
`
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 1
`
`
`
`Page 2
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`A P P E A R A N C E S
`
`FOR PETITIONER:
`
`SIDLEY AUSTIN
`
` 1501 K Street, N.W.
`
` Washington, D.C. 20005
`
`BY: SAMUEL DILLON, ESQ.
` SCOTT BORDER, ESQ.
`
`FOR PATENT OWNER:
`MUNCK WILSON MANDALA
` 600 Banner Place Tower
` 12770 Coit Road
` Dallas, Texas 75251
`BY: GREG HOWISON, ESQ.
` KEITH HARDEN, ESQ.
` BRIAN WALKER, ESQ.
`
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 2
`
`
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`Page 3
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` JUDGE EASTHOM: Patent Owner, I
` understand Mr. Howison, Mr. Harden and
` Mr. Walker are all on the line; is that
` correct?
` MR. HOWISON: That is correct.
` JUDGE EASTHOM: And Mr. Howison, are
` you going to speak?
` MR. HOWISON: It's Petitioner's
` call, but I will speak after they speak, I
` guess.
` JUDGE EASTHOM: That will be you,
` though, Mr. Howison?
` MR. HOWISON: I will speak, yes.
` JUDGE EASTHOM: Okay, great.
` And then for Petitioner, we have
` Mr. Border and Mr. Dillon. And I assume
` Mr. Dillon, were you going to speak because
` I heard you speak earlier?
` MR. DILLON: Yes, your Honor. This
` is Sam Dillon and I will be speaking on
` behalf of Petitioner and I have Scott
` Border here with me.
` JUDGE EASTHOM: Great. Great.
` Petitioner, did you pull the court
`
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 3
`
`
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`Page 4
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` reporter in because it's your call?
` MR. DILLON: I did. Yes, your
` Honor.
` JUDGE EASTHOM: So you will file
` that as soon as you get that back from the
` court reporter, obviously?
` MR. DILLON: Yes, your Honor. We
` should have a final copy by the end of this
` week.
` JUDGE EASTHOM: Great, okay. Thank
` you everyone.
` So we're here for IPR 2018-00129,
` 2018-00130, 2018-00131 and 2018-00132.
` Petitioner sent the Board an e-mail
` requesting a conference call to discuss
` whether or not they could file supplemental
` briefing in response to Patent Owner's
` preliminarily response with respect to
` three claim terms. The following three
` claim terms include "aggregated message,"
` "aggregated payload" and "payload portion."
` With that, Petitioner, why don't you
` explain to us why you think there is good
` cause under 37 CFR 42.108-C for you to be
`
`TSG Reporting - Worldwide 877-702-9580
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 4
`
`
`
`Page 5
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` granted additional briefing.
` MR. DILLON: Thank you, your Honor.
` And that is correct; those are the
` three claim terms we identified in our
` e-mail. We think there is good cause to
` submit a preliminarily reply.
` So these patents, the 686 patent and
` 523 patent, have been litigated for a long
` time. The first litigation for the 523
` patent was in filed 1999. It had been
` litigated at least half a dozen times since
` then.
` Throughout that whole process,
` Patent Owner has taken a number of
` positions regarding the meaning of these
` claim terms that we think are inconsistent
` with the position that it is taking now.
` Specifically, each of the claim terms they
` propose in their preliminarily response has
` a slightly different construction, but they
` each include a limitation related to a
` transport layer header or a transport layer
` message header.
` That limitation is something that we
`
`TSG Reporting - Worldwide 877-702-9580
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 5
`
`
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`Page 6
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` had not seen in any of their prior
` constructions for the term. So we filed
` Exhibit 1032, that includes some agreed on
` construction and proposed constructions
` from Patent Owner in the Sony case. And
` those constructions that they -- Patent
` Owner has proposed in that case or agreed
` to in that case as the plain and ordinary
` meaning of those claim terms, none of them
` include the single transport layer message
` header requirement or the transport layer
` header requirement of the claim terms.
` So from our perspective, we were
` fairly surprised to see the limitation be
` added and used as a basis to attempt to
` distinguish our patentability challenge.
` Particularly because Patent Owner had
` relied on these kind of broader, in this
` sense, construction for almost 20 years in
` some cases.
` I'm not sure if the first litigation
` involved these terms, but certainly by the
` mid 2000s they had been proposing
` constructions without this requirement.
`
`TSG Reporting - Worldwide 877-702-9580
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 6
`
`
`
`Page 7
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` So what we think is that that would
` be good cause for a reply for two reasons:
` First, Patent Owner is being inconsistent
` in what they allege the plain and ordinary
` meaning of claim terms would be. These
` patents had both expired and the so the
` claim construction standard at issue now is
` the same that was at issue in all previous
` constructions they proposed that didn't
` include these requirements.
` So the second reason is because
` there was no way we could foresee them to
` propose such a narrow construction in this
` respect, based on their prior
` representations of what the plain and
` ordinary meaning of these terms meant.
` So we would request a preliminarily
` reply to respond to this construction. And
` to the extent that the Board would find it
` helpful, explain why we think those
` constructions do not distinguish from our
` patentability challenge.
` We would also be happy to file
` additional examples of Patent Owner's prior
`
`TSG Reporting - Worldwide 877-702-9580
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 7
`
`
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`Page 8
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` construction of these terms that are
` inconsistent with this current example.
` We think a brief between three and
` five pages could accomplish this. We don't
` think we need many pages fairly straight
` forward. We were caught off guard by the
` inconsistent position and would like the
` opportunity to brief it.
` I am also happy to answer any
` questions, Your Honor.
` JUDGE EASTHOM: Thank you,
` Mr. Dillon.
` You said Exhibit 1032 and I have the
` IPR 2018-129 case up. I see that exhibit
` there.
` Is that the same exhibit number in
` all the cases?
` MR. DILLON: Yes, your Honor. It is
` the joint claim construction statement from
` the PalTalk versus Sony case from 2010 and
` it should be the same exhibit in all four
` proceedings.
` JUDGE EASTHOM: Okay. Does that
` have all three of these terms?
`
`TSG Reporting - Worldwide 877-702-9580
`
`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 8
`
`
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`Page 9
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` MR. DILLON: It does, your Honor.
` I can give you --
` JUDGE EASTHOM: I see payload
` portion on page two. Maybe I don't have --
` go ahead.
` MR. DILLON: There is an exhibit --
` this is a District Court document so there
` is the initial cover document and followed
` by Exhibit A. And then in Exhibit A on
` pages 14 to 15 is a proposed construction
` for aggregated payload. And on Page 17 is
` a proposed construction for aggregated
` message.
` JUDGE EASTHOM: Okay, thank you.
` You say 16 and 17? I am sorry.
` MR. DILLON: For aggregated payload
` -- I will confirm by looking at the
` document -- it is 14 and 15 of Exhibit A.
` And then for aggregated message, it is Page
` 17 of Exhibit A. Both are of the IPR
` Exhibit 1032.
` JUDGE EASTHOM: Okay. I think I see
` it. I see aggregated payload on page 14,
` aggregated message on Page 17. Okay.
`
`TSG Reporting - Worldwide 877-702-9580
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 9
`
`
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`Page 10
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` Patent Owner, can you respond to
` Petitioner, Mr. Howison?
` MR. HOWISON: Basically, you know,
` Petitioner's had the opportunity to file a
` petition. They have had opportunity to
` consider what the claim construction is.
` They clearly have gone in and presented the
` Board with the prior claim constructions.
` They made the Board aware that there are
` prior claim constructions.
` They have taken a claim construction
` position, which they're entitled to do of
` plain and ordinary meaning. And they have
` clearly said on page six of the 129
` petition that "because the precise scope is
` irrelevant to this proceeding, the Board
` need not expressly construe the terms."
` So the Petitioner has been very
` clear what their claim construction is and
` they don't see that anything more is
` needed. But even more so, the Petitioner
` has basically used their 14,000 words and
` they had the opportunity to address these
` issues in the petition.
`
`TSG Reporting - Worldwide 877-702-9580
`
`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 10
`
`
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`Page 11
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` So to provide them -- I mean,
` they're close to -- some of those petitions
` have 40 words left or 300. So to provide
` them five or six pages of additional
` argument when they could have put this in
` first -- this is not a surprise to them,
` that there is an issue with it. They want
` to explain ordinary meaning.
` I think they have had opportunity
` and I don't see why extending their amount
` of words would be fair at all to the Patent
` Owner.
` JUDGE EASTHOM: Okay. Can I ask a
` question, Mr. Howison? Is your friend's
` characterization fair, though, that you
` have shifted your position a little bit
` from what happened in District Court?
` MR. HOWISON: I think that the
` position is as we as patent practitioners
` have the obligation when we prepared the
` petitions, to look at you are the and come
` up with what we consider to be a reasonable
` position.
` I wasn't part of the underlying
`
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 11
`
`
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`Page 12
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` litigation, so I don't know why these terms
` were agreed to or what type of dynamics
` went on in the District Court. I'm sure
` there were some that came up with these
` agreed positions. They have changed over
` time, is my understanding.
` But we looked at it in terms of
` patent practitioners before the Patent
` Office, to come up with what we consider to
` be, based upon reading specification, a
` fair reading of it. That's been our
` position with respect to the claim terms.
` JUDGE EASTHOM: Okay. If we did
` grant some briefing, Mr. Howison, would you
` -- would it help you to give you some extra
` pages in that regard?
` MR. HOWISON: Well, I think that we,
` of course, have 3500 words left. So we
` haven't used ours. But again, we would of
` course request additional pages. But we
` again, oppose the granting of Petitioner
` additional pages.
` And again, they clearly understood
` the situation. They had presented the
`
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 12
`
`
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`Page 13
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` Board already with a position that here is
` patent practitioners -- the Patent Owner's
` position. And all those terms that they
` just talked about, they could have put
` those in the petition, they actually on
` page six did talk about Patent Owner's
` previous description with aggregating,
` messaging server. And they talked about
` those and dedicated time to those.
` They could have dedicated time to
` all the other ones, and said why they
` didn't think they should be expanded. But
` to sit there and say Patent Owner -- we
` will assume Patent Owner is restricted to
` what was said before, you know, and, 'oh,
` we're surprised.'
` I just don't see how Petitioner can
` be surprised at this point.
` JUDGE EASTHOM: Okay. Thank you
` very much, Patent Owner.
` I will confer briefly with my panel
` and we will be right back to you. Please
` hold on for one second.
` (Whereupon, a brief pause in
`
`TSG Reporting - Worldwide 877-702-9580
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 13
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`
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`Page 14
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` proceedings took place.)
` JUDGE EASTHOM: Okay. Thank you
` both for the info from both sides. We
` appreciate it.
` Mr. Howison and Mr. Dillon, and also
` the other counsel on the line, given the
` nature of what seems there has been a
` little bit of a shift and this looks like
` the close case probably with claim
` construction, so it would greatly help us
` as a panel to sort this out and come to the
` correct result if we can get input from
` both sides at this point. So we're going
` to grant the Petitioner's motion. It will
` be five pages, due next Friday.
` I'm going to ask Petitioner if they
` can meet that deadline, and then I give
` Patent Owner until the following Wednesday
` to submit a sur reply or whatever you want
` to call it. We will call one the sur
` reply, and the other one sur sur reply.
` So with that said, Petitioner is
` Friday doable for you?
` MR. DILLON: Just to confirm, your
`
`TSG Reporting - Worldwide 877-702-9580
`
`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 14
`
`
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`Page 15
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` Honor, do you mean Friday the 6th or Friday
` the 30th?
` JUDGE EASTHOM: Friday the 30th.
` MR. DILLON: Let me confer with my
` co-counsel for one moment.
` (Whereupon, a brief pause in
` proceedings took place.)
` MR. DILLON: This is Sam Dillon.
` We can file a five page reply by
` Friday the 30th.
` JUDGE EASTHOM: Right. Okay.
` Just to make clear, you will only be
` citing to whatever evidence is currently on
` the record. We are not introducing any
` more exhibits or evidence, correct?
` MR. DILLON: We can make our
` arguments based on the current record.
` JUDGE EASTHOM: Patent Owner, will
` you be able to handle that request for five
` page sur sur reply due on the following
` Wednesday, which is after this Friday? I
` will give you the date of --
` MR. HOWISON: Well, I mean we're
` going to receive it on Friday and the
`
`TSG Reporting - Worldwide 877-702-9580
`
`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 15
`
`
`
`Page 16
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` holiday weekend. So I think Wednesday -- I
` think Friday would be better, the 6th.
` JUDGE EASTHOM: Okay.
` Is Good Friday this Friday?
` MR. DILLON: Your Honor, for
` Petitioner, this Friday works fine for us.
` JUDGE EASTHOM: Okay. So if we have
` both on the two successive Fridays, then we
` will go Friday the 30th and then the
` following Friday will be April 6.
` So we will call it March 30,
` Petitioner, five page sur reply due. And
` Patent Owner, your sur sur reply due on
` April 6.
` Do we have any questions,
` Petitioner?
` MR. DILLON: No, your Honor. Thank
` you very much.
` JUDGE EASTHOM: You're welcome.
` Patent Owner?
` MR. HOWISON: My only concern is
` getting restricted to five pages because
` this is -- we have already addressed our
` claim construction issues in the brief
`
`TSG Reporting - Worldwide 877-702-9580
`
`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 16
`
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` TELEPHONIC PROCEEDINGS
` based upon Petitioner's position. And now
` Petitioner is actually going to take a
` different position with more argument and I
` wonder if five pages is enough for our sur
` reply on the Patent Owner side.
` JUDGE EASTHOM: Usually sur reply is
` limited to whatever the reply is, and
` usually less pages, in my experience.
` Also, I don't really think that
` whatever petitioner is coming up with is
` going to be much of a surprise based on
` what they're proposing here, which is, to,
` I think, highlight what your previous claim
` constructions have been in the past. So
` I'm he going to just limit it to five
` pages.
` MR. HOWISON: Okay. Understood.
` JUDGE EASTHOM: Okay. Thank you
` very much. Meeting adjourned.
` (Time noted 1:20 p.m.)
`
`TSG Reporting - Worldwide 877-702-9580
`
`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 17
`
`
`
`Page 18
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` TELEPHONIC PROCEEDINGS
` C E R T I F I C A T E
`
`STATE OF NEW YORK )
` : SS.:
`COUNTY OF NASSAU )
`
` I, TIFFANY VALENTINE, a Notary
`Public for and within the State of New York, do
`hereby certify:
`
` That the witness whose examination
`is hereinbefore set forth was duly sworn and
`that such examination is a true record of the
`testimony given by that witness.
`
` I further certify that I am not
`related to any of the parties to this action by
`blood or by marriage and that I am in no way
`interested in the outcome of this matter.
`
` DATED: 3-30-2018
`
` ___________________________
` TIFFANY VALENTINE
`
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`IPR2018-00131
`Riot Games, Inc. v. PalTalk Holdings, Inc.
`Ex. 1036, p. 18
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