·1· · · · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
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`·2· · · · · · BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·3· · · · · · · · · · · · · · ·- - -
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`·4
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`·5
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`·6· ·INTEL CORP., and CAVIUM, INC.· ) Case IPR2018-00226
`· · · · · · · · · · ·Petitioners,· ·) Patent No. 7,124,205 B2
`·7· · · · · · vs.· · · · · · · · · ·) Case IPR2018-00234
`· · ·ALACRITECH, INC.,· · · · · · · ) Patent No. 8,805,948 B2
`·8· · · · · · · · · ·Patent Owner.· )
`· · ·-· -· -· -· -· -· -· -· -· -· ·)
`·9· ·CAVIUM, INC.,· · · · · · · · · ) Case IPR2018-00401
`· · · · · · · · · · ·Petitioner,· · ) Patent No. 7,945,699
`10· · · · · · vs.· · · · · · · · · ·)
`· · ·ALACRITECH, INC.,· · · · · · · )
`11· · · · · · · · · ·Patent Owner.· )
`· · ·-· -· -· -· -· -· -· -· -· -· ·)
`12
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`14
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`15· · · · · · · · TRANSCRIPT OF TELEPHONIC HEARING
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`16· · · · BEFORE CHARLES J. BOUDREAU AND STEPHEN C. SIU,
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`17· · · · · · · · ·ADMINISTRATIVE PATENT JUDGES
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`18· · · · · · · · · · TUESDAY, OCTOBER 2, 2018
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`19· · · · · · · · · · · · · 12:00 P.M.
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`20
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`21
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`22
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`23· ·Reported by:
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`24· · · · · · TERI J. NELSON
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`25· · · · · · CSR NO. 7682, RPR
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`Alacritech Ex. 2401 Page 01
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`Page 2
`·1· · · · · · Reporter's Transcript of Telephonic Hearing,
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`·1· ·APPEARANCES (All Telephonic)(Continued):
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`Page 4
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`·2· ·Tuesday, October 2, 2018, 12:00 P.M., before
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`·2
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`·3· ·Charles J. Boudreau and Stephen C. Siu, Administrative
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`·3· ·FOR PETITIONER CAVIUM, INC. (Continued):
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`·4· ·Patent Judges, before Teri J. Nelson, CSR No. 7682, RPR.
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`·4· · · · · · RIMON, P.C.
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`·5
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`·6· ·APPEARANCES (All Telephonic):
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`·7
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`·5· · · · · · BY:· KARINEH KHACHATOURIAN, ESQ.
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`·6· · · · · · · · ·DAVID XUE, ESQ.
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`·7· · · · · · 800 Oak Grove Avenue
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`·8· ·ADMINISTRATIVE PATENT JUDGES:
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`·8· · · · · · Suite 250
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`·9· · · · · · JUDGE CHARLES J. BOUDREAU
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`·9· · · · · · Menlo Park, California 94025
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`10· · · · · · JUDGE STEPHEN C. SIU
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`10· · · · · · 650-461-4433
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`11
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`11· · · · · · karinehk@rimonlaw.com
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`12· ·FOR PETITIONER INTEL CORPORATION:
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`12· · · · · · david.xue@rimonlaw.com
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`13· · · · · · WEIL, GOTSHAL & MANGES LLP
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`13
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`14· · · · · · BY:· GARLAND T. STEPHENS, ESQ.
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`14· ·FOR PATENT OWNER ALACRITECH, INC.:
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`15· · · · · · · · ·MELISSA HOTZE, ESQ.
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`15· · · · · · QUINN EMANUEL URQUHART & SULLIVAN, LLP
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`16· · · · · · 700 Louisiana
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`17· · · · · · Suite 1700
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`16· · · · · · BY:· JAMES M. GLASS, ESQ.
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`17· · · · · · 51 Madison Avenue
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`18· · · · · · Houston, Texas 77002-2784
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`18· · · · · · 22nd Floor
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`19· · · · · · 713-546-5000
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`19· · · · · · New York, New York 10010
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`20· · · · · · garland.stephens@weil.com
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`20· · · · · · 212-849-7000
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`21· · · · · · melissa.hotze@weil.com
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`21· · · · · · jimglass@quinnemanuel.com
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`22
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`23
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`24
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`25
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`24
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`25
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`Page 3
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`·1· ·APPEARANCES (All Telephonic)(Continued):
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`·1· ·APPEARANCES (All Telephonic)(Continued):
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`·2
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`·2
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`Page 5
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`·3· ·FOR PETITIONER INTEL CORPORATION (Continued):
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`·3· ·FOR PATENT OWNER ALACRITECH, INC. (Continued):
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`·4· · · · · · WEIL, GOTSHAL & MANGES LLP
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`·4· · · · · · QUINN EMANUEL URQUHART & SULLIVAN, LLP
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`·5· · · · · · BY:· ANNE M. CAPPELLA, ESQ.
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`·5· · · · · · BY:· JOSEPH M. PAUNOVICH, ESQ.
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`·6· · · · · · 201 Redwood Shores Parkway
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`·6· · · · · · 865 South Figueroa Street
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`·7· · · · · · Redwood Shores, California 94065
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`·7· · · · · · Tenth Floor
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`·8· · · · · · 650-802-3141
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`·8· · · · · · Los Angeles, California 90017
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`·9· · · · · · anne.cappella@weil.com
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`·9· · · · · · 213-443-3000
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`10
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`10· · · · · · joepaunovich@quinnemanuel.com
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`11· ·FOR PETITIONER CAVIUM, INC.:
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`11· · · · · · -and-
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`12· · · · · · DUANE MORRIS LLP
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`12· · · · · · QUINN EMANUEL URQUHART & SULLIVAN, LLP
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`13· · · · · · BY:· PATRICK D. McPHERSON, ESQ.
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`13· · · · · · BY:· SEAN LI, ESQ.
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`14· · · · · · 505 9th Street, N.W.
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`14· · · · · · 50 California Street
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`15· · · · · · Suite 1000
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`15· · · · · · 22nd Floor
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`16· · · · · · Washington, DC 20004-2166
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`16· · · · · · San Francisco, California 94111
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`17· · · · · · 202-776-7800
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`17· · · · · · 415-875-6600
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`18· · · · · · pdmcpherson@duanemorris.com
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`18· · · · · · seanli@quinnemanuel.com
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`19
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`20
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`Page 6
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`·1· · · · · · · · TUESDAY, OCTOBER 2, 2018
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`·2· · · · · · · · · · · · 12:00 P.M.
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`·3
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`·4· · · · · · JUDGE BOUDREAU:· Hi.
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`·5· · · · · · This is Judge Boudreau.
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`·6· · · · · · I'm on the line with Judge Siu.
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`·7· · · · · · This is the call in cases IPR 2018-00226, 234
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`·8· ·and 401.
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`·9· · · · · · Are counsel for Intel, Cavium and Alacritech on
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`10· ·the line?
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`11· · · · · · MR. STEPHENS:· Counsel for Intel is here,
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`12· ·Your Honor, Garland Stephens of Weil, Gotshal & Manges
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`13· ·representing Intel.
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`14· · · · · · Also, my colleague Melissa Hotze is on the line,
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`15· ·and I believe my colleague Anne Cappella may be on the
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`16· ·line as well.
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`17· · · · · · JUDGE BOUDREAU:· Thank you.
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`18· · · · · · MR. McPHERSON:· And Your Honor, this is Pat
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`19· ·McPherson, counsel for Cavium.
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`20· · · · · · I have Karineh Khachatourian and David Xue on
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`21· ·the line as well.
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`22· · · · · · JUDGE BOUDREAU:· Thank you.
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`23· · · · · · And do we have counsel for Alacritech?
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`24· · · · · · MR. GLASS:· Yes, Your Honor.
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`25· · · · · · This is Jim Glass, counsel for Alacritech.
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`Page 7
`·1· · · · · · With me on the phone today is Joe Paunovich and
`·2· ·Sean Li.
`·3· · · · · · MR. PAUNOVICH:· Good afternoon, Your Honor.
`·4· · · · · · JUDGE BOUDREAU:· Thank you.
`·5· · · · · · And do any of the parties have a court reporter
`·6· ·on the line?
`·7· · · · · · MR. STEPHENS:· Your Honor, this is counsel for
`·8· ·Intel, Garland Stephens.
`·9· · · · · · We arranged for a court reporter after
`10· ·Alacritech declined to do so.
`11· · · · · · JUDGE BOUDREAU:· All right.· So we do have one,
`12· ·then?
`13· · · · · · MR. STEPHENS:· We do.
`14· · · · · · JUDGE BOUDREAU:· Okay.· Thank you.
`15· · · · · · And if I can just ask you to please file the
`16· ·transcript from the court reporter as soon as practical,
`17· ·we'd appreciate it.
`18· · · · · · MR. STEPHENS:· We will do that.
`19· · · · · · JUDGE BOUDREAU:· Thank you.
`20· · · · · · So Patent Owner requested this call to request
`21· ·to file a motion for additional discovery, so I'll let
`22· ·Patent Owner go ahead and -- and speak now.
`23· · · · · · MR. PAUNOVICH:· Thank you, Your Honor.
`24· · · · · · This is Joe Paunovich on behalf of Patent Owner
`25· ·Alacritech.
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`Page 8
`·1· · · · · · We are seeking additional discovery in the three
`·2· ·pending proceedings, 2018-226, 234 and 401.
`·3· · · · · · Specifically we're seeking documents
`·4· ·memorializing the -- the nature and scope of the privity
`·5· ·and proxy status as well as the rights and obligations
`·6· ·between the Petitioners who have identified themselves as
`·7· ·the sole real parties in interest with respect to the
`·8· ·other joining Petitioners.
`·9· · · · · · Just to be very clear at the -- at the start of
`10· ·this, this is -- this request is quite different from the
`11· ·request that was made in the co-pending earlier
`12· ·proceedings, whereas in the --
`13· · · · · · JUDGE BOUDREAU:· How so?
`14· · · · · · MR. PAUNOVICH:· Yes, Your Honor?
`15· · · · · · JUDGE BOUDREAU:· Oh.
`16· · · · · · I just said how so?
`17· · · · · · MR. PAUNOVICH:· It is different because this
`18· ·is -- whereas the Board had exercised its discretion, as
`19· ·it had the right to do so in allowing an amendment of
`20· ·real parties in interest it -- in connection with those
`21· ·co-pending proceedings because the one-year time bar of
`22· ·315(a) -- (b) had not run, here, if the real party in
`23· ·interest, including Dell, Wistron and CenturyLink
`24· ·entities is the same, and we do contend that it is, there
`25· ·would be no reason for it to be any different, then the
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`Page 9
`·1· ·one-year statutory bar would apply, requiring a single
`·2· ·and sole remedy, termination of these three proceedings.
`·3· · · · · · So it is a very different footing from the
`·4· ·earlier proceedings in that the Board would -- would not
`·5· ·have discretion in this instance if there -- if there are
`·6· ·real parties in -- other real parties in interest,
`·7· ·including Dell, Wistron and CenturyLink, to allow an
`·8· ·amendment of RPIs based on either a joinder or otherwise.
`·9· · · · · · JUDGE BOUDREAU:· What evidence does Patent Owner
`10· ·currently have of an arrangement or any kind of
`11· ·relationship between each of the Petitioners in these
`12· ·cases?
`13· · · · · · MR. PAUNOVICH:· Sure.
`14· · · · · · First and foremost, this Board already found, in
`15· ·connection with our previous conference in the co-pending
`16· ·proceedings, this is at, as an example, Paper 71 of
`17· ·IPR2017-1405, that the existence of the indemnity
`18· ·agreement between, for example, Intel and Dell has
`19· ·been -- was readily admitted and made of record and that
`20· ·that was made of record as of the filing dates of the
`21· ·initial co-pending proceeding, so this dates back to May
`22· ·or June of last year, and the present petitions were
`23· ·filed in -- around about November, early December of
`24· ·2017, which would be more than a year from the filing
`25· ·date -- service date, excuse me, of the underlying
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`Alacritech Ex. 2401 Page 03
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`Page 10
`·1· ·complaints against Dell, Wistron and CenturyLink.
`·2· · · · · · So we have the Board finding, first and
`·3· ·foremost, and which flows from Intel's and Dell's
`·4· ·admission that those agreements were readily admitted and
`·5· ·made of record.
`·6· · · · · · Those agree -- what we don't have are the actual
`·7· ·agreements spelling out the specifics, the nature and
`·8· ·scope of the relationship and the specific rights and
`·9· ·obligations that flow from those long-standing
`10· ·relationships.
`11· · · · · · There's no question that those documents would
`12· ·spell that out, and that was the basis for the additions
`13· ·of Intel and Cavium's intervention in the underlying
`14· ·District Court cases, whereas we have laid out in Patent
`15· ·Owner's response to the instant proceedings, both Cavium
`16· ·and Intel represented to the Court that they were
`17· ·intervening to defend their clients' interests,
`18· ·specifically Dell -- in the case of Intel, Dell, Wistron
`19· ·and the CenturyLink entities.
`20· · · · · · So it's the combination of both the -- the
`21· ·admission of these agreements existing, their
`22· ·intervention in the underlying suit and this Board's
`23· ·finding, express finding from the August 20th hearing
`24· ·that is the -- the basis for the existence of these
`25· ·long-standing agreements, which will prove that the
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`Page 11
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`·1· ·instant petitions are time barred.
`·2· · · · · · JUDGE BOUDREAU:· And I just want to make sure
`·3· ·the record is clear.
`·4· · · · · · Did you say that the Board previously found that
`·5· ·the existence of the indemnification agreement between
`·6· ·Dell and Intel demonstrates that Dell was a real party in
`·7· ·interest at the time that the -- at the time that Intel
`·8· ·filed its petition in the earlier cases?
`·9· · · · · · I don't believe that accurately reflects the
`10· ·record.
`11· · · · · · I believe that what we previously determined was
`12· ·that the issue was moot in the earlier cases because Dell
`13· ·was admittedly a real party in interest by virtue of its
`14· ·filing of a petition with a motion for joinder, which was
`15· ·granted.
`16· · · · · · MR. PAUNOVICH:· That's correct, Your Honor.
`17· · · · · · And I -- I apologize if I misspoke.
`18· · · · · · I was not intending to do so.
`19· · · · · · The basis of your ruling that flowed from the
`20· ·August 20th conference was, and I'm just reading from it:
`21· · · · · · · · · ·"Petitioner Intel Corporation responded
`22· · · · · · in essence that there is nothing in the details
`23· · · · · · of any indemnification agreements that affect
`24· · · · · · these proceedings before the Board and that the
`25· · · · · · existence of the indemnification agreement
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`Page 12
`·1· · · · · · between Intel Corp. and Dell, Inc. is readily
`·2· · · · · · admitted and of record."
`·3· · · · · · And the ultimate finding was that counsel for
`·4· ·Intel Corp. and Dell, Inc. acknowledged that Dell, Inc.
`·5· ·is a real party in interest in these proceedings at least
`·6· ·by virtue of Dell, Inc. joining as a party to these
`·7· ·proceedings.
`·8· · · · · · That's the difference between those proceedings
`·9· ·and these, whereas in that set of co-pending proceedings
`10· ·where the one-year bar would not have been exceeded, the
`11· ·Board exercised its discretion, as we understood it, to
`12· ·allow for an additional identification of RPIs.
`13· · · · · · And there was some disagreement, as the Board
`14· ·may recall, at the September 13th hearing on those
`15· ·matters, whereas, at least as Petitioner's counsel
`16· ·recalls the -- the call, I believe it was Judge Boudreau
`17· ·had questioned Intel and Dell's counsel about the timing
`18· ·and existence of the indemnity agreement and whether or
`19· ·not there would be -- they -- Dell, for example, would be
`20· ·a real party in interest at the time of the initial
`21· ·filings of the agreements -- I'm sorry, the petitions.
`22· · · · · · We do, of course, understand that the basis of
`23· ·the Board's ruling in the co-pending proceedings was that
`24· ·it was moot because of the joinders.
`25· · · · · · Here, in these instant proceedings, it cannot be
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`Page 13
`·1· ·mooted by a joinder because if they are real parties in
`·2· ·interest, then the one-year bar has been exceeded under
`·3· ·315(b), and the term- -- the proceedings must be
`·4· ·terminated.
`·5· · · · · · JUDGE BOUDREAU:· All right.· Thank you,
`·6· ·Mr. Paunovich.
`·7· · · · · · We'll hear now from Petitioner's counsel.
`·8· · · · · · MR. STEPHENS:· Your Honor, this is Garland
`·9· ·Stephens representing Intel.
`10· · · · · · Before I address any of the merits that
`11· ·Mr. Paunovich raised, I want to raise a procedural issue,
`12· ·which is why now?
`13· · · · · · The Patent Owner filed their response to the
`14· ·petition several weeks ago, the day after, in fact, they
`15· ·asked for this conference.
`16· · · · · · This is not a new issue.· They have known about
`17· ·it for many weeks, as Your Honor knows, because we had a
`18· ·phone call about this in the other IPRs, as Mr. Paunovich
`19· ·talked about.
`20· · · · · · I don't see any demonstrated need for this
`21· ·discovery 'cause they already put in 15 pages of briefing
`22· ·in each of the responses to the three IPRs that this call
`23· ·is about.
`24· · · · · · Why did they wait to now to raise all of this?
`25· · · · · · I think it should be denied -- the request for
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`Alacritech Ex. 2401 Page 04
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`·1· ·briefing should be denied on that basis alone.
`·2· · · · · · We also disagree that indemnity alone can -- is
`·3· ·sufficient to raise any issue of RPI or a one-year bar,
`·4· ·so we don't think that the admitted existence of
`·5· ·indemnity agreements, which also, by the way, do not
`·6· ·necessarily establish indemnity for any of the
`·7· ·patents-in-suit here as opposed to some of the
`·8· ·patents-in-suit in the prior IPRs that we talked about,
`·9· ·that there is such an indemnity obligation, but even if
`10· ·there were, we don't think that that is sufficient to
`11· ·raise this one-year bar issue that Mr. Paunovich says.
`12· · · · · · But before any of that, we think the procedural
`13· ·issue of this simply not being timely suggests that the
`14· ·Board should deny it on that ground alone.
`15· · · · · · JUDGE BOUDREAU:· Well, to the extent that RPI
`16· ·issues are jurisdictional, is it possible for them to be
`17· ·waived?
`18· · · · · · MR. STEPHENS:· The discovery can certainly be
`19· ·waived, Your Honor, and they've already made their
`20· ·15 pages of arguments in each of the three responses that
`21· ·have already been filed.
`22· · · · · · So the discovery -- the request to file a motion
`23· ·for additional discovery is certainly within the Board's
`24· ·discretion.
`25· · · · · · They've already presented the issue in their
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`Page 15
`·1· ·briefing, so you will be deciding the issue one way or
`·2· ·another.
`·3· · · · · · This is about whether or not they will be
`·4· ·permitted to file a motion for discovery, which will then
`·5· ·be briefed, and presumably we'll have another call about
`·6· ·that after it's fully briefed.
`·7· · · · · · To be clear, Your Honor, I think what
`·8· ·Mr. Paunovich has just admitted to shows that we were
`·9· ·correct when we said at the hearing on the other IPRs
`10· ·that Intel and the other Petitioners never made any
`11· ·admission that -- that indemnification alone would
`12· ·cau- -- give rise to this one-year bar, and even if that
`13· ·were an issue in the prior case, which it's not, it
`14· ·certainly wouldn't.
`15· · · · · · What we -- what we agreed is that once somebody
`16· ·is a party by virtue of having filed a motion to join and
`17· ·then being joined, then they're a real party in interest
`18· ·because they're a party, right, and all of these -- all
`19· ·of the case law concerning real party in interest is
`20· ·about people who are not parties, who are hidden real
`21· ·parties in interest who give rise to potential estoppel
`22· ·and one-year bar issues because even though they're not
`23· ·parties, they are real parties in interest.
`24· · · · · · Here -- in the prior IPRs, the -- the issue that
`25· ·the Board found and what we agreed with is that, you
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`Page 16
`·1· ·know, once they're an actual party, well, of course they
`·2· ·are also a real party in interest, but they're a party,
`·3· ·so all of the legal issues surrounding real party in
`·4· ·interest are irrelevant for that reason.· They're an
`·5· ·actual party.
`·6· · · · · · JUDGE BOUDREAU:· Well, I think it's a fair
`·7· ·reading of what we entered in the earlier cases is that
`·8· ·we weren't really reaching a decision as to whether or
`·9· ·not the indemnification agreement would make either Dell
`10· ·an RPI in Intel cases or whether Intel would be an RPI in
`11· ·any case that Dell filed.
`12· · · · · · MR. STEPHENS:· I don't disagree with that,
`13· ·Your Honor.
`14· · · · · · I agree the issue was mooted, and you did not
`15· ·have to reach that issue.
`16· · · · · · I think you don't have to reach the issue here
`17· ·either simply because the -- the Patent Owner's already
`18· ·fully briefed this and didn't even bother to seek
`19· ·discovery until the day before they filed their
`20· ·opposition, which includes 15 pages on the merits of this
`21· ·issue.
`22· · · · · · JUDGE BOUDREAU:· Mr. Paunovich, could you
`23· ·respond to the timing issue there?
`24· · · · · · MR. PAUNOVICH:· Yes.
`25· · · · · · Thank you, Your Honor.
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`Page 17
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`·1· · · · · · Number one, this is, in part, nec- --
`·2· ·necessitated by what we --
`·3· · · · · · I frankly wish we had a transcript from the
`·4· ·August 20th hearing.
`·5· · · · · · On September 13th, we were, frankly, very
`·6· ·surprised to hear the position taken by Petitioners at
`·7· ·the hearing.
`·8· · · · · · Whereas we understood and heard very clearly the
`·9· ·representations made on the earlier hearing, on
`10· ·September 13th, it was stated very differently, that all
`11· ·that was admitted during that call was that -- the point
`12· ·about the mooting of the issue relating to the joinders.
`13· · · · · · We expected and intended to rely on the -- the
`14· ·representations made by counsel during the August 20th
`15· ·hearing, and those circumstances changed.
`16· · · · · · The second point is that on September 7th, the
`17· ·Federal Circuit issued the Worlds v. Bungie decision,
`18· ·which dealt with a factual scenario that is nearly
`19· ·identical to the one that we're dealing with here,
`20· ·specifically in that case where Activision was a real
`21· ·party in interest, an indemnity who had been sued, and
`22· ·their one-year time bar had run, and later a petition was
`23· ·filed, and ultimately, the Federal -- and -- and that
`24· ·issue was overlooked by -- by that particular Board, not
`25· ·found to be a sufficient failure to name an RPI and not a
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`·1· ·time bar.
`·2· · · · · · The Federal Circuit found exactly the opposite
`·3· ·and remanded that for further proceedings.
`·4· · · · · · That decision came out on September 7th, 2018.
`·5· · · · · · That decision, combined as well with the AIIT v.
`·6· ·RPX decision just from July here, has greatly clarified
`·7· ·this issue as to what the Board is required to consider.
`·8· · · · · · So we have changing circumstances that are
`·9· ·necessitating the raising of this issue now.
`10· · · · · · And lastly, I would say Your Honors honed in on
`11· ·the key point, that this is a jurisdictional issue, and
`12· ·it can't -- it can't be waived, and therefore, the
`13· ·discovery can't be waived either.
`14· · · · · · It's a live issue that does need to be decided,
`15· ·and as the RPX decision indicates, we need to delve into
`16· ·the specifics of what these relationships are.
`17· · · · · · It's not sufficient to simply rely on an
`18· ·admission that an indemnity relationship exists and say
`19· ·that's the end of the -- the issue.
`20· · · · · · We have to -- the Board is required, under the
`21· ·Federal Circuit's recent precedent, to delve further into
`22· ·the nature of that relationship and the rights and
`23· ·obligations.
`24· · · · · · So although we have raised the issue in our
`25· ·Patent Owner response, what we don't have are the
`
`·1· · · · · · Go ahead.
`·2· · · · · · MR. STEPHENS:· First of all, I believe the RPX
`·3· ·case certainly says that it was not changing the law and
`·4· ·that in fact --
`·5· · · · · · JUDGE BOUDREAU:· Just to be clear, is this
`·6· ·Mr. Stephens?
`·7· · · · · · MR. STEPHENS:· Oh, yes.
`·8· · · · · · I apologize, Your Honor.
`·9· · · · · · Garland Stephens representing Intel.
`10· · · · · · JUDGE BOUDREAU:· And also, I didn't mean to cut
`11· ·off Cavium's counsel here.
`12· · · · · · I'll give them a chance to respond after as
`13· ·well.
`14· · · · · · MR. STEPHENS:· Okay.· Thank you.
`15· · · · · · Yeah.
`16· · · · · · I don't believe that Worlds versus Bungie is a
`17· ·change in the law either.
`18· · · · · · My recollection from it, and I apologize, I
`19· ·didn't read it from end to end before this call, is that
`20· ·it primarily addresses the issue of burden of proof.
`21· · · · · · So I don't think that either of those constitute
`22· ·a change in the law.
`23· · · · · · And in any event, RPX was issued back in July,
`24· ·and of course we know that the Patent Owner was fully
`25· ·aware of it because they sought discovery in the other
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`Page 19
`·1· ·specifics that the Board is required to look into to rule
`·2· ·on this issue.
`·3· · · · · · That's the discovery that we're seeking.
`·4· · · · · · JUDGE BOUDREAU:· Is it Patent Owner's position
`·5· ·that the AIIT versus RPX and the Worlds versus Bungie
`·6· ·cases constituted a change in the law, or were they
`·7· ·merely clarifying what had been the law all along?
`·8· · · · · · MR. PAUNOVICH:· I think what both of those
`·9· ·decisions spell out is that the -- the PTAB has taken an
`10· ·unduly restrictive view of 315(b) to date, and therefore,
`11· ·they have changed the law, so to speak, in how the PTAB
`12· ·has been instructed to consider that issue.
`13· · · · · · And so the -- these are new developments in
`14· ·addition to the change in position taken by Petitioners
`15· ·at the September 13th hearing that necessitated our
`16· ·raising this issue now.
`17· · · · · · And contrary to what Mr. Stephens had said, we
`18· ·raised this issue, asked for this discovery before filing
`19· ·our Patent Owner response.
`20· · · · · · It took a number of days to get agreement on
`21· ·proposed dates for a hearing with the Board on this
`22· ·issue, but it is not the case that we waited until after
`23· ·filing our Patent Owner response to raise this with them.
`24· · · · · · MR. STEPHENS:· May I address that, Your Honor?
`25· · · · · · JUDGE BOUDREAU:· You may.
`
`Page 21
`·1· ·IPRs based on it and didn't seek discovery in this one.
`·2· · · · · · And Mr. Paunovich likes to mischaracterize what
`·3· ·I say, as he did with respect to the prior hearing.
`·4· · · · · · I said that they sought leave to file the motion
`·5· ·that this call is about the day before they filed their
`·6· ·POR.
`·7· · · · · · I didn't say they waited until after.
`·8· · · · · · They did wait until the day before they filed
`·9· ·their POR, and they filed 15 pages of briefing in each
`10· ·one of the PORs in the IPRs at issue here that address
`11· ·this issue.
`12· · · · · · And since they didn't seek discovery in a timely
`13· ·way, despite having knowledge of this issue for months,
`14· ·it is certainly within this Board's discretion to deny
`15· ·them leave to brief it.
`16· · · · · · If we do brief it, of course we'll address the
`17· ·issues of the details of these cases, but I don't think
`18· ·that the Board should exercise its discretion to permit
`19· ·this discovery, given that it is clearly late, very late.
`20· · · · · · I don't know what paper they propose to use this
`21· ·discovery, and since they've already filed their POR, and
`22· ·despite knowing about it didn't seek this discovery until
`23· ·it was too late to use it in the POR.
`24· · · · · · One other -- one last point I'd like to say.
`25· · · · · · We wish there were a transcript from the prior
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`Page 22
`·1· ·hearing as well, and I think it's odd that Mr. Paunovich
`·2· ·says that they wish that there was because we asked them
`·3· ·if they were going to get a court reporter for this one.
`·4· · · · · · Despite having requested this hearing, they said
`·5· ·they did not, so we arranged for a court reporter, and
`·6· ·we're footing the bill for it, even though this is a
`·7· ·phone call that they requested.
`·8· · · · · · So that seems pretty odd to me.
`·9· · · · · · JUDGE BOUDREAU:· I can't make any promises, but
`10· ·I expect that the transcript from the -- last month's
`11· ·hearing will be entered into the record relatively soon,
`12· ·likely within the next week.
`13· · · · · · MR. STEPHENS:· I believe, if -- Your Honor --
`14· · · · · · JUDGE BOUDREAU:· Yeah.
`15· · · · · · MR. STEPHENS:· -- if I may, that the transcript
`16· ·that Mr. Paunovich said he wished existed was the one
`17· ·from the prior call in the prior IPR where we had a
`18· ·discussion about a motion for discovery in that case,
`19· ·just like we're here now.
`20· · · · · · JUDGE BOUDREAU:· Oh, excuse me.
`21· · · · · · MR. STEPHENS:· Yeah.
`22· · · · · · Sorry.
`23· · · · · · MR. PAUNOVICH:· And Your Honor, I guess I would
`24· ·just say, even though we don't have a hearing, what we do
`25· ·have is the Board's ruling, for example, in Paper 71, and
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`Page 23
`·1· ·the thrust of what I was referring to is what the Board
`·2· ·found:
`·3· · · · · · · · · ·"Petitioner Intel Corp. responded," I'm
`·4· · · · · · skipping a portion of the sentence, "that the
`·5· · · · · · existence of the indemnification agreement
`·6· · · · · · between Intel and Dell, Inc. is readily admitted
`·7· · · · · · and of record."
`·8· · · · · · MR. STEPHENS:· That's never been an issue.
`·9· · · · · · We've always admitted that there is an agreement
`10· ·that relates to indemnification.
`11· · · · · · Of course we -- we mentioned that in the -- the
`12· ·papers that we filed to intervene in the District Court
`13· ·case.
`14· · · · · · That has never been something that we have
`15· ·declined to admit.
`16· · · · · · Of course that's the case.
`17· · · · · · What I think is telling is that the -- the
`18· ·Board's ruling that Mr. Paunovich was just reading from
`19· ·is entirely consistent with our recollection of what was
`20· ·said, and that is simply that Dell is a real party in
`21· ·interest by virtue of having actually filed a motion for
`22· ·joinder that was granted, so they're, in fact, a party.
`23· · · · · · JUDGE BOUDREAU:· Are you okay?
`24· · · · · · MR. PAUNOVICH:· We respectfully disagree, but
`25· ·we'll move on from that.
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`Page 24
`·1· · · · · · JUDGE BOUDREAU:· All right.· And just to be
`·2· ·clear, the indemnification agreement between Intel and
`·3· ·Dell has not been produced in the related District Court
`·4· ·litigation either?
`·5· · · · · · MR. PAUNOVICH:· That's correct, Your Honor.
`·6· · · · · · We sought those materials in the District Court.
`·7· · · · · · Intel and other Defendants had refused to
`·8· ·produce them, and the matter is now stayed.
`·9· · · · · · We have no redress to seek them at this stage
`10· ·other than through the additional discovery proceedings
`11· ·here.
`12· · · · · · That's what we need to explore, what the nature
`13· ·of the real party in interest relationship is.
`14· · · · · · MR. STEPHENS:· Your Honor, I disagree with that.
`15· · · · · · Again, this is Garland Stephens representing
`16· ·Intel.
`17· · · · · · We checked with Dell, and they said they did
`18· ·produce that indemnity agreement, the sales agreement
`19· ·that governs indemnity between Intel and Dell, so I don't
`20· ·believe what Mr. Paunovich just said is true.
`21· · · · · · Also, Intel's standard terms and conditions,
`22· ·which govern sales to other parties, are available on the
`23· ·Internet publicly.
`24· · · · · · MR. PAUNOVICH:· If I may address that,
`25· ·Your Honor?
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`Page 25
`
`·1· · · · · · JUDGE BOUDREAU:· Sure.
`·2· · · · · · Briefly.
`·3· · · · · · And then I'd like to hear from Cavium's counsel.
`·4· · · · · · MR. PAUNOVICH:· Sure.
`·5· · · · · · What standard terms and conditions exist for
`·6· ·Intel to broadcast to the world is not relevant to
`·7· ·what -- the nature of the relationship here with these
`·8· ·parties, the Petitioners and the folks who are attempting
`·9· ·to join and that would time bar both themselves as well
`10· ·as Intel and Cavium.· That's the relationship that RPX
`11· ·and the Bungie case require us to delve into, the
`12· ·specifics of the nature and scope of their relationship
`13· ·and the rights and obligations that flow from that so we
`14· ·can determine, as the Federal Circuit has told us we need
`15· ·to, who is the beneficial -- has the beneficial interest
`16· ·and stands to benefit from this.
`17· · · · · · As in RPX, the notion that Intel and Cavium did
`18· ·not seek input or control is insufficient.· That alone is
`19· ·not a basis for finding that real parties in interest do
`20· ·not exist.
`21· · · · · · MR. STEPHENS:· If I may briefly, Your Honor, and
`22· ·I don't want to dominate this here, I certainly want
`23· ·Cavium to have an opportunity to speak as well, but may I
`24· ·briefly respond?
`25· · · · · · JUDGE BOUDREAU:· Yeah.· Go ahead, please.
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`Page 26
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`·1· · · · · · MR. STEPHENS:· Okay.
`·2· · · · · · Again, the agreement that sets out the indemnity
`·3· ·obligations of Intel to Dell with connect -- with respect
`·4· ·to the products that were -- that Dell purchased and are
`·5· ·being accused in that case, that agreement was produced
`·6· ·in the District Court litigation according to Dell, I
`·7· ·believe we checked with them in advance of the -- the
`·8· ·prior hearing, and the indemnity -- the patent indemnity
`·9· ·terms for products purchased by Wistron are under Intel's
`10· ·standard terms and conditions, which are available on the
`11· ·Internet as well.
`12· · · · · · One last point, and that is it isn't just enough
`13· ·that a party in a -- in a litigation have an interest in
`14· ·the outcome of -- of an IPR; right?
`15· · · · · · All co-parties have such an interest, and the
`16· ·law is clear that that's not enough, and in fact, this
`17· ·Board has dealt with the question of indemnity in the
`18· ·past and held that that's not enough either.
`19· · · · · · What has to happen is that these IPRs have to be
`20· ·filed at the behest of one of those parties, and we put
`21· ·in declarations in the prior IPR, and we may well put in
`22· ·similar declarations in these IPRs that Intel filed these
`23· ·IPRs under its own volition and without input and not at
`24· ·the request of any of the Dell, Wistron or CenturyLink.
`25· · · · · · But again --
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`Page 27
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`·1· · · · · · JUDGE BOUDREAU:· Right.
`·2· · · · · · MR. STEPHENS:· -- this is about whether or not
`·3· ·they can file a motion for discovery.
`·4· · · · · · We're not addressing the actual merits.
`·5· · · · · · So if -- you know, if the Board's inclined to
`·6· ·entertain this question, then they -- then the Board can
`·7· ·exercise its discretion to permit the motion for
`·8· ·discovery, and then we will fully brief it, but I
`·9· ·don't -- I think that the Board should, in its
`10· ·discretion, deny this as being too little too late.
`11· · · · · · JUDGE BOUDREAU:· All right.· Thank you,
`12· ·Mr. Stephens.
`13· · · · · · Does Cavium have anything to add?
`14· · · · · · MS. KHACHATOURIAN:· Yes, Your Honor.
`15· · · · · · This is Karineh Khachatourian for Cavium.
`16· · · · · · In addition to what Intel has said, on the
`17· ·401 petition, which is the subject of the '699 patent for
`18· ·shorthand, the '69