`· · ·---------------------------------------------- X
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`· · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
`·3· ·_______________________________________________X
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`·4· ·MODERNA THERAPEUTICS, INC.,
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`·5· · · · · · · · · ·Petitioner,
`· · ·-vs-
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`·7· ·PROTIVA BIOTHERAPEUTICS, INC.,
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`·8· · · · · · · · · ·Patent Owner.
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`·9· ·Case IPR2018-00680(Patent 9,404,127)
`· · ·Case IPR2018-00739 (Patent 9,364,435)
`10· ·----------------------------------------------- X
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`11· · · · · · · · ·Tuesday, April 30, 2019
`· · · · · · · · · · 2:01 p.m. - 2:34 p.m.
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`· · · · · · ·HEARING ON PATENT OWNER'S SUR-REPLY
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`14· · · · ·Panel Judges Present Via Teleconference
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`15· · · · · · · · JUDGE SUSAN L.C. MITCHELL
`· · · · · · · · · JUDGE SHERIDAN K. SNEDDEN
`16· · · · · · · · · JUDGE RICHARD J. SMITH
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`· · · · · · · This cause came on to be heard at the time
`22· ·aforesaid, when and where the following proceedings
`· · ·were stenographically reported by:
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`· · · · · · · · · · · Linda S. Blackburn
`24· · · · · · · · ·Registered Merit Reporter
`· · · · · · · · · Certified Realtime Reporter
`25· · · · · · · ·Certified Realtime Captioner
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`·1· · · · · · · · · A P P E A R A N C E S
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`·2· ·On Behalf of Petitioner:
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`·3· · · ·IRELL & MANELLA LLP
`· · · · ·1800 Avenue of the Stars
`·4· · · ·Los Angeles, California 90067-4276
`· · · · ·BY: MICHAEL R. FLEMING, ESQUIRE
`·5· · · · · ·C. MACLAIN WELLS, ESQUIRE
`· · · · · · ·mfleming@irell.com
`·6· · · · · ·mwells@irell.com
`· · · · · · · · · · · ·(Via Telephone)
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`· · ·On Behalf of Patent Owner:
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`· · · · ·WILSON SONSINI GOODRICH & ROSATI
`·9· · · ·Attorneys for Patent Owners
`· · · · ·701 Fifth Avenue
`10· · · ·Suite 5100
`· · · · ·Seattle, Washington 98104-7036
`11· · · ·BY: MICHAEL T. ROSATO, ESQUIRE
`· · · · · · ·mrosato@wsgr.com
`12· · · · · ·SONJA R. GERRARD, ESQUIRE
`· · · · · · ·sgerrard@wsgr.com
`13· · · · · · · · · · ·(Via Telephone)
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`·1· · · · JUDGE MITCHELL:· Oh, Great.· Thank you.
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`·2· ·Just, you know, and I'm sure you planned on as
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`·3· ·soon as you get the transcript, if you could
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`·4· ·file it in the record, that would be fantastic.
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`·5· · · · MR. WELLS:· Yes, Your Honor.
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`·6· · · · JUDGE MITCHELL:· Thank you.
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`·7· · · · And who is on the line for patent owner?
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`·8· · · · MR. ROSATO:· Good morning, Your Honor, at
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`·9· ·least on the West Coast.
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`10· · · · JUDGE MITCHELL:· Yeah.
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`11· · · · MR. ROSATO:· Good morning, good afternoon.
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`12· ·Mike Rosato on behalf of patent owner.· I have
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`13· ·Sonja Gerrard here with me, both of Wilson
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`14· ·Sonsini.· And we -- I guess, underscoring the
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`15· ·benefits of communication between counsel, we
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`16· ·also have a court reporter.
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`17· · · · JUDGE MITCHELL:· Oh, great.· If you would
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`18· ·also, when you get that transcript, if you would
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`19· ·get that one on file, too, that would be
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`20· ·fantastic.
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`21· · · · MR. ROSATO:· Of course.
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`22· · · · JUDGE MITCHELL:· Well, let's get started.
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`23· ·I know that petitioner originally sought the
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`24· ·call, so let me start with petitioner.
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`25· · · · MR. WELLS:· Yes, Your Honor.· We've asked
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`·1· ·for authorization to file a motion to strike
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`·2· ·regarding new evidence and new arguments that
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`·3· ·the patent owner submitted with their sur-reply
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`·4· ·brief.· The Trial Practice Guide is clear that
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`·5· ·there is -- quote, a sur-reply may not be
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`·6· ·accompanied by new evidence other that
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`·7· ·deposition transcripts of the cross-examination
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`·8· ·of any reply witness.
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`·9· · · · By submitting new evidence and new
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`10· ·arguments in their sur-reply brief for the first
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`11· ·time, they've prejudiced our client.· We don't
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`12· ·have the opportunity to respond or counter or
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`13· ·address the relevance of this evidence.· And all
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`14· ·of this evidence is publicly available documents
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`15· ·that were foreseeable, and so we would like
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`16· ·permission to bring a motion to strike.
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`17· · · · JUDGE MITCHELL:· All right.· Let me hear
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`18· ·from patent owner.
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`19· · · · MR. ROSATO:· Thank you, Your Honor.
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`20· · · · So a couple things that warrants a
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`21· ·(indiscernible) in this instance, all these
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`22· ·materials, for one, are in a case where there's
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`23· ·both a motion to amend and in addition to the
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`24· ·briefing in the case in chief, so these are --
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`25· ·these are materials and evidence that are
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`·1· ·properly of record in the context of the reply
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`·2· ·brief in the motion to amend, as well as
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`·3· ·exhibits in evidence that were properly brought
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`·4· ·in during cross-examination of petitioner's
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`·5· ·witness, specifically for impeach -- impeachment
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`·6· ·purposes.· So these are all properly of record
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`·7· ·and -- at least in that regard.
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`·8· · · · But addition -- in addition to that, this
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`·9· ·is a somewhat unique situation where the
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`10· ·references that are being brought in, they're --
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`11· ·the reason they're being brought in for
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`12· ·impeachment purposes is that, you know, one,
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`13· ·they're in direct conflict with arguments or
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`14· ·advanced in the reply materials; but, two, these
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`15· ·are really petitioner's own publications that
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`16· ·we're talking about.
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`17· · · · And when petitioner has, as I noted, public
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`18· ·documents that they should have known about that
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`19· ·are running in direct and unquestionable
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`20· ·conflict with the arguments they're advancing,
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`21· ·those should have been disclosed.· And the fact
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`22· ·that we were fortunately able to find some of
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`23· ·them doesn't extinguish the obligation under
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`24· ·Rule 51 that petitioner has to provide those
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`25· ·documents to us.· We shouldn't be left in a
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`·1· ·position of having to search for that
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`·2· ·information.· And, you know, whatever other
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`·3· ·information might be out there, you know, is --
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`·4· ·is sort of, you know -- if anything, underscores
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`·5· ·the issue here.
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`·6· · · · Beyond that, it's difficult to go through
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`·7· ·the reply materials and the sur-reply materials
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`·8· ·and come to any conclusion other than this --
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`·9· ·the argument and evidence that's being
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`10· ·identified is anything other than directly
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`11· ·responsive to the arguments that were raised in
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`12· ·reply.
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`13· · · · And I haven't heard anything to date
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`14· ·indicating why this argument and material would
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`15· ·not be deemed properly responsive to what's in
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`16· ·the reply materials.· And it is.· And I'm happy
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`17· ·to walk through the -- what seemed to be the
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`18· ·three main issues and -- and point out how it's
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`19· ·very clearly and directly responsive to the
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`20· ·arguments that were raised.
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`21· · · · JUDGE MITCHELL:· Well, let --
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`22· · · · MR. ROSATO:· And --
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`23· · · · JUDGE MITCHELL:· Can I ask you -- can I ask
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`24· ·you a quick question?
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`25· · · · With regards to you're saying a lot of the
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`·1· ·new evidence was used in cross-examination of a
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`·2· ·witness, is that how it's been introduced in the
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`·3· ·sur-reply?· Does that make sense?
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`·4· · · · MR. ROSATO:· Well, the sur-reply certainly
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`·5· ·identifies the corresponding testimony in the
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`·6· ·cross-examination transcript and points out that
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`·7· ·the expert confirmed that he had not considered
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`·8· ·this material, which -- which, of course, calls
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`·9· ·into question the credibility of his testimony
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`10· ·on this point.
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`11· · · · And if he's making a point, affirmatively
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`12· ·stating something like ionizable cationic lipids
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`13· ·were nontoxic and he confirms that he didn't
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`14· ·consider Exhibits 2051 and 2052, but
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`15· ·petitioner -- petitioner's own publications
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`16· ·which state expressly and unequivocally that
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`17· ·they believe ionizable cationic lipids are
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`18· ·toxic, that raises questions as to the
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`19· ·credibility of the witness's testimony, it's
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`20· ·direct impeachment evidence, and it was raised
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`21· ·in the context of that cross-examination.
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`22· · · · So both -- so, yes, it's -- if what you're
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`23· ·asking is did we cite to the cross-examination
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`24· ·testimony, the answer is yes, we certainly did.
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`25· · · · JUDGE MITCHELL:· Okay.
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`·1· · · · MR. WELLS:· May I respond, Your Honor?
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`·2· · · · JUDGE MITCHELL:· Go ahead.· Well, let me --
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`·3· · · · MR. WELLS:· So at the deposition of the
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`·4· ·expert, what counsel did was put two new
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`·5· ·references before him that had never been made
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`·6· ·of the record, never been introduced, and said
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`·7· ·did you consider these.· And I -- and they were
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`·8· ·objected to as outside the scope of his
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`·9· ·testimony.· And there was an objection to each
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`10· ·of these exhibits on the record, noting that
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`11· ·they were improper new evidence being admitted
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`12· ·for the -- for improper purposes outside the
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`13· ·scope, and those objections were all noted.
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`14· · · · And then in their reply -- or their
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`15· ·sur-reply, I'm sorry, they reference the
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`16· ·testimony, but then they also go into these
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`17· ·exhibits and start pulling out one phrase out of
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`18· ·a 300-page patent application and say, oh, out
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`19· ·of context, this one phrase directly contradicts
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`20· ·the assertions.
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`21· · · · We obviously have a different opinion
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`22· ·regarding what those references disclose, but
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`23· ·our expert hasn't had an opportunity to opine on
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`24· ·them because of the timing here.
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`25· · · · And their allegation that these are proper
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`·1· ·references that were brought up in the sur-reply
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`·2· ·appropriately is, one, not accurate, first of
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`·3· ·all.· All of these references, again, were
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`·4· ·public.· They had access to this information.
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`·5· ·This isn't information that was hidden.· This
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`·6· ·isn't test data that's -- was unknown to them
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`·7· ·and that they couldn't have access to, and it
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`·8· ·was foreseeable that they could have searched
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`·9· ·and found this information readily for the
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`10· ·purposes of their patent owner response.
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`11· · · · It does not directly contradict anything
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`12· ·that the patent -- the petitioner has said.· We
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`13· ·obviously very much disagree with that.· So we
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`14· ·haven't -- there's been no discovery misconduct
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`15· ·that warrants that kind of late disclosure.
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`16· · · · And the rules are entirely clear that
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`17· ·sur-replies are not allowed to include
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`18· ·additional evidence other than transcripts of
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`19· ·cross-examination.· That's the Trial -- Trial
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`20· ·Practice Guide from 2018 at page 14.
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`21· · · · JUDGE MITCHELL:· Well, if it's introduced
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`22· ·in relation to testimony for impeachment
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`23· ·purposes, how is that not introducing evidence
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`24· ·in relation to testimony?
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`25· · · · MR. WELLS:· Well, they're allowed to cite
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`·1· ·to the deposition transcript, and they're
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`·2· ·allowed to -- but they're not allowed to put
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`·3· ·random articles in front of an expert that
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`·4· ·wasn't part of either their expert's opinions or
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`·5· ·our expert's opinions and then in the sur-reply
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`·6· ·attach those articles characterize the contents
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`·7· ·thereof without any support from an expert, only
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`·8· ·attorney argument, and deprive us of the
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`·9· ·opportunity to respond.
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`10· · · · The Trial Practice Guide is clear that
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`11· ·that's -- that the whole point of the sur-reply
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`12· ·was to -- to be a substitute for the prior
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`13· ·observation practice.· And the prior observation
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`14· ·practice wouldn't have allowed the citation of
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`15· ·new evidence with attorney argument and no
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`16· ·expert opining on the content of these articles
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`17· ·to deprive the other party of the opportunity to
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`18· ·respond.
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`19· · · · JUDGE MITCHELL:· Okay.· Let me ask you, so
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`20· ·were these particular new exhibits also part of
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`21· ·the motion to amend briefing or not?
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`22· · · · MR. WELLS:· Part of -- some of them were.
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`23· ·There were -- there's a subset of -- that are
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`24· ·also cited in the motion to amend.· They're
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`25· ·cited to make the same arguments in the motion
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`·1· ·to amend that they're including in the sur-reply
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`·2· ·where they also make these arguments.
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`·3· · · · And, one, we don't think that the motion
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`·4· ·to -- a reply on the motion to amend is meant to
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`·5· ·be an end run around limitations on the content
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`·6· ·and introduction of new evidence in an untimely
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`·7· ·manner; and, two, there's arguments in their
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`·8· ·sur-reply regarding these exhibits that has
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`·9· ·nothing do with the motion to amend.
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`10· · · · JUDGE MITCHELL:· Okay.
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`11· · · · MR. WELLS:· In addition, there are exhibits
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`12· ·that aren't part of the motion to amend.
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`13· · · · JUDGE MITCHELL:· Okay.· But you still --
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`14· ·petitioner still has an opportunity to respond,
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`15· ·right, to what's in --
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`16· · · · MR. WELLS:· Well, in theory, we would have
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`17· ·an opportunity to respond to the arguments in
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`18· ·the motion to amend to the subset of exhibits
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`19· ·that were addressed in the motion to amend, not
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`20· ·to the ones that weren't.
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`21· · · · JUDGE MITCHELL:· Okay.· But there are some
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`22· ·that you --
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`23· · · · MR. WELLS:· And we're -- and given it's a
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`24· ·sur-reply, we're limited on what we can include.
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`25· ·They didn't include an expert declaration
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`·1· ·addressing any of these, so we can't include
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`·2· ·cross-examination evidence and we can't include
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`·3· ·any responsive materials, and we can't -- and,
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`·4· ·in theory, unless the board authorizes further
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`·5· ·brief -- further declarations from our expert,
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`·6· ·we can't submit expert evidence in response
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`·7· ·either.
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`·8· · · · JUDGE MITCHELL:· Okay.· Patent Owner, would
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`·9· ·you like to respond?· I know we sort of
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`10· ·interrupted what you were saying originally.
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`11· · · · MR. ROSATO:· No problem, Your Honor.· Thank
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`12· ·you.
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`13· · · · Well, I guess a couple points.· The -- this
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`14· ·is a bit of what I find a circular argument by
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`15· ·petitioner, that because an expert declaration
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`16· ·didn't accompany the reply and arguing that new
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`17· ·evidence shouldn't be included in a reply and
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`18· ·then complaining that an expert declaration
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`19· ·wasn't submitted with the reply, it sort of
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`20· ·loses sight of what's going on here.
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`21· · · · And what's going on here is they submitted
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`22· ·an expert declaration with their reply
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`23· ·materials.· That declaration had opinions, and
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`24· ·those opinions are contradicted by their own
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`25· ·publication.· Their expert confirmed he didn't
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`·1· ·consider conflicting evidence in rendering his
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`·2· ·opinions.· That calls into question the
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`·3· ·credibility and reliability of those opinions.
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`·4· ·And that's the point of impeachment evidence.
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`·5· · · · So it's somewhat circular to say, well, it
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`·6· ·shouldn't be considered because there wasn't a
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`·7· ·corresponding set of further evidence, which
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`·8· ·they're complaining is not permissible.
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`·9· · · · So this all leads back to the same point.
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`10· ·This is impeachment evidence.· This directly
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`11· ·contradicts what they argued.· It's directly
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`12· ·responsive to what they argued.· So that doesn't
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`13· ·really make sense from that regard.
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`14· · · · And I would further say that one of the
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`15· ·points that Your Honor touched on was the
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`16· ·opportunity for additional briefing.· I will
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`17· ·note that there has been objections to this same
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`18· ·evidence filed in this case.· So we're assuming
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`19· ·that petitioner's going to file a motion to
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`20· ·exclude and brief the same issues, so -- which
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`21· ·is an additional factor there is a concern for,
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`22· ·you know, whether it's to the benefit of the
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`23· ·parties and the board to have the record flooded
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`24· ·with additional briefing and various forms
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`25· ·addressing the same context.
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`·1· · · · And in terms of the -- the alleged --
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`·2· ·alleged improper evidence, I think all of these
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`·3· ·exhibits -- I think most of these exhibits were
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`·4· ·actually cited in the -- in the motion to amend,
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`·5· ·so I think they're -- I think they're all there,
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`·6· ·but this is the first I've heard of that
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`·7· ·argument.
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`·8· · · · MR. WELLS:· And if I can respond,
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`·9· ·Your Honor --
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`10· · · · JUDGE MITCHELL:· Well, let me --
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`11· · · · MR. WELLS:· -- or would you like me to --
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`12· · · · JUDGE MITCHELL:· Let me --
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`13· · · · MR. WELLS:· -- respond?
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`14· · · · JUDGE MITCHELL:· Let me -- yeah, I will in
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`15· ·a minute.
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`16· · · · Let me ask patent owner, Mr. Rosato, the --
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`17· ·you're asking if we do grant the motion -- the
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`18· ·authorization to file the motion to strike,
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`19· ·you're -- were you also asking for a motion for
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`20· ·sanctions because these particular exhibits were
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`21· ·not produced to you by petitioner?
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`22· · · · MR. ROSATO:· Yeah.· Our position is the
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`23· ·board's fully capable of looking at the record
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`24· ·and assessing whether the petitioner's arguments
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`25· ·are supported by evidence or whether they're
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`·1· ·contradicted by evidence, but to do that, the
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`·2· ·record has to reflect reality, and for that to
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`·3· ·happen here, petitioner's own publications,
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`·4· ·which directly contradict their arguments,
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`·5· ·should be of record.· You know, that was the
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`·6· ·approach and what seemed to make most of the
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`·7· ·sense in terms of the efficiency from our
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`·8· ·perspective.
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`·9· · · · Look, we were really surprised that some of
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`10· ·these arguments were being advanced and --
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`11· ·and -- and that the corresponding references
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`12· ·were never disclosed, but that's the approach
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`13· ·petitioner chose to take.
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`14· · · · You know, that being said, if -- if
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`15· ·we're -- we're getting into arguing that, you
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`16· ·know, key evidence be struck from the record, I
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`17· ·mean, it's -- it -- that's a bit of a surprising
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`18· ·argument and approach as well.
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`19· · · · And if we're looking at Rule 51 and -- and
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`20· ·Rule 12, I mean, we're seeing what really should
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`21· ·have been an obligation as routine discovery
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`22· ·under Rule 51, which wasn't -- wasn't observed.
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`23· ·And that lack of disclosure combined with the
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`24· ·arguments advanced in the petitioner's reply is
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`25· ·sanctionable conduct under Rule 12.· And, you
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`·1· ·know, given these particular issues, the
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`·2· ·appropriate remedy is, you know, what is
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`·3· ·specifically outlined in -- in Rule 12(b), and
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`·4· ·that includes holding that certain facts be
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`·5· ·established and precluding petitioner from
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`·6· ·contesting corresponding issues.· So it's --
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`·7· ·under the letter of the rule, it's perfectly
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`·8· ·appropriate.
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`·9· · · · As a practical matter, we have confidence
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`10· ·that the board can assess the evidence and see
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`11· ·that their arguments that petitioner's advancing
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`12· ·lacks supporting evidence and that the exhibits
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`13· ·that are in dispute right now are contradictory
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`14· ·evidence.
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`15· · · · And I was -- I just want to make one -- one
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`16· ·other note.· Petitioner mentioned something
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`17· ·about experimental testing.· You know, this does
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`18· ·sort of underscore another point here, which is,
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`19· ·you know, there's -- this lack of disclosure
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`20· ·is -- it has become a pervasive issue in -- in
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`21· ·this proceeding, because in this very same
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`22· ·deposition of petitioner's expert, we learned
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`23· ·for the first time -- even though we had asked
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`24· ·previously, but we learned for the first time in
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`25· ·very late stage of the case that petitioner had
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`·1· ·commissioned outside testing specifically for
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`·2· ·the purposes of -- of this -- these -- these
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`·3· ·IPRs, commissioned experimental testing, had
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`·4· ·results, never disclosed them either to us or to
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`·5· ·the board, and when -- when asked about why that
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`·6· ·was, the expert told us that he felt that data
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`·7· ·was unreliable, so they chose not to submit it.
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`·8· · · · It was a surprise to hear that experimental
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`·9· ·work that was specifically commissioned for
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`10· ·litigation purposes was not disclosed and not
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`11· ·identified when previously asked, and the only
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`12· ·reasonable conclusion is it wasn't helpful to
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`13· ·their case.· But they -- the expert also tried
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`14· ·to spin that information to touch on some of the
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`15· ·same issues that we're talking about here today.
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`16· · · · So there's an issue with lack of disclosure
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`17· ·here.· And, you know, I think the most efficient
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`18· ·thing for the board to do is, you know, let
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`19· ·published literature stay of record, make the
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`20· ·assessment that we think the board is capable of
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`21· ·making.· But if, you know, if that's the going
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`22· ·to remain a disputed issue, I think we have
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`23· ·to -- I think we have to observe, you know, the
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`24· ·appropriate remedies that are available to us,
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`25· ·and that includes a motion for sanctions.
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`·1· · · · JUDGE MITCHELL:· Thank you.
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`·2· · · · Mr. Wells, certainly I'll let you respond,
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`·3· ·but also let me ask you, first, would -- why is
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`·4· ·the motion to exclude not sufficient for your
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`·5· ·purposes to address --
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`·6· · · · MR. WELLS:· Yes, Your Honor.
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`·7· · · · So the motion to strike is the appropriate
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`·8· ·motion, I believe, for materials that are
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`·9· ·attached improperly to a sur-reply.· A motion to
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`10· ·exclude may be warranted on the basis that
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`11· ·there's -- that this is unreliable evidence and
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`12· ·they haven't put -- and all they have is
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`13· ·attorney argument regarding what they alleged
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`14· ·the content of this stuff is and what -- and
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`15· ·obviously we have a disagreement on that fact.
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`16· · · · But the Trial Practice Guide is clear that
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`17· ·you're not supposed to make motion to strike
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`18· ·arguments as part of a motion to exclude.· So we
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`19· ·do think that the motion to exclude is the
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`20· ·proper remedy for the untimely and improper
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`21· ·attachment of new evidence to a sur-reply.
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`22· · · · Does that answer your question regarding
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`23· ·the --
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`24· · · · JUDGE MITCHELL:· Yes.
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`25· · · · MR. WELLS:· -- motion to exclude?
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`·1· · · · JUDGE MITCHELL:· Yes.
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`·2· · · · MR. WELLS:· Now, if I can respond to a
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`·3· ·couple of the things that counsel raised.
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`·4· · · · Counsel raised, at the last part, this
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`·5· ·testing evidence.· Well, our expert did do
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`·6· ·testing regarding the 435 patent.· This was
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`·7· ·never asked about previously by counsel with
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`·8· ·regard to the 435 patent where the testing
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`·9· ·related to.· And he basically determined that
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`10· ·after spending time and money, the testing
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`11· ·couldn't -- they couldn't make the system work
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`12· ·with the payloads that they were looking at.
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`13· · · · That's an enablement argument.· That
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`14· ·wouldn't normally be part of an IPR process.· It
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`15· ·could potentially be relevant to the motion to
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`16· ·amend, but it certainly wasn't something that
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`17· ·would have been relevant prior to their motion
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`18· ·to amend being brought.
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`19· · · · And the fact that the disclosures are not
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`20· ·enabling doesn't undercut our position at all
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`21· ·and, in fact, would support nonenablement
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`22· ·arguments.· So I -- the fact that the expert
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`23· ·decided not to rely on that doesn't -- there was
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`24· ·no obligation to disclose that information.
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`25· ·When asked about it, he did so.· We're not --
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`·1· ·and that certainly wasn't anything that the
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`·2· ·patent owner has brought up in regards to the
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`·3· ·pending motion or the request for authorization
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`·4· ·on the motion to strike.
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`·5· · · · Now, regarding letting evidence in being
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`·6· ·attached to a sur-reply and being characterized
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`·7· ·by patent owner as having certain disclosures
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`·8· ·and certain ramifications without allowing us
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`·9· ·the opportunity to respond is prejudicial to the
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`10· ·petitioner, and it sets a dangerous precedent to
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`11· ·go against the Trial Practice Guide and allow
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`12· ·the introduction of new evidence as a sur-reply.
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`13· ·Not all of the exhibits are addressed in the
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`14· ·motion to amend.
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`15· · · · And in addition, the -- a motion to amend
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`16· ·shouldn't be used as an end run around those
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`17· ·disclosures.· These disclosures, again, are
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`18· ·public documents they could have found if they
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`19· ·really thought they supported their position in
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`20· ·the course of preparing their patent owner
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`21· ·response, they didn't do so, and we don't have a
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`22· ·fair opportunity to have our expert weigh in on
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`23· ·the evidence and what the potential import is.
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`24· · · · JUDGE MITCHELL:· Okay.· All right.· I think
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`25· ·we understand -- understand your position.
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`·1· · · · What if petitioner did have an opportunity
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`·2· ·to reply to the new evidence, would that obviate
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`·3· ·the need for the motion to strike and any
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`·4· ·requisite sanctions motion that patent owner
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`·5· ·would like to file?· Well, let me --
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`·6· · · · MR. WELLS:· Sorry.· Go ahead.
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`·7· · · · JUDGE MITCHELL:· No.· Go ahead.· If you
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`·8· ·understood.
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`·9· · · · MR. WELLS:· If we have the opportunity for
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`10· ·our expert to weigh in and for us to weigh in on
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`11· ·the alleged import of this evidence and whatnot,
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`12· ·it's additional briefing, and it -- and I don't
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`13· ·know that that, one, has necessarily been
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`14· ·contemplated by the rules, but that would help
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`15· ·ameliorate the prejudice.· But we do think we
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`16· ·need the IN (phonetic) opportunity to respond.
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`17· ·The timing is what I'm concerned about.
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`18· · · · JUDGE MITCHELL:· Yeah.· Okay.· At least
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`19· ·that's fair.
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`20· · · · And, Mr. Rosato, what would you say if we
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`21· ·allowed a reply to the evidence?
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`22· · · · MR. ROSATO:· I'm a little struck by the
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`23· ·comment of prejudice.· Again, we're talking
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`24· ·about their own publications, and the point is
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`25· ·their expert didn't consider them.· So that's --
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`·1· ·that's sort of the point.· So to say that
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`·2· ·they're prejudiced because their expert didn't
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`·3· ·consider them misses that point.
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`·4· · · · This is evidence that should have been
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`·5· ·considered, and there's no privilege in not
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`·6· ·having the opportunity to -- to address their
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`·7· ·own evidence, because their point is they should
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`·8· ·have addressed it.· So the prejudice thing is --
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`·9· ·really doesn't make sense to me.
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`10· · · · In terms of the type of response I heard
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`11· ·petitioner argue, again, there's -- they're
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`12· ·saying we're not allowed to include evidence in
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`13· ·reply and didn't include an expert witness
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`14· ·testimony, but now asking for an opportunity to
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`15· ·have their witness come and comment on this.
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`16· · · · So I would certainly oppose that.· I mean,
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`17· ·it's admission of new declaration testimony at
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`18· ·this stage.· It just does not seem to be -- to
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`19· ·be practical or possible.· They've already had
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`20· ·two declarations from their witness and had the
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`21· ·opportunity where they're the party carrying the
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`22· ·burden of proof.· So a third bite at the apple,
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`23· ·I think we would oppose that.
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`24· · · · If -- if this is something other than, you
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`25· ·know, references that should have been
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`·1· ·considered, it should have been disclosed in the
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`·2· ·first place and there may be a more sympathetic
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`·3· ·position, but that's the -- you know, this is
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`·4· ·the situation here.
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`·5· · · · JUDGE MITCHELL:· Okay.· I think we
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`·6· ·understand the different positions.· If you all
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`·7· ·will hold for just a minute and let me confirm
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`·8· ·with the panel, I will be back in just a moment.
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`·9· ·Thanks.
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`10· · · · (Recess from 2:27 p.m. to 2:30 p.m.)
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`11· · · · JUDGE MITCHELL:· This is Judge Mitchell.
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`12· ·I'm back with the panel, Judge Smith and Judge
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`13· ·Snedden.· We would like to take this under
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`14· ·advisement.· Sorry.· We -- we're not going to
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`15· ·issue an order today, but in the next day or so.
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`16· · · · So I'm not sure how fast you can get the
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`17· ·transcripts in.· I know that sometimes
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`18· ·(indiscernible).· But, anyway, we will take
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`19· ·the -- the request for authorization under
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`20· ·advisement and issue an order shortly.
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`21· · · · So are there any more issues or questions
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`22· ·from petitioner?
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`23· · · · MR. WELLS:· No, Your Honor.
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`24· · · · JUDGE MITCHELL:· Okay.· And from patent
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`25· ·owner?
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`·1· · · · MR. ROSATO:· Thank you, Your Honor.· There
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`·2· ·is one other issue --
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`·3· · · · JUDGE MITCHELL:· Sure.
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`·4· · · · MR. ROSATO:· -- to discuss.
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`·5· · · · There is an issue of -- and this may have
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`·6· ·gotten lost in some e-mail communications, and
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`·7· ·we apologize for the nature of those.· But there
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`·8· ·was an issue surrounding some certain deposition
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`·9· ·transcripts' exhibits that were filed by
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`10· ·petitioner, and rather than submitting clean
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`11· ·copies of the deposition transcripts, they
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`12· ·submitted exhibits that were marked up with the
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`13· ·various highlighting sections.
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`14· · · · We had thought this was inadvertent and
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`15· ·communicated with petitioner to let them know
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`16· ·that it looked like some -- the wrong versions
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`17· ·of the documents had been submitted, but we had
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`18· ·been told by petitioner that they meant to do
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`19· ·that and that those were the exhibits they
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`20· ·wanted on file.
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`21· · · · So in any event, our position is the record
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`22· ·should have clean copies of deposition
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`23· ·transcripts, not transcripts that are marked up
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`24· ·by one party.· So our proposal would be that
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`25· ·clean copies be submitted in replacement and the
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`·1· ·marked-up versions be expunged.
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`·2· · · · JUDGE MITCHELL:· Okay.· And --
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`·3· · · · MR. WELLS:· And, Your Honor, the --
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`·4· · · · JUDGE MITCHELL:· Go ahead.
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`·5· · · · MR. WELLS:· We submitted transcripts of the
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`·6· ·depositions, and we highlighted the portions
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`·7· ·that are cited in the brief for ease of reading
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`·8· ·for Your Honors.· We're happy to submit a clean
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`·9· ·copy if, for some reason, they want a clean copy
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`10· ·on the record when we get the signed version,
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`11· ·happy to do so.· If Your Honors don't think a
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`12· ·highlighted version is useful to you, we're
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`13· ·happy to remove it, but other courts have
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`14· ·certainly found it to be very useful when they
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`15· ·can be directed to a portion of the transcript
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`16· ·that's cited in the brief.
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`17· · · · JUDGE MITCHELL:· So it's highlighting of
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`18· ·portions that you've cited, but nothing -- just
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`19· ·highlighting?
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`20· · · · MR. WELLS:· All the portions cited in our
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`21· ·brief highlighting, that's it.· No comments,
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`22· ·editing, no extraneous information.
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`23· · · · JUDGE MITCHELL:· Okay.· Okay.· Well, I'll
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`24· ·take that under advisement to you, and I'll make
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`25· ·sure -- because I did see that, and I apologize,
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`·1· · · ·I didn't -- I wasn't connecting that that had
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`·2· · · ·not been resolved, so we will also resolve that
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`·3· · · ·issue in the order.
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`·4· · · · · · Is there anything else from petitioner?
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`·5· · · · · · MR. WELLS:· No, Your Honor.
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`·6· · · · · · JUDGE MITCHELL:· Okay.· And patent owner?
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`·7· · · · · · MR. ROSATO:· No, Your Honor.· Thank you for
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`·8· · · ·call.
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`·9· · · · · · JUDGE MITCHELL:· All right.· Thank you all
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`10· · · ·for your time.· I appreciate it.· And as soon as
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`11· · · ·you can get the transcripts of the call on file,
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`12· · · ·that would be great.· Thank you very much, and
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`13· · · ·we are adjourned.
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`14· · · · · · THEREUPON the proceedings were concluded
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`15· ·at 2:34 p.m.
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`·1· · · · · · · · ·CERTIFICATE OF REPORTER
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`·2
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`·3· ·STATE OF FLORIDA
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`·4· ·COUNTY OF POLK
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`·5
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`·6· · · · · · I, Linda S. Blackburn, Registered Merit
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`·7· ·Reporter, Certified Realtime Reporter, and
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`·8· ·Certified Realtime Captioner, do hereby certify
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`·9· ·that I was authorized to and did report the
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`10· ·foregoing proceedings, and that the transcript,
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`11· ·pages 1 through 27, is a true and correct record of
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`12· ·my stenographic notes.