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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ---
` SONOS, INC., Petitioner,
` V.
` IMPLICIT, LLC, Patent Owner.
` ---
` IPR2018-00766
` U.S. Patent No. 7,391,791
` ---
` IPR2018-00767
` U.S. Patent No. 8,942,252
` ---
`
` PREHEARING CONFERENCE
` June 13, 2019
` 11:00 a.m.
`
`Reported by:
`Jessica Schmidt
`
`12
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`3
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
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`Page 1 of 9
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`2 on the docket?
`3 MR. RICHTER: We would be
`4 happy to, Your Honor. This is
`5 Cole Richter, for petitioner.
`6 JUDGE MCSHANE: Thank you.
`7 So we saw some e-mails from the
`8 parties on this call. The purpose
`9 of this call is to just discuss
`10 logistics for the hearing that
`11 will occur on Monday.
`12 We're emphasizing here.
`13 We're not going to be entertaining
`14 any arguments on merits at all.
`15 It's purely logistical.
`16 We received a request from
`17 the petitioner who wanted to know
`18 about the status of the motion to
`19 exclude and whether it was going
`20 to be ruled on early. The answer
`21 to that is: We will not be ruling
`22 on the motion to exclude until
`23 post hearing. With that, we would
`24 welcome any arguments that the
`25 parties have on the motion to
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`1 Proceedings
`2 exclude.
`3 Additionally, petitioner
`4 asked for some ideas on what the
`5 issues were that the Board was
`6 concerned about. So let me just
`7 say this: The parties have the
`8 prerogative to put on whatever
`9 kind of arguments, with supporting
`10 evidence, that they wish. This
`11 discussion is by no means meant to
`12 limit the parties to any specific
`13 topics.
`14 That said, we always are
`15 particular, if you will, about the
`16 record in the case. We'll caution
`17 the parties that any arguments
`18 that are presented that relate to
`19 issues that are not in the record
`20 will not be entertained. But, in
`21 any event, here are a listing of
`22 some of the issues that we may
`23 have some interest in:
`24 First of all, there's the
`25 antedating issue. That is a big
`
`12
`
` A P P E A R A N C E S:
`3 (Telephonic)
`
`45
`
` LEE, SULLIVAN, SHEA & SMITH, LLP
` Attorneys for Petitioner
`6 656 W. Randolph Street, Suite 5W
` Chicago, Illinois 60661
`
`7
`
` BY: COLE B. RICHTER, ESQ.
`8 RORY SHEA, ESQ.
`9
`10 THE DAVIS FIRM
` Attorneys for Patent Owner
`11 213 North Fredonia, Suite 230
` Longview, Texas 75601
`
`12
`
` BY: CHRISTIAN HURT, ESQ.
`13 KIRK BOSS, ESQ.
`14
`15 ADMINISTRATIVE PATENT JUDGES:
`16 Ms. Sheila F. McShane
` Ms. Michelle N. Wormmeeser
`17 Mr. Nabeel U. Khan
`18
`19
`20
`21
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`1 Proceedings
`2 JUDGE MCSHANE: This is
`3 Judge McShane on the line. On the
`4 line as well are Judges
`5 Wormmeester and Khan. We're here
`6 on the Sonos v. Implicit matter,
`7 IPR2018-00766 and -00767.
`8 May I have appearances,
`9 please, from petitioner first?
`10 MR. SHEA: Rory Shea, on
`11 behalf of Sonos, the petitioner,
`12 from Lee, Sullivan & Smith. With
`13 me also is Cole Richter on behalf
`14 of Sonos.
`15 JUDGE MCSHANE: Thank you.
`16 MR. HURT: Good morning,
`17 Your Honor. This is Christian
`18 Hurt. With me on the phone is my
`19 colleague, Kirk Boss. We're ready
`20 to proceed.
`21 JUDGE MCSHANE: Thank you.
`22 All right. Well, I heard earlier
`23 that there is a court reporter on
`24 the line. Whomever arranged that,
`25 can they get a transcript entered
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`800-642-1099
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`A Veritext Company
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`1 Proceedings
`2 issue in the case. We'll note
`3 that there's a fair amount of
`4 evidence that's been put in on
`5 this issue. We recognize that
`6 there's only so much time for this
`7 hearing. We would appreciate it
`8 if the parties could focus their
`9 arguments on the evidence that
`10 they think is of greatest
`11 importance. That seems to be
`12 logical but we'll just point that
`13 out. Again, given the amount of
`14 evidence that is in the record.
`15 Second issue is on
`16 inurement. There are some
`17 arguments in the papers on that.
`18 It's a smaller issue. To the
`19 extent that the parties wish to
`20 address that issue, a brief
`21 argument where you indicate the
`22 application of the facts of the
`23 law. That's for both respective
`24 parties on both sides of the
`25 argument. Any limited argument
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`1 Proceedings
`2 would be fine on that. We would
`3 appreciate that.
`4 There's probably very
`5 little need for the parties to
`6 spend any significant time on any
`7 objective indicia issues.
`8 On the Janevski
`9 disclosures, there, again, we
`10 would appreciate it if you would
`11 focus on the important issues in
`12 evidence related to that issue.
`13 Let's see. Those are the
`14 topics we're most interested in or
`15 not that interested in, generally.
`16 Again, whatever the parties want
`17 to talk about, that's up to them.
`18 Again, if it's within the record.
`19 Okay. Now, one thing we
`20 would like to comment on is the
`21 order of the presentation. The
`22 trial order went out probably
`23 about two weeks ago and the order
`24 is going to be that the petitioner
`25 is going to do their opening.
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`2 Patent owner is going to present
`3 opposition and then the petitioner
`4 is going to do a rebuttal or have
`5 the opportunity to do a rebuttal,
`6 if they wish, and then the patent
`7 owner will have the opportunity to
`8 provide a brief surrebuttal.
`9 So the issues noted is that
`10 the burden is on the patent owner
`11 on the antedating issue. For
`12 this, the petitioner can respond
`13 to arguments related to antedating
`14 because patent owner is going to
`15 have that antedating issue in
`16 their case, if you will. The
`17 petitioner can respond during
`18 their rebuttal time. And we'll
`19 note that the rebuttal time, under
`20 the trial guidance, is limited to
`21 half the total time that the
`22 petitioner may have. So, here,
`23 patent owner can then reserve a
`24 brief surrebuttal time to respond
`25 to the arguments that the
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`1 Proceedings
`2 petitioner has made.
`3 That's it. That's really
`4 all we had.
`5 MR. SHEA: Rory Shea for
`6 petitioner. I just want to make
`7 sure I'm clear.
`8 With respect to this
`9 antedating issue, did I take from
`10 what you said there that you guys
`11 would not like to hear some talk
`12 at all about the antedating issue
`13 on the opening presentation?
`14 JUDGE MCSHANE: No, I'm not
`15 suggesting that. All
`16 I'm suggesting is that you will --
`17 you have discretion. It's a big
`18 issue in the case. So however you
`19 want to use your time, you know.
`20 If it's a big issue in the case, I
`21 would suggest you spend time on
`22 it, as much time as you need.
`23 That said, you won't be afforded
`24 the opportunity to respond to the
`25 patent owner. That was the only
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
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`3 (Pages 6 - 9)
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`2 importance of what I stated there.
`3 MR. SHEA: Great. Thank
`4 you.
`5 JUDGE MCSHANE: Anything
`6 else?
`7 MR. SHEA: Rory Shea. I
`8 know you guys said at the
`9 beginning that you're willing to
`10 entertain argument at the hearing
`11 on the motions to exclude. In
`12 terms of where and what -- when
`13 that happens in the sequencing
`14 that we just discussed, is it
`15 similarly that we have our
`16 discretion if we want to raise
`17 that in our opening and, for
`18 instance, that that would be
`19 acceptable?
`20 JUDGE MCSHANE: Well, it's
`21 petitioner's motion, right?
`22 MR. SHEA: Right, correct.
`23 JUDGE MCSHANE: The answer
`24 is yes. You got the burden,
`25 right?
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`1 Proceedings
`2 MR. SHEA: Yes. I think
`3 that's right, Your Honor.
`4 JUDGE MCSHANE: Okay. With
`5 that, if there's nothing else, we
`6 will adjourn the call.
`7 MR. RICHTER: This is Cole
`8 Richter. Just two small things I
`9 would like to say. They are
`10 mostly housekeeping issues.
`11 In going through our
`12 briefs, we noticed that a case
`13 citation was inadvertently removed
`14 from petitioner's reply brief.
`15 That's on page five. There's a
`16 case citation of Marker VCR Bard
`17 (phonetic). Right after that
`18 case, it should have also cited
`19 another federal circuit case, Hon
`20 V. Long.
`21 In fact, the table of
`22 authority actually indicates that
`23 Hon V. Long was cited on that
`24 page. It was inadvertently
`25 removed. I'm just wondering,
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`2 what, if any, corrective action
`3 the Board would like us to take
`4 regarding this citation omission?
`5 JUDGE MCSHANE: Well,
`6 Counsel, we're not going to
`7 correct the record on that.
`8 Inadvertent or not, typos and
`9 things like that is fine but
`10 adding citations is a whole
`11 different thing. If an argument
`12 comes up -- rather, if a question
`13 comes up from the panel, you know,
`14 for it and we request additional
`15 law, that's another situation.
`16 That will be dealt with at the
`17 hearing. Thank you.
`18 MR. RICTER: Okay. Thank
`19 you, Your Honor. It's not crucial
`20 to the legal argument set forth.
`21 Finally, the other issue
`22 unrelated is we received an e-mail
`23 from Mr. Dill in regard to the
`24 audio-visual equipment request.
`25 He indicated that his records
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`1 Proceedings
`2 showed that the oral hearing was
`3 scheduled for June 18th in Dallas,
`4 Texas. I'm just wondering if,
`5 perhaps, the office's records have
`6 not been updated in response to
`7 Your Honor's recent rescheduling
`8 or reverting the hearing back to
`9 June 17th.
`10 JUDGE MCSHANE: That's been
`11 corrected in our records. We'll
`12 all be there on Monday. Everybody
`13 will be in the location to show up
`14 at; Alexandria, Virginia at 1:00
`15 on Monday.
`16 Thank you. With that,
`17 we're adjourned.
`18 (Time noted: 11:14 a.m.)
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
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`2 CERTIFICATION
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`34
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` I, JESSICA SCHMIDT, a Notary Public in
`5 and for the State of New York, do hereby
`6 certify:
`7 THAT the foregoing is a true and
`8 accurate transcript of my stenographic notes.
`9 IN WITNESS WHEREOF, I have hereunto
`10 set my hand this 21st day of June, 2019.
`11
`12
`13
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` <%19897,Signature%>
`14 JESSICA SCHMIDT
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`[& - fredonia]
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`&
`& 2:5 3:12
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`00767 3:7
`1
`11:00 1:18
`11:14 13:18
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`17th 13:9
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`action 12:2
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`additional 12:14
`additionally 5:3
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`adjourn 11:6
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`adjourned 13:17
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`2:15
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`alexandria 13:14
`amount 6:3,13
`answer 4:20 10:23
`antedating 5:25
`8:11,13,15 9:9,12
`appeal 1:3
`appearances 3:8
`application 6:22
`appreciate 6:7 7:3
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`argument 6:21,25
`6:25 10:10 12:11
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`4:24 5:9,17 6:9,17
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`arranged 3:24
`asked 5:4
`attorneys 2:5,10
`audio 12:24
`authority 11:22
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`b 2:7
`back 13:8
`bard 11:16
`beginning 10:9
`behalf 3:11,13
`big 5:25 9:17,20
`board 1:3 5:5 12:3
`boss 2:13 3:19
`brief 6:20 8:8,24
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`burden 8:10 10:24
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`c
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`c 2:2
`call 4:8,9 11:6
`case 5:16 6:2 8:16
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`certification 14:2
`certify 14:6
`chicago 2:6
`christian 2:12
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`circuit 11:19
`citation 11:13,16
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`cited 11:18,23
`clear 9:7
`cole 2:7 3:13 4:5
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`comment 7:20
`concerned 5:6
`conference 1:16
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`corrected 13:11
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`counsel 12:6
`court 3:23
`crucial 12:19
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`dallas 13:3
`davis 2:10
`day 14:10
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`different 12:11
`dill 12:23
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`discretion 9:17
`10:16
`discuss 4:9
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`e 2:2,2 4:7 12:22
`earlier 3:22
`early 4:20
`emphasizing 4:12
`entered 3:25
`entertain 10:10
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`entertaining 4:13
`equipment 12:24
`esq 2:7,8,12,13
`event 5:21
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`A Veritext Company
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`[generally - petitioner's]
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`g
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`going 4:13,19 7:24
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`good 3:16
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`half 8:21
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`happens 10:13
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`hear 9:11
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`hereunto 14:9
`hon 11:19,23
`honor 3:17 4:4
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`hurt 2:12 3:16,18
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`ideas 5:4
`illinois 2:6
`implicit 1:7 3:6
`importance 6:11
`10:2
`important 7:11
`inadvertent 12:8
`inadvertently
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`indicate 6:21
`indicated 12:25
`indicates 11:22
`indicia 7:7
`instance 10:18
`interest 5:23
`interested 7:14,15
`inurement 6:16
`ipr2018-00766 1:9
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`ipr2018-00767
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`issue 5:25 6:2,5,15
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`janevski 7:8
`jessica 1:22 14:4
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`judge 3:2,3,15,21
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`khan 2:17 3:5
`kind 5:9
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`lee 2:5 3:12
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`limit 5:12
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`line 3:3,4,24
`listing 5:21
`little 7:5
`llc 1:7
`llp 2:5
`location 13:13
`logical 6:12
`logistical 4:15
`logistics 4:10
`long 11:20,23
`longview 2:11
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`mail 12:22
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`marker 11:16
`matter 3:6
`mcshane 2:16 3:2
`3:3,15,21 4:6 9:14
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`means 5:11
`meant 5:11
`merits 4:14
`michelle 2:16
`monday 4:11
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`papers 6:17
`particular 5:15
`parties 4:8,25 5:7
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`3:9,11 4:5,17 5:3
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`point 6:12
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`record 5:16,19
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`request 4:16 12:14
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`rory 2:8 3:10 9:5
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`sheila 2:16
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`showed 13:2
`sides 6:24
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`significant 7:6
`similarly 10:15
`situation 12:15
`small 11:8
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`smith 2:5 3:12
`sonos 1:5 3:6,11
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`talk 7:17 9:11
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`think 6:10 11:2
`time 6:6 7:6 8:18
`8:19,21,24 9:19,21
`9:22 13:18
`topics 5:13 7:14
`total 8:21
`trademark 1:2
`transcript 3:25
`14:8
`trial 1:3 7:22 8:20
`true 14:7
`two 7:23 11:8
`typos 12:8
`u
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`u 2:17
`u.s. 1:10,13
`united 1:2
`unrelated 12:22
`updated 13:6
`use 9:19
`v
`v 1:6 3:6 11:20,23
`vcr 11:16
`virginia 13:14
`visual 12:24
`w
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`w 2:6
`want 7:16 9:6,19
`10:16
`wanted 4:17
`weeks 7:23
`welcome 4:24
`went 7:22
`whereof 14:9
`willing 10:9
`wish 5:10 6:19 8:6
`witness 14:9
`wondering 11:25
`13:4
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
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`Page 8 of 9
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`SONOS EXHIBIT 1029
`IPR2018-00766, -00767
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`[wormmeeser - york]
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`wormmeeser 2:16
`wormmeester 3:5
`y
`york 14:5
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`Page 4
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`800-642-1099
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`David Feldman Worldwide
`A Veritext Company
`
`www.veritext.com
`
`
`Page 9 of 9
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`SONOS EXHIBIT 1029
`IPR2018-00766, -00767
`
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