PTAB CONFERENCE CALL - 11/6/18
` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`EXOCAD GMBH AND EXOCAD )
`AMERICA, INC., )
` Petitioner, )
` ) Case No.
`vs. ) IPR2018-00788
`3SHAPE A/S, )
` Patent Owner. ) Patent No.
`______________________________) 9,336,336 B2
`
` PTAB CONFERENCE CALL
` November 6, 2018
`
`REPORTED BY: CARRIE LAMONTAGNE, CSR No. 13393
`JOB NO: 150769
`
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`exocad v. 3Shape, IPR2018-00788
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`EXOCAD GMBH AND EXOCAD )
`AMERICA, INC., )
` Petitioner, )
` ) Case No.
`vs. ) IPR2018-00788
`3SHAPE A/S, )
` Patent Owner. ) Patent No.
`______________________________) 9,336,336 B2
`
` PTAB CONFERENCE CALL
` November 6, 2018
`
`REPORTED BY: CARRIE LAMONTAGNE, CSR No. 13393
`JOB NO: 150769
`
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`exocad v. 3Shape, IPR2018-00788
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` PTAB CONFERENCE CALL - 11/6/18
`
`Page 2
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` November 6, 2018
` 3:30 p.m.
`
` PTAB conference call, held before
`Administrative Patent Judges Irvin E. Branch and
`Frances L. Ippolito, before Carrie LaMontagne, a
`certified shorthand reporter for the state of
`California.
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` PTAB CONFERENCE CALL - 11/6/18
`A P P E A R A N C E S:
`
`Page 3
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` FOLEY & LARDNER
` Attorneys for Petitioner
` 111 Huntington Avenue
` Boston, MA 02199
` BY: MATTHEW LOWRIE, ESQ.
` KEVIN LITTMAN, ESQ.
`
` BUCHANAN INGERSOLL & ROONEY
` Attorneys for Patent Owner
` 1737 King Street
` Alexandria, VA 22314
` BY: TODD WALTERS, ESQ.
` ROGER LEE, ESQ.
`
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` PTAB CONFERENCE CALL - 11/6/18
` JUDGE BRANCH: Hello, this is Judge Branch
`in IPR 2018-00788. Can I be heard?
` MR. LOWRIE: Yes, your Honor. This is
`Matt Lowrie and Kevin Littman on behalf of the
`petitioner. And also on the line is a court
`reporter.
` JUDGE BRANCH: Very good. And for patent
`owner.
` MR. WALTERS: Yes, your Honor. This is
`Todd Walters. I have my colleague Roger Lee on the
`phone for 3Shape, patent owner.
` JUDGE BRANCH: Very good. And I
`understand we have a court reporter. So please
`identify yourself before speaking so that the court
`reporter can accurately collect who is saying what
`and when. And I'm also going to ask the court
`reporter, please, to put a transcript of this
`proceeding into the record as soon as it's
`available.
` Okay. I have with me Judge Ippolito. Judge
`Ippolito, if you want to identify yourself, please.
` JUDGE IPPOLITO: I'm here. Thank you.
` JUDGE BRANCH: Okay. Let's see,
`petitioner, you asked -- or let's see, it's
`
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`exocad Ex. 1021
`exocad v. 3Shape, IPR2018-00788
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`Mr. Lowrie, right, or Lowrey. Please say that one
`more time for me.
` MR. LOWRIE: Lowrie, your Honor.
` JUDGE BRANCH: Okay. Will you be speaking
`for petitioner?
` MR. LOWRIE: Yes.
` JUDGE BRANCH: Okay. If you would please,
`Mr. Lowrie, let us know why we're here.
` MR. LOWRIE: Thank you. This is
`Matt Lowrie. So we are looking to file a motion for
`leave to provide supplemental information on three
`things. And it's a little unusual, and I'll explain
`why for the first two.
` So the first one, in the patent owner's
`preliminary response they argued that we hadn't
`adequately proved publication of a German reference.
`It has a publication date on the reference. It has
`indicia of reliability, but -- they made that
`argument. The board didn't accept it, at least at
`the preliminary stage.
` They have not filed objections to evidence; but
`nevertheless, if they intend to -- if they're not
`waiving that argument, then we would like to
`supplement the information of record to include
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`exocad Ex. 1021
`exocad v. 3Shape, IPR2018-00788
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` PTAB CONFERENCE CALL - 11/6/18
`information confirming the publication date.
` The second item is we filed a translation of
`that reference and it was by a translator that could
`provide a certification, but we didn't actually file
`a certification. And the patent owner mentioned
`that in their preliminary responses to an argument
`for denial. We can get a certification for that
`translation from that translator. And unless the
`patent owner's going to waive that argument, then we
`would like an opportunity to supplement that
`opportunity with that certification.
` The third item is in the decision -- in the
`institution decision, the board observed that one of
`the references, this very same reference, actually,
`Weidemann discloses use of an image from a tooth
`library rather than an image of the actual patient's
`mouth. And the board observed that that didn't
`appear to impact how it worked but that the board
`would take it up later.
` While we think we could address that in a rely
`brief, we think it might be a more orderly
`proceeding to supplement information with about a
`two-paragraph supplemental expert report that
`addresses that issue.
`
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`exocad Ex. 1021
`exocad v. 3Shape, IPR2018-00788
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` JUDGE BRANCH: Okay. And then for patent
`owner, what do you have to say?
` MR. WALTERS: Your Honor, we haven't seen
`any of this evidence as of yet, and at this point we
`object to the submission of a motion and we believe
`we would object to the motion itself if the motion's
`permitted to be filed.
` As you know, if this is a rule 42.123(a)
`filing, then you have discretion to deny the motion,
`and this is particularly true when the petitioner
`has not explained why the information has not been
`previously -- or why it was not previously filed
`with the petition when such information could have
`been filed and under a circumstance where the
`supplemental information is responding to arguments
`made in a preliminary patent owner response and to
`comments made in the institution decision.
` With all of that said, I'm not really sure that
`this could be a rule 42.123(a) request because the
`institution decision came out on October 3rd and the
`petitioner only requested a call within the
`one-month period.
` The request to file the motion with the board
`is occurring today. And there's at least one
`
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`exocad Ex. 1021
`exocad v. 3Shape, IPR2018-00788
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`case -- it's IPR2015-00324, LG Electronics versus
`Advanced Micro Devices -- that indicates that the
`e-mail to the administrative staff doesn't satisfy
`the one-month period for filing a rule 42.123(a)
`motion.
` So where patent owner stands right now is, you
`know, we object to the filing of this information.
` JUDGE BRANCH: Mr. Lowrie, a response.
` MR. LOWRIE: Yes, your Honor. Within the
`deadline we sent an e-mail that requested
`supplementation and -- or requested permission to
`file the motion for supplementation, which I believe
`is all that the rules requires, and that e-mail
`included the specifics of what we were requesting
`permission to supplement. So that request was made
`and in advance of the deadline.
` I also think that actually if the request is in
`advance of the deadline and the convenience of the
`board is to put it on day 32 or day 31, we would
`have complied with the rule. And I do feel a little
`bit like an ambush because we did speak to them
`within the deadline and they allowed this to be set
`up in a -- I would argue that that's a waiver of the
`argument on their part if they were trying to set
`
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`exocad Ex. 1021
`exocad v. 3Shape, IPR2018-00788
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`something up with us that they believed didn't
`comply with the rule.
` JUDGE BRANCH: For the patent owner -- I'm
`sorry, you had something else to say, Mr. Lowrie?
` MR. LOWRIE: No, your Honor. That's okay.
`Thank you.
` JUDGE BRANCH: Okay. Let me ask a couple
`questions real quick.
` Mr. Lowrie, how many pages are you expecting to
`include for the motion and on what schedule would
`you be filing the motion?
` MR. LOWRIE: I would say that the
`supplementation itself would consist of three pages,
`one for each issue, maybe a little bit more if
`there's a declaration and an attachment. I think
`that we could have it done within two weeks, faster
`if that's what the board requires. And in terms of
`the number of pages, I would think that five pages
`in the motion should be sufficient.
` JUDGE BRANCH: So five pages in the motion
`and then the additional pages for the actual
`information would be three the five pages, it
`sounded like you said.
` MR. LOWRIE: Yeah, I think that's fair.
`
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`exocad Ex. 1021
`exocad v. 3Shape, IPR2018-00788
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`This is Matt Lowrie. Yes, I think that's fair.
` JUDGE BRANCH: And then with respect to
`the filing of the motion itself and giving patent
`owner an opportunity to oppose the motion, would you
`expect that a week to file a motion would be
`sufficient?
` MR. LOWRIE: We can get that done. The
`reason we haven't provided the evidence, for
`example, is that we have spoken to libraries in
`Germany that confirm the publication date, but it's
`a little bit bigger of an issue to get a declaration
`from them.
` So the certification should be easy. That's
`the translator that we hired. The expert report
`should be easy. My only concern would be getting
`something out of Germany because of the time
`difference. But if your Honor thinks that's the
`best way to go about it, we could take a week and if
`we have a problem, either deal with it or ask for
`leave.
` JUDGE BRANCH: Not to interrupt, but I'm
`speaking actually just of filing the motion. This
`call is responding to a request to file the motion
`to submit supplemental information, and patent
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`exocad Ex. 1021
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`owner, I'm given to understand, wishes to oppose the
`motion let alone the content of information once
`filed.
` So the question is if you were given a week to
`file the motion to submit supplemental information
`and then patent owner was given a week to oppose
`that motion, and then we could rule on the motion
`proper, which would then give you the opportunity to
`get all the information you need for the actual
`submitting of supplemental information.
` Are you following me?
` MR. LOWRIE: This is Matt Lowrie. I
`understand perfectly, and a week is sufficient.
` JUDGE BRANCH: Patent owner, understanding
`that you intend to oppose, given this schedule, do
`you have any final comments before we go on mute
`here and make some sort of a decision?
` MR. WALTERS: Your Honor, I'm assuming
`you're thinking of giving petitioner a week to file
`the motion, and that would mean giving us a week to
`file an opposition?
` JUDGE BRANCH: That's correct.
` MR. WALTERS: Yes, your Honor, I think
`that works. If that gets pushed out, though, a few
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`days because of an order coming out that may hit the
`Thanksgiving holiday day itself, so I just want to
`give that some consideration, your Honor.
` JUDGE BRANCH: That's fair enough. Let us
`confer for a few moments and we'll look at a
`calendar and be back on with you in just a moment.
`We're going to go on mute here. Thank you. Stand
`by.
` (Pause in the proceeding.)
` JUDGE BRANCH: We're back online.
` Since there is a court reporter, we'll ask you
`to refer to the transcript; however, we will follow
`this up with an order for the record that we are
`granting the petitioner's request for a motion --
`request for approval to submit a motion for
`supplemental information.
` The schedule will be as follows: Petitioner's
`motion will be due on the 16th of November. The
`motion will be limited to five pages. We will ask
`that the supplemental information be included in the
`motion attached to it. We will expunge that if we
`thereafter determine not to grant the motion. And
`then on the 30th of November patent owner will file
`the opposition to the motion. That too will be
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`limited to five pages. And we'll make a decision on
`the motion in short order after that.
` Mr. Lowrie, is that clear for petitioner?
` MR. LOWRIE: Yes.
` JUDGE BRANCH: And, Mr. Walters, is that
`clear for patent owner?
` MR. WALTERS: Yes, your Honor.
` JUDGE BRANCH: I'd ask the court reporter,
`do you need spellings or any other information for
`any of the parties that have participated here?
` (Reporter clarification.)
` JUDGE BRANCH: That clears up this matter
`then. Are there other items that either party would
`like to bring up, Mr. Lowrie?
` MR. LOWRIE: No, your Honor.
` JUDGE BRANCH: Mr. Walters?
` MR. WALTERS: Your Honor, I just want to
`make one real quick comment about the ambush
`statement made earlier in the call.
` I wanted to let you know that the first time
`that we spoke with petitioner's counsel about this
`issue was on Friday of last week, the very same day
`that the e-mail was sent to the board. So I just
`wanted to clear the record on that. That's all I
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`exocad Ex. 1021
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` PTAB CONFERENCE CALL - 11/6/18
`have.
` JUDGE BRANCH: Okay. Is it safe for me to
`assume that that can be our final comment for the
`day then?
` MR. WALTERS: This is Todd Walters. Yes,
`your Honor.
` MR. LOWRIE: Yes, your Honor, for
`Matt Lowrie.
` JUDGE BRANCH: Okay. Then thank you very
`much for your time and attention here. We're
`adjourned, and we'll look for the transcript to be
`entered into the record in due course.
` That will be the end of the call.
` (Proceedings adjourned at 3:49 p.m.)
` * * * * *
`
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` PTAB CONFERENCE CALL - 11/6/18
`
` REPORTER'S CERTIFICATE
`
` I, Carrie LaMontagne, Certified Shorthand
`Reporter within and for the State of California,
`License No. 13393, do hereby certify that the
`proceedings were reported by me on November 6, 2018,
`and was thereafter transcribed with computer-aided
`transcription; that the foregoing is a full,
`complete, and true record of said proceedings.
` I further certify that I am not of counsel
`or attorney for either or any of the parties in the
`foregoing proceedings and caption named or in any
`way interested in the outcome of the cause in said
`caption.
` IN WITNESS WHEREOF, I have hereunto set my
`hand and official seal this 16th day of November,
`2018.
`
`____________________________
`CARRIE LAMONTAGNE, CSR
`
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