TELEPHONIC HEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE,
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`INC.,
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`Petitioner,
`
`vs.
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`COREPHOTONICS LTD.,
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`Patent Owner.
`
`MMMMMiatamwm
`
`CASE:
`IPR2018-01133
`U.S. Patent 9,538,152
`
`
`
`
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`TELEPHONIC HEARING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JULY 12, 2019
`
`BE IT REMEMBERED that on the 12th day of
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`July 2019,
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`the following proceedings came on to be heard
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`in the above-entitled and numbered cause before the
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`Patent Trial and Appeal Board, Honorable Bryan F. Moore,
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`Marc S. Hoff and Monica S. Ullagaddi presiding, via
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`telephone conference, recorded in Austin, Travis County,
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`Texas. Proceedings reported by machine shorthand.
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`Page‘fof33
`APPL-1014 /
`Apple Inc. v. Corephotonics
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE,
`
`INC.,
`
`Petitioner,
`
`vs.
`
`COREPHOTONICS LTD.,
`
`Patent Owner.
`
`MMMMMiatamwm
`
`CASE:
`IPR2018-01133
`U.S. Patent 9,538,152
`
`
`
`
`
`TELEPHONIC HEARING
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`JULY 12, 2019
`
`BE IT REMEMBERED that on the 12th day of
`
`July 2019,
`
`the following proceedings came on to be heard
`
`in the above-entitled and numbered cause before the
`
`Patent Trial and Appeal Board, Honorable Bryan F. Moore,
`
`Marc S. Hoff and Monica S. Ullagaddi presiding, via
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`telephone conference, recorded in Austin, Travis County,
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`Texas. Proceedings reported by machine shorthand.
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`Page‘fof33
`APPL-1014 /
`Apple Inc. v. Corephotonics
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`TELEPHONIC HEARING
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`APPEARANCES
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`FOR THE PETITIONER (S) :
`
`Mr. Jamie H. McDole
`HAYNES & BOONE, L.L.P.
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Phone:
`(214) 651-5121
`Fax:
`(214) 200-0867
`jamie .mcdole@haynesboone.com
`
`Ms. Hong Shi
`Mr. David W. O'Brien
`HAYNES & BOONE, L.L.P.
`600 Congress Avenue, Suite 1300
`Austin, Texas 78701
`Phone:
`(512) 867-8440
`Fax:
`(512) 867-8644
`hong. shi@haynesboone.com
`david.obrien@haynesboone.com
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`APPL-1014/Page2 of 33
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`FOR THE PATENT OWNER(S) :
`
`Mr. Neil A. Rubin
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, California 90025
`Phone:
`(310) 826-7474
`Fax:
`(310) 826-6991
`nrubin@raklaw.com
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`TELEPHONIC HEARING
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`PROCEEDINGS
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`THE BOARD: Hello, this is Judge Moore on the
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`call.
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`MR. RUBIN: Good afternoon.
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`
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`MR. O'BRIEN: Good afternoon, Judge Moore. You
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`have David O'Brien, Counsel for Petitioner, as well as my
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`colleagues in the deposition room. And Neil, you want to
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`introduce yourself as well?
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`MR. RUBIN: Good afternoon, Your Honor,
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`this is
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`Neil Rubin representing the Patent Owner, Corephotonics.
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`THE BOARD: Okay. We also have Judge Ullagaddi
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`and Judge Hoff on the call.
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`Is the witness in the room
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`now?
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`MR. RUBIN:
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`The witness has stepped out.
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`THE BOARD: Okay,
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`thank you. And you were --
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`are you or are you not planning to have the reporter
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`record this phone call?
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`MR. RUBIN:
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`The court reporter is currently
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`transcribing, Your Honor.
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`THE BOARD: Okay,
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`thanks.
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`So I'm actually not
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`sure that this call should be part of the deposition
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`transcript.
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`It's separate from the deposition.
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`I don't
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`know if it's possible for her to do that, but if it is,
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`if she could separate this section, and then file it in
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`the case as a -- separate from the deposition.
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`APPL-1014/Page3 of 33
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`TELEPHONIC HEARING
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`MR. McDOLE: We've already started doing that,
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`Your Honor.
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`THE BOARD: Okay, great.
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`So maybe the party
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`that is complaining, not the party that gave the
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`instruction, but the party that's complaining about the
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`instruction, maybe you could start and give me the
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`background of what's occurred.
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`MR. RUBIN:
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`I would be happy to, Your Honor.
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`This is Neil Rubin for Corephotonics.
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`So today we're in
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`the middle of the deposition of Apple's expert,
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`Dr. Cossairt. And we are in the middle of his recross-
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`
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`examination.
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`After the conclusion of the redirect -- I'm
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`sorry -- of the cross-examination, my initial examination
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`of the witness earlier this afternoon,
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`there was a recess
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`of approximately 26 minutes, during which Counsel for
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`Apple and the witness left the room, and the witness has
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`testified that the three of them were in the same room
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`for that entire 26-minute period.
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`During the recross-examination,
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`there were a
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`number of questions that were asked of the witness.
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`During
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`-- I'm sorry -- during the redirect examination,
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`that is, during Apple's Counsel's examination,
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`there were
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`a number of questions asked of the witness.
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`Then during the recross-examination, my
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`APPL-1014/Page4 of 33
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`TELEPHONIC HEARING
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`I asked questions
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` continued examination of the witness,
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`of the witness that were directed to the issue of
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`whether, essentially whether there had been coaching of
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`the witness during the 26-minute recess, whether the
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`witness had discussed the questions that he was going to
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`be asked or the answers that Apple might have wished that
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`he would give. And there were objections.
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`THE BOARD: Okay. And I want to stop you right
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`there for a moment and understand the timing, because I
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`may need to pull it up here. But my understanding,
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`there
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`may be some thinking about the ability to talk to the
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`witness before your -- before redirect.
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`So, so I need to
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`understand if you're talking about the, a break between
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`cross and redirect, or a break between redirect and
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`recross.
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`MR. RUBIN: Your Honor, it was a break -- the
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`26 minutes occurred between cross and redirect. And I'm
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`aware, we're all aware of the recent precedential -- the
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`recently designated precedential decision from Focal
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`Therapeutics versus SenoRx -- if I'm pronouncing that
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`correctly -- that does say that,
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`that during such a
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`break,
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`there can be discussions between Counsel and the
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`witness.
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`As I read that opinion, it doesn't address at
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`all the question of what degree -- whether and to what
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`APPL-1014/Page5 of 33
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`TELEPHONIC HEARING
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`the -- I think it's the question of privilege that is the
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`basis of the instruction not to answer and is the
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`question that we're seeking guidance on.
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`THE BOARD: Okay. And the other thing I need
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`to know is what is the urgency in terms of -- what is the
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`witness's schedule?
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`If I can get you an answer to this
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`in, let's say, a half hour,
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`is that going to be helpful
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`to you, or is the witness going to need to leave?
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`And I guess this is more of a question to the
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`other side, but it will help me figure out how to get
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`through this.
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`MR. McDOLE: Your Honor, this is Jamie McDole
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`for Apple.
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`I think the witness's flight is a little bit
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`later.
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`So if, if we need a half hour,
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`I'm sure we can
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`take care of that.
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`I think the flight's around 5:00 or
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`6:00, and it's about 2:23 Central Time now.
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`So I think
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`we have, we have a little bit of time there if we need to
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`address that.
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` degree such discussions may be privileged. And it's
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`And when I have the opportunity --
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`THE BOARD: Okay.
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`MR. McDOLE:
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`-- I'd like to address the
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`arguments that he was --
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`THE BOARD: Right.
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`I haven't finished with the
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`other side.
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`I just --
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`APPL-1014/Page6 of 33
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`TELEPHONIC HEARING
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`MR. McDOLE: Okay.
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`THE BOARD:
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`I just needed an answer to that
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`question.
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`I want to let them say everything they feel
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`they need to say first. But I appreciate your candor on
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`that. And now if we, if we could finish with the other
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`side.
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`MR. RUBIN: Thank you, Your Honor.
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`So I won't
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`go through all of the questions that were asked during
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`redirect, or my recross questions about those questions,
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`but I think one example is illustrative.
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`So I'll just
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`read the beginning of the question from the rough
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`transcript.
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`Quote:
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`So can you explain what you meant then
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`by your answer to Counsel's question that 42 does not
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`describe the nature of the registration? The question
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`continues. But the question was one of what he meant by
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`an answer that he had given to a question that I had
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`asked during cross-examination.
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`So I think that given the nature of questions
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`like that, asking to explain an answer that evidently
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`Apple wasn't very happy with, and the long duration of
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`the break, there's a suggestion that -- I think it's
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`reasonable to infer that coaching may have occurred.
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`And the order from the Board in the case of
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`FLIR Systems versus League Surveys, Inc., one of the case
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`APPL-1014/Page7 of 33
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`TELEPHONIC HEARING
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`Suggests that -- well,
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`in that -- it presented similar
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`circumstances and determined that the Patent Owner in
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`that case had waived the issue of whether there had been
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`improper coaching by not calling the Board and
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`challenging the instruction not to answer.
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`The instruction not to answer here, as
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`explained by Counsel at the time, was based on attorney-
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`client privilege and the work product doctrine.
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`The witness has testified that Mr. McDole, who
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`is the, defending the witness,
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`is not his attorney.
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`I
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`don't think there are any facts to suggest that he is his
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`attorney, or that my question was seeking the substance
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`of any communications between Mr. McDole and his actual
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`client, Apple, for the purpose of obtaining legal advice.
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`As -- so I think the attorney-client privilege objection
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`is frankly frivolous.
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` numbers on the order is IPR2014-00411. This is Paper 12.
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`As to the work product objection,
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`to the extent
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`there is work product in questions that Counsel was about
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`to ask,
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`I would submit that that privilege is waived by
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`asking the question.
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`Likewise, if there is attorney-client privilege
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`in instructing,
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`in coaching the witness on what answer
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`the witness should give,
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`that privilege is waived by
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`permitting the witness to answer the question.
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`So I
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`APPL-1014/Page8 of 33
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`TELEPHONIC HEARING
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`THE BOARD: All right. Let me make -- let me
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`make sure I'm understanding what you're saying.
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`So you
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`propose that,
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`that -- because it doesn't quite jive with
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`your "explain what you meant" question, so I need to
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`understand it.
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`So you're saying that by, on recross, allowing
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`the witness to answer a substantive question waives work
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`product immunity for any discussions about that
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`substantive answer during the break.
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`Is that -- am I
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`characterizing it correct?
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`I may be misunderstanding
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`what you were just saying.
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`MR. RUBIN: No, Your Honor. And I apologize
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` don't think that there's any --
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`for not being clearer.
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`So there -- when I asked the question -- my
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`question was -- sorry. My question during recross
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`concerned whether there had been any discussions between
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`Counsel and the witness concerning how he should answer a
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`question such as the one that I read to you earlier.
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`So my question was whether there had been any
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`discussions during the 26-minute recess about how the
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`witness should answer a question such as,
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`"What did you
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`mean when you gave this particular testimony earlier in
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`the day?" And --
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`THE BOARD: Right. Okay.
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`APPL-1014/Page9 of 33
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`TELEPHONIC HEARING
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`MR. RUBIN:
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`So I -- all I would like to be able
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`to ask are questions concerning whether the witness
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`was -- whether there were discussions with the witness
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`about what questions the witness would be asked, and
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`about the answers that they should give.
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`And to be more precise,
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`I'm not actually -- I
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`don't want to go fishing into questions that they
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`considered asking but never did, or answers that they
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`considered giving and never did.
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`I just want to know
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`whether the specific questions and the responsive
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`testimony was something that had been discussed. And
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`without -- I mean, for want of a better word, whether the
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`witness was coached. And I don't believe that there's
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`work product protection for that.
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`So we're not seeking -- I'm not seeking mental
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`impressions or legal theories or anything beyond what was
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`already disclosed by the attorney asking the question and
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`the witness answering it.
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`THE BOARD: Okay.
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`So -- and then just to be
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`clear, you want answers to whether it was discussed. Are
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`you then wanting answers to what was discussed and
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`et cetera? Or are you only concerned with whether it was
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`discussed?
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`MR. RUBIN: Whether it was discussed and
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`whether the answer that was given was suggested or was
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`APPL-1014/Page 10 of 33
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`TELEPHONIC HEARING
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`THE BOARD: Okay. Okay. Anything else?
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`MR. RUBIN: That's what I've got right now.
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`THE BOARD: Okay, great. All right. And so
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`the other side, what is your response?
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`MR. McDOLE: Good afternoon, Your Honor. This
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` based on those discussions.
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`is Jamie McDole on behalf of Apple.
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`Your Honor, Mr. Rubin has identified, based
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`on -- we have identified the Focal decision early in the
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`deposition and actually indicated to Mr. Rubin that we
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`would possibly be leaving the room after recross to have
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`that discussion with the witness.
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`So this is not something that is a surprise.
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`It's something that came up probably in the first 15
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`minutes of the deposition,
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`that we notified him of that
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`decision and said,
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`"FYI, this is out there."
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`So after Mr. Rubin said,
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`"No more questions" --
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`we came back from lunch. Mr. Rubin said, "There's no
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`more questions." We then took a break with the witness,
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`under the guidance in the precedential opinion under
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`Focal Therapeutics,
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`to have a discussion as to certain
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`issues that were raised. And it really boils down to
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`one, about -- and so what Mr. Rubin wants to do is ask
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`questions as to the substance of that discussion that we
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`had with an expert.
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`APPL-1014/Page 11 of 33
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`TELEPHONIC HEARING
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`Rule 26 is fairly clear that you cannot get
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`into communications that attorneys have with experts.
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`And even Mr. Rubin agreed with that when we were off the
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`record in discussing it, that we couldn't get into
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`communications with his expert as to what they did with
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`their declaration and how the declaration was put
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`together.
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`So everyone agrees that there's a privilege
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`with communications, or an immunity with communications
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`with experts under Rule 26.
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`So what -- I think this was two or three days
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`ago,
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`the Board gave a precedential opinion and guidance
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`to all practitioners that they were allowed to actually
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`go and talk to their experts and witnesses after cross-
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`examination was over.
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`And what Mr. Rubin would like to see happen now
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`is that because the -- when the Board gives that
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`permission, that's great, but now I get to ask questions
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`and break the privilege and immunity that's associated
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`with those,
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`those discussions.
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`So Mr. Rubin asked questions of the witness,
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`did you meet -- did you -- "Were you in the same room
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`with the attorneys for 26 minutes?"
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`I allowed the
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`witness to answer that.
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`He asked if the witness reviewed documents.
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`I
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`APPL-1014/Page 12 of 33
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`TELEPHONIC HEARING
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`allowed the witness to answer that.
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`He asked the witness if he reviewed specific
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`sections of documents.
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`I allowed the witness to answer
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`that.
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`When I stopped the questions and objected on
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`privilege and instructed the witness not to answer was
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`when Mr. Rubin asked, "Did you have a conversation with
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`Counsel about," and presumed the substance of the
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`conversation in the question.
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`For example,
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`"Did you communicate with Counsel
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`about the Parulski reference?"
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`"Did you communicate with
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`Counsel about the Border reference?"
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`"Did you
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`communicate with Counsel about the questions you would be
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`asked?" Those fall within Rule 26 of the substance of
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`communications with experts.
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`So anything that wasn't a communication with
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`Counsel,
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`I allowed the witness to answer.
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`The second
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`Mr. Rubin asked for the substance of the communication
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`that the Board expressly permits us to do under the
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`Therapeutics decision,
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`that -- the Focal Therapeutics
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`decision, that's when I instructed the witness not to
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`answer.
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`And I think that's off limits. And it sets a
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`dangerous precedent that if the Board's going to allow
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`Counsel to talk with their witness,
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`that we start diving
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`into what's privileged and what's not. And that,
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`to me,
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`is a very slippery slope as to what communications are
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`they allowed to get into if that's the case and we start
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`waiving work product immunity, which Rule 26 expressly
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`states that this type of communication is.
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`So that's our position.
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`THE BOARD: Okay.
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`MR. McDOLE: That's why we instructed the
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`witness not to answer.
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`THE BOARD: Okay. And so I'm going to ask you
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`something, and I'm going to preface it with:
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`I'm not
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`ordering you to give me an answer to this question, but
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`I'm trying to find out what is established and what is
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`not established, right?
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`So I'm going to ask you something, and you can
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`tell me, "Well, you know, we haven't admitted that," or
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`"That is not established." That's a fine answer to the
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`question.
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`So the question is: Have you, between the
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`parties, established that you discussed with the witness
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`his testimony in particular, not any particular answer,
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`but that in fact you discussed with the witness the
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`testimony that he was going to give on redirect?
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`Is that something that the parties understand
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`happened? Or is that something that is not established
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`Which is totally fine.
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`MR. McDOLE: And, Your Honor,
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`I mean,
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`I'm
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`not -- I don't think that's been established yet, but I
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`have also no problem, you know, assuming, without waiving
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`anything,
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`that absolutely --
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`THE BOARD: Right, right.
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` yet and you are not going to say one way or the other?
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`MR. McDOLE:
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`-- the 26 minutes was a Focal
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`Therapeutics discussion regarding the redirect that was
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`going to happen -- without getting into the substance --
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`THE BOARD: Right.
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`MR. McDOLE:
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`-- as to what it was.
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`THE BOARD: Right, yeah. And obviously, right,
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`I'm not trying to create some waiver or anything by my
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`question, so much, but it helps me to understand
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`everything that's going on.
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`MR. McDOLE: And one other thing I'd like to
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`say is I think Mr. Rubin -- Mr. Rubin's statement that
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`there's some sort of coaching going on is pure conjecture
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`at this point; that, you know,
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`there is not -- I can
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`assure you, Your Honor, there's not coaching going on.
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`I've been doing this long enough to understand
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`how the process works.
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`So there is not coaching going
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`on. And Mr. Rubin's statement that he believes that
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`there is is, quite frankly, offensive to me,
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`that I would
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`So that's not what's happened.
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`The witness is
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`the expert.
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`I certainly am not an expert in this area.
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`So without getting into the substance of what we
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`discussed, it was not coaching. And I want to make that
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`very clear.
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` do something like that.
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`THE BOARD: Okay. All right. Anything further
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`from their side?
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`MR. McDOLE: No, Your Honor.
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`MR. RUBIN:
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`I'm sorry, was that -- was that a
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`question whether there was anything further from Apple?
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`THE BOARD: Sorry. Yeah.
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`I was establishing
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`if he had completed his comments, and then I was going to
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`come back to you.
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`So now you have the floor for any
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`response to what you just heard.
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`MR. RUBIN: Thank you, Your Honor.
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`On the
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`question of Rule 26, which Counsel raised,
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`I think that
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`Rule 26 of the Rules of Civil Procedure is not terribly
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`instructive in this situation, because generally, at
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`trial -- which it's his trial testimony we're taking
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`here -- you don't get to take breaks with witnesses to
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`prepare testimony.
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`Sorry. And then just to be clear on the
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`questions that I would like to be able to ask, so as I
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`said earlier,
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`I'm not looking to ask open-ended questions
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`about everything that they discussed.
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`The -- I think a
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`question that sort of squarely demonstrates what the
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`issue is,
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`is a question that I asked that was objected
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`to, and for which there was an instruction not to answer.
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`So I read the question earlier where the
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`witness was asked to explain what he meant by testimony
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`given earlier in the day. And then my question was,
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`quote,
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`"Did you have any discussion with Counsel for
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`Apple during the recess concerning how you should answer
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`a question like that if it was posed during redirect?"
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`So I think that -- and, you know, subject to
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`whatever guidance that the Board would provide,
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`I would
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`limit my questioning to --
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`THE BOARD: Okay. Let me -- right. Let me
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`present a couple of hypotheticals to you so I can try and
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`understand what the, where we are.
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`Do you agree that outside of coaching -- the
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`kind of coaching you're talking about, where,
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`"Okay, you
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`answered this way, change your answer, and here's the
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`answer you should give." Coaching, right? But outside
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`of that, do you agree that the other side can talk to the
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`witness between redirect and -- excuse me -- between
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`cross and redirect about their testimony, you know,
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`outside of coaching,
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`that they can talk to the other,
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`to
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`their witness about testimony, under the precedential
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`MR. RUBIN:
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`I --
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`THE BOARD:
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`Do you understand my question?
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`MR. RUBIN:
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`I believe I do. And yes,
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`I agree
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` opinion that the Board put out?
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`that under Focal Therapeutics,
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`they can have discussions
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`about testimony during breaks at the time that that break
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`occurred.
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`THE BOARD: Right.
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`So then my next question
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`then is what evidence do you have that there was
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`coaching, besides your attempts to ask questions about
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`coaching?
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`In other words,
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`is there an answer which
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`changed in some unusual way that gave you the idea that
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`there was some coaching?
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`Like what is the evidence of coaching, or why
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`should we allow or why would not we be allowing, every
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`time there's a discussion,
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`there would be a voir dire
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`into whether there was coaching? Like, you see what I'm
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`saying there?
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`MR. RUBIN: Yes, Your Honor.
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`I think that the
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`specific question from Counsel that I read earlier, where
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`there was testimony that had been given earlier in the
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`day, and then the witness was asked to explain what he
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`meant by that testimony,
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`I sort of find it hard to
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`imagine asking that question myself, were I in opposing
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`counsel's shoes, if I didn't have a good reason to know
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`But I will admit that the evidence that there
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`was discussion about the answer to that question or to
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`other questions is circumstantial,
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`from the nature of the
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`questions and the length of the recess.
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`MR. McDOLE: And, Your Honor, may I respond to
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`that? Because --
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`THE BOARD: Well, I'd like to -- you know, if
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`you can hold it.
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`MR. McDOLE: Sure.
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` what the witness was going to answer.
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`THE BOARD: Write yourself a note.
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`I do like
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`to keep the procedure the way we do it.
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`So is there anything more that you wanted to
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`say before I let the other side -- obviously, he wants to
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`respond.
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`MR. RUBIN: Well,
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`I mean,
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`I will say that the
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`issue of the concerns about witness coaching, and
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`frankly -- well,
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`I'm sorry. Let me start over.
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`I cited earlier the FLIR Systems versus League
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`Surveys opinion, which to my knowledge has not been
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`designated precedential, but addresses some of these
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`issues. And it acknowledges what it calls a risk that
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`the Board may -- that when recess conversations occur,
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`there's a risk that the Board may find that there was
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`witness coaching and may exclude or give little or no
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`So it seems to acknowledge, at least,
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`that the
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`Board can infer from circumstances -- and the only
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`circumstances that this opinion discusses are the length
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`of the recess and the nature of the questions -- that
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`there was coaching.
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`And so if -- I believe that it's appropriate to
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`ask targeted questions,
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`just to -- narrowly targeted
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`questions,
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`to see whether the testimony is really the
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`testimony of the witness's or is based on suggestions of
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`what his testimony should be from Counsel.
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`And that if that -- that the only sort of
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`discussions between Counsel and witnesses that that kind
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`of questioning would chill is -- are discussions where
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`the witness is told what they, what their testimony
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`should be.
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` weight to the testimony of a coached witness.
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`THE BOARD: Okay. And if that's it,
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`I think
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`the other side had one more point that, or at least one
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`more point that they wanted to make.
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`MR. McDOLE: Yes, Your Honor. Mr. Rubin had
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`talked about that he would never ask a question that he
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`didn't know the answer to of a witness. But ina
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`hypothetical situation, if I have a witness after recross
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`that I simply ask him the questions in private to
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`understand what his answers are going to be, that's not
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`ask the witness, and hearing what his response is going
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`to be. That is not coaching --
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`THE BOARD: Right.
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`MR. McDOLE:
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`-- the witness as to what the
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`answer would be.
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` coaching. That's asking the question that I may want to
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`
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`And Mr. Rubin suggested that there could be no
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`circumstance in which I didn't know the answer to the
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`question, and how could I possibly want to ask that
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`question.
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`So there is no evidence of coaching.
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`In fact,
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`there's very plausible reasons as to why there isn't
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`coaching in this instance.
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`This is about an answer that the witness gave,
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`and I simply asked the witness, here's your testimony,
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`you know, based on -- and I prefaced it with a few
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`questions before that. And I said, based on your
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`answers, what did you mean by your answer?
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`I didn't lead
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`the witness.
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`I didn't do anything except ask him what
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`did you mean about, by your answer,
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`to clarify the
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`record. That's all we're arguing about here.
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`So I don't think that we should start diving
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`into the, and waiving the work product privilege on
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`something the Board expressly permitted us to do, and to
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`find out what answers to the witness' questions may be,
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`in a hypothetical situation.
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`APPL-1014/Page 21 of 33
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`So, you know,
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`I'm trying not to get into the
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`substance as to what happened, but it is certainly not
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`coaching. And I wish Counsel would stop trying to say
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`there's coaching, when he says himself that his evidence
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`is only circumstantial.
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`THE BOARD: Okay. Unless there's, you know,
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`something that really you guys feel has been missed, I'd
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`like to wrap this up.
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`So I guess what I'm trying to figure out is how
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`to -- I guess I can leave this line open on mute and --
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`and then come back.
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`It may be,
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`like I said, it may be 20
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`minutes.
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`It may be quick, but it may be 20 minutes or
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`so, depending on where the conversation goes with the
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`panel, et cetera.
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`So -- so I guess if that works for you, if you
`
`can leave this line open, I'll leave it open but muted,
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`and you can kind of wait to, wait to hear my voice again.
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`I know that's not the best solution, but that's the best
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`I can think of now. Will that, will that work for the
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`parties?
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`MR. McDOLE: Yes, Your Honor.
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`MR. RUBIN: Yes, Your Honor. Thank you.
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`THE BOARD: Okay. All right. So asIsaid,
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`make it no more than about 20 minutes -- and get you an
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`APPL-1014/Page 22 of 33
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`answer.
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`All right.
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`So at least for now, this call is
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`adjourned, but it will re-up in a few minutes hopefully.
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`MR. RUBIN: Thank you.
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`MR. McDOLE:
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`Thank you.
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`(Recess from 2:49 p.m.
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`to 3:17 p.m.)
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`THE BOARD: Hello,
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`I'm back on the line. This
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`is Judge Moore.
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`MR. RUBIN: Hello, you have Counsel for the
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`parties still here.
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`THE BOARD: Okay. And is the reporter ready to
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`
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`continue?
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`MR. McDOLE: Yes.
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`COURT REPORTER: Yes.
`
`THE BOARD: Okay. All right.
`
`I conferenced
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`the issue with the panel, and where we stand on this
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`issue is that, you know, an instruction not to answer
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`under the rules is proper if there is privilege.
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`We allowed,
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`through the precedential case, for
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`attorneys to discuss testimony after cross but before
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`redirect. And from what I've heard, Counsel for the
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`witness -- or Counsel for Apple,
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`I guess I should say
`
`--
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`admits, or is willing to say that, yes, he talked about
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`testimony.
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`He says that he didn't do coaching.
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`So the evidence of coaching is the style of
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`APPL-1014/Page 23 of 33
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`enough,
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`that that's enough evidence of coaching in order
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`to pierce the privilege.
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`Once you get beyond the fact that, yes,
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`they
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`talked about the testimony,
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`then without further evidence
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`of coaching -- as I said before, it opens the door to,
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`every time, a voir dire of the witness and a testing
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`around the edges of the privilege for those
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`conversations.
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`And to the extent that the testimony changes in
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`a way that a party may feel is inconsistent or is
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`suggestive of coaching,
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`that may be another issue.
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`I do
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`say, because of the timing and what we have going on
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`here, if such a thing has happened, it is possible to
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`argue after this deposition is over,
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`in papers,
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`that an
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`answer should be given less weight or a witness's
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`testimony should be given less weight because they were
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`not credible because they changed their answer ona
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`particular issue.
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`So there is a remedy outside of
`
`testing for coaching and establishing coaching at the
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` questions that were asked. And we don't feel that's
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`deposition.
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`So with all that said, our ruling is that those
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`instructions not to answer are proper, or at least we
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`were not -- we will not -- we will not tell the party
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`that they were improper,
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`I guess is maybe the right way
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`APPL-1014/Page 24 of 33
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`TELEPHONIC HEARING
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`to say it.
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`And so what we'll do is we'll wait to see the
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`transcript of this when it goes on the record, and then
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`we may put in sort of a written memorialization of this
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`oral order.
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`Give me one second to check with the panel if
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`there's anything I left out or anything more I should
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`say.
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`So just give me one minute.
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`(PAUSE. )
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`THE BOARD: Okay.
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`So is there anything else
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`from the parties? And I'll start with the party that
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`initiated this call.
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`MR. RUBIN: Nothing else at this time from the
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`Patent Owner, Your Honor. Actually,
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`I'm sorry.
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`I'm
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`sorry.
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`I apologize. Your Honor referred to addressing
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`the issue in papers later.
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`Am I understanding you
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`correctly that it would be appropriate to raise the
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`question of the veracity or weight of the testimony in
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`our surreply? Was that the papers that you were
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`referring to?
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`THE BOARD:
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`The -- oh, okay. Yeah,
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`I have not
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`gone back and made myself aware of the timing.
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`Is the
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`surreply the only paper that remains?
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`MR. RUBIN: That's correct, Your Honor. This
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`is a deposition concerning testimony that was in support
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`THE BOARD: Okay. Right.
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`I guess under the
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`old procedures, you would have observations on testimony
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`and sort of -- and this goes to either party that can do
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`it quickly, because I'm just trying to do this quickly.
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`But would observations have covered this type of
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`situation?
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`MR. RUBIN:
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`I'm sorry.
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`Is the question whether
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`observations would have covered the situation under the
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` of the reply.
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`THE BOARD: Right. Right.
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`So I was suggesting
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`that a party,
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`that the party could say,
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`"Look,
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`this is
`
`inconsistent, and therefore, you should give him less
`
`weight, or you should question his credibili
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