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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`1
`2
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`ZTE
`
`(USA), INC.,
`
`Petitioner,
`
`vs.
`
`FRACTUS, S.A. ,
`
`Patent Owner.
`
`) No. IPR2018-01451
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`)
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`)
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`)
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`)
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`)
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`)
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`IPR2018-01455
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`IPR2018-01456
`
`IPR2018-01457
`
`IPR2018-01461
`
`IPR2018-01462
`
`IPR2018-01463
`
`Page 3
`(WHEREUPON, discussion was had off
`the record.)
`JUDGE BOUCHER: I would like to caution
`3
`4 everyone who is speaking to please introduce
`5 yourself before you speak just so the court
`6 reporter does not need to interrupt the
`7 conversation that we have and can make a clean
`8 record.
`9
`Mr. Sobieraj, because you arranged for
`10
`the court reporter, we would ask that once we are
`11 done with this, if you could file that as an
`12 exhibit in each of the proceedings. I don't know
`13
`that there's going to be a particular urgency for
`TRANSCRIPT OF PROCEEDINGS had at the
`conference call of the above-entitled matter, held 14
`it to be done quickly. Maybe we can see after we
`15
`talk a little bit through the issues.
`16
`So, Mr. Shapiro, I think you are the one
`17 who arranged or at least initiated the request that
`18 we are here to discuss. Maybe you can begin and
`lay the groundwork for what it is that you are
`19
`20
`requesting, please.
`21
`MR. SHAPIRO: Thank you, your Honor. The
`22 patent owner is requesting a reply in each of the
`23 proceedings to address the issues that were noted
`24
`in our e-mail to the Board.
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`at 20 North Clark Street, 5th Floor, Chicago,
`
`Illinois, on the 9th day of April, A.D. 2019,
`
`commencing at 2:30 p.m.
`
`BEFORE:
`
`MR. PATRICK M. BOUCHER,
`
`MR. KEVIN C. TROCK,
`
`MR. JOHN A. HUDALLA,
`
`MS. AVELYN M. ROSS,
`
`Judges.
`
`PRESENT:
`
`Page 2
`
`BRINKS GILSON & LIONE,
`(NBC Tower,
`455 North Cityfront Plaza Drive, Suite 3600,
`Chicago, Illinois 60611,
`1-312-222-8123), by:
`MR. JAMES R. SOBIERAJ,
`jsobieraj@brinksgilson.com, and
`MR. DAVID P. LINDNER,
`dlindner@brinksgilson.com,
`appeared telephonically on behalf
`of Petitioner i
`EDELL, SHAPIRO & FINNAN, LLC,
`(9801 Washingtonian Boulevard, Suite 750,
`Gaithersburg, Maryland 20878,
`1-301-424-3640), by:
`MR. JASON SHAPIRO,
`js@usiplaw.com,
`MR. PATRICK J. FINNAN,
`pjf@usiplaw.com, and
`MR. MARK DEBOY,
`mjd@usiplaw.com,
`appeared telephonically on behalf of
`Patent Owner.
`
`REPORTED BY: KRISTIN C. BRAJKOVICH, CSR
`License No. 84-3810.
`
`Page 4
`
`First, patent owner would like an
`1
`2 opportunity to address the many new arguments that
`3 were raised by petitioner in the rehearing
`4 requests. Almost all of the 325(d) and 314(a)
`5 arguments in the rehearing requests are new. It's
`6 patent owner's position that these arguments could
`7 have and, indeed, should have been raised in the
`8 petitions, and if they -- if they had been raised
`in the petitions, then patent owner could have
`9
`10 addressed them in the patent owner preliminary
`11
`responses. For this reason alone, we believe
`12
`there's good cause for a reply in these
`13 proceedings.
`14
`Additionally, we also disagree with the
`15 allegations in the rehearing requests, that the
`16 Board overlooked significant facts in denying the
`17 petitions. So patent owner would also like an
`18 opportunity to show how and where the allegedly
`19 overlooked facts were addressed by the Board in the
`20
`institution decision.
`21
`Finally, as noted in the e-mail, there
`22 were some issues with certain case law cited by and
`relied on by the petitioner in the rehearing
`23
`24
`requests, and patent owner would also like an
`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1033.0001
`
`

`

`Page 7
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`Page 5
`1 opportunity to address these issues with the case
`1 European name.
`2
`law in a reply.
`JUDGE BOUCHER: So it's Sobieraj. Okay. If
`2
`Again, patent owner believes that
`3
`3 you could go ahead then, Mr. Sobieraj, and let us
`4
`there's good cause for a reply in these cases
`4 know what your position is. I guess one of the
`5 because it would have been able to address these
`5 concerns that I have is with what Mr. Shapiro
`6
`issues in the patent owner preliminary responses if
`6 raised, which is the extent to which the arguments
`7
`they had been timely raised in the petitions.
`7
`in your rehearing requests are new arguments that
`8
`And, in addition, patent owner believes
`8 were not made in the petition.
`9
`that additional briefing would assist the Board in
`9
`MR. SOBIERAJ: Okay. Thank you. This is Jim
`10 rendering its decision on the petitioner's requests
`10 Sobieraj for the petitioners.
`11
`11
`for rehearing. If a reply is granted, patent owner
`Our petition did explain how no claims
`12 believes that five pages would be enough for each
`12 were allowed over grounds that we presented in the
`13 proceeding, and given that there are seven
`13 petition in any prior PTO proceedings. I don't
`14 proceedings, believes that ten days from today's
`14
`think that we could reasonably anticipate arguments
`15
`in the patent owner's preliminary response that
`15 call would be an appropriate deadline for patent
`16 were misleading or relied on incorrect legal
`16 owner to submit its replies.
`17
`JUDGE BOUCHER: Okay. This is Judge Boucher. 17 premises. I don't think that it's reasonable to
`18 One question I have is, it seems fairly clear that
`18 expect someone -- for that to occur.
`19
`the statement in the decisions denying institution,
`19
`So, for example, I don't think that we
`20
`that the petitioner had not requested an
`20 could reasonably anticipate that the patent owner
`21 opportunity to file a reply to the preliminary
`21 would mischaracterize the file history to suggest
`22 response was incorrect.
`22
`to the panel that the challenged claims in the
`23
`And if we had, in fact, at that time
`23 ex parte reexamination were allowed over the
`24 granted the petitioner the opportunity to file a
`24 Misra II reference based on the single band radio
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`Page 8
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`Page 6
`1 reply, it seems to me that you would have been left
`limitation, when, in fact, that was not the case.
`1
`in the position where you would not have any
`The examiner rejected their argument
`2
`2
`3 additional response, which is kind of what you are
`there. The examiner only allowed those claims
`3
`4 because of the criminal limitation that required
`4 asking for now. I'm just wondering if you could
`5
`the perimeter of the multi-level structure to have
`5 address that concern.
`6 a different number of sides in each of the
`MR. SHAPIRO: Right. If the petitioner had
`6
`7 geometric elements. I think that because -- the
`7 been granted a reply to the patent owner
`8 way that the response was written, it led the Board
`8 preliminary response, I fully anticipate that we
`9 would have requested a surreply to address any of
`9
`to accept that in a couple of places, particularly
`10
`the new arguments that would have been presented in 10
`in the "431 and the "432 decisions. But the Board
`11
`the reply. Indeed, since the petitioner did not
`11 went to the portion of the response to the office
`12 address any of the informative decisions on 325( d)
`12 action and actually reversed the arguments that
`13 or 314 in its petitions, virtually anything that
`13 were made to the patent office.
`14
`they filed as a reply would have been new
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`The patent owner only distinguished
`15 arguments, so we believe that there would have been
`15 Misra II based on the preliminary limitation. Then
`16 very good cause for us to seek a surreply in those
`16
`in the next sentence, it distinguished two
`17 circumstances.
`17 different references, Yanagisawa and Johnson, based
`18
`JUDGE BOUCHER: Okay. Let me turn to the
`18 on the single band limitation, and I think the --
`19 petitioner now. I'm sorry. I did not quite hear
`19 you know, I think we could anticipate certainly
`20
`20 your name. Is it Silver?
`that the patent owner would make it sound like the
`21
`MR. SOBIERAJ: Yes. It doesn't sound like
`21
`reference -- MISRA reference was distinguished
`22 based on the single band limitation, when it's not
`22
`it's spelled. Sober is one word and the name Ray.
`23
`23 what we said.
`If you put them together, it's Sobieraj. That is
`24
`Nor do I think that we could really
`24 how my parents tried to anglicize our Eastern
`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1033.0002
`
`

`

`Page 11
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`Page 9
`On the other hand, as we said in our
`1
`1 anticipate the Board would rely on what the patent
`2 e-mail, it's not like we are afraid of their
`2 owner said in the decision that actually reversed
`3 argument, but if they get to provide a response, we
`3
`the reasons that the patent owner set forth for
`4 would like to file a reply brief of also five
`4 distinguishing the claims and that the examiner
`5 pages. We were not allowed to file a reply brief
`5 relied on.
`the last time. The Board cited that in its
`6
`I also don't think that we could
`6
`7 decision. We felt that turned out to be
`7 reasonably anticipate, for example, the '069 patent
`8 prejudicial to our client, and if they are going to
`8 with IPR, that the examiner would know about
`9 file a response, then our client feels they should
`9 grounds in certain inter partes reexam and ex parte
`10 reexamination on other patents where the examiner 10 have an opportunity to file a reply.
`11 was not involved in those prior proceedings. And
`11
`JUDGE BOUCHER: It doesn't sound like you have
`12 any particular opposition to that procedure though,
`12
`those prior inter partes reexams and ex parte
`13 reexams were not included even in the 200- to
`13 where we would authorize the patent owner to file
`14 300-page IDS that was submitted in the '069
`14 an opposition and then authorize you to file a
`15 prosecution, for example, and several other patents 15 reply of the same length?
`16 as well.
`16
`MR. SOBIERAJ: That's correct.
`Nor do I think we could really
`17
`JUDGE BOUCHER: Do you have anything to add,
`17
`18 anticipate that the Board would then rely in its
`18 Mr. Shapiro?
`19 decision on those non-cited inter partes exams and 19
`MR. SHAPIRO: The only thing that I would add
`20
`is, we disagree with the comments that Mr. Sobieraj
`20 ex parte exams to infer, we think incorrectly, that
`21
`the examiner knew about those earlier proceedings 21 made about whether or not the arguments in the
`22 patent owner preliminary response could have been
`22 and earlier arguments.
`23 anticipated. There was not any -- in the
`JUDGE BOUCHER: Okay.
`23
`24 petitions, there was not any discussion of the
`24
`MR. SOBIERAJ: So those are the reasons. I
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`Page 12
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`Page 10
`1 Becton Dickinson factors, so it's a bit
`1 could go on, but I think I gave you a few examples.
`2 disingenuous to say that the reason that this was
`2
`JUDGE BOUCHER: Yeah. That is what I was
`3 not -- that it could not be antiCipated is because
`3 going to say. I think we have a sense of the
`4 of some detail in the patent owner preliminary
`4
`flavor of what your arguments are.
`5 response.
`5
`My question is, what do you think is the
`But getting to the matter at hand on
`6
`6 correct procedure for us to follow right now? Is
`7 whether or not we have any kind of objection to the
`7
`that simply to deny the request for an opposition
`8 petitioner being given a surreply, if we are given
`8 by the patent owner and decide the rehearing
`9 a reply, again, I think we would object because it
`9 requests based on the record as it exists?
`10
`MR. SOBIERAJ: I think there's two reasonable
`10
`just provides them with an additional opportunity
`11
`to supplement their petition, in which these issues
`11 options here for moving forward. One is to deny
`12 should have been raised and would have allowed us
`the request because -- so, for example, with
`12
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`to reply in our patent owner response. We don't
`13 respect to the things that we could have or should
`14 have known, we don't think so. Besides, I think
`14
`think it's necessary they be given a surreply, but
`15
`if a surreply is granted to the petitioner, we
`15 what is even more important is, I'm sure the Board
`16
`think it should be limited to addressing any
`16 wants to reach the correct decision here, and it
`17 should rule on the request for rehearing on whether 17 unforeseeable issues or alleged mistakes that are
`raised in our reply.
`18 we correctly pointed out whether there were things 18
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`that were overlooked.
`19
`JUDGE BOUCHER: Okay. The petitioner does
`20
`With respect to the other items,
`20 have the burden with respect to the rehearing
`21
`Items 2, 3, 4, and 5 in their e-mail.lthinkthese21requests.solguess I don't -- I don't fully agree
`22 are things -- the records are before the Board, and 22 with your statement that it would be inappropriate
`I think the Board can decide. I think there's good
`23
`for the petitioner have the last word on this.
`23
`24 grounds to deny their request.
`24 Could you just address that?
`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1033.0003
`
`

`

`Page 15
`Page 13
`1 panels on the different cases, and so I think we
`MR. SHAPIRO: Again, I really don't have much
`1
`2 would like to confer after the call and see what we
`2 more to say about that other than we feel that
`think the appropriate action is and then issue an
`3
`these issues should have been raised in the
`3
`4 order. It should not take very long, probably
`4 petition. If they were, this could have been dealt
`5 within a day or two, indicating what our decision
`5 with much more efficiently, and we think that -- we
`is and how we would like to proceed.
`6
`6 understand they filed a request for rehearing and
`7
`With that understanding, is there
`they have raised a whole bunch of new issues, but
`7
`8 anything else that you would like to raise while we
`8
`it seems patently unfair for them to have
`9 are on the phone, Mr. Shapiro?
`9 additional opportunities for them to supplement the
`10
`MR. SHAPIRO: No, your Honor.
`10 briefing on issues that were not raised in the
`11
`JUDGE BOUCHER: Mr. Sobieraj, anything else?
`11 petition.
`12
`MR. SOBIERAJ: No, your Honor.
`JUDGE BOUCHER: Mr. Sobieraj, I'll give you
`12
`13
`JUDGE BOUCHER: Okay. With respect to the
`the last word on this. Is there anything
`13
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`transcript of the call, I still don't see anything
`14 additional that you would like to say before I
`15
`in particular that we will need to see sort of
`15 consult with the panel? I guess I just want to --
`16
`immediately before we make a decision, so I don't
`16 well, why don't you go ahead. I do have a couple
`17 see any particular urgency in trying to get an
`17
`things to say after that, but why don't you just
`18 expedited transcript or anything. But we would
`18 give us your final thoughts, please.
`19
`like to make the transcript to be made of record in
`19
`MR. SOBIERAJ: Based on the way this has
`20
`the proceedings in due course, so whenever that is
`20 unfolded, we think that we should have the
`21 available, if you could make sure to file it as an
`21 opportunity to file a reply. As you mentioned,
`22 exhibit and in all seven proceedings, please.
`this is really -- the reply is for the request for
`22
`23 rehearing, where we have the burden. We filed the 23
`MR. SOBIERAJ: Okay. We will do that, your
`24 opening request. They are asking for a response.
`24 Honor.
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`Page 14
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`Page 16
`JUDGE BOUCHER: With that, I think that is it,
`1
`1 We would like to have an opportunity to reply.
`2 so this call is adjourned. Thank you.
`2
`With only five pages, we don't really
`MR. SOBIERAJ: Thank you.
`3
`3 have space to rehash issues. We really do need to
`4
`MR. SHAPIRO: Thank you.
`4 focus on key points that maybe we really have
`5
`(WHICH WERE ALL THE PROCEEDINGS HAD
`5 addressed before.
`IN THE ABOVE-ENTITLED CAUSE ON THIS
`6
`JUDGE BOUCHER: Okay. And Mr. Shapiro had
`6
`7 suggested ten days for filing. If we did authorize
`DATE.)
`7
`8
`8 a reply to an opposition, would ten days work for
`9
`9 you also?
`10
`10
`MR. SOBIERAJ: Yes.
`11
`JUDGE BOUCHER: Mr. Shapiro, when you say "ten 11
`12 days," do you mean a week and a half, or do you
`12
`13 mean two weeks?
`13
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`MR. SHAPIRO: I meant ten days from the call,
`14
`15 which would be Friday, so the 19th.
`15
`JUDGE BOUCHER: I guess I was asking whether
`16
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`17 you meant calendar days or business days?
`17
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`MR. SHAPIRO: If you give us business days,
`18
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`that's fine.
`19
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`MR. SOBIERAJ: We would rather business days,
`20
`21 your Honor.
`21
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`JUDGE BOUCHER: Okay. So I think we are not
`22
`23 going to convey a decision on this on the phone
`23
`24 right now, in part because we do have different
`24
`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1033.0004
`
`

`

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`STATE OF ILLINOIS
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`) SS:
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`COUNTY OF COO K
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`)
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`I, KRISTIN C. BRAJKOVICH, a Certified
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`Shorthand Reporter of the State of Illinois, do
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`hereby certify that I reported in shorthand the
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`proceedings had at the conference call aforesaid,
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`and that the foregoing is a true, complete and
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`correct transcript of the proceedings of said
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`conference call as appears from my stenographic
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`notes so taken and transcribed under my personal
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`direction.
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`IN WITNESS WHEREOF,
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`I do hereunto set my
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`hand at Chicago, Illinois, this 23rd day of
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`15 April, 2019.
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`Certified Shorthand Reporter
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`C.S.R. Certificate No. 84-3810.
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`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1033.0005
`
`