·1· · · · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
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`·2· · · · · · · · · · · · _______________
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`·3· · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·4· · · · · · · ___________________________________
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`·5· · · · · · · · LENOVO HOLDING COMPANY, INC.,
`· · · · · · · · · LENOVO (UNITED STATES), INC.,
`·6· · · · · · · · · and MOTOROLA MOBILITY, LLC,
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`·7· · · · · · · · · · · · Petitioner,
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`·8· · · · · · · · · · · · vs
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`·9· · · · · · · ·DODOTS LICENSING SOLUTIONS, LLC,
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`10· · · · · · · · · · · · Patent Owner.
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`11· · · · · · · ___________________________________
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`12· · · · · · · IPR2019-01278 (Patent 8,020,083 B1)
`· · · · · · · · IPR2019-01279 (Patent 8,510,407 B1)
`13· · · · · · · ___________________________________
`
`14
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`15· · · · Teleconference Proceedings in the above-styled
`
`16· ·cause before the Honorable Judge James A. Worth,
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`17· ·Honorable Judge Amber L. Hagy, and Honorable Judge
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`18· ·Sharon Fenick, Administrative Patent Judges, on Monday,
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`19· ·the 31st day of August, 2020, commencing at 2:30 p.m.,
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`20· ·EST, reported by Elizabeth Tiedemann, Registered
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`21· ·Professional Reporter.
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`22
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`23
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`24
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`25
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 1 of 30
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`·2· · · · · · · · · · · · _______________
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`·3· · · · · ·BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`·4· · · · · · · ___________________________________
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`·5· · · · · · · · LENOVO HOLDING COMPANY, INC.,
`· · · · · · · · · LENOVO (UNITED STATES), INC.,
`·6· · · · · · · · · and MOTOROLA MOBILITY, LLC,
`
`·7· · · · · · · · · · · · Petitioner,
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`·8· · · · · · · · · · · · vs
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`·9· · · · · · · ·DODOTS LICENSING SOLUTIONS, LLC,
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`10· · · · · · · · · · · · Patent Owner.
`
`11· · · · · · · ___________________________________
`
`12· · · · · · · IPR2019-01278 (Patent 8,020,083 B1)
`· · · · · · · · IPR2019-01279 (Patent 8,510,407 B1)
`13· · · · · · · ___________________________________
`
`14
`
`15· · · · Teleconference Proceedings in the above-styled
`
`16· ·cause before the Honorable Judge James A. Worth,
`
`17· ·Honorable Judge Amber L. Hagy, and Honorable Judge
`
`18· ·Sharon Fenick, Administrative Patent Judges, on Monday,
`
`19· ·the 31st day of August, 2020, commencing at 2:30 p.m.,
`
`20· ·EST, reported by Elizabeth Tiedemann, Registered
`
`21· ·Professional Reporter.
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`22
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`23
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`24
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`25
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 1 of 30
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`·1· · · · · · · · · · · · · APPEARANCES
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`·2· · · · · · · · · ·(all via teleconference)
`
`·3· ·FOR THE PETITIONER:· · · JOHN ALEMANNI, ESQUIRE
`· · · · · · · · · · · · · · · Kilpatrick Townsend & Stockton, LLP
`·4· · · · · · · · · · · · · · 1001 West 4th Street
`· · · · · · · · · · · · · · · Winston Salem, North Carolina 27101
`·5· · · · · · · · · · · · · · (336) 607-7300
`· · · · · · · · · · · · · · · jalemanni@kilpatricktownsend.com
`·6
`· · ·FOR THE PATENT OWNER:· · PERRY GOLDBERG, ESQUIRE
`·7· · · · · · · · · · · · · · Progress, LLP
`· · · · · · · · · · · · · · · 11620 Wilshire Boulevard, 9th Floor
`·8· · · · · · · · · · · · · · Los Angeles, California 90025
`· · · · · · · · · · · · · · · (310) 697-7200
`·9· · · · · · · · · · · · · · goldberg@progressllp.com
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`10· ·____________________________________________________________
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`11· · · · · · · · · · · · · · ·INDEX
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`12· · · · · · · · · · · · · · · · · · · · · · · · · · · · PAGE
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`13· ·CERTIFICATE OF REPORTER· · · · · · · · · · · · · · · ·22
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`14· ·____________________________________________________________
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`15
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`16
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`17
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`18
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 2 of 30
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`·1· · · · · ·**********PROCEEDINGS**********
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`·2· · · · ·JUDGE FENICK:· This is a conference call for
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`·3· ·IPR2019-01278 and -01279.· This is Judge Fenick of
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`·4· ·the PTAB, and with me on the line are Judges Hagy
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`·5· ·and Worth.
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`·6· · · · ·Can I hear who's on the line for Petitioner,
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`·7· ·please?
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`·8· · · · ·MR. ALEMANNI:· Yes, Your Honor.· This is John
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`·9· ·Alemanni for Lenovo.
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`10· · · · ·JUDGE FENICK:· Thank you.
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`11· · · · ·MS. TIEDEMANN:· Good afternoon.· My name is
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`12· ·Elizabeth Tiedemann, and I'll be the court reporter
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`13· ·today.· I'm also on the line.
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`14· · · · ·JUDGE FENICK:· Okay.· Thank you.· And can I
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`15· ·hear who's on the line for Patent Owner, please?
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`16· · · · ·MR. GOLDBERG:· Yes.· Hi.· This is Perry
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`17· ·Goldberg from Progress, LLP for Dodots.
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`18· · · · ·JUDGE FENICK:· Thank you.· Is there anyone
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`19· ·else on the line?
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`20· · · · ·MR. ALEMANNI:· Not for Petitioner, Your
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`21· ·Honor.
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`22· · · · ·JUDGE FENICK:· For Patent Owner,
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`23· ·Mr. Goldberg?
`
`24· · · · ·MR. GOLDBERG:· Not that I know of.· I'm not
`
`25· ·sure if Lewis Hudnell is going to join or not.
`
`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 3 of 30
`
`
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`·1· · · · ·JUDGE FENICK:· Okay.· Thank you.· And we've
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`·2· ·been already been told that there's a court
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`·3· ·reporter on the line.· I'm not sure which party has
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`·4· ·retained the court reporter, but whoever it is, if
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`·5· ·they would please make sure to file the transcript
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`·6· ·in the case, that would be appreciated.· So who
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`·7· ·retained the court reporter?
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`·8· · · · ·MR. ALEMANNI:· Yes, Your Honor.· I'm sorry.
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`·9· ·This is Petitioner.· We retained the court
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`10· ·reporter, and we'll file that as an exhibit as soon
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`11· ·as we get the transcript.· We thought it would be
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`12· ·helpful given the number of issues.
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`13· · · · ·JUDGE FENICK:· Thank you.
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`14· · · · ·MR. GOLDBERG:· And, Your Honor, I just
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`15· ·received a text from Mr. Hudnell.· He says that
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`16· ·he's on but doesn't hear anything, so I think he
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`17· ·has some technical difficulties.· But I think we
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`18· ·can proceed because I was going to make the
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`19· ·argument.
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`20· · · · ·JUDGE FENICK:· Okay.· That's fine.· Sounds
`
`21· ·good.· If you want to text him back and tell him to
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`22· ·hang up and try again, that usually works better
`
`23· ·than waiting.· I'm not sure why waiting would do
`
`24· ·anything for this.
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`25· · · · ·MR. GOLDBERG:· Okay.· Hold on.· I'm texting
`
`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 4 of 30
`
`
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`·1· ·him that right now.
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`·2· · · · ·JUDGE FENICK:· Let me know when you're ready,
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`·3· ·Mr. Goldberg.
`
`·4· · · · ·MR. GOLDBERG:· I can go right now, or we give
`
`·5· ·him a minute.· It's up to you.
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`·6· · · · ·JUDGE FENICK:· Well, why don't we begin?· And
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`·7· ·I hope he'll join us if he doesn't have additional
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`·8· ·difficulties.
`
`·9· · · · ·Mr. Goldberg, I see that you e-mailed the
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`10· ·Board, it appears, on the evening of the 12th of
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`11· ·August.· So I apologize for the delay in responding
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`12· ·to this request.· It was your -- it was Patent
`
`13· ·Owner's request for this conference, so I'd like to
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`14· ·start with you.· And you have three issues in this
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`15· ·e-mail.· I think it might be easier to address them
`
`16· ·one at a time.
`
`17· · · · ·MR. GOLDBERG:· Correct.
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`18· · · · ·JUDGE FENICK:· So the first issue that you
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`19· ·wanted to discuss is new evidence and argument
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`20· ·regarding the "Berg" article.
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`21· · · · ·MR. GOLDBERG:· Right.
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`22· · · · ·JUDGE FENICK:· So if you could, briefly
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`23· ·discuss that.
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`24· · · · ·MR. GOLDBERG:· So the issue here -- it also
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`25· ·came up in the related earlier IPR on the related
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 5 of 30
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`·1· ·545 patent, and the issue is whether this article
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`·2· ·qualifies as prior art.· And we believe that it
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`·3· ·does not, but at the same time, we're not required
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`·4· ·to prove that it doesn't.· It's the Petitioner's
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`·5· ·burden to prove that it does qualify as a prior
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`·6· ·art.
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`·7· · · · ·We don't think they've met that burden, but
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`·8· ·we did not raise the issue in our reply -- I'm
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`·9· ·sorry -- in our Patent Owner's response.· But they
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`10· ·did raise the issue.· They submitted additional
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`11· ·argument and evidence in their reply on this point.
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`12· ·I can understand why they would do that, which is
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`13· ·they have not met their burden.· So they do need to
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`14· ·submit something additional.
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`15· · · · ·But under the Hulu case from the POP, they
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`16· ·are not allowed to do that in a reply unless we had
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`17· ·raised the issue in our Patent Owner's response.
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`18· ·The proper procedure, if they wanted to do that,
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`19· ·would be a motion to file supplemental information
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`20· ·under 37 CFR Section -- let's see -- I think
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`21· ·42.123.· And the Hulu case is very clear about
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`22· ·that.
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`23· · · · ·So they did not submit that motion.· They
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`24· ·would need to make that motion -- ordinarily,
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`25· ·they'd have to do that within one month of
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 6 of 30
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`
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`·1· ·institution.· And if they haven't done it in that
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`·2· ·time frame, they need to show good cause as to why
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`·3· ·the supplemental information reasonably could not
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`·4· ·have been obtained earlier and that consideration
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`·5· ·of the supplemental information would be in the
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`·6· ·interest of justice.· So given that they --
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`·7· · · · ·JUDGE FENICK:· Okay.
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`·8· · · · ·MR. GOLDBERG:· -- haven't done that to this
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`·9· ·date, that's the basis for our motion.
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`10· · · · ·JUDGE FENICK:· Okay.· I understand your
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`11· ·position.· Our Trial Practice Guide talks about the
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`12· ·motion to strike and says that generally the Board
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`13· ·itself is capable of identifying these new issues
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`14· ·of belatedly presented evidence and disregarding
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`15· ·it.· And so the striking of a portion of a party's
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`16· ·brief would be an acceptable remedy.
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`17· · · · ·MR. GOLDBERG:· Uh-huh.
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`18· · · · ·JUDGE FENICK:· It might be appropriate if
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`19· ·there will be some problem.· For example, the Trial
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`20· ·Practice Guide talks about addressing such a new
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`21· ·theory could prejudice the opposing party or take
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`22· ·too long in the oral argument.· So I'm wondering
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`23· ·why this requires striking of the portion of a
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`24· ·brief and the evidence, the associated evidence,
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`25· ·rather than the panel identifying this new issue
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 7 of 30
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`·1· ·and not considering the argument and the belatedly
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`·2· ·presented evidence.
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`·3· · · · ·MR. GOLDBERG:· Right.· Well, one reason why
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`·4· ·it matters now is that:· If they are allowed to
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`·5· ·submit this new evidence and argument, then we
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`·6· ·would request permission to submit evidence and
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`·7· ·argument in response.· And that would include
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`·8· ·taking the deposition of the librarian-type person
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`·9· ·who they submitted a declaration from.
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`10· · · · ·In the Hulu case, the Petitioner has
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`11· ·submitted a declaration from a librarian with their
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`12· ·petition, and they didn't wait on that.· We did not
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`13· ·have an opportunity to address that in connection
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`14· ·with our Patent Owner's response because they
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`15· ·hadn't submitted the declaration before that.
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`16· · · · ·So it will create additional expense.· It
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`17· ·will create the need for additional argument.· It
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`18· ·will take away from our preparation on the other
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`19· ·issues, and it's just -- I don't think there's any
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`20· ·controversy here.· It's just undeniable.· And I'm
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`21· ·sure my opposing counsel will agree that we did
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`22· ·not -- that the Patent Owner did not raise this
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`23· ·issue in connection with the Patent Owner's
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`24· ·response.
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`25· · · · ·So given it's a very clear situation -- it's
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 8 of 30
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`
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`·1· ·not debatable situation -- there's no reason to
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`·2· ·wait in addressing this question.
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`·3· · · · ·JUDGE FENICK:· Okay.· Thank you.
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`·4· · · · ·Mr. Alemanni, can you address this issue?
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`·5· · · · ·MR. ALEMANNI:· Yes.· Thank you, Your Honor,
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`·6· ·just briefly.· So what we were talking about is the
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`·7· ·argument and the reply, and then the exhibits are
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`·8· ·Exhibit 1017, which is the Vasakova declaration,
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`·9· ·and 1018, which is an archive page.· And the other
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`10· ·thing we relied on is the deposition testimony of
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`11· ·Patent Owner's expert, which is Exhibit 1019.
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`12· · · · ·I agree that Patent Owner did not raise
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`13· ·publication as an argument in their -- as a
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`14· ·response.· I disagree that they didn't raise the
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`15· ·issue at all.· As Your Honors may recall, we had a
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`16· ·telephone conference in which Patent Owner was
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`17· ·refusing to make their declarants available for
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`18· ·deposition.
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`19· · · · ·And during that telephone conference, they
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`20· ·raised the point that they had wished to depose
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`21· ·Ms. Vasakova, which suggested to us that they were
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`22· ·going to wait to make the argument about "Berg"
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`23· ·until their surreply.· So I think there's reason
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`24· ·here for us to submit the evidence.· I agree -- I
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`25· ·believe also this is not a new theory.· We had put
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 9 of 30
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`·1· ·"Berg" in the petition, so the idea of the
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`·2· ·publication is not a new theory.
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`·3· · · · ·I agree with Patent Owner that they should
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`·4· ·have the ability to depose Ms. Vasakova if they
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`·5· ·wish to do so.· We put the same declaration in the
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`·6· ·record in the prior proceeding that Mr. Goldberg
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`·7· ·referred to, and they didn't request a deposition
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`·8· ·of her.· I think that the Patent Office's precedent
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`·9· ·is likely that we wouldn't necessarily have to put
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`10· ·her up for a deposition.· But I think to the extent
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`11· ·that there's any prejudice caused by the presence
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`12· ·of her declaration in the record that they could
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`13· ·cure it by deposing her we are willing to put her
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`14· ·up.
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`15· · · · ·And then, of course, the deposition of their
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`16· ·own expert, they had the opportunity -- in fact,
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`17· ·took the opportunity to redirect their expert.· So
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`18· ·I don't think there could be any prejudice there.
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`19· ·So I believe that the evidence and the argument is
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`20· ·properly there and that Patent Owner can respond in
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`21· ·their surreply.
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`22· · · · ·JUDGE FENICK:· Okay.· Thank you.
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`23· · · · ·Mr. Goldberg, do you have any response to
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`24· ·that, or should we move on to the second point of
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`25· ·your e-mail?
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 10 of 30
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`·1· · · · ·MR. GOLDBERG:· Yeah.· Well, I guess my
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`·2· ·response to that is:· We would only want to depose
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`·3· ·Ms. Vasakova if they're permitted to make this new
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`·4· ·argument and submit this new evidence.· It's not
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`·5· ·our preferred remedy.· The preferred remedy is that
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`·6· ·this argument and evidence, which is absolutely not
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`·7· ·responsive to anything in the Patent Owner's
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`·8· ·response, to be stricken.· And there is absolutely
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`·9· ·no basis for them to have submitted this argument
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`10· ·and evidence.
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`11· · · · ·They can't deny that it's not responsive.
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`12· ·They haven't made their motion.· They haven't met
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`13· ·their burden.· They are not going to be able to
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`14· ·show, actually, that they should be allowed to
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`15· ·submit supplemental information because they can't
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`16· ·meet the standard for showing why the motion wasn't
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`17· ·made earlier.· They are supposed to show good
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`18· ·cause.· They are trying to bootstrap here.
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`19· · · · ·And by submitting this declaration and then
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`20· ·saying, Well, we can depose the declarant, they are
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`21· ·trying to get around all of the proper procedures
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`22· ·here for how you go about submitting new evidence.
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`23· ·And asking our expert about this when he didn't
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`24· ·submit anything about it in his declaration, this
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`25· ·is, again, just them bootstrapping.
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 11 of 30
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`·1· · · · ·So if they want to submit the evidence, they
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`·2· ·should be required to make a motion and try to
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`·3· ·satisfy the standard.· But if the Board is not
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`·4· ·going to hold them to that, we would request the
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`·5· ·opportunity to depose the declarant and respond to
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`·6· ·their evidence and argument.· Again, that's -- we
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`·7· ·shouldn't be put to that given that they haven't
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`·8· ·met their burden.
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`·9· · · · ·JUDGE FENICK:· Okay.· Mr. Goldberg, if we
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`10· ·agree to authorize such a motion and we, indeed,
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`11· ·end up striking this argument, is this an argument
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`12· ·you would raise then in surreply?
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`13· · · · ·MR. GOLDBERG:· No, no.· We would rely on the
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`14· ·Board's judgment in assessing the evidence that the
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`15· ·Petitioner has submitted.· We don't think it's a
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`16· ·close question.· They have submitted extremely
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`17· ·flimsy evidence on this.· And when the Board looks
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`18· ·to see if they've met their burden, I think the
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`19· ·Board will conclude absolutely that they haven't
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`20· ·met their burden.
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`21· · · · ·It needs additional evidence, which is why my
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`22· ·opposing counsel is saying, Oh, they can depose
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`23· ·Ms. Vasakova.· He recognizes that they absolutely
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`24· ·need more than they have submitted.· We think the
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`25· ·Vasakova declaration also isn't sufficient, and we
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 12 of 30
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`·1· ·would be able to show that, but we shouldn't have
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`·2· ·to jump through those hoops.
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`·3· · · · ·JUDGE FENICK:· Mr. Alemanni, do you have
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`·4· ·anything further on this issue?
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`·5· · · · ·MR. ALEMANNI:· I mean, just a couple of
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`·6· ·things.· I'm not sure how Mr. Goldberg can argue as
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`·7· ·to how I feel about something.· But besides that,
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`·8· ·their expert did, in fact, testify as to the
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`·9· ·Dr. Dobb's Journal article that's titled "Berg."
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`10· ·And so to say that he didn't testify about that at
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`11· ·all is at least a bit misleading.
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`12· · · · ·But I think for the remainder of the argument
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`13· ·I would be repeating myself.· It probably doesn't
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`14· ·make any sense to go further at this point.· So
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`15· ·that's all.
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`16· · · · ·JUDGE FENICK:· Okay.· Thank you.
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`17· · · · ·MR. GOLDBERG:· Just a point of clarification,
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`18· ·Your Honor, is that:· The only reason that our
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`19· ·expert said anything about Dr. Dobb's Journal is he
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`20· ·was point-blank asked, Have you heard of this
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`21· ·journal?· If anyone is being misleading, I don't
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`22· ·think it's me.· It wasn't that my expert was going
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`23· ·on and on about Dr. Dobb's Journal out of the blue.
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`24· ·It was only in direct response to a question about
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`25· ·it.
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 13 of 30
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`·1· · · · ·JUDGE FENICK:· Okay.· Thank you.· We will
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`·2· ·move on to the second issue, which is the question
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`·3· ·of whether there should be additional -- well,
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`·4· ·there should be a deposition of Dr. Madisetti.
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`·5· · · · ·MR. GOLDBERG:· Right.· Yes.· So on this
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`·6· ·point, Your Honor, we're not trying to depose
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`·7· ·Dr. Madisetti about his original declaration.· What
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`·8· ·happened here is the Petitioner in their reply
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`·9· ·have -- they are making a variety of technical
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`10· ·arguments that did not come up in the petition.
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`11· ·And so these are new arguments, and we believe that
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`12· ·their expert would not back them up on these
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`13· ·arguments.· And so they have made the arguments
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`14· ·without any new expert declaration.
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`15· · · · ·JUDGE FENICK:· Okay.
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`16· · · · ·MR. GOLDBERG:· We believe that we're entitled
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`17· ·to find out what their expert would say on these
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`18· ·new technical arguments.
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`19· · · · ·JUDGE FENICK:· In this request, in the e-mail
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`20· ·you talked about new evidence and argument.· So is
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`21· ·there new evidence that we're discussing here or
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`22· ·it's just new argument?
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`23· · · · ·MR. GOLDBERG:· I believe that they had -- I
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`24· ·think they've submitted a copy of our complaint, if
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`25· ·I recall correctly, from the District Court
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 14 of 30
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`·1· ·litigation.· So there's a few different arguments
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`·2· ·that they are making here.· Most of them, they are
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`·3· ·pointing to the patent itself.· So it's not new
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`·4· ·evidence for most of it.· It's new argument.
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`·5· · · · ·So, for example, they point to language in
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`·6· ·the patent about executing and instructions and
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`·7· ·different modules.· And they say that these
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`·8· ·portions of the patent undermine the arguments that
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`·9· ·the Patent Owner has made in Patent Owner's
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`10· ·response.· But they also argue that the Patent
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`11· ·Owner's arguments are in conflict with the position
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`12· ·that the Patent Owner has taken in the District
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`13· ·Court, which is not true.
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`14· · · · ·And we think that their technical expert
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`15· ·would agree that there's a distinction here between
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`16· ·what we're saying in the District Court and what
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`17· ·we're saying in the Patent Owner's response.· So
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`18· ·they are trying to blur a line here between
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`19· ·applications and the relevant aspect of an
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`20· ·application versus an app and the relevant aspect
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`21· ·of an app.
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`22· · · · ·Even though apps and applications have a lot
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`23· ·of similarities, there are very important
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`24· ·differences, and they are trying to conflate the
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`25· ·two.· But they don't have an expert to back them up
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 15 of 30
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`·1· ·on that.· We think their expert would agree that
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`·2· ·apps are different from applications in relevant
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`·3· ·ways.
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`·4· · · · ·JUDGE FENICK:· Mr. Goldberg, can you point me
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`·5· ·in the Petitioner's reply, looking at the -1278
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`·6· ·case, to one of the examples of what you're
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`·7· ·discussing here?
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`·8· · · · ·MR. GOLDBERG:· Okay.· I'm just pulling it up.
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`·9· ·I think it was on Page 9, their fourth point.· So
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`10· ·it's just fourth, and "fourth" is underlined.
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`11· · · · ·JUDGE FENICK:· So here, they are citing to
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`12· ·the Second Amended Complaint.
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`13· · · · ·MR. GOLDBERG:· Uh-huh.
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`14· · · · ·JUDGE FENICK:· But there's no instance --
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`15· ·there's no part of the -- there's no portion of
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`16· ·this reply where a portion of the declarant's
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`17· ·declaration is being used or there's no -- you're
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`18· ·not saying that new portions of the expert's
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`19· ·declaration are being used?
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`20· · · · ·MR. GOLDBERG:· That's right, yeah.· No, what
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`21· ·we're saying is:· They submitted a declaration from
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`22· ·Dr. Madisetti with their position, and now they
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`23· ·are -- and then we responded to that.· And now they
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`24· ·are saying, Oh, the response is incorrect because
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`25· ·of X, Y, and Z.· But they have not submitted a
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 16 of 30
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`·1· ·declaration from their expert to support these new
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`·2· ·assertions that they are making, and we think that
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`·3· ·there's a reason for that, which is that he
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`·4· ·wouldn't support them.· And in any event, you
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`·5· ·know --
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`·6· · · · ·JUDGE FENICK:· Okay.
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`·7· · · · ·MR. GOLDBERG:· Yeah.· We believe that we're
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`·8· ·entitled to be able to fully respond to the
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`·9· ·arguments and evidence that they are submitting
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`10· ·here in reply.· That would include, you know, in
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`11· ·our judgment wanting to depose their expert about
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`12· ·that and, again, being very limited and not trying
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`13· ·to go back and depose him about things from the
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`14· ·original declaration, only about his views on their
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`15· ·new statements and new evidence.
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`16· · · · ·JUDGE FENICK:· Okay.· Thank you.
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`17· ·Mr. Alemanni?
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`18· · · · ·MR. ALEMANNI:· Sure.· So the only real issue
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`19· ·that's been raised in these three petitions is
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`20· ·whether or not the Nim template is executable or
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`21· ·nonexecutable.· So Patent Owner was well aware of
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`22· ·the strategy for relying on that, what we'd say is
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`23· ·an improper attempt to claim construction, in order
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`24· ·to save these patents from being invalidated in
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`25· ·spite of the contrary statement they've made in the
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 17 of 30
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`·1· ·District Court, which we've presented to the Board.
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`·2· · · · ·So they had every opportunity to think about
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`·3· ·how they were going to respond and then take the
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`·4· ·deposition of our expert with that in mind.· That's
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`·5· ·just typically how any proceeding, be it before the
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`·6· ·Board or the trial court, would go.
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`·7· · · · ·So the idea that they can somehow wait until
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`·8· ·we actually put -- until we directly respond to
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`·9· ·their arguments that we disagree, wait until we do
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`10· ·that before they have to go forward and actually,
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`11· ·you know, try to get evidence, particularly from
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`12· ·our expert, there's nothing that supports that.
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`13· ·There's nothing in the rules of the PTAB.· I'm not
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`14· ·aware of any precedent that says that's correct.
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`15· · · · ·They had the opportunity.· They waived it.
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`16· ·Apparently, they -- I'm not sure why they waived
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`17· ·it.· I'm not sure why didn't they depose him prior
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`18· ·to this, knowing what the arguments would be.· We
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`19· ·didn't rely on anything from the expert's
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`20· ·testimony, Dr. Madisetti's testimony, that was not
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`21· ·the subject of the petition.· So there's nothing
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`22· ·improper about what we did.
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`23· · · · ·As far as us relying on their contrary
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`24· ·statements in the District Court, that's perfectly
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`25· ·appropriate.· They were aware that they made those
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 18 of 30
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`·1· ·statements.· There's nothing surprising about the
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`·2· ·fact that we would rely on them.· That evidence is
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`·3· ·perfectly appropriate for a reply.· And they have
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`·4· ·the opportunity to surreply.
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`·5· · · · ·If they can somehow excuse their contrary
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`·6· ·statements, then they have the opportunity to
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`·7· ·explain in the surreply how they would explain it.
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`·8· ·So there's no prejudice at all to their not being
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`·9· ·able to avoid the clear rules here and try to take
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`10· ·a deposition after the discovery is closed.
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`11· · · · ·MR. GOLDBERG:· If I may respond very briefly?
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`12· · · · ·JUDGE FENICK:· Yes, please.
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`13· · · · ·MR. GOLDBERG:· Yes.· So what we're talking
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`14· ·about is not deposing Dr. Madisetti about the
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`15· ·Patent Owner's response.· We're talking about
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`16· ·deposing Dr. Madisetti about the Petitioner's
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`17· ·reply.· And there was no way for us to know what
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`18· ·arguments they were going to make in their reply.
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`19· ·So it's not correct that we should have deposed him
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`20· ·in advance of receiving their reply about the
`
`21· ·arguments that they made in their reply.
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`22· · · · ·MR. ALEMANNI:· Just briefly, Your Honor, if I
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`23· ·may?
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`24· · · · ·JUDGE FENICK:· Yes, Mr. Alemanni?
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`25· · · · ·MR. ALEMANNI:· Just to try to -- the
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 19 of 30
`
`
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`·1· ·complaint that we've submitted and our Petitioner
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`·2· ·reply here is the same one we submitted in the
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`·3· ·prior proceeding in the related patent.· So to say
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`·4· ·that they wouldn't have known or couldn't have
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`·5· ·known that we'd submit that -- even given that if
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`·6· ·Mr. Goldberg's argument were right that he couldn't
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`·7· ·have understood or anticipated that we would
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`·8· ·respond to his Patent Owner response, that we would
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`·9· ·argue against it, even if that were true, we
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`10· ·already submitted that.
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`11· · · · ·In the prior proceeding, we made essentially
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`12· ·the exact same argument.· Except for the fact that,
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`13· ·you know, certain patents have changed, we made the
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`14· ·exact same argument.· So I think it's a little
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`15· ·difficult to think that they would not have
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`16· ·anticipated us using that in making the exact same
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`17· ·argument.
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`18· · · · ·MR. GOLDBERG:· And the timing doesn't match
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`19· ·up, Your Honor, in terms of whether we should be
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`20· ·deemed to assume they are going to make the same
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`21· ·arguments here as they made there and should have
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`22· ·deposed him based on that, when -- and I also don't
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`23· ·think we even had time to take such a deposition
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`24· ·after they had submitted the briefing.
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`25· · · · ·The briefing in these three different IPRs
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 20 of 30
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`·1· ·has been overlapping.· So I don't think that that
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`·2· ·is correct.· But in any event, these are separate
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`·3· ·proceedings, and we shouldn't have to anticipate
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`·4· ·what they are going to say in this reply and have
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`·5· ·deposed him before we got these papers.
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`·6· · · · ·JUDGE FENICK:· Okay.· Thank you.
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`·7· · · · ·MR. GOLDBERG:· Thank you.
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`·8· · · · ·JUDGE FENICK:· On all of these issues, the
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`·9· ·panel is going to take this under advisement, and
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`10· ·we will get back to you shortly with an order
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`11· ·relating to these issues describing what the
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`12· ·outcome will be for these three issues.· So thank
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`13· ·you for attending today, and we're adjourned.
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`14· · · · ·MR. ALEMANNI:· Thank you, Your Honor.
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`15· · · · ·MR. GOLDBERG:· Thank you.
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`16· · · · ·(Proceedings were concluded at 2:55 p.m. CST)
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`17
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`25
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 21 of 30
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`·1· · · · · · · · · · CERTIFICATE OF REPORTER
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`·2· ·STATE OF FLORIDA· · · ·)
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`·3· ·COUNTY OF SAINT JOHNS· )
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`·4
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`·5· · · · · · · I, Elizabeth Tiedemann, Registered
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`·6· ·Professional Reporter, certify that I was authorized to
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`·7· ·and did stenographically and remotely report the
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`·8· ·foregoing proceedings; and that the transcript is a true
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`·9· ·record of the proceedings.
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`10· · · · · · · I further certify that I am not a relative,
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`11· ·employee, attorney, or counsel of any of the parties,
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`12· ·nor am I a relative or employee of any of the parties'
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`13· ·attorney or counsel connected with the action, nor am I
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`14· ·financially interested in this action.
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`15
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`16
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`17· · · · · · · · · · · · · · · _________________________________
`· · · · · · · · · · · · · · · · ELIZABETH TIEDEMANN
`18· · · · · · · · · · · · · · · Registered Professional Reporter
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`19
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`20
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`21
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`22
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`23
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`24
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`25
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 22 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 23 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 24 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 25 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 26 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 27 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 28 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 29 of 30
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`Petitioners Lenovo Holding Company Inc., et al.
`Exhibit 1021 - Page 30 of 30
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