UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` CASE IPR2020-00031
`
`GUARDIAN ALLIANCE
`TECHNOLOGIES, INC.,
` Petitioner,
`vs.
`TYLER MILLER,
` Patent Owner.
`
` Telephonic proceedings taken on
`Thursday, February 6, 2020, at Advanced
`Depositions, LLC, 1600 Market Street, Suite 1700,
`Philadelphia, Pennsylvania, commencing at
`approximately 3:32 p.m., before Joanne Rose, a
`Registered Professional Reporter, Registered Merit
`Reporter, Certified Realtime Reporter and Notary
`Public, pursuant to notice.
`
`BEFORE:
` DAVID C. McKONE
` Administrative Patent Judge
` SALLY C. MEDLEY
` Administrative Patent Judge
` JOHN R. KENNY
` Administrative Patent Judge
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` CASE IPR2020-00031
`
`GUARDIAN ALLIANCE
`TECHNOLOGIES, INC.,
` Petitioner,
`vs.
`TYLER MILLER,
` Patent Owner.
`
` Telephonic proceedings taken on
`Thursday, February 6, 2020, at Advanced
`Depositions, LLC, 1600 Market Street, Suite 1700,
`Philadelphia, Pennsylvania, commencing at
`approximately 3:32 p.m., before Joanne Rose, a
`Registered Professional Reporter, Registered Merit
`Reporter, Certified Realtime Reporter and Notary
`Public, pursuant to notice.
`
`BEFORE:
` DAVID C. McKONE
` Administrative Patent Judge
` SALLY C. MEDLEY
` Administrative Patent Judge
` JOHN R. KENNY
` Administrative Patent Judge
`
`
`
`Hearing Held, 2/6/2020
`
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`
`APPEARANCES:
`DUNLAP CODDING P.C.
`JORDAN A. SIGALE, ESQUIRE
`jsigale@dunlapcodding.com
`EVAN TALLEY, ESQUIRE
`etalley@dunlapcodding.com
`225 West Washington Street
`Suite 2200
`Chicago, IL 60606
`312-651-6744
` Counsel for Petitioner
`Mc LEOD LAW LLC
`RICHARD D. Mc LEOD, ESQUIRE
`law@rickmcleod.com
`P.O. Box 99
`Woodland, WA 98674
`360-841-5654
` Lead Counsel for Patent Owner
`RYLANDER & ASSOCIATES, PC
`KURT M. RYLANDER, ESQUIRE
`406 West 12th Street
`Vancouver, WA 98660
`360-750-9931
` Back-up Counsel for Patent Owner
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` JUDGE McKONE: So my
`understanding is that there are
`several issues here between the
`parties that we're going to discuss
`today. I'll start trying to go
`through them in order.
` The first issue, I
`understand the Petitioner is
`requesting a five-page motion and is
`willing to allow a five-page response
`from Patent Owner regarding what it
`characterizes as a clerical error.
`And Petitioner wants to substitute a
`different exhibit for Exhibit 1002.
` And I understand that
`that's related to Patent Owner
`requesting to file a Motion To
`Terminate for failure to comply with
`Section 312(a)(5) for the same
`reason, the exhibit that was 1002 was
`not the correct exhibit.
` Do I understand that
`correctly?
` MR. SIGALE: Yes, you do,
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`your Honor. This is Jordan Sigale.
` JUDGE McKONE: Okay. So,
`Petitioner, why don't you go ahead
`and go first and just give a very
`brief background of what happened
`here.
` And then we'll let Patent
`Owner respond and then we'll try to
`figure out the most efficient way to
`divvy the issue up and brief it.
` MR. SIGALE: Thank you,
`your Honor. There is pending
`District Court litigation, just to
`kind of set the stage, involving
`Patent Owner and its exclusive
`licensee against one of the customers
`of Petitioner, Guardian Alliance
`Technologies.
` In this petition -- I'm
`trying to decide where to start.
`Let's start here. When we received
`the Patent Owner's response about a
`little bit more than a week ago, the
`Patent Owner's response dealt
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`extensively with the fact that
`Exhibit 102 was not prior art.
` The Patent Owner includes
`in their Patent Owner's response a
`screenshot from Exhibit 102, which is
`a video, and indicates that right on
`the video itself there is a copyright
`date that is after the critical date
`with respect to the patent and notes
`that the video of Exhibit 102 doesn't
`match the screen excerpts that
`Petitioner provided to the Board in
`Exhibit 1022 for the convenience of
`the Board in case the Board members
`did not have a video player handy
`when they were looking at the
`petition.
` What Patent Owner's
`response doesn't note is that in the
`petition itself Petitioner included
`the same exact screenshots that
`appear in Exhibit 1022.
` And there are quite a
`number of screenshots that were taken
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`from what Petitioner had intended to
`file as Exhibit 1002, which is a
`video that bears the date of at least
`November 2009, which would be prior
`art to the patent in suit by a number
`of years.
` And the petition explains
`that that's what Exhibit 102 is
`supposed to be. And in the claim
`charts for the first round of the
`petition there are quite a number of
`screenshots that appear between page
`33 and page 49 of the petition. And
`these screenshots were taken from
`what Petitioner had intended to
`submit as Exhibit 102.
` Unfortunately, immediately
`prior to filing we uploaded Exhibit
`102 and Exhibit 102 is one of two
`videos that were provided by a third
`party company, Background Solutions,
`LLC, pursuant to a subpoena in the
`related District Court litigation.
` And the way we maintain our
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`files, your Honor, is that everything
`we receive from third-party subpoena
`recipients is maintained in a single
`file. And in response to that
`subpoena Background Solutions, LLC
`provided us with two videos.
` These two videos were
`provided to Patent Owner and its
`exclusive licensee, the plaintiffs in
`the related District Court matter, on
`August 8th of 2019, immediately prior
`to the defendant in that case
`providing the invalidity contentions
`in that case.
` Patent Owner has had access
`to the video that Petitioner intended
`to file as Exhibit 1002.
`Unfortunately, in the exigencies of
`filing the petition, which was filed
`immediately before the statutory bar
`date, the wrong video was grabbed out
`of the third party discovery. And we
`didn't notice the error until Patent
`Owner's response brought it up.
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` And so we brought it to the
`Board's attention after we held a
`meet-and-confer with Patent Owner's
`counsel and we seek to correct this
`clerical error at this time.
` JUDGE McKONE: Now, in this
`matter, in this proceeding, which
`video did you serve on Patent Owner?
` MR. SIGALE: The Patent
`Owner was served with exactly what
`was provided to the Board through
`E2E.
` JUDGE McKONE: So Patent
`Owner was served with the wrong
`version of the video?
` MR. SIGALE: In the IPR
`proceeding, your Honor, but in the
`District Court proceeding they
`received both videos. And we only
`referenced the correct prior art
`video and the invalidity contentions
`in the District Court proceeding.
` The other thing that I
`would note is, as Patent Owner says
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`in its Patent Owner's response at
`page 11 and page 20, things don't
`match up. So they cite to Exhibit
`1022, which is the same as what is
`included in the petition at pages 32
`to 49.
` And the video that was
`uploaded as Exhibit 1002 plainly
`doesn't match the screenshots that
`appear in the petition. They're
`quite different. The coloring is
`different. There's a whole different
`vibe to it.
` And so it would be pretty
`clear from looking at the petition,
`in the claim charts that were
`included within the petition itself,
`that the video that was uploaded,
`Exhibit 1002, is not the correct
`video.
` JUDGE McKONE: All right.
`Anything else before I move to Patent
`Owner on this issue?
` MR. SIGALE: Not unless you
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`have questions, your Honor.
` JUDGE McKONE: One
`question. Were the invalidity
`contentions filed under seal in the
`District Court?
` MR. SIGALE: I don't
`believe so.
` MR. TALLEY: This is Evan
`Talley on behalf of the Petitioner.
`The answer is no.
` JUDGE McKONE: Okay.
` MR. Mc LEOD: Your Honor,
`this is --
` JUDGE McKONE: Does
`Petitioner have anything else before
`I move on to Patent Owner?
` MR. SIGALE: Nothing
`further at this point, your Honor.
`Thank you.
` JUDGE McKONE: Mr. Mc Leod?
` MR. Mc LEOD: Your Honor,
`at the outset I'd like to state it's
`my understanding that the invalidity
`contentions weren't filed at all with
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`the District Court.
` JUDGE McKONE: They were
`served?
` MR. Mc LEOD: Purely
`served.
` JUDGE McKONE: Okay. Were
`they served pursuant to a Protective
`Order?
` MR. Mc LEOD: I would have
`to rely on Mr. Rylander for that
`information, your Honor.
` MR. RYLANDER: Your Honor,
`this is Mr. Rylander and I'm the
`back-up counsel and I'm also the lead
`counsel in the Oklahoma City case.
` Oklahoma City, not
`Guardian, served the invalidity
`contentions on August 8th, which
`included a bunch of videos. I do not
`believe that they were -- that the
`particular videos served were under
`the Protective Order.
` JUDGE McKONE: Okay. Thank
`you. Go ahead and continue then,
`
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`Mr. Mc Leod.
` MR. Mc LEOD: Okay, your
`Honor. So in the first instance we
`believe that this case corresponds
`most closely to the Avantis case, IPR
`2018-01180.
` What we do have here is the
`Petitioner is claiming or attempting
`to claim service of a document by a
`third party months before the IPR was
`filed. That just doesn't correspond
`to service under any rubric which
`I've encountered.
` A service failure close to
`the bar date implicates Section
`315(b) as well and, therefore, the
`ability to provide any sort of relief
`from that or that statutory
`requirement is no longer permitted
`under cases Cuozzo and Click-To-Call.
` While the Petitioner tries
`to point to certain aspects of the
`Patent Owner's response to say that
`we noted that there was a
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`discrepancy, if you look at our
`opening arguments, we were trying to
`figure out exactly what they were
`trying to allege.
` And I listed three
`possibilities. Either they had
`provided a non-prior art reference
`and were attempting to establish it
`as a prior art reference or either
`they were trying to rely on the
`existence of some earlier product,
`system or piece of software which
`they could not provide to us and
`trying to prove that that was prior
`art by reference to the features of
`this video.
` It was not at all clear to
`us that there was any problem. In
`fact, if you look at the initial
`description and how they characterize
`Exhibit 1002, they say, which is a
`video demonstration which
`demonstrates the Background Solutions
`system.
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` These were the theories
`that we addressed. And if you look
`at Exhibit 1002, the first screen, in
`fact, says, "Background Assistant."
`It leads one to believe that that's
`what they're relying upon.
` When they refer to the
`invalidity contentions -- I've looked
`at those now -- it does not identify
`any video as prior art. It says that
`the Background Solutions system is
`prior art.
` It then goes on to describe
`aspects of the system and then
`somewhere further down the page it
`says examples of this being prior art
`include a Bates number. It doesn't
`say it's a video.
` My basic point is a third
`party -- the District can't rely upon
`a document provided by a third party
`or the fact that something is in
`someone's possession from another
`source.
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` In fact, I could point you
`to --
` JUDGE McKONE: Is this
`something we could probably better
`deal with in briefing?
` MR. Mc LEOD: Sure. But
`my --
` JUDGE McKONE: It sounds
`like the point you're trying to make
`is that you don't -- you weren't
`aware for sure that the upload of the
`video was a mistake.
` Is that what you're trying
`to say?
` MR. Mc LEOD: I'm sorry,
`your Honor. I had no idea that there
`was a mistake in the video.
` And I believe that the
`appropriate solution after doing some
`research is for Petitioner to file a
`brief asking for correction and also
`demonstrating why they're entitled to
`the filing date that they received.
` JUDGE McKONE: Okay. And I
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`think in the email request you were
`requesting a Motion To Terminate. Is
`this different from what you're
`asking for now?
` You're proposing the
`Petitioner open with a Motion To
`Correct and then you respond as to
`why they should not be able to
`correct?
` MR. Mc LEOD: I believe --
`it ends up being a combined motion as
`recently occurred in the Varian case.
` Those two issues are
`intertwined and ultimately it ends up
`being a Motion To Terminate or
`because the bar date is involved, if
`they aren't entitled to that filing
`date, the ultimate relief is
`termination.
` There's a second way in
`which we reached the same result and
`that is because the document that was
`actually filed is not prior art.
`This falls under another case,
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`Wavetamer, in which the Board
`similarly directed the Petitioner to
`file a Motion To Terminate its own
`proceeding because it had relied on a
`non-prior art reference.
` JUDGE McKONE: My
`understanding was that because
`Petitioner in that case wanted an
`opportunity to refile. So I think
`the facts are a little bit different
`than what we've got here.
` MR. Mc LEOD: I agree with
`you.
` JUDGE McKONE: And I think
`we would also be interested in if --
`in the case that we didn't let
`Petitioner refile and keep its filing
`date, it sounds like the remedy you
`want is termination.
` But is that the appropriate
`remedy or would it be to just
`consider the petition as it is with
`the wrong exhibit?
` MR. Mc LEOD: I believe the
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`appropriate remedy is termination and
`then that is in part driven by
`315(b).
` JUDGE McKONE: Okay. I
`think this is something that we would
`want to see briefing on.
` Is this something -- and
`I'll give Petitioner an opportunity
`in a minute to chime in.
` Is this something that
`could be briefed, these two issues
`briefed together in a single set of
`briefing, or do we have to break
`these issues out, the first brief or
`one set of briefs to brief the can we
`correct and the second set of briefs
`to deal with a Motion To Terminate?
` MR. Mc LEOD: Are you
`asking the Patent Owner, your Honor?
` JUDGE McKONE: Yes, I'm
`asking Patent Owner what you think is
`the most efficient way to proceed on
`this. Then we'll get some input from
`Petitioner as well.
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` MR. Mc LEOD: I think the
`most efficient way is to proceed with
`a single brief on these combined
`issues as happened in IPR 2020-00075,
`the Varian case, which is currently
`pending.
` The briefing has been
`completed in that case and a decision
`is being awaited. It seems to raise
`the identical issue.
` JUDGE McKONE: Is this
`another case between the same
`parties?
` MR. Mc LEOD: No, your
`Honor, it is not. This is Varian vs.
`Best Materials, I believe.
` JUDGE McKONE: What was the
`briefing set-up in that case? Was it
`each party briefed opening briefs
`and then each party did a response
`brief?
` MR. Mc LEOD: It was a
`single ten-page brief by the
`Petitioner which combined a motion to
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`correct its filing and to show that
`it was entitled to its filing date
`and an opposition brief from the
`Patent Owner, ten pages each.
` JUDGE McKONE: All right.
`Petitioner, what are your thoughts on
`what the best way to brief these two
`issues is?
` MR. TALLEY: Hey, Jordan.
`Before you jump into it, this is Evan
`Talley on behalf of Petitioner. The
`docket call is happening so I'm going
`to drop off the call right now.
`Thanks.
` MR. SIGALE: Thank you,
`your Honor.
` So I'm not familiar with
`the briefing in Varian. It wasn't
`brought to our attention by the
`Patent Owner before the call so I
`haven't had a chance to take a look
`at it.
` I'm a little perplexed by
`how I'm going to respond to an
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`argument that Patent Owner wants to
`raise before they've raised it. I'm
`happy to try to figure out how to do
`it.
` If the Varian case is
`instructive in that regard, I'm happy
`to look at that and figure out how to
`do it that way, if it's easier for
`the Board.
` But it seems to me to be
`folly for me to try to guess what
`Mr. Mc Leod is going to be arguing in
`his Motion To Terminate and that it's
`a recipe for, you know, us arguing
`two different things that won't be
`very useful for the Board.
` JUDGE McKONE: Would the
`problem be solved by a reply brief?
` MR. SIGALE: It probably
`would be. I mean, I'm just concerned
`that I spend five pages arguing
`something that Mr. Mc Leod is not
`planning on raising in the first
`place, so it's wasted space for the
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`Board to read.
` And, you know, I can
`probably correct it via some type of
`opposition or a reply, however we
`characterize it, in whatever timing
`the Board wants.
` I just am not sure that my
`initial filing would address the
`arguments that Mr. Mc Leod appears to
`be making now. I hadn't heard of the
`Varian case before this call.
` And we also were talking
`about the Wavetamer case in our calls
`and he cited to a different case
`earlier on this phone call that I'll
`have to look at.
` JUDGE McKONE: Do you have
`a counterproposal?
` MR. SIGALE: I do, that
`both of us file five-page motions
`simultaneously and that both of us
`file an opposition to the other's
`five-page motion.
` JUDGE McKONE: Okay. So
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`you think you can get your motion
`briefed in five pages.
` Patent Owner, does that
`sound reasonable to you as well?
` MR. Mc LEOD: Regarding one
`issue, your Honor, since we're
`asserting that this video, Exhibit
`1002, is not demonstrable and not
`prior art, Mr. Talley sent in his
`initial email to me and described it
`as the 2012 video.
` I asked him if he was
`admitting that it was not prior art
`and he said he would -- he wasn't
`admitting one way or another what it
`was.
` I think it may require an
`additional page to demonstrate that
`it's not prior art unless the Board
`were to take judicial notice of the
`meta data in the file, which has been
`uploaded to E2E, which states that
`the video was created on the 20th of
`December, 2012 at 7:00 p.m.
`
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`Hearing Held, 2/6/2020
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`24
` If that were the case, then
`I think I could do it in five pages.
` JUDGE McKONE: Petitioner,
`are you relying on what you actually
`uploaded for Exhibit 1002 in this
`case for any reason?
` MR. SIGALE: We're not,
`your Honor. It doesn't correspond
`with what we've put in the petition.
` We've taken excerpts of the
`video that we intended to upload as
`Exhibit 1002 and that's what we have
`compared to the patent claims. And
`so the exhibit just is out of step
`with the rest of the petition anyway.
` Whether it's prior art or
`not, we didn't explain the grounds
`for invalidity based on that video.
`We explained grounds for invalidity
`with the video that we had intended
`to upload.
` And, you know, just for
`sake of clarification, and I
`apologize for misspeaking, the
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`invalidity contentions were served,
`not filed.
` JUDGE McKONE: I understand
`that.
` MR. SIGALE: But they do
`state right up top that one of the
`bases for the invalidity contention
`is the video.
` There's four bullet points
`on the cover page of the invalidity
`contentions related to Background
`Solutions and it indicates that one
`of the evidence of public
`availability is the video.
` JUDGE McKONE: I think
`that's probably something that you
`can put in your brief.
` Patent Owner, did
`Petitioner's representation take care
`of your concern about the prior art
`status of what was actually uploaded
`for Exhibit 1002 or whether that even
`matters in this proceeding?
` MR. Mc LEOD: It does not,
`
`
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`Hearing Held, 2/6/2020
`
`26
`your Honor, because what we find is
`similar things in earlier cases. And
`in those cases the representation,
`I'm sorry, the replacements were
`denied as not being a clerical error.
` In one case the fact --
`actually, in at least a couple of
`cases the fact that the change was
`being made from a non-prior art
`reference to a prior art reference
`was deemed to be a substantive
`change, even though identical
`material was being cited from both.
` So I respectfully have to
`disagree with opposing counsel on
`that.
` JUDGE McKONE: Maybe I
`don't understand your concern.
` MR. SIGALE: Your Honor, if
`it helps the Board, Petitioner will
`file something that acknowledges that
`Exhibit 1002 was not the exhibit that
`we relied upon.
` It's not what's cited in
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`the petition itself. It's not what's
`quoted. The second you listen to
`what we uploaded as Exhibit 1002 you
`can tell that it doesn't match the
`transcript that we have put into the
`petition itself.
` And you can see from the
`screenshots that were included in the
`petition that the video is not the
`same video. I believe the case law
`that's being referred to is case law
`where somebody inadvertently cited to
`the issued patent as opposed to the
`printed publication of the patent.
` And, you know, it's a whole
`different circumstance. What
`matters, as the Board has pointed out
`a number of times, is what does
`Petitioner actually use in the
`petition to claim that the claimed
`invention is invalid under 102 or
`103?
` JUDGE McKONE: So,
`effectively, if we deny your request
`
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`Hearing Held, 2/6/2020
`
`28
`to refile Exhibit 1002, the effect is
`that you don't have an Exhibit 1002?
` MR. SIGALE: That's
`correct. But there's still
`discussion of what that exhibit
`should have been in the petition.
` There is a declaration from
`Background Solutions explaining that
`there was a video that was prior art.
`We have Exhibit 1022 that is
`additional -- that's other copies of
`excerpts from the video that we had
`intended to upload as Exhibit 1002.
`So this probably goes to the weight
`of what to do with 1002.
` But the fact that the video
`has been -- and that the video that
`was intended to be submitted as 1002
`is in various other ways already of
`record in this case.
` JUDGE McKONE: All right.
`So, Patent Owner, if we give you six
`pages to brief your issue and,
`Petitioner, six pages to respond,
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`does that take care of your concern,
`Patent Owner?
` MR. Mc LEOD: I'm sorry.
`If you give the Petitioner six pages
`and us six pages?
` Yes, it does, your Honor.
` JUDGE McKONE: For your
`issue, for the issue of a Motion To
`Terminate.
` MR. Mc LEOD: Oh. Yes.
` JUDGE McKONE: Okay.
`Petitioner, how long do you need to
`brief your motion?
` MR. SIGALE: Your Honor, we
`can have that briefing done within a
`week.
` JUDGE McKONE: Patent
`Owner, would you also be able to
`complete your motion in a week?
` MR. Mc LEOD: Yes, your
`Honor.
` JUDGE McKONE: As far as
`Patent Owner's response to
`Petitioner's motion, one additional
`
`
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`Hearing Held, 2/6/2020
`
`30
`week, is that something that will
`work for you?
` MR. Mc LEOD: I'm concerned
`with what might be the content of the
`declarations attempting to explain
`the clerical error and whether it
`might be necessary to depose one or
`more witnesses on that.
` I mean, if the Board is
`basically going to disallow that,
`then I think we can respond in a
`week.
` JUDGE McKONE: We are on a
`statutory clock, as you're aware.
` MR. Mc LEOD: Yes, sir.
` JUDGE McKONE: Petitioner,
`do you anticipate declarations as
`part of your process?
` MR. SIGALE: Your Honor,
`there will be a short declaration.
`And I've already stated on this call
`what that declaration is going to
`state as to how the clerical error
`happened. It will not be anything
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`more than that.
` JUDGE McKONE: Okay.
`Patent Owner, with that expectation,
`how long do you think you'll need to
`respond to Petitioner's motion?
` MR. Mc LEOD: If it's a
`short declaration, I can respond in a
`week, your Honor.
` JUDGE McKONE: All right.
`So if we say, just to complete the
`circle here, Petitioner, how long
`would you need to respond to Patent
`Owner's motion?
` MR. SIGALE: A week. Your
`Honor, if you need it quicker, we
`could certainly do it quicker, but I
`would think a week should be more
`than sufficient.
` JUDGE McKONE: Okay. So
`what we would look at is opening
`briefs on each of these issues by the
`13th of February, response briefs by
`the 20th of February.
` If it turns out that the
`
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`Hearing Held, 2/6/2020
`
`32
`declaration is a lot more than has
`been represented on this call, you
`can contact the Board and we can see
`about extending the response time.
` So we would have the
`five-page brief filed by Petitioner
`requesting to correct what it
`characterizes as a clerical mistake,
`and that would be due on February
`13th.
` Patent Owner would then
`respond with a five-page brief due
`February 20th. Patent Owner will
`file a Motion To Terminate of six
`pages by February 13th. And
`Petitioner would respond to that
`motion with a six-page brief due
`February 20th.
` Petitioner, did I
`characterize everything correctly
`there?
` MR. SIGALE: Yes, your
`Honor.
` JUDGE McKONE: Patent
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`Owner, any concerns with how I've
`phrased it?
` MR. Mc LEOD: No, sir.
` JUDGE McKONE: Okay.
`Anything else from Petitioner on that
`issue?
` MR. SIGALE: No, your
`Honor.
` JUDGE McKONE: Anything
`else from Patent Owner on that issue?
` MR. Mc LEOD: No, your
`Honor.
` JUDGE McKONE: My
`understanding is we have a couple of
`other issues that hopefully will be
`much more simple than the first.
` So I understand that Patent
`Owner requests a motion for us to
`cede exclusive jurisdiction so that
`they can file a motion to correct a
`priority claim in the 188 patent.
` Is that correct?
` MR. Mc LEOD: Yes, your
`Honor.
`
`
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`Hearing Held, 2/6/2020
`
`34
` JUDGE McKONE: And
`Petitioner does not oppose Patent
`Owner filing such a motion. Is that
`correct?
` MR. SIGALE: Your Honor --
` JUDGE McKONE:
`Understanding that you will be
`permitted to oppose the motion
`itself.
` MR. SIGALE: Correct. We
`would like to oppose the motion
`itself. We brought this problem in
`the chain of title to their attention
`long before the IPR was filed.
` JUDGE McKONE: So is it my
`understanding that the parties agree
`that Patent Owner would file a
`five-page motion on this issue and
`Petitioner would file a five-page
`response?
` Patent Owner, is that your
`understanding?
` MR. Mc LEOD: If, in fact,
`a motion is required, I understand
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`that at least since the Honeywell vs.
`Artima case last October, I've seen a
`case in which the decision to cede
`jurisdiction was actually made during
`a conference call and there was no
`briefing on the issue because
`Honeywell established that the
`minimal thing that needs to be shown
`is a possibility that the director
`will make the correction and there's
`no greater evidentiary burden to be
`in front of the Board.
` And I believe we've done
`that in Exhibit 2011, which is the
`PTO form to actually correct the
`priority date.
` JUDGE McKONE: I think we,
`as a panel, at least need to make
`sure that you establish that. So I
`think rather than try to establish
`that on this call, we would prefer a
`short motion. And that would also
`give Petitioner an opportunity to
`respond to it.
`
`
`
`Hearing Held, 2/6/2020
`
`36
` Is five pages enough to
`deal with this issue?
` MR. Mc LEOD: Oh, yes, your
`Honor.
` MR. SIGALE: Yes, your
`Honor.
` JUDGE McKONE: All right.
`How long do you need, Patent Owner,
`to file this motion?
` MR. Mc LEOD: I believe I
`can file that by Wednesday of next
`week. I just need to review the
`paperwork, make sure there's been no
`intervening case law changes since we
`initially looked at this issue about
`three months ago.
` JUDGE McKONE: How about
`this? Is there any reason to have a
`different schedule for this motion
`than the other two motions that we
`just discussed?
` MR. Mc LEOD: I'm not aware
`of one, your Honor.
` JUDGE McKONE: Petitioner?
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` MR. SIGALE: No reason
`here, your Honor. That schedule is
`fine.
` JUDGE McKONE: Okay. So we
`will do that. We will authorize a
`five-page motion from Patent Owner
`due on February 13th addressing the
`issue of whether we, the Board,
`should cede exclusive jurisdiction so
`that Patent Owner can file a Motion
`To Correct a priority claim. And
`Petitioner will respond with five
`pages on February 20th.
` Is this acceptable to
`Patent Owner?
` MR. Mc LEOD: Yes, your
`Honor.
` JUDGE McKONE: Petitioner?
` MR. SIGALE: Yes, your
`Honor.
` JUDGE McKONE: Great.
`Anything else on this issue, Patent
`Owner?
` MR. Mc LEOD: I don't
`
`
`
`Hearing Held, 2/6/2020
`
`38
`believe so.
` JUDGE McKONE: Petitioner?
` MR. SIGALE: No, not on
`this issue.
` JUDGE McKONE: Okay. Then
`the last issue should be very easy.
` Petitioner is requesting to
`file a pro hoc motion?
` MR. SIGALE: Yes, we are,
`your Honor.
` JUDGE McKONE: There is no
`problem with that. You're authorized
`to file a pro hoc motion.
` Patent Owner, do you plan
`to oppose the pro hoc motion?
` MR. Mc LEOD: I am
`considering it, your Honor. When
`this issue was initially raised
`months ago, I was under the
`
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