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1
`
` 1 ROUGH DRAFT TRANSCRIPT
`
` 2 HEARING 7/17/20
`
` 3 This transcript is a rough draft only, not
` certified in any way and, therefore, cannot be
` 4 quotes from in any way, used for reading and
` signing by a witness, or filed with any court. All
` 5 parties receiving this rough-draft transcript agree
` that it will not be shared, given, copied, scanned,
` 6 faxed, or in any way distributed in any form by any
` party or to anyone except their own experts,
` 7 co-counsel, or staff, and agree to destroy this
` rough draft in any form and replace it with the
` 8 final certified transcript when it is completed.
` There will be discrepancies as to page and
` 9 line numbers when comparing the rough-draft
` transcript and the final transcript, and the
` 10 rough-draft transcript may contain untranslated
` steno, incorrect punctuation, incorrect spelling,
` 11 an occasional reporter's note, and/or nonsensical
` English word combinations.
` 12 The rough-draft transcript will not include
` title pages, exam/exhibit indexes, or a
` 13 certificate. Exhibits will not be included. This
` document has not been proofread.
` 14
`
` 15
`
` 16
`
` 17
`
` 18 JUDGE PETTIGREW: This is Judge
`
` 19 Pettigrew. Also on the call with me are Judges
`
` 20 Chung, Hudalla, Melvin and Leni. Who do we have
`
` 21 on the call for Petitioner?
`
` 22 MR. SEITZ: This is Adam Seitz for
`
` 23 Petitioner Apple. Also joining me is my partner
`
` 24 Paul Hart.
`
`

`

` 25 JUDGE PETTIGREW: Thank you. And
`
` 2
`
` 1 who do we have on the call for Patent Owner?
`
` 2 MR. PLUTA: Good afternoon, your
`
` 3 Honor. This is Robert Pluta on behalf of Patent
`
` 4 Owner Maxell. And also on the call with me is my
`
` 5 colleague Saqib Siddiqui.
`
` 6 JUDGE PETTIGREW: Which party
`
` 7 arranged for the court reporter?
`
` 8 MR. SEITZ: That was Petitioner's
`
` 9 counsel. This is Adam Seitz. We arranged for the
`
` 10 reporter.
`
` 11 JUDGE PETTIGREW: All right, thank
`
` 12 you. So we ask you to file a transcript as soon
`
` 13 as possible as an exhibit after the call.
`
` 14 So we scheduled this call to address an
`
` 15 email we received from Petitioner requesting
`
` 16 authorization to file a two-page supplemental
`
` 17 brief along with appropriate exhibits relating to
`
` 18 a summary judgment motion that Maxell filed in
`
` 19 the parallel District Court proceeding involving
`
` 20 the three patents that are challenged in the
`
` 21 three IPRs before us.
`
` 22 Petitioner states in an email that the
`
` 23 summary judgment motion may impact our analysis
`
`

`

` 24 of Fintiv Factor 4, the potential overlap of
`
` 25 issues between the District Court litigation and
`
` 3
`
` 1 IPRs.
`
` 2 The emails do not specify whether Patent
`
` 3 Owner opposes the request. In the future please
`
` 4 make sure the parties meet and confer before
`
` 5 contacting us with any requests. And also you
`
` 6 should specify in the email whether the other
`
` 7 party opposes the request.
`
` 8 Let's start with Petitioner. Please
`
` 9 explain briefly why you believe there's good
`
` 10 cause for the requested briefing and in
`
` 11 particular we'd like to hear the subject of the
`
` 12 summary judgment motion and why it's relevant to
`
` 13 our Fintiv analysis.
`
` 14 MR. SEITZ: Yes, your Honor. This
`
` 15 is Adam Seitz on behalf of Petitioner. Thank you.
`
` 16 Your Honor, in the summary judgment argument
`
` 17 submitted to the District Court, Maxell challenges
`
` 18 the invalidity case against the three patents that
`
` 19 are subject to the IPRs that we are here
`
` 20 discussing.
`
` 21 And we believe it is relevant to your
`
` 22 Honor's proceeding specifically in the Fintiv
`
`

`

` 23 analysis regarding the alleged overlap with the
`
` 24 District Court. In its sur-reply that was
`
` 25 granted to Maxell to discuss the Fintiv factors,
`
` 4
`
` 1 Maxell argued that there was overlap between
`
` 2 these proceedings at the P tap and the District
`
` 3 Court and that the same issues would be decided
`
` 4 and that under Fintiv that was an independent
`
` 5 grounds for denial raising the questions of
`
` 6 whether there would be inconsistent rulings, et
`
` 7 cetera.
`
` 8 The summary judgment motion itself that
`
` 9 Maxell has filed challenges the reference Abowd
`
` 10 A.B. O W D and its public availability. That is
`
` 11 one of the issues that the parties have briefed
`
` 12 here as well. The question of Abowd and its
`
` 13 public availability was the subject of additional
`
` 14 briefing in the reply and the sur-reply in these
`
` 15 petitions or in these matters as well.
`
` 16 One of the most fundamental -- there's two
`
` 17 things I want to point out here, your Honor.
`
` 18 First, probably the most fundamental thing,
`
` 19 Maxell bases its summary judgment motion to the
`
` 20 District Court on the fundamental premise that
`
` 21 the Abowd article, the question of whether it is
`
`

`

` 22 publicly available, whether Apple has proved that
`
` 23 it's publicly available at the District Court, is
`
` 24 one of clear and convincing, a standard that is
`
` 25 one of the highest if not the highest at the
`
` 5
`
` 1 civil level for district courts. They say that
`
` 2 Apple has failed to show clear and convincing
`
` 3 evidence.
`
` 4 The board, however, applies a different
`
` 5 standard. Under the board's precedential
`
` 6 decision in Hulu, the board examines whether
`
` 7 Petitioner has shown a reasonable likelihood that
`
` 8 the reference, here Abowd, was publicly
`
` 9 accessible and a reasonable likelihood of whether
`
` 10 the reference qualifies as a printed publication.
`
` 11 So looping back to the question of
`
` 12 overlap, there is no scenario where there will be
`
` 13 inconsistent positions here. The District Court
`
` 14 could find on the highest burden of proof, that
`
` 15 clear and convincing evidence, that Apple made a
`
` 16 very strong showing but failed to meet the clear
`
` 17 and convincing standard. The board could find
`
` 18 that very same evidence meets a reasonable
`
` 19 likelihood standard. That is not an
`
` 20 inconsistency such of the type that Fintiv is
`
`

`

` 21 looking at. That's applying a different standard
`
` 22 that Congress expressly authorized as a
`
` 23 difference between IPRs and the District Court.
`
` 24 And secondarily your Honor the reason that
`
` 25 it's important to you is the summary judgment
`
` 6
`
` 1 argument rests on challenging the Abowd as it
`
` 2 relates to the do not circulate stamp. That also
`
` 3 was subject of additional briefing and the
`
` 4 introduction of additional evidence by Petitioner
`
` 5 in the reply and sur-reply.
`
` 6 Maxell argues to the District Court that
`
` 7 the do not circulate stamp means that the
`
` 8 reference Abowd was not available to the public.
`
` 9 This is on page seven of its summary judgment
`
` 10 brief. They further argue that the do not
`
` 11 circulate warning indicates that the reference
`
` 12 was not meant to be disseminated to the public,
`
` 13 and the court if it makes a ruling will do so
`
` 14 based on that false premise and an incomplete
`
` 15 record from that which the board has.
`
` 16 Very specifically, your Honor in this
`
` 17 proceeding Apple submitted along with its reply a
`
` 18 supplemental declaration from Mr. Mumford, our
`
` 19 librarian expert, showing the arguments made
`
`

`

` 20 regarding the do not circulate are incorrect;
`
` 21 that it was accessible to the public. Thus the
`
` 22 board has different evidence in front of it than
`
` 23 the District Court and a different standard,
`
` 24 reasonable likelihood rather than clear and
`
` 25 convincing, than those being examined by the
`
` 7
`
` 1 district court.
`
` 2 But if Maxell is successful in its
`
` 3 arguments to the boards that the same issues will
`
` 4 be decided, the board will deny institution. If
`
` 5 it's successful convincing the jury or the judge
`
` 6 to prevent this issue from going to the jury,
`
` 7 then Maxell will have its cake and eat it, too.
`
` 8 No tribunal or trier of fact in that
`
` 9 situation will look at the key evidence on why
`
` 10 Abowd was publicly available under the standards
`
` 11 before your Honors, and no tribunal will examine
`
` 12 the merits of whether the patents are invalid
`
` 13 under the teachings of Hayashida and Abowd as
`
` 14 we've put forward in our petition.
`
` 15 So your Honor I thought those were
`
` 16 significantly important as they impact the Fintiv
`
` 17 analysis such that we would like to bring that
`
` 18 before.
`
`

`

` 19 JUDGE PETTIGREW: Let me
`
` 20 understand that last part of your argument
`
` 21 counsel. So you're saying if we denied using our
`
` 22 discretion under 314 applying the Fintiv factors
`
` 23 and then in the District Court, the District Court
`
` 24 granted Maxell's summary judgment motion, then at
`
` 25 that point isn't the District Court saying that
`
` 8
`
` 1 Maxell has shown by clear and convincing evidence
`
` 2 that the Abowd reference is not publicly available
`
` 3 prior art?
`
` 4 MR. SEITZ: That is correct, your
`
` 5 Honor, again based on a different standard, and it
`
` 6 would avoid a fundamental question of the merits
`
` 7 of whether Abowd and Hayashida, the reference
`
` 8 before your Honors in our petition, do actually
`
` 9 disclose the limitations in the claims. But yes
`
` 10 your recitation was correct.
`
` 11 JUDGE PETTIGREW: Okay. Let's her
`
` 12 from Patent Owner. First of all, do you oppose
`
` 13 the request? Because we didn't get that
`
` 14 information.
`
` 15 MR. PLUTA: Thank you, your Honor.
`
` 16 Yeah, we responded to the board with an email.
`
` 17 Hopefully the board received that email.
`
`

`

` 18 JUDGE PETTIGREW: Apparently we
`
` 19 did not get that email. I'm sorry for that.
`
` 20 MR. PLUTA: Okay, well, if the
`
` 21 board will indulge me I'll summarize it in my
`
` 22 response.
`
` 23 JUDGE PETTIGREW: Thank you.
`
` 24 MR. PLUTA: So we do oppose their
`
` 25 request. We think there has been enough briefing
`
` 9
`
` 1 on the Fintiv issue for the board to make an
`
` 2 informed decision. However, to the extent the
`
` 3 board is considering Apple's request we'd like to
`
` 4 put some things into context.
`
` 5 Apple's request actually highlights why
`
` 6 the board should utilize its discretion under
`
` 7 section 314 and Fintiv to deny institution in
`
` 8 these proceedings.
`
` 9 On June 30th, the parties in the
`
` 10 underlying District Court action filed 16 motions
`
` 11 across the ten patents at issue there. At least
`
` 12 three of those motions filed were directed to the
`
` 13 validity of the patents at issue here in these
`
` 14 proceedings. Maxell filed two motions and Apple
`
` 15 filed a motion directed to these patents as well.
`
` 16 These motions were filed long after
`
`

`

` 17 completion of fact discovery and after completion
`
` 18 of expert discovery where both Apple's and
`
` 19 Maxell's experts were deposed on the patents at
`
` 20 issue in these proceedings. A hearing on those
`
` 21 motions is scheduled for September 15th, which is
`
` 22 about a month prior to trial in the District
`
` 23 Court action and 11 months before any final
`
` 24 written decision would be due in these
`
` 25 proceedings.
`
` 10
`
` 1 There are several features of both
`
` 2 Maxell's motion and Apple's motion that the
`
` 3 substantial overlap of issues and why if the
`
` 4 board institutes the parties, and the board will
`
` 5 have a heavy duplication of that effort.
`
` 6 For example, as Mr. Seitz alluded to, the
`
` 7 issue of whether the Abowd publication is prior
`
` 8 art is the same here as it is in the District
`
` 9 Court. Maxell's motion to seek a summary
`
` 10 judgment rule that Abowd publication is not prior
`
` 11 art, just says the arguments made here before the
`
` 12 board. The basis for that intention is the same
`
` 13 as it is here.
`
` 14 And importantly, Apple's evidence to show
`
` 15 that the publication is prior art is precisely
`
`

`

` 16 the same. In fact Apple has set forth a nearly
`
` 17 identical declaration from the librarian
`
` 18 Mr. Mumford in the District Court as it has in
`
` 19 these proceedings. And Mr. Maxell has already
`
` 20 taken Mr. Mumford's deposition.
`
` 21 To Mr. Seitz's points or argument that
`
` 22 there's a supplemental declaration here from
`
` 23 Mr. Mumford, whereas that supplemental
`
` 24 declaration doesn't exist in the District Court,
`
` 25 that argument should have no merit because Apple
`
` 11
`
` 1 could certainly have, A, gotten that information
`
` 2 in during the deposition of Mr. Mumford or simply
`
` 3 filed a supplemental declaration from Mr. Mumford
`
` 4 in the District Court. You may even still have
`
` 5 the opportunity to do so.
`
` 6 So the fact that there's different
`
` 7 evidence here is kind of a misnomer. In Apple's
`
` 8 motion for summary section 101 invalidity but
`
` 9 importantly it support its motion arguing that
`
` 10 Hayashida, the same reference as used in the
`
` 11 petition is known art. And to illustrate this
`
` 12 Apple relies on many of the same references from
`
` 13 Hayashida as it does in the petition.
`
` 14 So Apple's concern -- and that's putting
`
`

`

` 15 aside even the 103 arguments that overlap between
`
` 16 the two proceedings. So Apple's concern that the
`
` 17 summary judgment motions present a risk of Maxell
`
` 18 convincing both forums to forego looking at
`
` 19 invalidity is incorrect. The District Court will
`
` 20 look at invalidity and look at it first prior to
`
` 21 the board, nearly a year prior to the board,
`
` 22 which goes to the very heart of why the board
`
` 23 found Fintiv precedential.
`
` 24 The substantial overlap of issues favors
`
` 25 denial here well before the final written
`
` 12
`
` 1 decision the court will either grant summary
`
` 2 judgment in Maxell's or Apple's favor or a jury
`
` 3 will decide the issues surrounding the validity
`
` 4 of the patent.
`
` 5 JUDGE PETTIGREW: Thank you,
`
` 6 counsel. Petitioner, I'll give you a brief
`
` 7 rebuttal.
`
` 8 MR. SEITZ: Thank you, your Honor.
`
` 9 I want to start with responding to Mr. Pluta.
`
` 10 This is Mr. Seitz responding by clarifying one
`
` 11 thing Mr. Pluta said and also going back to your
`
` 12 question Judge Pettigrew because I think there's a
`
` 13 fundamental point that I don't want to get lost in
`
`

`

` 14 a mess here.
`
` 15 The District Court's ruling on summary
`
` 16 judgment will not be whether the reference Abowd
`
` 17 is prior art. The summary judgment challenges
`
` 18 whether Apple has submitted sufficient evidence
`
` 19 to meet the clear and convincing standard.
`
` 20 So the ruling that would come out of the
`
` 21 District Court would be a question of whether the
`
` 22 evidence before the District Court is sufficient
`
` 23 to meet the clear and convincing standard.
`
` 24 The reason I want to clarify that is
`
` 25 because you the board have a different standard,
`
` 13
`
` 1 reasonable likelihood, and you the board have
`
` 2 different evidence. Now, Mr. Pluta seemed to
`
` 3 brush that under the table and perhaps Apple does
`
` 4 I'm not litigation counsel perhaps they do
`
` 5 clarify the record. Maxell did not make any
`
` 6 reference to the additional evidence from the IPR
`
` 7 and inform the District Court about that.
`
` 8 Perhaps Apple will.
`
` 9 But the point is you have different
`
` 10 evidence and a different standard available to
`
` 11 you to find whether on a reasonable likelihood
`
` 12 standard Abowd is publicly available. The
`
`

`

` 13 court's ruling will not be inconsistent with
`
` 14 yours because it's one of whether Apple has met
`
` 15 its evidentiary standard under the clear and
`
` 16 convincing standard.
`
` 17 JUDGE PETTIGREW: All right, thank
`
` 18 you, counsel. Patent Owner, I'll give you one
`
` 19 last word if there's anything else you want to
`
` 20 say. We can't hear you.
`
` 21 MR. PLUTA: I'm sorry, your Honor,
`
` 22 I was on mute. The perils of doing this call from
`
` 23 my cell phone in the work at home environment. I
`
` 24 apologize.
`
` 25 JUDGE PETTIGREW: Understood.
`
` 14
`
` 1 MR. PLUTA: I will keep it very
`
` 2 brief then.
`
` 3 It's not incumbent upon Maxell to
`
` 4 supplement the District Court record to match the
`
` 5 evidence that Apple submitted in this proceeding.
`
` 6 That's Apple's job. But as you pointed out, your
`
` 7 Honor, in response to Mr. Seitz's arguments, I
`
` 8 mean the burden is on us and I in the District
`
` 9 Court.
`
` 10 So if we meet that burden and summary
`
` 11 judgment is granted, the judge in the District
`
`

`

` 12 Court will address the invalidity issues of the
`
` 13 patents. And if we do not meet that burden and
`
` 14 the case goes to trial, the jury will.
`
` 15 JUDGE PETTIGREW: All right.
`
` 16 Thank you, counsel. I'm going to put everybody on
`
` 17 hold for a short period of time while I confer
`
` 18 with my colleagues.
`
` 19 (Off the record.)
`
` 20 JUDGE PETTIGREW: The panel is
`
` 21 back on the call. We're going to take this matter
`
` 22 under advisement. Petitioner, you arranged for
`
` 23 the court reporter. We would like to have the
`
` 24 transcript of this call filed as soon as possible.
`
` 25 MR. SEITZ: Yes. Will do, your
`
` 15
`
` 1 Honor. I'll file -- there was a similar
`
` 2 proceeding between the parties where we had a
`
` 3 discussion like this on Monday and they asked me
`
` 4 IPR 2020-202 they asked me to submit the rough
`
` 5 transcript immediate after the call and then the
`
` 6 final when it was done. Would you like me to
`
` 7 proceed the same here?
`
` 8 JUDGE PETTIGREW: Yes, we would
`
` 9 like that, thank you.
`
` 10 MR. PLUTA: This is Robert. Could
`
`

`

` 11 you make one point? I just want wanted to clarify
`
` 12 to the extent the board does allow further
`
` 13 submissions that in addition to what Apple
`
` 14 requested to be submitted we would also then
`
` 15 request to complete the record and submit the
`
` 16 other motions, the relevant motions.
`
` 17 JUDGE PETTIGREW: And what are the
`
` 18 relevant motions?
`
` 19 MR. PLUTA: Apple's motion to
`
` 20 summary judgment as well that further highlights
`
` 21 the Hayashida reference.
`
` 22 JUDGE PETTIGREW: Okay.
`
` 23 MR. SEITZ: Your Honor, may I ask
`
` 24 a brief clarification on that? This is Mr. Seitz.
`
` 25 JUDGE PETTIGREW: Yes. Go ahead,
`
` 16
`
` 1 counsel.
`
` 2 MR. SEITZ: The only other motion
`
` 3 I'm aware of to which he could be referring is a
`
` 4 101 motion. And I'm wondering if that's it.
`
` 5 There's only a passing reference to the Hayashida
`
` 6 in saying that people have been doing navigation
`
` 7 on devices like this for years. If that's what
`
` 8 he's referring to, I guess I'm just wondering if
`
` 9 perhaps there's another motion that he's referring
`
`

`

` 10 to that I'm unaware of.
`
` 11 JUDGE PETTIGREW: Mr. Pluta, can
`
` 12 you clarify? Is it the 101 summary judgment
`
` 13 motion?
`
` 14 MR. PLUTA: Yes, your Honor. That
`
` 15 is the motion. However, I disagree with
`
` 16 Mr. Seitz' characterization of the passing
`
` 17 reference. There are six or seven references to
`
` 18 the Hayashida reference including about seven
`
` 19 paragraphs of Apple's expert that discuss and are
`
` 20 cited in the motion that discuss the Hayashida
`
` 21 reference and its alleged applicable to the
`
` 22 validity of the patents at issue here.
`
` 23 JUDGE PETTIGREW: Thank you. If
`
` 24 there's nothing else from the parties, then this
`
` 25 call is adjourned. Thank you.
`
`

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