UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent No. 8,382,186
`____________
`
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`
`
`TRANSCRIPT OF TELEPHONIC CONFERENCE
`HELD ON SEPTEMBER 13, 2021
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`YITA LLC,
`Petitioner,
`
`v.
`
`MACNEIL IP LLC,
`Patent Owner.
`____________
`
`Case IPR2020-01139
`Patent No. 8,382,186
`____________
`
`
`
`
`TRANSCRIPT OF TELEPHONIC CONFERENCE
`HELD ON SEPTEMBER 13, 2021
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`On September 13, 2021, a telephonic conference call was held between the
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`parties and the Board to discuss Patent Owner’s request for authorization to: (1) file
`
`the Second Supplemental Declaration of Mr. Ray Sherman, the Second
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`Supplemental Declaration of Dr. Tim A. Osswald, and stipulations attached to Patent
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`Owner’s email to the Board dated September 9, 2021; (2) file new evidence with its
`
`Sur-reply in IPR2020-01139 and IPR2020-01142; and (3) file a motion to strike
`
`portions of Petitioner’s Reply in each case and the Declarations of Dr. Koch, Mr.
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`Strachan, and Mr. Perreault. See Paper 69. Pursuant to the Board’s request during
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`the conference, Patent Owner files a copy of the September 13, 2021, telephonic
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`conference transcript as a Paper in this proceeding.
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`
`
`Dated September 24, 2021
`
`
`
`
`
`
`Respectfully submitted,
`
`/Chad C. Walters/
`Chad C. Walters (Reg. No. 48,022)
`Counsel for Patent Owner MacNeil IP LLC
`
`1
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`
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on the
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`24th day of September, 2021, a complete and entire copy of this TRANSCRIPT OF
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`TELEPHONIC CONFERENCE HELD ON SEPTEMBER 13, 2021 was served
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`on Petitioner via electronic mail at the following addresses:
`
`Mark P. Walters (Reg. No. 46,050)
`walters@LoweGrahamJones.com
`
`Ralph W. Powers III, Reg. No. 63,504
`tpowers-PTAB@sternekessler.com
`
`Jason A. Fitzsimmons, Reg. No. 65,367
`jfitzsimmons-PTAB@sternekessler.com
`
`Stephen A. Merrill, Reg. No. 72,955
`smerrill-PTAB@sternekessler.com
`
`PTAB@sternekessler.com
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`
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`September 24, 2021
`Date
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`/Chad C. Walters/
`Chad C. Walters (Reg. No. 48,022)
`BAKER BOTTS L.L.P.
`(214) 953-6511
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`Attorneys for Patent Owner, MacNeil IP
`LLC
`
`
`
`
`
`In the Matter Of:
`
`Yita LLC vs
`
`MacNeil IP LLC
`
`TELECONFERENCE HEARING
`
`September 13, 2021
`
`
`
`
`
`· · · ·UNITED STATES PATENT AND TRADEMARK OFFICE
`
`· · · ·BEFORE THE PATENT TRAIL AND APPEAL BOARD
`
`1
`
`YITA LLC,· · · · · · · · ·)
`· · · · · · · · · · · · · )
`· · · · ·Petitioner,· · · )· Case IPR2020-01142
`· · · · · · · · · · · · · )
`VS.· · · · · · · · · · · ·)· Case IPR2020-01139
`· · · · · · · · · · · · · )
`MACNEIL IP LLC,· · · · · ·)
`· · · · · · · · · · · · · )
`· · · · ·Patent Owner.· · )
`
`· · · · · · · · TELECONFERENCE HEARING
`
`· · · · · · · · · SEPTEMBER 13, 2021
`
`· · BEFORE:
`
`· · · · · · ·JUDGE ARTHUR PESLAK
`
`· · · · · · ·JUDGE MITCHELL G. WEATHERLY
`
`· · · · · · ·JUDGE JAMES A. WORTH
`
`· · · · · · ·JUDGE MICHAEL WOODS
`
`
`
`· · · · · ·A P P E A R A N C E S
`
`2
`
`FOR THE PETITIONER:
`
`JASON A. FITZSIMMONS, ESQ.
`R. WILSON "TREY" POWERS, III, ESQ.
`Sterne Kessler Goldstein & Fox
`1100 New York Avenue Northwest
`Ste. 600
`Washington, D.C. 20005
`jfitzsimmons@sternekessler.com
`tpowers@sternekessler.com
`
`FOR THE PATENT OWNER:
`
`DAVID G. WILLE, ESQ.
`CLARKE STAVINOHA, ESQ.
`Baker Botts, L.L.P.
`2001 Ross Avenue
`Ste. 900
`Dallas, Texas 75201
`david.wille@bakerbotts.com
`clarke.stavinoha@bakerbotts.com
`
`JEFFERSON PERKINS, ESQ.
`Perkins IP Law Group LLC
`4200 Commerce Court
`Ste. 310
`Lisle, Illinois 60532
`jperkins@perkinsip.com
`
`
`
`· · · · · · · · · · INDEX
`
`3
`
`· · · · · · · · · · · · · · · · · · · · ·PAGE
`
`Appearances.........................· · · · 3
`
`Proceedings.........................· · · · 4
`
`Reporter's Certificate..............· · · ·47
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`
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`· · · P R O C E E D I N G S
`
`4
`
`· · ·(On the record at 2:59 p.m.)
`
`· · ·JUDGE PESLAK:· Good afternoon,
`
`Counsel.
`
`· · ·We're on the record in IPR2020-1139
`
`and 2020-1142.· This is Judge Peslak.
`
`On the phone with me are Judge
`
`Weatherly, Judge Worth and Judge Woods.
`
`· · ·Starting with patent owner and then
`
`petitioner, please identify who's on the
`
`line from your side, your firm
`
`affiliation, and whether or not you have
`
`a court reporter.
`
`· · ·MR. WILLE:· Thank you, your Honor.
`
`· · ·This is David Wille for the patent
`
`owner.· I'm with Baker Botts.
`
`· · ·We do have a court reporter.
`
`· · ·On the phone with me should be
`
`Clarke Stavinoha and Jeff Perkins.
`
`· · ·JUDGE PESLAK:· Good afternoon,
`
`Mr. Wille.
`
`· · ·Petitioner?
`
`· · ·MR. FITZSIMMONS:· Good afternoon,
`
`your Honor.
`
`
`
`5
`
`· · ·This is Jason Fitzsimmons of Sterne
`
`Kessler Goldstein & Fox on behalf of the
`
`petitioner, Yita, LLC.
`
`· · ·And I'm joined by Ralph Powers, the
`
`third, also from Sterne Kessler.
`
`· · ·JUDGE PESLAK:· Okay.· Thank you,
`
`Mr. Fitzsimmons.
`
`· · ·Mr. Wille, can you please file the
`
`transcript of this call when you receive
`
`it?
`
`· · ·MR. WILLE:· Yes, your Honor.
`
`· · ·JUDGE PESLAK:· Okay.
`
`· · ·We're here today to discuss patent
`
`owner's email of September 9th, 2021, in
`
`which patent owner requested leave to
`
`file new expert testimony with a
`
`surreply; also file a motion to strike
`
`portions of petitioner's reply and
`
`certain declarations that were filed
`
`with petitioner's reply; and also
`
`seeking to file some documents that
`
`petitioner stipulates to.
`
`· · ·Mr. Wille, can you tell us why you
`
`believe there's cause to file new expert
`
`testimony with your surreply?
`
`
`
`6
`
`· · ·MR. WILLE:· Okay.· So the request
`
`to strike portions of the brief and
`
`evidence, as well as to submit
`
`additional evidence, are related.
`
`· · ·So, petitioner's reply papers run
`
`afoul of multiple rules.
`
`· · ·First, the petitioner has
`
`improperly changed its patentability
`
`theory and added new arguments and
`
`evidence that were not in the petition.
`
`· · ·Second, petitioner's reply
`
`improperly incorporates by reference
`
`several hundred pages of new expert
`
`testimony.
`
`· · ·So, as a result, patent owner is
`
`requesting permission for two things.
`
`· · ·First, patent owner requests
`
`permission to file a motion to strike
`
`the reply brief in whole or in part, and
`
`to strike any evidence in support of
`
`arguments that are either new or are
`
`incorporated by reference.
`
`· · ·Second, the patent owner requests
`
`permission to submit additional evidence
`
`with its surreply.· And that request has
`
`
`
`7
`
`two parts.
`
`· · ·First, the patent owner requests
`
`permission to submit printed
`
`publications that were used in
`
`depositions to cross-examine
`
`petitioner's new experts on the new
`
`evidence and arguments that were
`
`presented.
`
`· · ·Second, the patent owner requests
`
`permission to submit additional expert
`
`testimony in response to the new
`
`arguments and evidence.
`
`· · ·And I want to be clear here.· We're
`
`asking the board to exercise its
`
`discretion to allow us to do this.· But
`
`in these IPRs, given the extent of
`
`petitioner's submissions, we contend it
`
`would violate patent owner's
`
`constitutional due process rights to
`
`allow petitioner to submit dozens of new
`
`printed publications along with 243
`
`pages of new expert testimony, and have
`
`those considered as evidence against the
`
`patent owner without allowing the patent
`
`owner an opportunity to respond to the
`
`
`
`8
`
`new evidence with its own expert
`
`testimony and printed publications.
`
`· · ·So those are the requests, and I'll
`
`now discuss the basis for those.
`
`· · ·So, as an overview, some simple
`
`statistics here are fairly revealing.
`
`· · ·The petitioner submitted three
`
`technical expert declarations with its
`
`reply compared to one technical expert
`
`declaration with the petition.
`
`· · ·The petitioner filed 55 new
`
`exhibits with its replies.· Of those, by
`
`our count at least 43 could have been
`
`filed with the petition.· They
`
`constitute printed publications and
`
`should have been submitted with the
`
`petition.
`
`· · ·They subpoenaed three new expert
`
`declarations.· Dr. Koch was their expert
`
`in their petition.· They have submitted
`
`another declaration from him, 114 pages
`
`in length.
`
`· · ·They submitted a declaration from a
`
`new expert, Mr. Strakken, which is
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`71 pages in length.
`
`
`
`9
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`· · ·And they have submitted another
`
`declaration from another new expert,
`
`Mr. Perreault -- I'm not sure if I'm
`
`pronouncing that correctly -- which is
`
`58 pages total.
`
`· · ·So the -- the reply incorporates by
`
`reference over 178 pages of -- of expert
`
`testimony from the -- these three
`
`declarations.
`
`· · ·To give you some idea, we basically
`
`took away, kind of, the qualifications
`
`piece, we took away the piece about the
`
`law, and we counted the words in these
`
`three declarations combined where
`
`there's substantive testimony.· It's a
`
`little over 36,000 words of testimony is
`
`being incorporated by reference into
`
`this reply brief.
`
`· · ·So, to give you -- to give you an
`
`example of new argument:· The first new
`
`argument is on the reasonable
`
`expectation of success prong of the
`
`obviousness inquiry.
`
`· · ·So it's petitioner's burden to
`
`demonstrate that the skilled artisan
`
`
`
`10
`
`would have had a reasonable expectation
`
`of success if the references were
`
`combined.· And so it was their burden to
`
`address this in the petition.
`
`· · ·The claims in both of these IPRs
`
`require a 1/8 inch conformance between
`
`the walls of a floor tray for a vehicle
`
`and the walls of the foot wall in the
`
`vehicle -- foot well in the vehicle.
`
`· · ·And that unprecedented conformance
`
`is achieved in part due to MacNeil's
`
`method for digitally measuring the floor
`
`tray, modeling the foot well surface and
`
`software and then making a mold based
`
`upon that model.
`
`· · ·And that process is, itself, the
`
`subject of two separate patents, which
`
`are -- are not currently the subject of
`
`an IPR.
`
`· · ·So petitioner's petition includes a
`
`very brief argument with respect to the
`
`ability to scan a vehicle interior and
`
`make a mold using the scanned data.
`
`· · ·It relies on one to two paragraphs
`
`of Dr. Koch's declaration for that
`
`
`
`11
`
`argument and a single prior art
`
`reference, the Hemmelgarn reference, to
`
`allege that a person of ordinary skill
`
`in the art could use a coordinate
`
`measure machine to gather
`
`three-dimensional data from a vehicle
`
`foot well and download those coordinates
`
`to a 3D milling machine to create a
`
`mold.
`
`· · ·And patent owner's response
`
`demonstrates -- then demonstrates why
`
`there would have been no reasonable
`
`expectation of success in response to
`
`this argument.
`
`· · ·So after we did that, petitioner
`
`deduced that it had a big problem on the
`
`issue of reasonable expectation of
`
`success.
`
`· · ·So it puts in a new 50-page
`
`declaration from a new expert on that
`
`issue and it presents a new theory on
`
`how the reasonable expectation of
`
`success can be met.
`
`· · ·It does so based upon 15 new
`
`exhibits, that could have been filed
`
`
`
`12
`
`with the petition, and basically gives a
`
`different theory than was given
`
`initially.· The Hemmelgarn reference is
`
`basically discarded with this new
`
`theory.
`
`· · ·So not only is this a new argument,
`
`but the two -- the four, five pages or
`
`so in the reply that address reasonable
`
`expectation of success incorporates by
`
`reference 31 pages of declaration
`
`testimony of this new expert witness.
`
`· · ·And Dr. Koch himself also presents
`
`a minor issue, but a new argument on
`
`this issue, concerning the accuracy of
`
`coordinate measurement machines, which
`
`was not raised in the opening brief.
`
`· · ·So --
`
`· · ·JUDGE PESLAK:· You had a chance to
`
`depose those experts, right?
`
`· · ·MR. WILLE:· Pardon me?
`
`· · ·JUDGE PESLAK:· You had a chance to
`
`depose all three of these experts,
`
`didn't you?
`
`· · ·MR. WILLE:· Yes.· We -- well, we
`
`have not deposed the third one yet.
`
`
`
`13
`
`That's Wednesday.
`
`· · ·But, yes, we will have the chance
`
`to depose these three experts.
`
`· · ·JUDGE PESLAK:· And I understand
`
`your argument to this point about why
`
`the patent owner contends that the reply
`
`may have exceeded the proper scope of
`
`the reply, but I still don't understand
`
`your logic, why you need new expert
`
`testimony.
`
`· · ·MR. WILLE:· Well --
`
`· · ·JUDGE PESLAK:· We normally don't
`
`allow, other than cross-examination,
`
`then deposition transcripts with the
`
`surreply.
`
`· · ·You know, if what's in the reply is
`
`beyond the scope and you're correct
`
`about that, why do you need new expert
`
`testimony at this point?
`
`· · ·MR. WILLE:· Well, if --
`
`· · ·JUDGE PESLAK:· Why do you need it,
`
`specifically?
`
`· · ·MR. WILLE:· If -- if we're allowed
`
`to file a motion to -- to strike and the
`
`evidence is indeed stricken, then, you
`
`
`
`14
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`know, obviously, we wouldn't need expert
`
`testimony to reply to that.
`
`· · ·But if the evidence for some reason
`
`is not stricken, we are prejudice by
`
`having the petitioner have put in
`
`these -- all of these new exhibits for
`
`which they have been able to present
`
`expert testimony, exhibits that could
`
`have been filed with the petition, 43
`
`new exhibits that could have been filed
`
`with the petition, where they have
`
`expert testimony about those and we
`
`haven't been allowed to put in expert
`
`testimony in response to that.
`
`· · ·At a -- at a minimum -- you know,
`
`you -- you mentioned the deposition,
`
`your Honor.· What we have done at the
`
`deposition is to present our own
`
`publications, which contradict some of
`
`the arguments in these new 43
`
`references.
`
`· · ·Those have been, you know,
`
`presented at these depositions by
`
`cross-examination of those experts.
`
`· · ·And so to the extent we're not
`
`
`
`15
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`allowed to put in additional expert
`
`testimony -- and we understand the --
`
`the history of that.· But to the extent
`
`we're not allowed to do that, we would
`
`request permission to file the exhibits
`
`that we've used in cross-examination of
`
`these experts at their depositions.
`
`· · ·And I would contend that this is a
`
`fairly extreme case in terms of the
`
`number of exhibits and the amount of
`
`expert testimony that's been presented
`
`in the reply.
`
`· · ·We have two -- two new experts, 43
`
`new exhibits.· That's certainly a new
`
`record for me.· It may not be for the
`
`judges on the court, but it's a new
`
`record for me, in a reply.
`
`· · ·So this is a rather extreme case.
`
`· · ·Now --
`
`· · ·(Simultaneous speaking.)
`
`· · ·JUDGE PESLAK:· Anything else --
`
`· · ·MR. WILLE:· -- I -- I --
`
`· · ·JUDGE PESLAK:· -- you would like to
`
`say?
`
`· · ·MR. WILLE:· Well, I mean, I have --
`
`
`
`16
`
`I have five or six additional examples
`
`of new arguments in the brief, but I
`
`don't know that I need to go through all
`
`of those.
`
`· · ·JUDGE PESLAK:· You don't --
`
`· · ·(Simultaneous speaking.)
`
`· · ·MR. WILLE:· -- (inaudible) --
`
`· · ·JUDGE PESLAK:· -- (inaudible) --
`
`come to that.
`
`· · ·MR. WILLE:· Yeah.· I think that
`
`really goes more to the merits than, you
`
`know, to whether -- than to whether we
`
`should be permitted to file a motion.
`
`· · ·JUDGE PESLAK:· Mr. Fitzsimmons,
`
`what's your response to all this?
`
`· · ·MR. FITZSIMMONS:· Yes.· Thank you,
`
`your Honor.
`
`· · ·So it's petitioner's position that
`
`there is no basis for either of patent
`
`owner's requests here, either for the
`
`motion to strike or to submit new
`
`evidence, including expert testimony,
`
`with its surreply.
`
`· · ·And both of the extreme remedies
`
`here, they run afoul of the objectives
`
`
`
`17
`
`for IPRs, you know, to ensure there just
`
`be an inexpensive resolution of every
`
`proceeding.
`
`· · ·And, to the contrary, here patent
`
`owner's request would unnecessarily
`
`drive up the costs and increase the
`
`length of these proceedings.
`
`· · ·And starting with the motion to
`
`strike, your Honors, as -- as you noted,
`
`you know, the Board Trial Practice Guide
`
`states that striking the entirety or a
`
`portion of a party's brief is an
`
`exception remedy, and that the board
`
`expects that will be granted rarely.
`
`· · ·And there's no basis for doing so
`
`here.
`
`· · ·Petitioner is confident that when
`
`the board has the opportunity the review
`
`the reply, the board will find that the
`
`petitioner's arguments are all proper
`
`rebuttal within the scope of routine
`
`replies.
`
`· · ·Petitioner's evidence here was
`
`necessary in order to address a
`
`multitude of inaccuracies in the patent
`
`
`
`18
`
`owner's responses, and that's all laid
`
`out in the reply.
`
`· · ·And the reply arguments and
`
`evidence are directed -- are directly
`
`responsive to arguments in the patent
`
`owner response.
`
`· · ·And those patent owner responses
`
`included 90 exhibits, and that includes
`
`testimony from seven witnesses that
`
`patent owner submitted with its patent
`
`owner responses, and we needed to
`
`respond to all of that.
`
`· · ·The replies don't change the
`
`petition or the petitioner's theories on
`
`obviousness or advance or incorporate
`
`new arguments in the replies.
`
`· · ·What the replies do is address
`
`inaccuracies that we couldn't perceive
`
`when filing the petition.
`
`· · ·Just one example is that the patent
`
`owner argued that foam can't be
`
`thermoformed; and that's just facially
`
`untrue.
`
`· · ·And our experts responded to that
`
`and they included supporting evidence,
`
`
`
`19
`
`as is proper, along with their
`
`testimony.
`
`· · ·And, Judge Peslak, you're correct
`
`that the board routinely determines
`
`whether a party has provided new
`
`arguments.
`
`· · ·And the board is well-positioned to
`
`give those the appropriate weight, and
`
`so there's no reason that the board
`
`should grant the patent owner's request
`
`here for a motion to strike.
`
`· · ·Now, regarding the patent owner's
`
`request for surreply evidence and expert
`
`testimony, the Trial Practice Guide is
`
`quite clear that surreplies may not be
`
`accompanied by new evidence other than
`
`deposition transcripts, as your Honor
`
`noted.
`
`· · ·Now, petitioner requested -- in
`
`meeting and conferring with patent owner
`
`before this call, we asked patent owner
`
`to provide any authority contrary to the
`
`Trial Practice Guide.
`
`· · ·Patent owner did not provide any.
`
`· · ·It's not surprising here.· And
`
`
`
`20
`
`granting the patent owner's requests
`
`would just open a potential floodgate of
`
`future requests for evidence to be
`
`submitted with the patent owner's
`
`surreply.
`
`· · ·There is nothing out of the
`
`ordinary here that merits deviating from
`
`the board's standard practice, as I
`
`mentioned.
`
`· · ·The petitioner's arguments and
`
`evidence, they are all proper rebuttal
`
`within the scope of routine replies.
`
`· · ·As further reason to deny the
`
`patent owner's request, as patent owner
`
`noted, they've already had the
`
`opportunity to depose two of the
`
`petitioner's experts, and the third
`
`they'll be deposing this week.
`
`· · ·And during the first two
`
`depositions alone, they introduced
`
`around 27 new exhibits.· And so the
`
`patent owner has, and will have, the
`
`opportunity to question petitioner's
`
`experts on this new evidence, and
`
`they've taken full advantage of that
`
`
`
`21
`
`opportunity.
`
`· · ·And prior to their surreply they'll
`
`have been able to thoroughly
`
`cross-examine petitioner's witnesses,
`
`and they can comment on that testimony
`
`in their surreply.
`
`· · ·And so, finally, I would say, your
`
`Honors, that granting the patent owner's
`
`request here for new evidence would be
`
`highly prejudicial to petitioner and go
`
`against the standard procedure that the
`
`board has laid for us in terms of
`
`replies and surreplies.
`
`· · ·The due date's at the back end of
`
`the trial, the schedule here has already
`
`been compressed.· Petitioner
`
`accommodated patent owner's two requests
`
`for extensions of time on the patent
`
`owner responses.
`
`· · ·And, you know, if petitioner --
`
`or -- excuse me.
`
`· · ·If patent owner was allowed new
`
`expert testimony, petitioner would need
`
`the opportunity to depose patent owner's
`
`witnesses and an opportunity to
`
`
`
`22
`
`subsequently respond to their testimony.
`
`And all this would require moving the
`
`oral hearing date, which has already
`
`been scheduled and is now less than one
`
`month away.
`
`· · ·And so for these reasons, your
`
`Honors, there's no compelling reason
`
`that -- that patent owner has put forth
`
`here to deviate from the board's
`
`established reply and surreply
`
`framework, and all it would do is -- is
`
`frustrate the just and speedy resolution
`
`of this proceedings and it would
`
`introduce unwarranted costs and schedule
`
`adjustments, your Honors.
`
`· · ·And with that, I would be happy to
`
`answer any questions that your Honors
`
`would have.
`
`· · ·JUDGE PESLAK:· Mr. Fitzsimmons,
`
`what's petitioner's position on
`
`Mr. Wille's request to submit the
`
`printed publications that he was
`
`cross-examining your witnesses with?
`
`· · ·MR. FITZSIMMONS:· So, we, your
`
`Honor, would be amenable to patent owner
`
`
`
`23
`
`submitting those exhibits with their
`
`surreply.
`
`· · ·We understand that those are --
`
`those are now part of the record with
`
`the deposition transcript.
`
`· · ·JUDGE PESLAK:· Okay.
`
`· · ·Mr. Wille, do you have anything
`
`briefly you want to say in response?
`
`· · ·MR. WILLE:· Well, I think that --
`
`what -- what I just heard, that they're
`
`okay with us submitting those exhibits,
`
`I have not heard before, so that's --
`
`that's a change.
`
`· · ·I -- I would say that, you know,
`
`the example Mr. Fitzsimmons gave about,
`
`you know, this issue about foam
`
`materials, that's an example of another
`
`new argument here.
`
`· · ·So what -- what happened here was
`
`the petition -- the combination that the
`
`petitioner alleged was to use
`
`polyethylene disclosed by Yung as the
`
`thermoplastic to construct the tray made
`
`at the structure with Rabbe.
`
`· · ·We pointed out that the Yung
`
`
`
`24
`
`reference did not disclose polyethylene;
`
`in fact, it disclosed polyethylene foam.
`
`And we put some evidence in about foam.
`
`· · ·So now the petitioner has shifted
`
`position in two with ways.
`
`· · ·Number one, they are now arguing
`
`that you could use the foam materials
`
`that are in Yung to thermoform Rabbe's
`
`tray.
`
`· · ·Number two, we also pointed out
`
`that they had not provided any rationale
`
`for lifting one material out of a
`
`laminate material to a three-layer
`
`laminate that Yung uses.
`
`· · ·So Yung has a three-layer laminate
`
`with a polyester fabric on the top, a
`
`foam layer in the middle and a layer of
`
`netting on the bottom.
`
`· · ·So we pointed out that that's
`
`really the material that Yung discloses,
`
`and you wouldn't use that to thermoform
`
`the Rabbe tray.
`
`· · ·There's no argument in the petition
`
`that you would make the Rabbe tray out
`
`of the laminate material or that you
`
`
`
`25
`
`could thermoform it.
`
`· · ·But since we made our argument now,
`
`they're contending that:· Well, you
`
`could use that material and you could
`
`thermoform it.
`
`· · ·So that's -- that's a change in how
`
`they are suggesting to combine the
`
`references, and that is against the
`
`board's rules.· To change the theory of
`
`patentability is not allowed.
`
`· · ·And there is Federal Circuit
`
`authority on that.· I'm sure the panel
`
`is aware of the Intelligent Biosystems
`
`versus Alumina Cartridge case, where --
`
`· · ·(Simultaneous speaking.)
`
`· · ·JUDGE PESLAK:· You're getting --
`
`· · ·MR. WILLE:· -- the reply brief --
`
`· · ·JUDGE PESLAK:· -- a little too far
`
`into the merits here, you know, for this
`
`meeting.
`
`· · ·MR. WILLE:· Okay.
`
`· · ·JUDGE PESLAK:· So --
`
`· · ·MR. WILLE:· Thank you, your Honor.
`
`· · ·JUDGE PESLAK:· -- why don't you
`
`give us a few minutes here.
`
`
`
`26
`
`· · ·(Brief Recess Taken.)
`
`· · ·JUDGE PESLAK:· Okay, Counsel.
`
`· · ·Mr. Wille, are you still there?
`
`· · ·MR. WILLE:· Yes, your Honor.
`
`· · ·JUDGE PESLAK:· Mr. Fitzsimmons,
`
`you're still there?
`
`· · ·MR. FITZSIMMONS:· Yes, your Honor.
`
`· · ·JUDGE PESLAK:· Okay.
`
`· · ·So we've decided we're going to
`
`allow patent owner to file the motion to
`
`strike.
`
`· · ·We're not going to allow any
`
`additional expert testimony.
`
`· · ·And the publications that were
`
`introduced at the deposition, both
`
`parties agree that patent owner can
`
`submit them into the record.
`
`· · ·In terms of a briefing schedule for
`
`the motion to strike, we do have an
`
`October 14th hearing date in this case,
`
`which we're not predisposed to move.
`
`· · ·So our thoughts on the briefing
`
`schedule and the page limitations are as
`
`follows:· Patent owner should file its
`
`motion to strike seven days from today,
`
`
`
`27
`
`which would be September 20th.· That
`
`would be a ten-page brief.
`
`· · ·Petitioner would file a response
`
`seven days later, which would be
`
`September 27th, also ten pages.
`
`· · ·And patent owner can file a reply
`
`to petitioner's opposition by
`
`September 30th, also ten pages.
`
`· · ·Mr. Wille, do you have any comments
`
`on the schedule --
`
`· · ·(Simultaneous speaking.)
`
`· · ·MR. WILLE:· Sorry --
`
`· · ·JUDGE PESLAK:· -- or page
`
`limitations?
`
`· · ·MR. WILLE:· Yes.
`
`· · ·Sorry, your Honor.· I missed the
`
`page limitation for the -- the opening
`
`brief and the response?
`
`· · ·JUDGE PESLAK:· Ten pages.
`
`· · ·MR. WILLE:· Okay.
`
`· · ·I -- there's actually -- there's
`
`actually a number of topics to cover. I
`
`guess I would request 15 for the opening
`
`brief and 15 for their response and 10
`
`for our reply on -- on the pages.
`
`
`
`28
`
`· · ·And then the only other thing I
`
`would say is we have a briefing schedule
`
`for evidentiary motions, which I don't
`
`have in front of me, but my thought is
`
`that we could file this on the same day
`
`we would file the evidentiary motions
`
`and it would follow the briefing
`
`schedule -- the evidentiary motions.
`
`· · ·Because our -- our -- obviously, we
`
`have hundreds of pages of stuff to
`
`respond to here, and our -- our surreply
`
`is due on the 21st.
`
`· · ·So if the -- if -- it would be a
`
`burden to have yet another thing to file
`
`while we're trying to deal with all this
`
`evidence and file our -- our surreply by
`
`the 21st.
`
`· · ·And so I would propose that the
`
`briefing schedule be the same briefing
`
`schedule as the motion to exclude
`
`schedule.
`
`· · ·JUDGE PESLAK:· Let me pull up the
`
`schedule here for a second -- which I
`
`think is a week from this Friday.
`
`· · ·MR. FITZSIMMONS:· Your Honor, this
`
`
`
`29
`
`is Jason Fitzsimmons for petitioner.
`
`· · ·I just want to make sure that I
`
`will be able to comment on this, as
`
`well.· We --
`
`· · ·(Simultaneous speaking.)
`
`· · ·JUDGE PESLAK:· Oh, you will. I
`
`just --
`
`· · ·MR. FITZSIMMONS:· Thank you.
`
`· · ·JUDGE PESLAK:· -- just give me a
`
`second here.
`
`· · ·So, due date for the motions to
`
`exclude are September 22nd, and the
`
`follow-on dates are 9/29 and 10/6.
`
`· · ·So you're asking to -- you're going
`
`to file -- you would have to file your
`
`motion then on -- your motion to strike
`
`the same day as the motion to exclude?
`
`· · ·MR. WILLE:· Yes.
`
`· · ·JUDGE PESLAK:· I got it.· Okay.
`
`Now I see.
`
`· · ·Okay, Mr. Fitzsimmons.· Why don't
`
`you --
`
`· · ·(Simultaneous speaking.)
`
`· · ·MR. FITZSIMMONS:· Thank --
`
`· · ·JUDGE PESLAK:· -- go ahead.
`
`
`
`30
`
`· · ·MR. FITZSIMMONS:· -- thank you,
`
`your Honor.· Yes, this is Jason
`
`Fitzsimmons.
`
`· · ·So, first, I just wanted to start
`
`off, we understand the mechanism for
`
`patent owner submitting any of these
`
`exhibits would be as part of the
`
`deposition transcript, not a separate --
`
`not a separate exhibit in the
`
`proceeding.· That would be the mechanism
`
`for -- for that.
`
`· · ·And then regarding the scheduling
`
`of the motion to strike and -- and
`
`opposition, we're -- petitioner is fine
`
`with the schedule that -- that your
`
`Honor proposed.· I don't see why we
`
`would double up on due dates with
`
`multiple briefs being due.· I don't see
`
`how that's -- that's a better
`
`proposition.
`
`· · ·And then, I believe your Honor said
`
`the page limits would be ten for the
`
`motion to strike, ten for the
`
`opposition, and I think you said ten for
`
`the reply.
`
`
`
`31
`
`· · ·Typically the reply would be less
`
`-- fewer pages.· So we would propose
`
`that would be limited to five pages for
`
`the reply.
`
`· · ·MR. WILLE:· May I respond, your
`
`Honor?
`
`· · ·JUDGE PESLAK:· Mr. Fitzsimmons,
`
`patent owner has requested 15 pages,
`
`okay?· Fifteen, fifteen and ten.
`
`· · ·MR. FITZSIMMONS:· And we would
`
`submit, your Honor, that's excessive
`
`here, that ten, ten and five is plenty,
`
`per their request.
`
`· · ·JUDGE PESLAK:· Okay.
`
`· · ·(Pause.)
`
`· · ·JUDGE PESLAK:· Okay, Counsel. I
`
`actually misspoke on the hearing date a
`
`few minutes ago.· It's actually
`
`October 12th, not October 14th.
`
`· · ·So we'll issue an order to this
`
`effect, but we're going to set the page
`
`limits as 15 for petitioner's motion, 15
`
`for petitioner's opposition and 10 pages
`
`for patent owner's reply.
`
`· · ·And we'll leave the schedule the
`
`
`
`32
`
`same as the motions to exclude, which is
`
`September 22nd is when the motion is
`
`due, September 29th, and -- for the
`
`opposition, and October 6th for the
`
`reply.
`
`· · ·MR. WILLE:· Thank you, your Honor.
`
`· · ·May we move on to the next issue?
`
`· · ·JUDGE PESLAK:· Which issue was
`
`that?
`
`· · ·Oh --
`
`· · ·(Simultaneous speaking.)
`
`· · ·MR. WILLE:· -- (inaudible) --
`
`· · ·MR. FITZSIMMONS:· Before we do
`
`that -- sorry.
`
`· · ·Before we do that, your Honor, I
`
`just want to confirm that -- that the
`
`new evidence is going to be the part
`
`that's attached with the deposition
`
`transcript, and not filed as new
`
`exhibits.
`
`· · ·JUDGE PESLAK:· Mr. Wille, do you
`
`have any issue with that?
`
`· · ·MR. WILLE:· Well, your -- your
`
`Honor, I'm not -- I don't particularly
`
`care about the mechanism of submitting
`
`
`
`33
`
`the substantive evidence.
`
`· · ·I'm not sure whether counsel is
`
`suggesting that these are not considered
`
`to be evidence in the case or not. I
`
`mean, I understand if we get to submit
`
`them, they're evidence in the case just
`
`like any other exhibits.
`
`· · ·So I -- I don't have any issue with
`
`the mechanism of putting them into --
`
`into the record, if that's all counsel
`
`is talking about.
`
`· · ·JUDGE PESLAK:· Mr. Fitzsimmons, are
`
`you objecting to these exhibits being in
`
`the record?
`
`· · ·Is that -- is that why you want
`
`them just attached?
`
`· · ·I mean, it's easier for us, when
`
`we're reading these things, to have
`
`exhibit numbers in the record, when
`
`we're writing up, you know, a decision.
`
`· · ·MR. FITZSIMMONS:· So our
`
`understanding, your Honor, is that since
`
`they were introduced as new exhibits
`
`during the deposition, that that would
`
`be the appropriate place for them to be,
`
`
`
`34
`
`is attached to the deposition
`
`transcript, because the patent owner is
`
`not permitted new evidence with its
`
`surreply other than the deposition
`
`transcript itself.
`
`· · ·JUDGE PESLAK:· Well, I think you
`
`didn't answer my question.
`
`· · ·Are you objecting to these -- to
`
`these documents as evidence?
`
`· · ·MR. FITZSIMMONS:· No, your Honor.
`
`· · ·MR. WILLE:· Your Honor, may I
`
`respond briefly?
`
`· · ·JUDGE PESLAK:· Okay.
`
`· · ·MR. WILLE:· The -- the one thing
`
`I'm concerned about in submitting them
`
`with the -- with the deposition
`
`transcript, one of the exhibits that I
`
`used is not a new exhibit.· I used an
`
`old exhibit in the deposition I took
`
`this last Friday, which is Exhibit 1008,
`
`which is one of the Throne treatises.
`
`It's like 900 pages long.· So I'm kind
`
`of concerned about if those exhibits are
`
`all attached to the deposition
`
`transcript, it may become unwieldy to
`
`
`
`35
`
`find them.
`
`· · ·So if it's easier for the board to
`
`find them, we could submit them both
`
`with the transcript and make a separate
`
`submission of the exhibits individually.
`
`· · ·MR. FITZSIMMONS:· Your Honor, I
`
`don't think there's an issue there,
`
`because the exhibit is already in the
`
`record.· So I don't see how there is any
`
`issue there.
`
`· · ·JUDGE PESLAK:· Mr. Wille, you can
`
`submit them with the deposition
`
`transcript and also just submit them
`
`with your -- with the exhibit numbers in
`
`the 2000s.
`
`· · ·MR. WILLE:· Okay.· Thank you, your
`
`Honor.
`
`· · ·JUDGE PESLAK:· And, now, what's the
`
`other issue you want to speak of --
`
`speak about?
`
`· · ·MR. WILLE:· You know what, your
`
`Honor?· One more clarification.
`
`· · ·We have one deposition left to
`
`take, which is going to occur Wednesday.
`
`· · ·My assumption is that opposing
`
`
`
`36
`
`counsel would not would not object to
`
`the submission of any exhibits that we
`
`would use to cross-examine that expert,
`
`either.
`
`· · ·MR. FITZSIMMONS:· If I -- if I
`
`understand correctly, it seems that the
`
`patent owner is trying to -- to get us
`
`to agree to not -- not to object to any
`
`exhibits that we don't know that there
`
`might be.
`
`· · ·I mean, we objected to all of these
`
`exhibits under scope and relevance,
`
`which would still be proper objections,
`
`even if they were to be -- however they
`
`would be submitted.
`
`· · ·So we -- we can't agree to that.
`
`· · ·JUDGE PESLAK:· Well, Mr. Wille, we
`
`can't get him to agree not to object to
`
`something that he hasn't -- hasn't seen
`
`yet.
`
`· · ·So if there's another issue that
`
`has to be resolved, we can take that up
`
`after the deposition if something else
`
`occurs here.
`
`· · ·MR. WILLE:· Okay.
`
`
`
`37
`
`· · ·So can we leave it this way:· As
`
`long as the parties are in agreement
`
`that those exhibits were used similar to
`
`the way they were used with the other
`
`two depositions -- is it okay to submit
`
`them as long as both parties
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