`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` APPLE, INC.,
` Petitioner
`
` v.
`
` LBT IP I, LLC,
` Patent Owner
`
` Inter Partes Review Case No. IPR2020-01189
` U.S. Patent No. 8,497,774
`
` THE VIDEO CONFERENCE HEARING conducted on
`
`May 20th, 2021, at 2:00 p.m., taken remotely, before
`
`Jill A. Bleskey, Registered Professional Reporter,
`
`Certified Shorthand Reporter (IL), and a Certified
`
`Court Reporter (MO), in a certain cause now pending
`
`before the United States Patent and Trademark Office,
`
`Before the Patent Trial and Appeal Board.
`
`1
`
`2 3
`
`4 5 6
`
`7 8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 1
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 2
`
` A P P E A R A N C E S
`Patent Trial and Appeal Board:
` Honorable John A. Hudalla
` Honorable Sheila F. McShane
` Honorable Juliet Mitchell Dirba
`For the Petitioner:
` Mr. Adam Seitz
` Ms. Jennifer Bailey
` Mr. Robin Snader
` ERISE IP, P.A.
` 7015 College Boulevard, Suite 700
` Overland Park, Kansas 66211
` 913-777-5600
` jennifer.bailey@eriseip.com
` robin.snader@eriseip.com
`For the Patent Owner:
` Mr. Mitch Zajac
` BUTZEL LONG, P.C.
` 150 West Jefferson Avenue, Suite 100
` Detroit, Michigan 48226
` 313-225-7000
` zajac@butzel.com
`
` Mr. Mitch Zajac
` BUTZEL LONG, P.C.
` 1909 K Street, N.W.
` Suite 500
` Washington, D.C. 20006
` 202-454-2800
` gregorysd@butzel.com
`
`Court Reporter:
`
`Jill A. Bleskey, RPR
`Illinois CSR #084-004430
`Missouri CCR #1467
`Alaris Litigation Services
`1608 Locust Street
`Kansas City, Missouri 64108
`(816)221-1160
`1-800-280-3376
`
`1
`2
`3
`
`4
`5
`6
`
`7
`
`8
`
`9
`
`10
`11
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`25
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 2
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 3
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` * * * * *
`
` (Starting time of the proceeding: 2:00 p.m.)
`
` * * * * *
`
` JUDGE HUDALLA: This is Judge Hudalla. I
`
`have on the line with me Judges McShane and Dirba.
`
`Who do we have on the line today for Petitioner?
`
` MR. SEITZ: Good morning, Judge Hudalla.
`
`This is Adam Seitz on behalf of Petitioner Apple.
`
`Also with me are my partners, Jennifer Bailey and
`
`Robin Snader. And your Honor, I also asked a court
`
`reporter to join us on the phone today as well and I
`
`can introduce her whenever you're ready.
`
` JUDGE HUDALLA: That would be fine.
`
` MR. SEITZ: We have Jill Bleskey who's on
`
`the phone from the court reporting service.
`
` JUDGE HUDALLA: Thank you. And welcome to
`
`you all. Obviously Mr. Seitz, when you have your
`
`transcript, if you could just file it at the next
`
`exhibit number, that would be greet.
`
` MR. SEITZ: Of course, your Honor.
`
` JUDGE HUDALLA: And for Patent Owner, who
`
`do we have on the line today?
`
` MR. ZAJAC: Good afternoon, your Honor.
`
`This is Mitch Zajac from Butzel Long on behalf of
`
`Patent Owner. And then also with me is my colleague
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 3
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 4
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Shaun Gregory.
`
` JUDGE HUDALLA: Okay. Good afternoon to
`
`you. And I assume, Mr. Zajac, you don't have a
`
`dueling court reporter?
`
` MR. ZAJAC: That's correct.
`
` JUDGE HUDALLA: Okay. The purpose of
`
`today's call is to discuss Patent Owner's indication
`
`that they will be filing motions to amend in these
`
`cases. And so I guess I'll just start with you, Mr.
`
`Zajac. Is it your intention to be filing motions to
`
`amend in all five of the cases?
`
` MR. ZAJAC: That's correct, your Honor.
`
`And I'm actually going to turn it over to my
`
`colleague, Mr. Gregory, to provide the details to
`
`answer any questions you might have.
`
` JUDGE HUDALLA: Okay. Go ahead, Mr.
`
`Gregory.
`
` MR. GREGORY: Just to confirm, we do
`
`intend to file in all five.
`
` JUDGE HUDALLA: Okay. So what I would
`
`propose to do here is what -- I'll go through just
`
`some of the general requirements of motions to amend
`
`and then after we get through that then we can start
`
`talking about the new motion to amend pilot program.
`
`So let's just get through the generalities first and
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 4
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 5
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`then we'll get into the more specific stuff.
`
` I'm basically just going to be following
`
`along with the precedential Electrosonic's case. And
`
`I would strongly recommend both sides familiarize
`
`themselves with that case 'cause it basically sets
`
`forth all of the requirements for motion to amend
`
`practice. So Mr. Zajac, Mr. Gregory, I'll be
`
`speaking to you but Mr. Seitz and your colleagues,
`
`you can interrupt at any time if you want to ask
`
`questions or ask for some clarification.
`
` So generally motions to amend must be
`
`responsive to grounds of unpatentability. You may
`
`make modifications that address Section 101 and 112
`
`issues but in general you should be responding to the
`
`grounds of unpatentability for which we've instituted
`
`trial.
`
` Your amendments should not enlarge the
`
`scope of the claims and you should not be introducing
`
`any new matter. Patent owners should be proposing a
`
`reasonable number of substitute claims. And in
`
`general, we look for one to one correspondence. If,
`
`for whatever reason, you expect to put in more than
`
`one claim, one substitute claim for one of the claims
`
`that has been instituted, you need to justify that in
`
`your motion. And just to be clear, you'll be --
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 5
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 6
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Patent Owner will be proposing substitute claims not
`
`amendments to original claims. And you can only
`
`propose amendments to claims for which we've
`
`instituted trial.
`
` Patent Owner's motion must clearly
`
`identify the contingency of the substitutions. And
`
`just in general we -- if the motion to amend is
`
`simply to cancel a claim we don't generally consider
`
`that to be contingent. But you should definitely say
`
`that for instance Substitute Claim X is proposed as
`
`the contingent substitution for whatever claim is in
`
`the case.
`
` We ask that you provide a listing of
`
`substitute claims as an appendix to the motion and it
`
`should clearly show the changes that are being made
`
`to the corresponding claim. And you can just simply
`
`use brackets and strikethroughs as the typical
`
`method, that's usually the best in these situations.
`
`Brackets or strikethroughs and of course underlining
`
`for new language.
`
` An important point is that in the motion
`
`Patent Owner must provide a showing of support to the
`
`original disclosures. So please do not just give us
`
`citations to the issued patent, we need to go back to
`
`the actual original documents, that's important of
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 6
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 7
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`course for establishing priority dates. And you need
`
`to show support for the entire claim. So if, for
`
`instance, you're proposing a substitute clam that's a
`
`dependent claim you need to show support for all of
`
`the claim, including the independent claim from which
`
`it depends. And just to be clear, the showing of
`
`support should be in the motion itself and not in the
`
`appendix.
`
` I want to remind both parties that the
`
`usual duty of candor still exists here in the motion
`
`to amend practice and that's especially true to
`
`Patent Owner because Patent Owner has a duty to
`
`disclose any information that is material to the
`
`patentability of the substitute claims.
`
` So with that, that's kind of the general
`
`matter that we like to go through. It's in the
`
`Electrosonic's case so I would suggest you go to the
`
`board's web site and look for the precedential
`
`Electrosonic's case.
`
` Mr. Seitz, do you have anything at this
`
`moment to interject?
`
` MR. SEITZ: I do, your Honor. It's
`
`tangentially -- well, it's more than tangentially.
`
`It's related to the motion to amend pro hac vice but
`
`I can hold that until you're done with the specifics
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 7
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 8
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`on motion to amend.
`
` JUDGE HUDALLA: Okay. That sounds good.
`
`And Mr. Zajac, if you have any questions at this
`
`point.
`
` MR. ZAJAC: No, your Honor. No questions
`
`from us.
`
` JUDGE HUDALLA: Okay. So what I'd like to
`
`get into now is the motion to amend pilot program
`
`which changes the procedure a bit since it's come
`
`out. And I will turn to you, Mr. Zajac, and ask you,
`
`do you intend to request preliminary guidance from
`
`the board on your motions to amend?
`
` MR. GREGORY: Your Honor, this is Mr.
`
`Gregory. Yes, we do intend to ask for preliminary
`
`guidance.
`
` JUDGE HUDALLA: Okay. And that's on all
`
`five motions, Mr. Gregory?
`
` MR. GREGORY: Yes, on all five, yes.
`
` JUDGE HUDALLA: Okay. So just to be
`
`clear, you have to make your request in writing as
`
`part of your motion just to make sure it's in the
`
`record. And now that we know you're going to be
`
`making the request just also to be clear we'll be
`
`providing preliminary guidance about four weeks after
`
`the due date for petitioner's opposition which
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 8
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 9
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`looking at the scheduling order is August 24th. So I
`
`think that would put our preliminary guidance
`
`sometime in the mid to late September timeframe.
`
` The preliminary guidance will focus on the
`
`limitations added in the motion to amend. It's not
`
`going to address the patentability of the original
`
`challenge claims. We will provide an initial
`
`discussion about whether there's a reasonable
`
`likelihood that the motion to amend meets the
`
`statutory and regulatory requirements for motion to
`
`amend, i.e. Section 101 and 112.
`
` And we will provide an initial discussion
`
`about whether petitioners -- petitioner and any
`
`evidence that's of record at that point establishes
`
`that there's a reasonable likelihood that the
`
`substitute claims are unpatentable. At that time
`
`there are going to be four options for Patent Owner
`
`to take. The first of which is that Patent Owner may
`
`request or just simply reply in the normal course to
`
`the motion to amend and/or the preliminary guidance.
`
`Your reply could include new evidence such as
`
`declarations and there will be no change in the
`
`scheduling order in that option. So basically you'll
`
`have the benefit of our preliminary guidance and you
`
`can respond to that and petitioner's opposition.
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 9
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 10
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` Option 2 is kind of the big Kahuna here as
`
`far as the motion to -- the revised motion to amend
`
`practice in this pilot program. You could file a
`
`revised motion to amend at this -- after the
`
`preliminary guidance is issued. So in that case, you
`
`can choose -- you can show one or more new proposed
`
`substitute claims in place of the previously
`
`presented substitute claims and then you may include
`
`arguments, evidence previously presented in the
`
`original MTA but you may not incorporate any material
`
`by reference from the original motion to amend. So
`
`you need to be very specific in that revised motion
`
`to amend and not simply just try to incorporate your
`
`arguments by reference.
`
` You can provide new arguments and evidence
`
`as to why the revised claims meet the statutory and
`
`regularly requirements and you could provide new
`
`amendments and arguments and evidence that is
`
`responsive to the issues that we would have raised in
`
`the preliminary guidance. You may not include -- you
`
`may not include new amendments, arguments, or
`
`evidence unrelated to the issues raised in the
`
`preliminary guidance or petitioner's opposition to
`
`the motion to amend. So that's the idea that we're
`
`going to be trying to narrow down the issues as we go
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 10
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 11
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`forward not going to simply continuously increase the
`
`scope of what's going on.
`
` And just to be clear, while you're
`
`requesting preliminary guidance so -- it's not a
`
`requirement to get preliminary guidance for a motion
`
`to amend, just so you're aware for other cases, but
`
`in this case you are going to be requesting
`
`preliminary guidance. So that's the second option.
`
` The third option is that Patent Owner can
`
`simply take no action after preliminary guidance.
`
`And in that case the Petitioner may simply reply in
`
`the normal course and that would basically end the
`
`briefing at that stage.
`
` And then the fourth option is that Patent
`
`Owner may withdraw its initial motion to amend after
`
`the preliminary guidance and then that would be as if
`
`there -- the case would continue at that stage as if
`
`there were no motion to amend.
`
` So just to be specific on the schedule, if
`
`petition -- excuse me, if Patent Owner puts in a
`
`revised motion to amend we will issue a new
`
`scheduling order and it essentially will move out a
`
`lot of the dates for the remainder of the trial. And
`
`importantly that will move out the trial date itself
`
`into about the tenth month of the proceeding. So if
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 11
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 12
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`that -- if we do receive that revised motion to
`
`amend, you will be -- you should be looking for a new
`
`scheduling order from us. And again, that will
`
`change the trial date.
`
` Okay. With that, Mr. Zajac, do you have
`
`any questions about the -- I guess I should say, Mr.
`
`Zajac and Mr. Gregory, do you have any questions
`
`regarding the pilot program for motions to amend?
`
` MR. ZAJAC: No, your Honor.
`
` MR. GREGORY: Nothing here. I'm good.
`
` JUDGE HUDALLA: Okay. Mr. Seitz, do you
`
`have anything to -- any comments or questions about
`
`motion to amend practice or the pilot program?
`
` MR. SEITZ: Not on those specific issues,
`
`your Honor.
`
` JUDGE HUDALLA: Okay. So with that, I
`
`guess that would conclude the -- at least the
`
`discussion about the amendments. I think, Mr. Seitz,
`
`you mentioned another issue. So why don't you go
`
`ahead and let us know what you were thinking.
`
` MR. SEITZ: Thank you, your Honor. Just
`
`for the record, this is Adam Seitz. Your Honor, we
`
`have an issue, this has arisen now in light of the
`
`notice of motion to amend. Just to kind of set an
`
`understanding of what I'm talking about here. On
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 12
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 13
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`May 11, just last week, about nine days ago, LBT, the
`
`Patent Owner in this case, disclosed an individual by
`
`the name of Brian Sears and asked us whether we would
`
`oppose his pro hac vice motion into this case. At
`
`that point we had no objection, we had no indication
`
`that LBT was going to be amending its claims. Mr.
`
`Sears, your Honor, is lead counsel for LBT in the
`
`litigation that's pending in Delaware.
`
` The very next day, May 12, Mr. Sears took
`
`the depo of Apple's expert and then two days after
`
`that we came to learn Patent Owner asked the Board to
`
`amend, we actually did not learn of that request to
`
`amend this until this Tuesday, May 18 when your
`
`Honors sent the e-mail out setting up this phone call
`
`at which point we were actually included on the
`
`e-mail.
`
` The reason I raise this now as an issue is
`
`that Mr. Sears, like I said, is lead counsel in the
`
`litigation. And in the litigation Apple has produced
`
`over 500,000 pages of very core technical documents
`
`describing how its products work. And in the
`
`litigation also there's a protective order that
`
`precludes any person who has received that
`
`confidential information from participating directly,
`
`or indirectly, in drafting or amending the claims in
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 13
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 14
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`an Inter Partes Review Process. So that leaves me
`
`today, once I learned of Mr. Sear's involvement and
`
`then learned on Tuesday of the fact that Patent Owner
`
`intends to amend, it leaves us with a problem with
`
`the protective order in the litigation, specifically
`
`as it relates to you, your Honor, and this
`
`proceeding, Mr. Sears participating here as pro hac
`
`vice counsel.
`
` And so I have -- I do want to indicate
`
`that we now oppose Mr. Sears pro hac vice motion. I
`
`would oppose that on the basis that he has received
`
`and had access to Apple's confidential technical
`
`documents in the litigation and under that protective
`
`order is precluded from participating in any
`
`proceedings where there's going to be claim
`
`amendments.
`
` And then secondarily, your Honor, Mr.
`
`Zajac and Mr. Gregory I understand -- it is my
`
`understanding that they are IPR counsel. But I do
`
`have some concerns that two days after the deposition
`
`that Mr. Sears defended, Mr. Zajac and Mr. Gregory,
`
`as Patent Owners' counsel, requested a motion to
`
`amend. And so I'm left not knowing, absent a
`
`declaration or statement from Mr. Zajac or Mr.
`
`Gregory, what their involvement has been with Mr.
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 14
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 15
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Sears when it regards -- or relates to the motion to
`
`amend because that -- like I said, that protective
`
`order prevents any indirect -- even indirect
`
`participation by Mr. Sears in the motion to amend
`
`process.
`
` So I wanted to raise those on the phone
`
`here today. And again, to sum that up, your Honor, I
`
`do not oppose Mr. Sear's pro hac vice motion and I do
`
`have some significant questions regarding Mr. Zajac
`
`and Mr. Gregory and what may have been discussed with
`
`Mr. Sears because I don't have any insight into that
`
`and I wanted to raise that on the phone here today.
`
` MR. GREGORY: Your Honor, if I may.
`
` JUDGE HUDALLA: Go ahead. Just to be
`
`sure, I was just going ask -- I guess that's Mr.
`
`Gregory speaking. Mr. Gregory, the name of the
`
`individual is Seals, S-E-A-L-S, am I right about
`
`that?
`
` MR. GREGORY: That's correct. Yes.
`
` MR. SEITZ: My apologies.
`
` JUDGE HUDALLA: Please go ahead and
`
`respond then, Mr. Gregory.
`
` MR. GREGORY: Yes, your Honor. The
`
`situation is I will acknowledge that Mr. Seals is a
`
`partner in the firm of Butzel Long where Mr. Zajac
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 15
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 16
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`and myself are also employed. However he proactively
`
`notified myself and Mr. Zajac of that protective
`
`order, we are well aware of that. And we are
`
`implementing what we see as reasonable constraints
`
`and a wall to preclude him from any engagement in the
`
`motion to amend or any amendments that might be
`
`involved in this procedure.
`
` JUDGE HUDALLA: So you're suggesting, Mr.
`
`Gregory, that he still be admitted as pro hac vice
`
`counsel even though there's this potential issue with
`
`the protective order in the underlying litigation?
`
` MR. GREGORY: That is correct. The
`
`intention is that he would be handling the overall
`
`IPR and principally myself, with some support from
`
`Mr. Zajac, would be handling the motion to amend and
`
`any amendments that might move forward.
`
` JUDGE HUDALLA: Okay. Do you have any
`
`response to Mr. Seitz's statement about wondering
`
`about you and Mr. Zajac's participation in the
`
`district court case?
`
` MR. GREGORY: I have absolutely no
`
`involvement in the district court's case, have not
`
`seen any -- any information related to that matter.
`
` JUDGE HUDALLA: Okay. Mr. Seitz.
`
` MR. SEITZ: Apologies, your Honor.
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 16
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 17
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
` JUDGE HUDALLA: I was going to say, Mr.
`
`Seitz, do you know, is there -- the protective order
`
`in the district court case, is there some sort of
`
`subscription that's required to get to that highly
`
`confidential information?
`
` MR. SEITZ: The protective order -- this
`
`is Mr. Seitz. The protective order in the litigation
`
`by all counsel of record without a specific written
`
`subscription, your Honor. So it would bind the
`
`counsel that are of record, which right now is Mr.
`
`Seals and one other individual whose name I don't
`
`have handy but it is not Mr. Zajac or Mr. Gregory.
`
`So as far as I know that protective order only binds
`
`Mr. Seals and the confidential information would have
`
`been provided to the Butzel Long firm and I don't
`
`know who within the Butzel Long firm has access to
`
`that beyond Mr. Seals.
`
` JUDGE HUDALLA: Okay. I guess I would ask
`
`Mr. Zajac and Mr. Gregory, are you accessing that
`
`information and are you involved at all in the
`
`district court litigation?
`
` MR. GREGORY: No, your Honor, I am not.
`
` MR. ZAJAC: And your Honor, this is Mr.
`
`Zajac. Likewise, I have not ever accessed the
`
`information that's been delivered in response to
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 17
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 18
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`request for information, request for discovery. And
`
`I have played an initial role in the case doing
`
`research related activities but none as it relates to
`
`any sort of specific information that came from
`
`Apple.
`
` JUDGE HUDALLA: I guess I would just ask
`
`again. I got a -- that was a pretty specific answer
`
`from Mr. Zajac. Mr. Gregory, have you accessed
`
`information -- any of Apple's information in the
`
`district court litigation?
`
` MR. GREGORY: No, your Honor, I have not.
`
` JUDGE HUDALLA: Okay. All right. So we
`
`have a pretty complicated situation here obviously.
`
`Just going to turn on what's going on in at the
`
`district court and how the protective order is
`
`written there. I think I'd like to discuss this
`
`off-line with the other judges on this case and we'll
`
`probably do so in just a moment here. So if you
`
`could just hold onto that.
`
` I just wanted to ask, before we go off the
`
`line for a second here, do you have anything else
`
`you'd like to discuss at this time, Mr. Seitz?
`
` MR. SEITZ: Just one further point, your
`
`Honor. Just to -- I guess two points, your Honor.
`
`One, I don't know if you're going to make a ruling on
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 18
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 19
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`this issue or suggest further briefing. I'm
`
`completely fine providing further briefing to explain
`
`our position and set forth the protective order so
`
`your Honors can have a copy of that, I appreciate we
`
`don't have that on the phone call here today.
`
` But then secondarily, to the question of
`
`whether an ethical wall could be put in place or
`
`whatever wall it is that they're talking about for
`
`Mr. Seals. Having been involved in IPRs in the past
`
`where there are motions to amend, they are -- they
`
`are amazingly intertwined, the motions on the
`
`unpatentability are tied to the questions of the
`
`amendment, of the proposed amendments, they're just
`
`inexplicably intertwined. And I don't understand how
`
`that process would work.
`
` If we're in a hearing, for example, do we
`
`ask Mr. Seals to leave the room so we could discuss a
`
`potential amendment. You know, how do we guarantee
`
`he's not provided access as counsel of record if his
`
`pro hac vice is granted. I just think that's an
`
`unworkable solution and so I wanted to note that,
`
`your Honor. But I am happy to provide further
`
`briefing and everything else that may be necessary to
`
`help. You're right, it's a complicated scenario here
`
`and I'm happy to provide whatever you may need to
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 19
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 20
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`help clarify this.
`
` JUDGE HUDALLA: Well, Mr. Seitz, I can
`
`tell you that, I mean, my inclination is to ask for
`
`further briefing but we'll get to that in a moment
`
`when I get to discuss it with my fellow judges.
`
` But in response to Mr. Seitz's question,
`
`Mr. Gregory or Mr. Zajac, do you have any preliminary
`
`comments you'd like to make before we go off the
`
`line?
`
` MR. GREGORY: The only comment that I
`
`would make, your Honor -- this is Mr. Gregory. Mr.
`
`Seal's indication to me when he made me aware of the
`
`protective order was that he had not had any exposure
`
`to any of that information himself either. In light
`
`of Mr. Seitz' comments, I do not know other than
`
`that. I certainly appreciate that it is a complex
`
`and complicated issue at this point.
`
` JUDGE HUDALLA: So just to be clear,
`
`you're saying that the lead counsel in the district
`
`court case is not accessing the information that's
`
`been discovered in the district court case, is that
`
`what you're telling us?
`
` MR. GREGORY: I -- what I'm saying is in
`
`his e-mail to me regarding the protective order, Mr.
`
`Seals had indicated that he had not reviewed or been
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 20
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 21
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`in -- handled the information that was the subject of
`
`the protective order.
`
` JUDGE HUDALLA: But I guess my concern
`
`right off the bat with that would be, like, he's
`
`going to eventually of course if he's lead counsel, I
`
`would assume, right?
`
` MR. GREGORY: Presumably, yes.
`
` JUDGE HUDALLA: Okay. Well, that -- I
`
`mean, I can tell you, I have some pretty deep
`
`concerns about that aspect if you're proposing some
`
`sort of ethical wall which is -- I tend to wonder,
`
`like Mr. Seitz, if that's even workable in this case.
`
` MR. ZAJAC: Your Honor, this is Mr. Zajac.
`
`If I could just add that the protective order
`
`addresses the motion to amend and presumably we will
`
`work our way through this issue and then be able to
`
`proceed with the remainder of the IPR at which point
`
`the issues won't be as apparent.
`
` JUDGE HUDALLA: The only problem with
`
`that, Mr. Zajac, is, you know, if we go into all of
`
`this motion to amend briefing and the pilot program
`
`with preliminary guidance, I mean, there's going to
`
`be a whole lot of briefing and time that could be
`
`spent on the motion to amend. It's not going to be
`
`an insignificant part of this case. You would agree
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 21
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 22
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`with that, right?
`
` MR. ZAJAC: Yes, your Honor.
`
` JUDGE HUDALLA: Okay. All right. I think
`
`I understand the issue. If you could just hold the
`
`line, please, I'd like to discuss with my fellow
`
`judges and we'll be back in just a moment.
`
` MR. SEITZ: Yes, your Honor.
`
` MR. GREGORY: Thank you, your Honor.
`
` (At this point in the proceedings, an off
`
`the record discussion was held.)
`
` JUDGE HUDALLA: Okay. We're back on the
`
`record. This is Judge Hudalla again. We would like
`
`to go ahead and authorize some further briefing on
`
`this and so we will take up Mr. Seitz on his offer to
`
`put in an opposition. So we were thinking maybe a
`
`seven page opposition in about a week, Mr. Seitz.
`
`Does that work for you?
`
` MR. SEITZ: Yes, your Honor, that works
`
`just fine. This is Mr. Seitz.
`
` JUDGE HUDALLA: Okay. And of course with
`
`your opposition, if you could include the protective
`
`order from the district court case, that would be
`
`great.
`
` MR. SEITZ: Will do.
`
` JUDGE HUDALLA: All right. And then Mr.
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: 314.644.1334
`
`IPR2020-01192
`Apple EX1074 Page 22
`
`
`
` TRANSCRIPT OF PROCEEDING 5/20/2021
`
`Page 23
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`21
`
`22
`
`23
`
`24
`
`25
`
`Zajac and Mr. Gregory, we were thinking that you
`
`could have a seven page reply about a week after
`
`that. Is that acceptable?
`
` MR. GREGORY: Yes, your Honor.
`
` MR. ZAJAC: Yes, your Honor.
`
` JUDGE HUDALLA: Okay. Hopefully that will
`
`get us through the issues. But if you could
`
`definitely address how you think Mr. Seals could
`
`proceed given the restrictions in the district court
`
`case. I mean, we are, you know, definitely focused
`
`on that issue and we have our concerns, pretty deep
`
`concerns, about how he might be able to proceed given
`
`that he's going to have to access that information at
`
`some point.
`
` MR. ZAJAC: Okay.
`
` MR. GREGORY: Understood, your Honor.
`
` JUDGE HUDALLA: Thank you. So with that,
`
`I think we will probably issue an order regarding the
`
`pro hac vice motion first and then we will probably
`
`issue a separate order regarding our discussion on
`
`the motion to amend practice as well but that will
`
`probably come at a later time.
`
` So with that, Mr. Seitz, do you have
`
`anything further?
`
` MR. SEITZ: Nothing further. And I --
`
`www.alaris.us
`
`ALARIS LITIGATION SERVICES
`Phone: 1.800.280.3376
`
`Fax: