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