UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`Before the Honorable Dee Lord
`Administrative Law Judge
`
`
`In the Matter of
`
`CERTAIN CARTRIDGES FOR
`ELECTRONIC NICOTINE
`DELIVERY SYSTEMS AND
`COMPONENTS THEREOF
`
`Investigation No. 337-TA-1141
`
`
`COMPLAINANT JLI’S MOTION IN LIMINE NO. 2:
`MOTION TO STRIKE AND PRECLUDE RESPONDENTS’ IMPROPER EVIDENCE AND
`ARGUMENT CONCERNING THE ELIPS PRODUCT
`
`Pursuant to Commission Rule 210.15 and Order No. 10 (setting the procedural schedule),
`
`Complainant Juul Labs, Inc. (“JLI”) hereby files this motion in limine to exclude Respondents’
`
`improper demonstrative exhibits. The exhibits identified below in more detail, should be struck
`
`pursuant to Ground Rules 9.3.1.1 and the ALJ should preclude Respondents from making
`
`arguments relating to these improper demonstratives. Specifically, JLI seeks to exclude (1) three
`
`demonstrative exhibits consisting of hyperlinks to YouTube videos; and (2) portions of the
`
`testimony of Respondents’ expert Mr. Greg Flolid that cite to the YouTube videos.
`
`Pursuant to Ground Rule 3.2, the undersigned hereby certify that they made reasonable,
`
`good-faith efforts to resolve the issues raised in this Motion with counsel for Respondents and
`
`the Commission Investigative Attorney (“Staff”). The Parties met and conferred on August 15,
`
`2019 but were unable to resolve the issues presented herein. Vaperz and the Ziip Respondents
`
`oppose this Motion. The remaining Respondents take no position or have not responded to JLI’s
`
`request for positions. Staff will take a position on the papers.
`
`

`

`
`
`I.
`
`
`
`Respondents’ Improper Demonstrative Exhibits Should Be Excluded
`
`Respondents’ improper demonstrative exhibits RDX-0001, RDX-0002 and RDX-0003
`
`identify hyperlinks directed to three separate YouTube pages (one link per exhibit) and should be
`
`excluded from evidence because each violates Ground Rule 9.3.1.1.1
`
`Ground Rule 9.3.1.1 states that “[q]uotations and excerpts from other exhibits may be
`
`included in a witness statement for demonstrative purposes, but this evidence must be otherwise
`
`admissible or be sponsored for admission by the witness.” Here, the videos found at the links
`
`contained in RDX-0001, RDX-0002 and RDX-0003 have not been provided and thus cannot be
`
`received into evidence.1 More directly, the YouTube videos are not marked as exhibits. In fact,
`
`Respondents never produced copies of the associated YouTube videos.2 Respondents also did
`
`not list any of the videos on their exhibit lists. Because these demonstrative exhibits only
`
`reference webpages and videos that have not been produced and therefore cannot be placed into
`
`evidence, the demonstratives should be excluded for failure to comply with Ground Rule 9.3.1.1.
`
`At the hearing in the related investigation, Inv. No. 337-TA-1139, Respondents attempted
`
`to introduce these same improper demonstratives identifying the same YouTube hyperlinks.
`
`Similar to this case, Respondents did not produce the actual YouTube videos to be entered into
`
`evidence; Respondents merely provided the YouTube hyperlinks as demonstratives and sought
`
`to play the YouTube videos presumably linked through those hyperlinks during trial. JLI filed a
`
`motion to exclude the same improper demonstratives, and ALJ Shaw granted the motion but
`
`
`1 RDX-0001 is identified on Respondents’ exhibit list as
`https://www.youtube.com/watch?v=iCeE-O1scDg; RDX-0002 is identified as
`https://www.youtube.com/watch?v=cnPcqDzFm0Q; and RDX-0003 is identified as
`https://www.youtube.com/watch?v=PTfJIsrfqWI.
`2 Respondents have provided a single screenshot of each YouTube webpage, but
`Respondents stated on the August 15, 2019 meet and confer that they intend to play the YouTube
`video at the hearing—not just show the single screenshot.
`
`
`
`- 2 -
`
`

`

`
`
`allowed Respondents the opportunity to file a motion to correct the issue. Inv. No. 337-TA-1139,
`
`Order No. 30, at 2-3. However, Respondents chose to never correct their exhibit lists or actual
`
`exhibits to properly provide the videos so they could be accepted into evidence. During the
`
`prehearing conference, ALJ Shaw further stated that Respondents cannot play the YouTube
`
`videos associated with the hyperlinks during hearing, recognizing that Respondents “can't just
`
`play a YouTube video in a courtroom and make that into evidence.” Ex. 1, Inv. No. 337-TA-
`
`1139 Pre-hearing Conference Tr. 31:9-13. In addition, ALJ Shaw noted that because the actual
`
`YouTube video had not been captured to be entered into evidence (and it is the same situation
`
`here), it was not clear whether the videos that Respondents seek to show through the hyperlinks
`
`have not been changed on the Internet over time. Ex. 1, Inv. No. 337-TA-1139 Pre-hearing
`
`Conference Tr. 30:8-16, 32:2-6. Such evidentiary concerns certainly undergird the rationale
`
`behind the Ground Rule. After having just lost on this same evidentiary issue in Inv. No. 337-
`
`TA-1139, one would expect Respondents to correct the same issue in this Investigation,
`
`especially as they apparently intend to rely on the same YouTube links in their case. However,
`
`Respondents have done nothing to address this failing and the YouTube videos allegedly
`
`connected to the links in the exhibits remain unproduced, untested and unverified. Therefore,
`
`they should be struck as improper demonstrative evidence.
`
`
`II.
`Portions of Mr. Flolid’s Testimony and Portions of the Prehearing Brief that
`Rely on Respondents’ Improper Demonstrative Exhibits Should also Be Struck
`
`The portions of Respondents’ expert testimony relying upon the unproduced and thus
`
`improper YouTube video evidence should also be struck. See Certain Robotic Vacuum Cleaning
`
`Devices and Components Thereof such as Spare Parts, Inv. No. 337-TA-1057, Order No. 43,
`
`2018 WL 1418170 (Mar. 8, 2018) (excluding demonstrative YouTube video that had not been
`
`
`
`- 3 -
`
`

`

`
`
`produced and portions of a witness statement discussing the demonstrative). Respondents
`
`reference and rely on the videos contained at the hyperlinks to support their invalidity arguments.
`
`Specifically, in his direct witness statement, at Q/A 116, 117, 118, and 126, Mr. Flolid
`
`cites to the timestamps presumably referring to the YouTube video associated with the hyperlink
`
`listed on RDX-0001. RX-0001 (Flolid Direct WS) Q/A 116, 117, 118, 126. However and most
`
`importantly, the demonstrative is not itself a video and the time stamp is thus inapplicable. An
`
`exemplary instance of one such reference to the demonstratives from Mr. Flolid’s witness
`
`statement is reproduced below:
`
`
`
`[RX-0001 (Flolid Direct WS) Q/A 116]
`
`Additionally, Mr. Flolid discusses the videos allegedly located at the webpages listed in
`
`RDX-0001, RDX-0002 and RDX-0003 in his witness statement at Q/A 33, 110, and 126. Id. at
`
`Q/A 33, 110, and 126. In each instance, Mr. Flolid references only the demonstrative exhibit
`
`number. There are no citations to video exhibits of record. An annotated excerpt of Mr. Flolid’s
`
`direct witness statement indicating the portions that should be struck for relying upon the
`
`improper demonstrative exhibits has been attached to this Motion as Appendix A.
`
`Respondents had months to produce copies of the underlying videos and webpages and to
`
`mark them and exhibits and chose not to do so. JLI is prejudiced by Respondents’ attempts to
`
`circumvent the Ground Rules by submitting improper demonstratives that do not cite to marked
`
`exhibits and by Respondents’ experts reliance on material that is not in evidence. As noted,
`
`Respondents actions skirts the rationale of the Ground Rule - verifying that exhibits used at trial
`
`are based on admissible evidence and there maintain the integrity of the process.
`
`
`
`- 4 -
`
`

`

`
`
`For the reasons set forth above, Complainant respectfully requests that the ALJ grant
`
`Motion in Limine No. 1 to exclude RDX-0001, RDX-0002, and RDX-0003, as well as strike the
`
`following portions of Respondents’ testimony listed below that rely on these improper
`
`demonstratives:
`
` RX-0001 (Flolid Direct WS) Q/A 33, 110, 116, 117, 118, 126 (attached as
`Appendix A to this motion)
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: August 22, 2019
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`COUNSEL FOR COMPLAINANT JUUL LABS, INC.
`
`Daniel E. Yonan
`Michael E. Joffre
`Nirav N. Desai
`Paul A. Ainsworth
`Uma N. Everett
`STERNE, KESSLER, GOLDSTEIN & FOX, P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`(202) 371-2600
`
`Kevin P. B. Johnson
`Victoria F. Maroulis
`Brett J. Arnold
`Margret Caruso
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`555 Twin Dolphin Dr., 5th Floor
`Redwood Shores, CA 94065
`(650) 801-5000
`
`- 5 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Exhibit 1
`
`Exhibit 1
`
`

`

`
`
`OPEN SESSION
`
`UNITED STATES
`INTERNATIONAL TRADE COMMISSION
`
`In the Matter of: ) Investigation No.
`
`CERTAIN ELECTRONIC NICOTINE ) 337-TA-1139
`
`DELIVERY SYSTEMS AND )
`
`COMPONENTS THEREOF )
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pages:
`
`Place:
`
`Date:
`
`1 through 70 (with excerpts)
`Washington, D.C.
`August 6, 2019
`
`
`
`
`
`HERITAGE REPORTING CORPORATION
`Official Reporters
`1220 L Street, N.W., Suite 206
`Washington, D.C. 20005
`(202) 628-4888
`contracts@hrccourtreporters.com
`
`

`

`
`
`
` 1
`
`
` 1 BEFORE THE
`
` 2 UNITED STATES INTERNATIONAL TRADE COMMISSION
`
` 3
`
` 4 In the Matter of: ) Investigation No.
`
` 5 CERTAIN ELECTRONIC NICOTINE ) 337-TA-1139
`
` 6 DELIVERY SYSTEMS AND )
`
` 7 COMPONENTS THEREOF )
`
` 8
`
` 9 Hearing Room C
`
` 10
`
` 11
`
` 12 United States
`
` 13 International Trade Commission
`
` 14 500 E Street, Southwest
`
` 15 Washington, D.C.
`
` 16
`
` 17 Tuesday, August 6, 2019
`
` 18
`
` 19 PREHEARING CONFERENCE
`
` 20
`
` 21 The parties met, pursuant to the notice of the
`
` 22 Judge, at 10:00 a.m.
`
` 23
`
` 24 BEFORE: THE HONORABLE DAVID P. SHAW
`
` 25
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 2
`
`
` 1 APPEARANCES:
`
` 2
`
` 3 For Complainant Juul Labs, Inc.:
`
` 4 DANIEL E. YONAN, ESQ.
`
` 5 ROBERT GREENE STERNE, ESQ.
`
` 6 RYAN C. RICHARDSON, ESQ.
`
` 7 DANIEL S. BLOCK, ESQ.
`
` 8 JONATHAN TUMINARO, Ph.D.
`
` 9 KRISTINA CAGGIANO KELLY, ESQ.
`
` 10 MICHAEL E. JOFFRE, ESQ.
`
` 11 NIRAV N. DESAI, ESQ.
`
` 12 PAUL A. AINSWORTH, ESQ.
`
` 13 UMA N. EVERETT, ESQ.
`
` 14 DALLIN G. GLENN, ESQ.
`
` 15 JOSEPHINE KIM, ESQ.
`
` 16 DuVON O. FLOYD, Paralegal
`
` 17 Sterne, Kessler, Goldstein & Fox PLLC
`
` 18 1100 New York Avenue, N.W.
`
` 19 Washington, D.C.
`
` 20 202-371-2600
`
` 21
`
` 22
`
` 23
`
` 24
`
` 25
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 3
`
`
` 1 APPEARANCES (Continued):
`
` 2
`
` 3 For Respondents ZLab S.A., Ziip Lab Co., Limited
`
` 4 and Shenzhen Yibo:
`
` 5
`
` 6 STEVEN SUSSER, ESQ.
`
` 7 ALEX SZYPA, ESQ.
`
` 8 Carlson, Gaskey & Olds, P.C.
`
` 9 400 West Maple Road
`
` 10 Suite 350
`
` 11 Birmingham, Michigan 48009
`
` 12 248-988-8360
`
` 13
`
` 14 For Respondents J. Well France S.A.S.,
`
` 15 MMS/ECVD LLC and ECVD/MMS Wholesale LLC:
`
` 16
`
` 17 BEN QUARMBY, ESQ.
`
` 18 MoloLamken LLP
`
` 19 430 Park Avenue
`
` 20 Floor 6
`
` 21 New York, New York 10022
`
` 22 212-607-8160
`
` 23
`
` 24
`
` 25
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 4
`
`
` 1 APPEARANCES (Continued):
`
` 2
`
` 3 For Respondent Vapor 4 Life Holdings, Inc.:
`
` 4
`
` 5 ERIC N. HEYER, ESQ
`
` 6 JOSEPH SMITH, ESQ.
`
` 7 CLIFTON E. McCANN, ESQ.
`
` 8 Thompson Hine LLP
`
` 9 1919 M Street, N.W.
`
` 10 Suite 700
`
` 11 Washington, D.C. 20036
`
` 12 202-263-4159
`
` 13
`
` 14 For Respondent Eonsmoke, LLC:
`
` 15 STEPHEN M. LOBBIN, ESQ.
`
` 16 SML Avvocati P.C.
`
` 17 7538 Draper Avenue
`
` 18 LaJolla, California 92037
`
` 19
`
` 20
`
` 21
`
` 22
`
` 23
`
` 24
`
` 25
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 5
`
`
` 1 APPEARANCES (Continued):
`
` 2
`
` 3 For ITC Staff:
`
` 4
`
` 5 PAUL GENNARI, ESQ.
`
` 6 ANNE GOALWIN, ESQ.
`
` 7 CORTNEY HOECHERL, ESQ.
`
` 8 Office of Unfair Import Investigations
`
` 9 U.S. International Trade Commission
`
` 10 500 E Street, S.W.
`
` 11 Suite 401
`
` 12 Washington, D.C. 20436
`
` 13
`
` 14
`
` 15 *** Index appears at end of transcript ***
`
` 16
`
` 17
`
` 18
`
` 19
`
` 20
`
` 21
`
` 22
`
` 23
`
` 24
`
` 25
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 6
`
`
` 1 P R O C E E D I N G S
`
` 2 (10:00 a.m.)
`
` 3 JUDGE SHAW: Good morning. Please be
`
` 4 seated.
`
` 5 This is a prehearing conference in the
`
` 6 matter of Certain Electronic Nicotine Delivery
`
` 7 Systems and Components Thereof, Investigation
`
` 8 No. 337-TA-1139.
`
` 9 I would like to have appearances for
`
` 10 the parties. We will do this again later this
`
` 11 morning, when we move on to the evidentiary
`
` 12 hearing transcript, but for purposes of this
`
` 13 conference, let's begin with Complainant.
`
` 14 MR. YONAN: Good morning, Your Honor.
`
` 15 Daniel Yonan on behalf of Complainant Juul
`
` 16 Labs, or JLI as it's known in the briefing. To
`
` 17 my left is Ms. Kelly. Next is Mr. Michael
`
` 18 Joffre, followed by Mr. Paul Ainsworth and
`
` 19 Ms. Uma Everett. Other members of our team, as
`
` 20 they take witnesses or appear at the podium,
`
` 21 will introduce themselves. Thank you.
`
` 22 JUDGE SHAW: Thank you. Now we will
`
` 23 move to Respondents' side of the room.
`
` 24 MR. SUSSER: Good morning, Your Honor.
`
` 25 Steven Susser for the Ziip Respondents. With
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 7
`
`
` 1 me is Alex Szypa.
`
` 2 MR. HEYER: Eric Heyer with Thompson
`
` 3 Hines for Vapor 4 Life. With me is Clif McCann
`
` 4 and Joe Smith.
`
` 5 MR. LOBBIN: Good morning, Your Honor.
`
` 6 Steven Lobbin, L-o-b-b-i-n, here on behalf of
`
` 7 Eonsmoke LLC, Respondents.
`
` 8 JUDGE SHAW: All right. And for the
`
` 9 Staff?
`
` 10 MR. GENNARI: Good morning, Your
`
` 11 Honor, Paul Gennari of the OUII. And with me
`
` 12 is Ms. Anne Goalwin and a colleague, Cortney
`
` 13 Hoecherl.
`
` 14 JUDGE SHAW: Thank you. Good morning.
`
` 15 Welcome to you all.
`
` 16 Some of you have been in this room
`
` 17 before, but as you probably have all noticed,
`
` 18 we have public and confidential signs, which we
`
` 19 can change with our controls up here, depending
`
` 20 on what session we're in.
`
` 21 So please let me know when you think
`
` 22 we're going to get into confidential business
`
` 23 information. And we can have certain people
`
` 24 leave the room. I will need counsel's help in
`
` 25 determining, you know, if we have the right
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 8
`
`
` 1 people in the room during confidential
`
` 2 portions. And then we can go back on the
`
` 3 public record.
`
` 4 Obviously, we try to keep as much on
`
` 5 the public record as we can, but in these
`
` 6 cases, we usually end up having a significant
`
` 7 part of the testimony on the confidential
`
` 8 record as well.
`
` 9 There's to be no recording in this
`
` 10 room, including sound, photography, or video.
`
` 11 You may not transmit anything from this room.
`
` 12 That includes sound and images. That also
`
` 13 includes talking on the cell phone while we're
`
` 14 in session. Inadvertently, you could pick up
`
` 15 some confidential information or something like
`
` 16 that while you're on the phone.
`
` 17 There will also be no vaping in the
`
` 18 courtroom, neither personally or by way of
`
` 19 demonstration.
`
` 20 Our hours will be 10 to 6. Between 12
`
` 21 and 1, we will take our lunch break, for at
`
` 22 least an hour, usually a little bit longer than
`
` 23 that.
`
` 24 There will probably be no morning
`
` 25 break, since it's only an hour -- two hours or
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 9
`
`
` 1 so that we're together before lunch, but then
`
` 2 in the afternoon, as we go at least until 6,
`
` 3 there will be one or two breaks.
`
` 4 My attorney advisor will keep time,
`
` 5 starting after this conference. And we will
`
` 6 give you a daily tally. Time is kept
`
` 7 continuously, so for your benefit, have your
`
` 8 witnesses ready when it is your turn. Time is
`
` 9 kept during housekeeping and the offering of
`
` 10 evidence. If I question a witness at length,
`
` 11 no one will be charged for that.
`
` 12 Normally, exhibits are offered at the
`
` 13 end of each witness' testimony. You may offer
`
` 14 witness statements before cross-examination, if
`
` 15 you wish. You may also make a list of exhibits
`
` 16 for the court reporter, rather than reading a
`
` 17 long list into the transcript.
`
` 18 In some cases, we may defer
`
` 19 evidentiary rulings to work things out among
`
` 20 the parties. This is especially the case
`
` 21 sometimes with experts. However, we must be
`
` 22 very careful not to fall behind on exhibits.
`
` 23 We already have a post-hearing
`
` 24 schedule in place for the briefing. Main
`
` 25 briefs are due on August 23rd and replies on
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 10
`
`
` 1 September 3rd. Be sure to follow ground rule
`
` 2 11 on the comprehensive joint outline that
`
` 3 refers to your main briefs in the ground rules.
`
` 4 I have a new ground rule. It has not
`
` 5 appeared in your case yet, but I'm going to
`
` 6 institute it at the conference. My newer cases
`
` 7 are getting a look at it. It's simply requires
`
` 8 a joint outline for the replies.
`
` 9 Citations in the briefs must be good,
`
` 10 because there's no separate findings document.
`
` 11 The citations should be in the text. I don't
`
` 12 like to go back and forth between footnote
`
` 13 text/footnote/text. Citations should not be in
`
` 14 brackets. So parenthesis.
`
` 15 I use Times New Roman 12 when I type.
`
` 16 You don't have to use that font, but please
`
` 17 don't use anything smaller, even in the
`
` 18 footnotes. In other words, the footnotes, the
`
` 19 main text, the font should be the same.
`
` 20 However, footnotes may be single spaced.
`
` 21 Use reasonable margins and leave two
`
` 22 spaces between sentences. It's a lot easier
`
` 23 for me to read that way.
`
` 24 The main briefs for each side, so in
`
` 25 this case that would be Respondents'
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 11
`
`
` 1 consolidated, should not exceed 220 pages. And
`
` 2 the replies should not exceed 80 pages.
`
` 3 The main briefs are to cover all
`
` 4 issues. Briefs, exhibits, and other
`
` 5 post-hearing filings and submissions to my
`
` 6 office must comply with the Commission's rules,
`
` 7 the ground rules, and other instructions.
`
` 8 We have had a few hiccups along the
`
` 9 road during the prehearing phase where we had
`
` 10 to call people for hard copies or electronic
`
` 11 copies, things that were in the rules. But I
`
` 12 understand some people maybe haven't practiced
`
` 13 here for a while or have not been here before,
`
` 14 and that's fine. It's just that, as we move
`
` 15 into the post-hearing phase, we don't have a
`
` 16 lot of time for catchup.
`
` 17 After the ID and the RD issues, so
`
` 18 this is way down the road, to help us prepare
`
` 19 the public version, please use bold red
`
` 20 brackets to mark any CBI in your joint filing
`
` 21 pursuant to ground rule N.
`
` 22 Ground rule N, I don't think,
`
` 23 specifies this, but when you do your joint
`
` 24 filing, make sure there's a cover sheet or an
`
` 25 index showing each page of the ID /RD on which
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 12
`
`
` 1 we will find your proposed brackets.
`
` 2 To avoid over-redaction, consult the
`
` 3 Commission's rules and opinions and the ground
`
` 4 rules when marking CBI.
`
` 5 Often during these prehearing
`
` 6 conferences, I end up admitting exhibits into
`
` 7 the record one way or the other. If that
`
` 8 happens today, make sure that when we move on
`
` 9 to the evidentiary hearing transcript, that you
`
` 10 take a minute or two to read those exhibits
`
` 11 into the record or give the court reporter a
`
` 12 list so that all of the evidence in the case
`
` 13 can be indexed in the same set of transcripts.
`
` 14 This hearing transcript will be bound
`
` 15 separately from the evidentiary hearing
`
` 16 transcript. This prehearing conference will be
`
` 17 separate from the evidentiary hearing.
`
` 18 I will just inquire of the parties
`
` 19 whether there are any stipulations that have
`
` 20 been reached recently that you need me to
`
` 21 approve. Sometimes this is the case. I'm not
`
` 22 aware of any. I looked at EDIS this morning,
`
` 23 but is there anything that I need to approve by
`
` 24 way of stipulation that the parties may have
`
` 25 recently entered into?
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 13
`
`
` 1 MR. YONAN: Your Honor, there are no
`
` 2 new stipulations in addition to the ones that
`
` 3 have already been submitted for Your Honor.
`
` 4 JUDGE SHAW: Right. Okay. Very good.
`
` 5 Also, frequently at these conferences,
`
` 6 people present formal requests for admission
`
` 7 without sponsoring witness, but usually filed
`
` 8 on paper ahead of time. I haven't seen any,
`
` 9 but I'll just inquire, do we have any requests
`
` 10 for receipt of evidence without sponsoring
`
` 11 witness?
`
` 12 MR. HEYER: Your Honor, we have -- for
`
` 13 Vapor 4 Life, we were going to raise this. We
`
` 14 have about 81 prior art references that were
`
` 15 listed on our exhibit list, which we believe
`
` 16 Your Honor can take judicial notice of. Most
`
` 17 of them, with the exception of, I think, five,
`
` 18 were from the file history of the patents at
`
` 19 issue. And the others are part of PTO records.
`
` 20 So I think as a matter of Federal Circuit case
`
` 21 law, you can take judicial notice of those.
`
` 22 So I wasn't sure -- I thought I would
`
` 23 raise that now, how you want to deal with that.
`
` 24 We list them on our exhibit list, but as a
`
` 25 matter of law, you can take judicial notice of
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 14
`
`
` 1 them.
`
` 2 JUDGE SHAW: Yeah. I see your point.
`
` 3 It's close to what we're talking about, not
`
` 4 quite.
`
` 5 MR. HEYER: Okay. I can --
`
` 6 JUDGE SHAW: But I'm glad you flagged
`
` 7 that for me. And I will open the floor later.
`
` 8 Let me see. I have my list here.
`
` 9 Ms. Kelly?
`
` 10 MS. KELLY: Yes, we will object to
`
` 11 those being entered into evidence in any form.
`
` 12 There's 81 prior art references that, although
`
` 13 they were listed perhaps in an IDS, were not
`
` 14 discussed in the file history. They do not
`
` 15 appear in contentions. No experts have
`
` 16 discussed them in any way. And we don't feel
`
` 17 it is appropriate now for these references to
`
` 18 be used in any invalidity or inequitable
`
` 19 conduct theory on the merits.
`
` 20 JUDGE SHAW: Well, I think at a
`
` 21 minimum I should put this off until I open the
`
` 22 floor. I haven't gotten to the HPOs yet, with
`
` 23 some of these. Again it's getting close to
`
` 24 this area, but it sounds like I do need to hear
`
` 25 argument, and I will ask the staff also at that
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 15
`
`
` 1 time if they have a position. So thanks for
`
` 2 flagging it now. We will get to it, maybe in
`
` 3 this conference, maybe during the hearing, but
`
` 4 I don't have a formal request for receipt
`
` 5 without sponsoring witness, although in essence
`
` 6 that's what this sounds like it's boiling down
`
` 7 to.
`
` 8 Well, what do you know, the next thing
`
` 9 on my list is HPOs. So -- and then after that
`
` 10 I will just open the floor to the parties if
`
` 11 there is anything they want to discuss within
`
` 12 the context of a prehearing conference, rather
`
` 13 than the evidentiary hearing.
`
` 14 Now, I only have HPOs from
`
` 15 Complainant, and I didn't see any others on
`
` 16 EDIS, so I'm working from that. I do have
`
` 17 responses, though, from at least -- two from
`
` 18 Respondents and one from the Staff, which I
`
` 19 have considered.
`
` 20 HPO Number 1 is called Eonsmoke's new
`
` 21 testimony has never been before disclosed or
`
` 22 raised in contentions. And this is the
`
` 23 testimony of Mr. Grishayev. It seemed to me
`
` 24 that the law in this area is pretty clear. I
`
` 25 just didn't know if I had all the facts.
`
`
`
`
`Heritage Reporting Corporation
`(202) 628-4888
`
`

`

`
`
`
` 16
`
`
` 1 Do we still need a ruling on this?
`
` 2 MS. KELLY: My understanding is that
`
` 3 Mr. Grishayev is not here and not planning to
`
` 4 testify, so I believe this one is moot.
`
` 5 MR. LOBBIN: And that is correct, Your
`
` 6 Honor.
`
` 7 JUDGE SHAW: And that is what I
`
` 8 expected to hear. Okay, good. Thank you.
`
` 9 The second HPO has to do with alleged
`
` 10 prior art. Now, I believe 139, 140, and 141
`
` 11 are already the subject of another order. As
`
` 12 far as the MPEP is concerned, I don't know what
`
` 13 is going on with that, but