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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OLD REPUBLIC GENERAL INSURANCE )
`GROUP, INC.; OLD REPUBLIC )
`INSURANCE COMPANY; OLD REPUBLIC )
`TITLE INSURANCE GROUP, INC.; )
`and OLD REPUBLIC NATIONAL TITLE )
`INSURANCE COMPANY, )
` )
` Petitioner, )
` )
` vs. )
` )
`INTELLECTUAL VENTURES I LLC, )
` )
` Patent Owner. )
`--------------------------------)
` Case IPR2015-01956 (Patent 6,519,581 B1)
` Case IPR2015-01957 (Patent 6,519,581 B1)
`
` TELECONFERENCE ON THE RECORD
` New York, New York
` Friday, March 31, 2017
`B E F O R E:
`
`MEREDITH C. PETRAVICK, BEVERLY M. BUNTING and
`FRANCES L. IPPOLITO, Administrative Patent
`Judges (Via telephone)
`
`Reported by:
`KRISTIN KOCH, RPR, RMR, CRR
`JOB NO. 122012
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OLD REPUBLIC GENERAL INSURANCE )
`GROUP, INC.; OLD REPUBLIC )
`INSURANCE COMPANY; OLD REPUBLIC )
`TITLE INSURANCE GROUP, INC.; )
`and OLD REPUBLIC NATIONAL TITLE )
`INSURANCE COMPANY, )
` )
` Petitioner, )
` )
` vs. )
` )
`INTELLECTUAL VENTURES I LLC, )
` )
` Patent Owner. )
`--------------------------------)
` Case IPR2015-01956 (Patent 6,519,581 B1)
` Case IPR2015-01957 (Patent 6,519,581 B1)
`
` TELECONFERENCE ON THE RECORD
` New York, New York
` Friday, March 31, 2017
`B E F O R E:
`
`MEREDITH C. PETRAVICK, BEVERLY M. BUNTING and
`FRANCES L. IPPOLITO, Administrative Patent
`Judges (Via telephone)
`
`Reported by:
`KRISTIN KOCH, RPR, RMR, CRR
`JOB NO. 122012
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` March 31, 2017
` 3:02 p.m.
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` Teleconference on the Record, before
`Kristin Koch, a Registered Professional
`Reporter, Registered Merit Reporter,
`Certified Realtime Reporter and Notary
`Public of the State of New York.
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`A P P E A R A N C E S:
`
`SIDLEY AUSTIN LLP
`Attorneys for Petitioner
` 1501 K Street, N.W.
` Washington, D.C. 20005
`BY: JOSEPH A. MICALLEF, ESQ. (Via telephone)
` SCOTT M. BORDER, ESQ. (Via telephone)
` JEFFREY P. KUSHAN, ESQ. (Via telephone)
` SAMUEL A. DILLON, ESQ. (Via telephone)
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`ALSO PRESENT:
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`EDWARD MOURA, CPA (Via telephone)
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` JUDGE IPPOLITO: This is Judge
`Ippolito along with Judges Bunting and
`Petravick.
` This is a conference call for
`IPR2015-01956 and IPR2015-01957, both
`involving U.S. Patent No. 6,519,581. For
`convenience we will refer to the patent at
`issue as the '581 patent for the call.
` I'd like to start the conference
`call with appearances and a roll call
`starting with Petitioner, please.
` MR. MICALLEF: Good afternoon, Your
`Honor. This is Joe Micallef from Sidley
`representing the Petitioner. I have with
`me a few of my colleagues on my team; Jeff
`Kushan, Scott Border and Sam Dillon, and
`they will just be listening in.
` JUDGE IPPOLITO: Okay.
` And I believe Mr. Moura is on the
`call?
` MR. MOURA: Yes. It's pronounced
`Moura. This is Edward Moura and I am
`representing AllAdvantage.com.
` JUDGE IPPOLITO: And, Mr. Moura, can
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`you just confirm that you are the agent of
`service of process for AllAdvantage.com?
` MR. MOURA: Yes, I am. Or at least
`I was. The corporation has been dissolved.
` JUDGE IPPOLITO: And is there a
`court reporter on the call?
` THE COURT REPORTER: Yes. My name
`is Kristin Koch from TSG Reporting.
` JUDGE IPPOLITO: Because the
`circumstances here are a little bit
`different from a typical call with the
`Board, I just wanted to start with a little
`bit of background of how we are here.
` As everyone on the call is aware, on
`March 7th there was a Federal Circuit
`decision issued and a related appeal
`involving the '581 patent, and in that
`decision there was a determination about an
`assignment agreement between
`AllAdvantage.com to Alset.
` We looked through public records
`available electronically at the California
`Secretary of State website and saw that
`Mr. Moura was listed or is listed as the
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`agent for service of process for
`AllAdvantage.com. Mr. Moura received a
`copy of the petition, the decisions on
`institution, and the Federal Circuit
`decision that I just mentioned to provide
`notice of these IPRs, and we believe he
`received these documents and correspondence
`from the Office on the 23rd.
` For clarity of the record, the Board
`and we have not made any determinations on
`the ownership of the '581 patent and that's
`not what's going to happen today on this
`call. The purpose of today's call is very
`limited. It's to provide general
`information about the IPR process, if
`that's what Mr. Moura wants to ask about.
`We are not going to discuss the merits of
`these cases or any substantive arguments
`involved in these matters, and as a
`reminder we are not providing any legal
`advice here.
` Also, I just wanted to note that
`Petitioner's counsel made objections to the
`call by e-mail correspondence, so before we
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`have Mr. Moura ask any questions that he
`may have, I'd like to give the Petitioner
`an opportunity to present those objections.
` Petitioner?
` MR. MICALLEF: Thank you very much,
`Your Honor. Again, this is Joe Micallef.
` We do object to this. Mr. Moura, of
`course we understand there is some record
`of him being and he represents that he was
`at some time in the past agent for service
`of process for this now-dissolved company,
`but he has, I think, and his e-mail
`correspondence has indicated he has no
`interest in the '581 patent. The gentleman
`who he said he is representing, I guess, as
`an accountant, as far as I know, has no --
`there is no indication that he has any
`interest in the '581 patent. Neither
`Mr. Moura, nor anyone else on this line is
`an -- well, Mr. Moura is not an attorney
`and there is no attorney representing him
`or Mr. Jorgensen, his client, and there is
`no attorney representing AllAdvantage.com.
`So we think this is an inappropriate thing
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`for members of the Panel to do, to
`essentially hold a question-and-answer
`session about this proceeding, a live
`proceeding, with -- and I mean no
`disrespect to Mr. Moura, but a person who
`is essentially a member of the public.
`There are other ways he and his colleagues
`could obtain information about these
`proceedings. My understanding is the
`Patent Office has toll-free numbers with
`live operators that can provide that kind
`of information. All the filings, of
`course, are available to the public on the
`Internet free of charge. So we would
`object to this particular proceeding.
` Thank you for letting me put that on
`the transcript.
` JUDGE IPPOLITO: And I assume,
`Mr. Micallef, you arranged for the court
`reporter and can file the transcript of the
`call as an exhibit?
` MR. MICALLEF: Yes, I can. In fact,
`I was going to wait until the end and make
`that specific request, although I was going
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`to make a slightly broader request.
` As you mentioned, there has been
`some e-mail correspondence with the Panel.
`I would like to file not only the
`transcript, but all that correspondence on
`the record as exhibits on the record, if
`that's okay with the Panel.
` JUDGE IPPOLITO: Okay. We will hold
`that request until the end then after we
`have had a chance to talk to Mr. Moura.
` Okay. So before we hear from
`Mr. Moura about his questions, we do have a
`couple of questions for Mr. Moura.
` One, you have confirmed that you are
`the listed agent for service of process for
`AllAdvantage.com, and I believe you
`mentioned also that you may be in contact
`with a Mr. James Jorgensen, and we wanted
`to confirm that he has been notified of the
`inter partes reviews that are pending here?
` MR. MOURA: Yes, he has been
`notified. I have forwarded him the e-mails
`regarding this matter and he is out of town
`right now or he would be participating in
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`the call.
` JUDGE IPPOLITO: Okay. Mr. Moura,
`if you have any general questions for us
`today, we will try to answer your general
`questions, but nothing specific about the
`merits of this case. And, also, no legal
`advice can be provided. You have had some
`opportunity to look at the documents, but,
`you know, of course we can't get into any
`of the substance of the discussion in
`those.
` Do you have any general questions
`for us today?
` MR. MOURA: Yeah, I mean, the
`purpose of generating this conference call
`was really just to get some more general
`information about the case. When I
`received the documents, I only had seven
`days to respond. As a CPA I am a little
`bit busy this time of year, so it's been
`hard for me to go through all these
`documents and try to get an understanding
`of what has been going on with this '581
`and understanding how AllAdvantage is
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`involved, but I want to make sure I provide
`enough data to Mr. Jorgensen to advise him
`as to what steps he should take, you know,
`if that's involving, you know, retaining a
`patent attorney or not, but I just want to
`make sure I understand the facts of the
`case and where things stand right now, and
`I understand that there is going to be
`resolution of this case pretty quickly.
`Correct?
` JUDGE IPPOLITO: Yes. The deadline
`for resolution or final written decision
`would be the 18th of April, as it stands
`right now.
` MR. MOURA: Okay. I have not seen
`the Alset agreements. I didn't see that in
`the package that I received. Was that
`supposed to be part of the package?
` JUDGE IPPOLITO: Those documents
`should be available online.
` MR. MOURA: Okay. I was just trying
`to understand that the transaction seemed
`to be that at one point Alset acquired some
`patents from AllAdvantage. They believe
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`that Patent '581 was included in that
`agreement. It seemed like that was sold or
`assigned somehow to Intellectual Ventures
`at some point in time.
` JUDGE IPPOLITO: Mr. Moura, maybe we
`can take a step back and I can give you
`just a very general overview of inter
`partes review and that process.
` So as you are aware, there was a
`petition filed. In general, there is a
`petition filed to start, as a starting
`place for an IPR. When a petition is
`filed, there is opportunity for some
`briefing by the patent owner before
`institution of a proceeding or trial where
`we evaluate the patentability of certain
`claims in the patent. The petition
`contains challenges to the patentability of
`certain claims and we review that to see if
`we are going to go forward to trial, and if
`we do go forward to trial, we will write a
`decision to institute, which you also
`received. Going from there there is
`additional briefing by both sides
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`addressing arguments and evidence made in
`the record, and then there is -- usually
`there is an oral hearing, not always, and
`the parties get a chance to present any
`additional comments or no additional
`arguments to the record, but anything they
`want to additionally point to for our
`understanding and for our review, and then
`we get to the end point, which usually is a
`final written decision, which is where we
`are now.
` As to the documents that are usually
`filed as part of these reviews, those are
`publicly available, so you can go on the
`website and you can find out what has
`happened in these proceedings.
` As for transactions about ownership
`and whatnot, that's publicly available and
`we are not going to talk about the
`specifics of the agreements or who
`transferred what. I think what we provided
`you -- if you are going to go and find an
`attorney and talk about these issues with
`an attorney, that's fine, you can do that,
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`but we are not going to discuss that here.
` But in general we are in the midst
`and actually sort of the tail end of an IPR
`proceeding where we are evaluating the
`patentability of claims. There are no
`damages involved. There is no infringement
`involved. It's mainly about validity and
`patentability of claims.
` MR. MOURA: Okay. Okay. That's
`helpful to know. And the reason -- the
`only reason I was contacted in this regard
`was just because it was determined that the
`title had not passed from AllAdvantage to
`Alset at some time and that's how
`AllAdvantage got involved in this?
` JUDGE IPPOLITO: There is a Fed
`Circuit decision that you received where
`there was a determination there that one of
`the assignments in the chain of assignments
`appeared not to convey any rights. We have
`not made any determinations on the
`ownership of the patent, however, we are
`required by our statute at Section 314 to
`provide notice to the patent owner of a
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`proceeding, an institution of a proceeding,
`and so we endeavored to try to at least
`provide some notice and we found that you
`were the listed agent for service of
`process for AllAdvantage.com and you appear
`to still be listed as that.
` MR. MOURA: It seemed like the
`notice was kind of late in the game.
` JUDGE IPPOLITO: Well, I think the
`notice that's happened here, if you look at
`the Fed Circuit decision and what's been
`happening in these proceedings, things have
`changed over the course of these
`proceedings and that's how we are -- that's
`how we got here.
` MR. MOURA: Okay. All right. I
`think that's really all my questions. I
`was just trying to get a better
`understanding of what's involved here and I
`don't think I have any other questions at
`this time.
` JUDGE IPPOLITO: Okay. I do want to
`remind you, Mr. Moura, that in our
`correspondence we did have a deadline of
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`seven business days, so by our calculations
`that would be, I think, Monday, and that's
`largely due in part that we have deadlines
`that we cannot -- at this point have not
`pushed, and so as it stands that is still
`the deadline for -- it would be helpful to
`know by then if there is going to be any
`movement on the part of AllAdvantage.com in
`participating in these proceedings. We
`need to know pretty much now sooner rather
`than later if that's going to happen. And
`we are not at this point making any
`determinations on whether or not that's
`appropriate or not, but that if that is
`something that's going to happen, we need
`to know sooner rather than later.
` MR. MOURA: We can notify you on
`Monday of our decision.
` JUDGE IPPOLITO: All right. I am
`going to turn it back to Petitioner. I
`think you had one pending request, and is
`there anything else?
` MR. MICALLEF: Thank you, Your
`Honor. This is Joe Micallef again. The
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`only thing was a question about that latest
`exchange. I guess you asked Mr. Moura for
`somebody to notify the Board that somebody
`is claiming ownership rights in the patent,
`and I am using the word "somebody" here,
`because it kind of matters. I mean, are we
`talking about -- is someone saying that
`AllAdvantage.com does, in fact, say that it
`owns the patent? Is that what is being
`requested?
` JUDGE IPPOLITO: No, I think in our
`correspondence with Mr. Moura essentially
`we would like to know if there is going to
`be any sort of request, and if it's going
`to happen, it needs to happen by Monday.
`That way there is no surprise on the 17th
`of April that there is some change, and it
`would not be, I think, efficient or in the
`interests of a speedy resolution of these
`cases if we find out late that something is
`going to happen, so we would rather know
`sooner than later. And it's not to say
`that we have made any determinations about
`ownership or whether or not if the requests
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`were made for AllAdvantage.com to intervene
`that somehow that would automatically be
`granted. It's just more that we need to
`know earlier if something like that is
`going to happen.
` MR. MICALLEF: Okay. I understand.
`I was focusing on the -- I will just say
`that it seems to me we need to know who, if
`anyone, is saying that they own some
`portion of the patent. That seems to me to
`be the only -- the first relevant issue. I
`agree completely with your timing comments
`and how important that is, but we are going
`to need some clarity on the individual
`entity or individuals who are making the
`claim is my point.
` JUDGE IPPOLITO: And I think if that
`request is made on Monday, then we can
`address some of those concerns that may
`arise from that, or if nothing -- I'd like
`not to speculate on how this is going to
`turn out until Monday and let Mr. Moura
`take the information that he has gathered
`today and either -- let us know either way
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`on Monday what is going to happen on his
`end and then we can follow up on that.
` MR. MICALLEF: Yes, and I assume I
`will -- I guess it should be -- is it
`understood that I will be given notice at
`the same time the Board is, Your Honor?
` JUDGE IPPOLITO: That is correct.
` MR. MICALLEF: Okay. Thank you.
` Then my only other issue is I just
`assumed that -- usually we put these
`transcripts -- we file them as exhibits and
`I just assumed that the Panel would want
`all the communications on the record. It
`seems the right thing to do, but -- so I
`guess I am asking for permission to do
`that.
` JUDGE IPPOLITO: Let me just confer
`with the Panel on that quickly and I will
`get back to you.
` (Panel confers.)
` JUDGE IPPOLITO: This is Judge
`Ippolito and we are back on the call.
` Petitioner, are you still present?
` MR. MICALLEF: Yes, Your Honor.
`
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` Proceedings
` JUDGE IPPOLITO: And Mr. Moura?
` MR. MOURA: Yes, Your Honor.
` JUDGE IPPOLITO: So I have conferred
`with the Panel and we are going to deny
`your request, Petitioner, but we will file
`as an exhibit from the Board in the 3000
`series the letter and the attachments that
`were sent to Mr. Moura, so that will be in
`the record. We are not going to include
`the e-mails. The objections have already
`been made on the record here, are in the
`transcript, and the information in the
`e-mails also have been discussed on the
`call today, but the letter and the
`attachments will be added to the record.
` MR. MICALLEF: Okay, Your Honor.
` JUDGE IPPOLITO: Anything else from
`Petitioner?
` MR. MICALLEF: No, Your Honor. But
`you do want me to file the transcript, I
`guess?
` JUDGE IPPOLITO: Yes, please.
` MR. MICALLEF: Okay. I will.
` JUDGE IPPOLITO: Mr. Moura?
`
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` Proceedings
` MR. MOURA: No, Your Honor. I
`appreciate your time.
` JUDGE IPPOLITO: Thank you all and
`we are adjourned.
` MR. MICALLEF: Thank you, Your
`Honor.
` MR. MOURA: Thank you.
` (Time noted 3:24 p.m.)
`
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` C E R T I F I C A T E
`
`STATE OF NEW YORK )
` ) ss.:
`COUNTY OF NASSAU )
`
` I, KRISTIN KOCH, a Notary Public
` within and for the State of New York, do
` hereby certify that the within is a true
` and accurate transcript of the proceedings
` held on March 31, 2017.
` That I am not related to any of the
` parties to this action by blood or
` marriage; and that I am in no way
` interested in the outcome of this matter.
` IN WITNESS WHEREOF, I have hereunto
` set my hand this 3rd day of April, 2017.
` -------------------------
` KRISTIN KOCH, RPR, RMR, CRR
`
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`
`
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