UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT AND APPEAL BOARD
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`Page 1
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`GOOGLE, INC.,
`Petitioner, )
`) CASE IPR2017-00912
`vs.
` PATENT: 8,745,149 B2
`BLACKBERRY LTD.,
`Patent Owner. )
`---------------------------)
`GOOGLE, INC.,
`Petitioner, )
`) CASE IPR2017-00913
`vs.
` PATENT: 8,402,384 B2
`BLACKBERRY LTD.,
`Patent Owner. )
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`TELEPHONIC MEETING BEFORE
`THE HONORABLES ROBERT J. WEINSCHENK
`AND RICHARD MARSCHALL
`MONDAY, APRIL 23, 2018
`
`REPORTED BY: TANYA L. VERHOVEN-PAGE,
`CCR-B-1790
`
`JOB NO: 141199
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`BEFORE THE PATENT AND APPEAL BOARD
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`Page 1
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`GOOGLE, INC.,
`Petitioner, )
`) CASE IPR2017-00912
`vs.
` PATENT: 8,745,149 B2
`BLACKBERRY LTD.,
`Patent Owner. )
`---------------------------)
`GOOGLE, INC.,
`Petitioner, )
`) CASE IPR2017-00913
`vs.
` PATENT: 8,402,384 B2
`BLACKBERRY LTD.,
`Patent Owner. )
`
`))
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`))
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`TELEPHONIC MEETING BEFORE
`THE HONORABLES ROBERT J. WEINSCHENK
`AND RICHARD MARSCHALL
`MONDAY, APRIL 23, 2018
`
`REPORTED BY: TANYA L. VERHOVEN-PAGE,
`CCR-B-1790
`
`JOB NO: 141199
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` April 23, 2018
` 3:03 p.m.
`
` Telephonic meeting before
`THE HONORABLES ROBERT J. WEINSCHENK
`AND RICHARD MARSCHALL, before
`Tanya L. Verhoven-Page, Certified Court
`Reporter and Notary Public of the State of
`Georgia.
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` APPEARANCES OF COUNSEL
`
`On behalf of the Petitioner:
` PAUL HASTINGS
` 875 15th Street Northwest
` Washington, DC 20005
` BY: PHILLIP CITROEN, ESQ.
` BY: JOSEPH PALYS, ESQ.
` (Both By Telephone)
`
`On behalf of the Patent Owner:
` SIDLEY AUSTIN
` 1501 K Street Northwest
` Washington, DC 20005
` BY: SHARON LEE, ESQ.
` BY: SAMUEL DILLON, ESQ.
` (Both By Telephone)
`
` SIDLEY AUSTIN
` 787 Seventh Avenue
` New York, NY 10019
` BY: CHING-LEE FUKUDA, ESQ.
` (By Telephone)
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` HONORABLE R. WEINSCHENK
` ATLANTA, GEORGIA; MONDAY, APRIL 23, 2018
` 3:03 P.M.
`
` P R O C E E D I N G S
`
` THE COURT: Let's start with the
`'912 case, and we'll start with
`Mr. Dillon.
` MR. DILLON: Thank you, your Honor.
`This is Sam Dillon on behalf of the
`Patent Owner.
` So we're requesting a short
`sur-reply to respond to a specific
`argument that Petitioner made regarding
`our characterizations or arguments
`related to the Graham reference.
` Specifically they bring up certain
`citations to an EPO proceeding, a
`European Patent Office proceeding,
`involving a related patent where the
`Graham reference or a reference related
`to the Graham reference was also at
`issue, and they argued that we have made
`characterizations of the Graham reference
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` HONORABLE R. WEINSCHENK
`in that proceeding that are at odds with
`characterizations of the Graham reference
`that we have made in this proceeding, and
`so we think that there would be a basis
`for a sur-reply for basically two
`reasons.
` First that this is a new argument.
`We really haven't had the opportunity to
`respond to this argument in a paper.
`They could have raised it in the
`petition, but they only really filed this
`evidence with their reply, and then,
`second, we think more importantly they
`have effectively alleged we're taking
`positions that are at odds with each
`other in front of two different patent
`offices, and we think that having the
`opportunity to respond to this in a paper
`is the most kind of equitable way of
`dealing with this issue.
` In addition, this file history that
`they rely on in this related patent is
`lengthy. They cite to a large number of
`pages, and we think kind of unraveling
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` HONORABLE R. WEINSCHENK
`this issue and kind of showing that
`there's not an inconsistency between our
`positions in a paper is the best way to
`bring clarity to this argument that they
`have made.
` THE COURT: Okay. Mr. Dillon, how
`many pages do you envision for the
`sur-reply?
` MR. DILLON: Three to five pages
`would be what we would request.
` THE COURT: Okay. And if we were
`to authorize, how long would you need to
`file it?
` MR. DILLON: We could file it --
`hold on. Give me one second to confer
`with my cocounsel.
` Your Honor, this is Sam Dillon
`again. So I think that due date five is
`May 8th. So we could certainly have it
`ready by then, but we could also file it
`next week if your Honors would prefer an
`earlier timeline.
` THE COURT: So you could get it
`done in a week you're saying, if needed?
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` HONORABLE R. WEINSCHENK
` MR. DILLON: Yes, your Honor.
` THE COURT: Okay. And it sounds
`like this is an issue that could be
`addressed in a paper.
` Do you envision needing additional
`evidence, or is this something that you
`could just tackle with briefing?
` MR. DILLON: Your Honor, I think we
`could entirely do this just with
`briefing. I don't anticipate there being
`any need to file new evidence, and we
`could agree not to file new evidence.
` THE COURT: All right. Thank you,
`Mr. Dillon.
` Why don't we hear from Petitioner.
`Mr. Citroen?
` MR. CITROEN: Yes, your Honor.
`This is Phillip. Thank you.
` So with respect to the '912
`proceeding, we don't believe this is the
`new argument that could have been raised
`in our petition. This is the argument
`that is directly in response to the
`position that the Patent Owner has taken
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` HONORABLE R. WEINSCHENK
`in its response. It has argued such in
`the claim construction, and they've
`argued that this prior art reference,
`Graham, does not disclose, meets
`limitations under its construction. So
`in our reply, we just directly responded
`to the Patent Owner's point basically
`noting that, in its earlier proceeding,
`they did take a position making
`statements about this reference that
`contradicts the statements that it's
`making now. So we don't believe this is
`a situation where we are trying to
`address a failure in our petition. It's
`simply a direct response to an argument
`that they are making now.
` THE COURT: Okay. Anything else
`from you, Mr. Citroen?
` MR. CITROEN: No, your Honor.
` THE COURT: Okay. Why don't we
`then turn to the '913 case, and let's
`hear from Patent Owner, I believe,
`Ms. Lee on this issue.
` MS. LEE: Yes. Thank you, your
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` HONORABLE R. WEINSCHENK
`Honor. Sharon Lee for the Patent Owner.
`The issue with respect to the '913
`proceeding is really limited to Claim 4
`of the patent at issue, which is the '384
`patent. The Petitioner in its reply made
`a number of new arguments that weren't
`present in the petition but that could
`have been presented in the petition, and
`they should be disregarded in their
`entirety, but to the extent that the
`Board is inclined to consider them, we
`would like an opportunity to address
`these new arguments, and the with respect
`to Claim 4, in the petition, the Claim 4
`analysis totaled two sentences in a
`flurry of string cites with no additional
`explanation or analysis of how the prior
`art allegedly discloses the claim. The
`Petitioner also cited to a paragraph of
`an expert's declaration, but the expert
`essentially speaks to the same two
`sentences with the same citations.
` In our Patent Owner response, we
`explained with experts, of course, how
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` HONORABLE R. WEINSCHENK
`the petition was deficient with respect
`to its showing for Claim 4, and we also
`cited petitioner's expert admissions
`during deposition. Now in its reply,
`recognizing its deficiency, the reply
`provides six and half pages of a train
`argument that were not in the petition at
`all and explained for the first time how
`the general descriptions from the prior
`art apply to cell phones.
` So we think that this is improper,
`and it shouldn't be considered at all,
`but to the extent that the Board is
`inclined to consider them, we would like
`an opportunity to address these arguments
`in a short sur-reply.
` THE COURT: Okay. And, Ms. Lee,
`I'll ask you the same question I asked
`Mr. Dillon.
` How many pages would you need? How
`long would you need, and is this
`something that would just be briefing or
`would you need additional evidence?
` MS. LEE: Yes, your Honor. For
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`this one, we would request five pages for
`a sur-reply. For the timing, we could
`also propose having the due date coincide
`with due date five, which is also May 8th
`in this proceeding, but if the Board
`would prefer to have it earlier, then we
`could -- we could accommodate having the
`brief due next week, as well, and we also
`don't anticipate any new evidence for the
`sur-reply.
` THE COURT: Okay. All right.
`Let's hear from Petitioner on this issue,
`as well, Mr. Citroen.
` MR. CITROEN: Yes. Thank you, your
`Honor. For this particular argument,
`your Honor, again, we believe it's
`responsive to the Patent Owner's argument
`in its response. We also believe that
`this isn't new either; because the reply
`simply reiterates what's explained in the
`petition regarding how Cadiz's teachings
`map to the limitations of the claim. So
`in its response, the Patent Owner has
`characterized Petitioner's mappings to
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` HONORABLE R. WEINSCHENK
`Cadiz very narrowly and argues that Cadiz
`is not disclosed. That the screenshots
`of certain figures would be implemented
`the same way on a cellular phone, which
`is the limitation related to Claim 4.
`Our reply simply responds directly to
`this argument and explains this argument
`ignores the discussion throughout the
`petition related to how Cadiz discloses
`the limitations in the challenged claims.
`The reply also points to where some of
`those discussions are located in the
`petition, as well as in the declaration,
`and just to give a quick example. The
`petition and the declaration cites and
`discusses Figures 1 through 3, 4(a) and 5
`of Cadiz, which illustrates the concepts
`that are relied on by Petitioner for
`disclosing the limitations of the
`challenged claims including a limitation
`in Claim 4, and just as an example, Pages
`13 and 14 goes into detailed discussion
`of Figure 5 as well as other figures and
`how the sidebar which is disclosed in
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` HONORABLE R. WEINSCHENK
`Cadiz could be implemented. As another
`example, Pages 18 through 21 discusses
`Figures 2 and 3 of Cadiz which discloses
`the dynamic preview information
`limitations. There's similar disclosure
`throughout the petition, as well as the
`declaration.
` So in our reply, we went through
`and pointed those out in response to the
`Patent Owner's arguments. The truth is
`Cadiz only dedicates about six paragraphs
`to these screenshots that the Patent
`Owner points to, and it's a very long
`disclosure in Cadiz, and we cite to many,
`many paragraphs in Cadiz outside of these
`six paragraphs, and so our reply is
`simply responding to this particular
`point, and then we just gave a few
`examples of the citations of the petition
`and the declarations that support that.
` So in summary, the reply is
`responsive to the Patent Owner's
`argument. It specifically reiterates
`what's in the petition. We believe that
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` HONORABLE R. WEINSCHENK
`the figures and the screenshots are
`merely exemplary working examples of the
`general concepts described in Cadiz,
`which are described in detail in the
`petition and also in the declaration.
` THE COURT: All right, thank you
`Mr. Citroen.
` I'm going to place you all on a
`brief hold here while I confer with my
`colleague. I'll be back on the line in
`just a moment.
` (Brief pause.)
` THE COURT: All right. This is
`Judge Weinschenk again.
` Do we still have Mr. Citroen on the
`line for Petitioner?
` MR. CITROEN: Yes, your Honor. I'm
`here.
` THE COURT: And do we still have
`Mr. Dillon and Ms. Lee for Patent Owner?
` MS. LEE: Yes, your Honor. We're
`here.
` THE COURT: All right. I've spoken
`with my colleague here, and we don't have
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` HONORABLE R. WEINSCHENK
`any more questions for the parties at
`this time. We're going to take this
`issue under advisement, and we will issue
`an order pretty shortly indicating
`whether we're going to authorize the
`sur-replies or not.
` MR. PALYS: Your Honor, this is Joe
`Palys. If I may ask something? I'm
`sorry to interrupt, but I was hoping that
`you were going to ask us at the end of --
`once Mr. Citroen has finished, if we had
`anything else. One thing I just want to
`throw out there for consideration for the
`Board, if the Board is inclined to give
`sur-replies to the Patent Owner,
`Petitioner requests that we, in turn, get
`an equal page response. Given that the
`burden is on the Petitioner, we should
`have the last word on this. I want to
`make sure that that's something that the
`Board would consider.
` THE COURT: Okay. Just to make
`sure I understand, Mr. Palys. You're
`saying that if we authorize a sur-reply,
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` HONORABLE R. WEINSCHENK
`Petitioner would request a sur-sur-reply
`of equal length?
` MR. PALYS: Yes, sir.
` THE COURT: All right. We've got
`your request noted on the record here,
`and when we issue our order taking up the
`issue of the sur-replies, we'll indicate
`whether we're granting a sur-sur-reply,
`as well.
` MR. PALYS: Thank you, sir.
` MS. FUKUDA: And, your Honor, this
`is Ms. Fukuda. Could I just inject one
`comment to Mr. Palys's request?
` THE COURT: Sure. Go ahead.
` MS. FUKUDA: Okay. You know,
`obviously, we're trying to address new
`arguments made in the reply that should
`have been made earlier. In an effort to
`prevent this from turning into an
`ever-ending process of, perhaps, even
`newer arguments, if you do grant a
`sur-sur-reply, we request that that be
`limited to half the number of pages of
`the sur-reply so that we can prevent the
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` HONORABLE R. WEINSCHENK
`injection of new materials to extent
`possible.
` THE COURT: All right. I think you
`all realize that we understand that, you
`know, all good things must come to an end
`here, and we can -- you guys can brief
`this forever, but we are cognoscente of
`the issue, and we do understand this
`can't go on forever, but we've noted both
`parties' requests: Patent Owner's for a
`sur-reply and Petitioner's for a
`sur-sur-reply, and we will take that up
`and issue an order shortly on that.
` So with that, I'll ask is there
`anything else from Petitioner?
` MR. DILLON: Your Honor, if I may.
`This is Phillip, and I apologize for
`adding one additional statement. If I
`may -- and I'm sure the Board is aware of
`these cases, but there has been in other
`proceedings where the Board has taken the
`approach where the Patent Owner can
`submit a list of where new arguments are
`located and the Petitioner can submit a
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` HONORABLE R. WEINSCHENK
`similar list of what in the Patent
`Owner's response caused the Petitioner to
`include the objected to reply arguments,
`and I can give some examples of those
`cases. I'm sure the Board is aware of
`those cases. I wanted to bring those up
`as another alternative to the extent the
`Board is considering additional briefing
`or papers in these proceedings.
` THE COURT: So hold on a second.
`Let's back up for a second. Mr. Citroen,
`are you requesting an opportunity to do
`that?
` MR. CITROEN: No. Your Honor, to
`clarify, to the extent you're going to
`allow the Patent Owner to file a
`sur-reply, I'm just suggesting that, as
`an alternative to that approach, the
`Patent Owner can submit a list of where
`the new arguments are located that they
`believe are new, and the Petitioner can
`submit a similar list of what is -- and
`the Patent Owner should cause the
`Petitioner to include those new
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Google LLC v. Blackberry Ltd., IPR2017-00912, Patent Owner Exhibit 2008, p. 18
`
`
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`Page 19
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` HONORABLE R. WEINSCHENK
`arguments. The Board has done this in
`other cases such as IPR2017-00117 Paper
`19.
` THE COURT: Okay. I think I can
`stop you, Mr. Citroen. I understand what
`you mean. You're basically proposing
`something that Patent Owner can do
`alternatively instead of a sur-reply. I
`get it.
` MR. CITROEN: That's correct, your
`Honor.
` THE COURT: All right. We
`understand that Patent Owner hasn't
`requested that, but we understand that
`that's something we have the authority to
`authorize, if we're so inclined to do so.
` So now I'll try -- I'll try again.
`Anything else from Petitioner?
` MR. CITROEN: Let me jump in here.
`No, your Honor.
` THE COURT: Anything else from
`Patent Owner?
` MS. LEE: No, your Honor. Thank
`you.
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Google LLC v. Blackberry Ltd., IPR2017-00912, Patent Owner Exhibit 2008, p. 19
`
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`Page 20
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` HONORABLE R. WEINSCHENK
` THE COURT: All right. Well,
`great. Thank you all for your time
`today. We will take this under
`advisement, and we'll issue an order
`shortly.
` Enjoy the rest of your afternoon.
`This call is adjourned.
`
` (Thereupon, the telephonic meeting
`was concluded at approximately 3:19 p.m.)
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Google LLC v. Blackberry Ltd., IPR2017-00912, Patent Owner Exhibit 2008, p. 20
`
`
`
`Page 21
`
` D I S C L O S U R E
`
`STATE OF GEORGIA ) TELEPHONIC MEETING BEFORE
`
`FULTON COUNTY ) HONORABLES WEINSCHENK AND MARSCHALL
`
` Pursuant to Article 8.B of the Rules and
`Regulations of the Board of Court Reporting of the
`Judicial Council of Georgia, I make the following
`disclosure:
` I am a Georgia Certified Court Reporter. I am
`here as a representative of TSG Reporting.
` TSG Reporting was contacted by the offices of
`Sidley Austin, LLP to provide court reporting
`services for this deposition. TSG Reporting will not
`be taking this deposition under any contract that is
`prohibited by O.C.G.A. 15-14-37 (a) and (b).
` TSG Reporting has no contract or agreement to
`provide court reporting services with any party to
`the case, or any reporter or reporting agency from
`whom a referral might have been made to cover the
`deposition.
` TSG Reporting will charge its usual and
`customary rates to all parties in the case, and a
`financial discount will not be given to any party in
`this litigation.
`
` ______________________________
` Tanya L. Verhoven-Page,
` Certified Court Reporter,
` B-1790.
`
`TSG Reporting - Worldwide - 877-702-9580
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`Google LLC v. Blackberry Ltd., IPR2017-00912, Patent Owner Exhibit 2008, p. 21
`
`
`
`Page 22
`
` C E R T I F I C A T E
`
`STATE OF GEORGIA:
`FULTON COUNTY:
`
` I hereby certify that the foregoing
` deposition was reported, as stated in the
` caption, and the questions and answers
` thereto were reduced to written page
` under my direction, that the preceding
` pages represent a true and correct
` transcript of the evidence given by said
` witness.
` I further certify that I am not of
` kin or counsel to the parties in the
` case, am not in the regular employ of
` counsel for any of said parties, nor am I
` in any way financially interested in the
` result of said case.
` Dated this 3rd day of May, 2018.
`
` _______________________________
` Tanya L. Verhoven-Page,
` Certified Court Reporter,
` B-1790.
`
`TSG Reporting - Worldwide - 877-702-9580
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`Google LLC v. Blackberry Ltd., IPR2017-00912, Patent Owner Exhibit 2008, p. 22
`
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`Page 23
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`NAME OF CASE:
`DATE OF DEPOSITION:
`NAME OF WITNESS:
`Reason Codes:
` 1. To clarify the record.
` 2. To conform to the facts.
` 3. To correct transcription errors.
`Page ______ Line ______ Reason ______
`From _____________________ to _____________________
`Page ______ Line ______ Reason ______
`From _____________________ to _____________________
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`From _____________________ to _____________________
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`From _____________________ to _____________________
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`From _____________________ to _____________________
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`From _____________________ to _____________________
`Page ______ Line ______ Reason ______
`From _____________________ to _____________________
`
` ________________________
`
`TSG Reporting - Worldwide - 877-702-9580
`
`Google LLC v. Blackberry Ltd., IPR2017-00912, Patent Owner Exhibit 2008, p. 23
`
`
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