In The Matter Of:
`LSI Corporation and Avago Technologies U.S., Inc. v.
`Regents of the University of Minnesota
`
`Hearing
`January 3, 2018
`
`68 Commercial Wharf • Boston, MA 02110
`888.825.3376 - 617.399.0130
`Global Coverage
`court-reporting.com
`
`Original File Hearing 1-3-18.txt
`Min-U-Script® with Word Index
`
`UMN Ex. 2003
`LSI v. UMN
`IPR2017-01068
`
`
`LSI Corporation and Avago Technologies U.S., Inc. v.
`Regents of the University of Minnesota
`
`Hearing
`January 3, 2018
`
`68 Commercial Wharf • Boston, MA 02110
`888.825.3376 - 617.399.0130
`Global Coverage
`court-reporting.com
`
`Original File Hearing 1-3-18.txt
`Min-U-Script® with Word Index
`
`UMN Ex. 2003
`LSI v. UMN
`IPR2017-01068
`
`
`
`1
`
`
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
` 2 ---------
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` 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` 4 ---------
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` 5 LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC.,
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` 6 Petitioner,
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` 7 v.
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` 8 REGENTS OF THE UNIVERSITY OF MINNESOTA,
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` 9 Patent Owner.
`
`10 ---------
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`11 Case IPR2017-01068
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`12 Patent 5,859,601
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`13
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`14 Before ROBERT J. WEINSCHENK, CHARLES J. BOUDREAU and
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`15 JACQUELINE T. HARLOW, Administrative Patent Judges.
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`16 PER CURIAM.
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`17 DATE: January 3, 2018.
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`18 TIME: 11:00 a.m. to 11:32 a.m.
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`19 LOCATION: Telephonically.
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`20 COURT REPORTER: Susan Lozzi, RPR.
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`21
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`22
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`23
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`24
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`2
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` 1 APPEARANCES:
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` 2
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` 3 PETITIONER:
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` 4 Kristopher Reed, Esq.
` Edward Mayle, Esq.
` 5 David Sipiora, Esq.
` KILPATRICK TOWNSEND & STOCKTON, LLP
` 6 kreed@kilpatricktownsend.com
` tmayle@kilpatricktownsend.com
` 7
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` 8 PATENT OWNER:
` Patrick McElhinny, Esq.
` 9 Mark Knedeisen, Esq.
` K&L GATES, LLP
`10 patrick.mcelhinny@klgates.com
` mark.knedeisen@klgates.com
`11
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`12 Richard Guinta, Esq.
` Gerald Hrycyszyn, Esq.
`13 WOLF, GREENFIELD & SACKS, P.C.
` rgiunta-ptab@wolfgreenfield.com
`14 ghrycyszyn-ptab@wolfgreenfield.com
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`15
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`16
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`17
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`18
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`19
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`20
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`Hearing - January 3, 2018
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`3
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` 1 P-R-O-C-E-E-D-I-N-G-S
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` 2 JUDGE HARLOW: This is a conference
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` 3 call in IPR2017-01068, LSI and Avago vs. The Regents
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` 4 of the University of Minnesota, and we're on the
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` 5 call today to discuss Patent Owner's request that we
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` 6 stay the proceeding pending Patent Owner's pursuit
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` 7 of an appeal and that appellate process.
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` 8 With that, will counsel please
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` 9 introduce themselves beginning with Patent Owner?
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`10 MR. GUINTA: Yes. Good -- sorry.
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`11 Good morning, Your Honors. This is Rich Giunta from
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`12 Wolf Greenfield appearing with my colleague, Gerry
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`13 Hrycyszyn, and we are joined on the call by our
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`14 cocounsel from K&L Gates, Pat McElhinny and Mark
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`15 Knedeisen.
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`16 JUDGE HARLOW: Thank you very much.
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`17 Petitioner?
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`18 MR. REED: Yes. This is Kristopher
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`19 Reed, lead counsel for Petitioner. Joining me on
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`20 the call are backup counsel, Ted Mayle, and pro hac
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`21 counsel, David Sipiora.
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`22 JUDGE HARLOW: Okay. Thank you very
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`23 much. Before we begin with discussing Patent
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`24 Owner's request, I just wanted to highlight that as
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`4
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` 1 the landscape currently stands, the due date for
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` 2 Patent Owner's preliminary response to the petition
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` 3 has been suspended pending any order that may result
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` 4 from this call.
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` 5 With that in mind, Patent Owner, it's
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` 6 our understanding that you intend to file a Notice
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` 7 of Appeal forthwith, and we were wondering if you
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` 8 could give us a time frame on when you plan to file
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` 9 your Notice of Appeal.
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`10 MR. GUINTA: Yes, Your Honor. So we
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`11 are -- we are ready and able to file the Notice of
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`12 Appeal very quickly, within a matter of days.
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`13 The one question we would like to
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`14 discuss today is -- our request is that the Board
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`15 voluntarily suspend the deadline before we file a
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`16 Notice of Appeal because it's our belief that the
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`17 law is clear that once we file the Notice of Appeal,
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`18 the Board will be automatically divested of
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`19 jurisdiction, and it's unclear to us if we went that
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`20 route whether the Board would agree and then inform
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`21 us that the preliminary response deadline is
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`22 suspended or whether we would need to go to the
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`23 Federal Circuit and seek an order from the Federal
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`24 Circuit ordering the Board to suspend the
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`Hearing - January 3, 2018
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`5
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` 1 proceeding.
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` 2 JUDGE HARLOW: We understand that.
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` 3 When you say you would be ready -- assuming we
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` 4 issued an order addressing your request, when you
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` 5 say you would be ready to file in a -- in a matter
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` 6 of days, are we talking less than a week?
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` 7 MR. GUINTA: Yes. Absolutely.
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` 8 JUDGE HARLOW: Okay. And my next
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` 9 question for you, Counsel, is have the parties
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`10 considered pursuing and -- or agreeing to and then
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`11 following an expedited briefing schedule before the
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`12 Federal Circuit?
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`13 MR. GUINTA: We have not had those
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`14 discussions with the other side.
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`15 JUDGE HARLOW: What's Patent Owner's
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`16 position regarding agreeing to and adhering to an
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`17 expedited briefing schedule before the Federal
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`18 Circuit?
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`19 (Pause.)
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`20 MR. GUINTA: I think we're generally
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`21 open to that. I mean, we would have to think about
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`22 the details. I'm sorry. I'm just looking at my
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`23 colleagues who would likely be the ones and they're
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`24 not formally on the call about how quickly we could
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`Hearing - January 3, 2018
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`6
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` 1 do things, but certainly we are amenable to an
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` 2 expedited briefing schedule decision before the
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` 3 Federal Circuit.
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` 4 We understand the University's
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` 5 interest in getting this resolved as quickly as
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` 6 possible and we also understand there a number of
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` 7 other cases pending before the Board and that the
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` 8 Board might appreciate guidance from the Federal
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` 9 Circuit as soon as possible.
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`10 JUDGE HARLOW: Thank you very much.
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`11 With those initial matters out of the way, Counsel,
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`12 please proceed to address your position regarding a
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`13 stay prior -- us issuing a stay prior to the filing
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`14 of the Notice of Appeal before the Federal Circuit.
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`15 MR. GUINTA: Yes. Thank you, Your
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`16 Honors. So what we're requesting is a continued
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`17 suspension of the preliminary patent response
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`18 deadline pending a decision from the Federal Circuit
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`19 on our forthcoming appeal.
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`20 Suspension is critically important
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`21 because sovereign immunity is a threshold issue.
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`22 The Board's decision denying the University's Motion
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`23 to Dismiss acknowledged that the University is a
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`24 state entity entitled to sovereign immunity. State
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`Hearing - January 3, 2018
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`7
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` 1 sovereign immunity rights provide immunity not only
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` 2 from having the Board issue a decision on the merits
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` 3 in these -- in this proceeding but also from the
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` 4 process of this proceeding. That is, the
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` 5 University's immune from having to defend itself on
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` 6 the merits.
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` 7 The University's sovereign immunity
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` 8 rights would be violated if the University were
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` 9 improperly subjected to the time and expense of
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`10 preparing and filing a preliminary response that
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`11 addresses the merits of the Petitioner's challenge.
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`12 As the Supreme Court found, the value
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`13 to a state of its sovereign immunity is for the most
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`14 part lost as the litigation proceeded in motion
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`15 practice and that's the Puerto Rico Aquedact case,
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`16 506 U.S. at Page 145. So immediate judicial review
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`17 is necessary before the state should be required to
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`18 defend itself on the merits.
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`19 As Chief Judge Ruschke noted in the
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`20 Board's decision, sovereign immunity issues in this
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`21 case are of an exceptional nature and as the
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`22 concurring opinion offered by yourself, Judge
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`23 Harlow, noted, the Supreme Court has stated that
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`24 important constitutional issues are unsuited to
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`8
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` 1 resolution in administrative hearings so the access
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` 2 to the Courts is essential to the decision of such
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` 3 questions.
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` 4 Its constitutional rights will be
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` 5 irreparably violated if this proceeding proceeds to
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` 6 the merits and the Courts ultimately disagree with
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` 7 the Board's decision that the University waived its
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` 8 constitutional right to be immune from this
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` 9 proceeding. Thus, the Courts should decide whether
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`10 the University waived its constitutional rights
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`11 before the University is required to defend itself
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`12 on the merits in this proceeding.
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`13 For precisely these reasons, Courts
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`14 consistently emphasize that the proceeding on the
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`15 merits should be stayed pending judicial review of a
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`16 tribunal's determination that immunity does not
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`17 apply.
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`18 We have numerous cases we can cite to
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`19 Your Honors, but I'll mention just a few. The
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`20 Federal Circuit explained in case involving the
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`21 Board of Regents of the University of Texas, 435
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`22 Federal Appendix at Pages 947 to 48 that if the
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`23 District Court denied the University's immunity, the
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`24 University, quote, can of course immediately appeal
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`9
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` 1 and seek review of that issue before the entry of
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` 2 final judgment, thus eliminating any harm asserted
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` 3 by the University that it might face an unnecessary
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` 4 trial, end quote.
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` 5 First Circuit explained that absent
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` 6 immediate judicial review, the agency's adverse
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` 7 immunity determination will wholly deprive a state
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` 8 of a meaningful and adequate means of vindicating
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` 9 its rights, a case involving the Rhode Island
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`10 Department of Environmental Management, 304F.3d at
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`11 Page 45.
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`12 And then, lastly, the 7th Circuit
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`13 explained very succinctly that the justification for
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`14 an immediate appeal was that the trial destroys
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`15 rights created by the immunity. It makes no sense
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`16 for trial to go forward, but the Court of Appeal
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`17 cogitates on whether there should be one. That's
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`18 Apostol 870 F.2d at Page 1338.
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`19 So the University respectfully submits
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`20 that the law is clear. A large-based portion of
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`21 this proceeding must be stayed pending judicial
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`22 review of the Board's determination that the state
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`23 waived its constitutional right to immunity from
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`24 this proceeding. I want to briefly address the
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`10
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` 1 Collateral Order Doctrine in the Federal Circuit's
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` 2 jurisdiction to hear the University's appeal before
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` 3 this proceeding moves forward on the merits.
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` 4 An e-mail to the Board and several
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` 5 other IPR's where the University's motion was
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` 6 dismissed on the same day, Petitioner's counsel
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` 7 there characterized the Collateral Order Doctrine as
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` 8 a "novel legal theory." It is far from it.
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` 9 Collateral Order Doctrine is
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`10 well-established and has been applied numerous times
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`11 in the context of sovereign immunity, including by
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`12 the United States Supreme Court and the Federal
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`13 Circuit.
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`14 The supreme Court has stated we hold
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`15 that states and state entities that claim to be arms
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`16 of the states -- state may take advantage of the
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`17 Collateral Order Doctrine to appeal a District Court
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`18 order denying the claim of eleventh amendment
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`19 immunity. That's Puerto Rico Aqueduct & Sewer
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`20 Authority, 506 U.S. at Page 141.
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`21 The Collateral Order Doctrine is an
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`22 exception to the general rule and an appeal must be
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`23 from a final decision. Federal Circuit has found
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`24 precisely that in the context of sovereign immunity.
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`Hearing - January 3, 2018
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`11
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` 1 In a case involving University of Utah against
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` 2 Max-Planck, 734 F.3d at Page 1319, Federal Circuit
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` 3 found that it had jurisdiction under 28 U.S.C.
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` 4 Section 1295 and a Collateral Order Doctrine,
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` 5 considered immediate appeal of the non-denial of the
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` 6 State's Motion to Dismiss on the basis of sovereign
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` 7 immunity.
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` 8 The case involving the University of
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` 9 Massachusetts, 503 F.3d at Page 1369, the Federal
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`10 Circuit stated, The issue of the eleventh amendment
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`11 immunity is subject collateral appellate review, end
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`12 quote.
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`13 There's also the case I mentioned
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`14 earlier that involved the University of Texas, 435
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`15 Federal Appendix at Pages 947 and 948. The Federal
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`16 Circuit stated, If a tribunal's denial of the
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`17 University -- if the tribunal denied the
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`18 University's immunity, the University could, quote,
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`19 of course immediately appeal, end quote, and
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`20 eliminate the harm of facing an unnecessary trial.
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`21 JUDGE HARLOW: Counsel, has the
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`22 Fed -- I apologize to interrupt but since we
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`23 returned to the Texas case, I was wondering if you
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`24 could elaborate on whether the Federal Circuit has
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`12
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` 1 definitively stated that when it accepts an appeal
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` 2 pursuant to the Collateral Order Doctrine, the lower
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` 3 tribunal is divested of jurisdiction over that case.
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` 4 It's my understanding that there's a
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` 5 bit of a circuit split on the issue of the
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` 6 Collateral Order Doctrine. And if there is no law,
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` 7 that's fine. I was just wondering if you're aware
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` 8 of any.
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` 9 MR. GUINTA: I am looking at -- so on
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`10 my outline I have about seven or eight cases. I
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`11 don't see any of them involving the Federal Circuit,
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`12 and I'm looking at my colleagues who did the
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`13 research and they're -- I think the answer is no,
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`14 that I don't think we have a case we could cite to
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`15 you that it's from the Federal Circuit, but we could
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`16 cite you cases from the 5th Circuit, 8th Circuit,
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`17 9th Circuit.
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`18 JUDGE HARLOW: If you -- if you have
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`19 a -- yes, go ahead.
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`20 MR. GUINTA: I'm sorry, Your Honor.
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`21 There is also one Board case we can cite to Your
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`22 Honors. Smart Microwave Sensor. That's
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`23 IPR2016-00488, Paper 59. That's an August 2017
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`24 decision from the Board which says we have no doubt
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`13
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` 1 that when a Notice of Appeal is filed, jurisdiction
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` 2 of the case is transferred to -- sorry -- I was
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` 3 giving you the wrong quote.
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` 4 What the Board case said is the
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` 5 general rule that the Board is divested of
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` 6 jurisdiction when either party before a Board files
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` 7 a Notice of Appeal to the Federal Circuit. So the
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` 8 Board there --
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` 9 JUDGE HARLOW: But, Counsel, that
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`10 case -- did that case involve a request for
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`11 rehearing and subsequent to the final decision?
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`12 MR. GUINTA: I don't know the answer
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`13 to that, Your Honor.
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`14 JUDGE HARLOW: Because we obviously
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`15 have a slightly different issue in the context of
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`16 the Collateral Order Doctrine.
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`17 Anyway, I didn't mean to interrupt.
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`18 Please go ahead. I just wanted to clarify if you
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`19 did or did not.
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`20 MR. GUINTA: Yes. So I don't think we
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`21 have a case that deals with the Federal Circuit
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`22 under the Collateral Order Doctrine addressing
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`23 whether jurisdiction is immediately divested.
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`24 JUDGE HARLOW: Okay. Understood. And
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`14
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` 1 that's -- please understand this is just by the way
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` 2 of inquiry; not --
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` 3 MR. GUINTA: Yeah.
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` 4 JUDGE HARLOW: I'm not suggesting that
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` 5 because you don't have a case there shouldn't be
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` 6 one.
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` 7 With that in mind, Counsel, did -- did
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` 8 you have a vision of how a briefing schedule might
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` 9 work if we were to allow the parties to brief the
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`10 Patent Owner's request for a stay?
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`11 MR. GUINTA: We -- we would request
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`12 that it go as -- as quickly as possible. I think we
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`13 would be prepared to file a motion Friday.
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`14 I mean, I guess the question we would
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`15 have, Your Honors, would be how quickly you could
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`16 envision an accelerated briefing schedule and a
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`17 decision.
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`18 JUDGE HARLOW: Right.
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`19 MR. GUINTA: If the decision was going
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`20 to be a lengthy period of time, I think the
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`21 University -- and our appeal deadline to the Federal
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`22 Circuit is February 20th.
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`23 JUDGE HARLOW: Okay.
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`24 MR. GUINTA: So the University is not
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`Hearing - January 3, 2018
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`15
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` 1 inclined to wait. The University would prefer to
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` 2 file immediately but believes there's value if
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` 3 the -- to get on the same page with the Board, if
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` 4 the Board is going to voluntarily suspend the
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` 5 deadline, we would prefer to work that out before we
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` 6 filed a motion of appeal and have to avoid going to
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` 7 the Federal Circuit seeking an order from them
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` 8 enjoined.
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` 9 JUDGE HARLOW: Understood. Does
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`10 Patent Owner have any other points they wish to
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`11 address?
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`12 MR. GUINTA: No. I think that really
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`13 covers it, Your Honor.
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`14 JUDGE HARLOW: Thank you very much.
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`15 Counsel for Petitioner, we would like to hear your
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`16 response to Patent Owner's arguments, but before we
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`17 do that, I would just like to clarify your position
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`18 on whether Petitioner would oppose a stay being
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`19 entered prior to the Notice of Appeal in order to
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`20 prevent collateral litigation before the Board of
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`21 this matter.
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`22 MR. REED: The answer is yes. We
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`23 would oppose entry to the stay pending appeal, and I
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`24 believe some additional context is important here to
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`Hearing - January 3, 2018
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`16
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` 1 understand why. We have offered --
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` 2 JUDGE HARLOW: Before we get into
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` 3 that, Counsel, just -- just a couple of other
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` 4 questions I would like to get out of the way and
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` 5 then I'm happy to hear all of the context and I'll
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` 6 see your response to Patent Owner's arguments.
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` 7 The next question I have is we
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` 8 addressed the issue with Patent Owner. Would
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` 9 Petitioner be interested in or open to the idea of
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`10 agreeing to an expedited briefing schedule before
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`11 the Federal Circuit with the Patent Owner or not?
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`12 MR. REED: If it's determined that the
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`13 underlying IPR proceeding will not go forward
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`14 pending appeal, but of course. We would endorse an
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`15 expedited briefing schedule before the Federal
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`16 Circuit.
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`17 Our -- our primary interest is getting
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`18 the IPR proceeding moving and if it's stayed for
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`19 whatever reason pending appeal, then we would want
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`20 the appeal to conclude as quickly as possible.
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`21 JUDGE HARLOW: Understood. So in
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`22 addition to opposing the entry of a stay prior to
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`23 the Notice of Appeal, is it Petitioner's position
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`24 that the PTAB would continue to have jurisdiction
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`Hearing - January 3, 2018
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`17
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` 1 over the matter during the pendency of the appeal
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` 2 before the Federal Circuit?
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` 3 MR. REED: Our position is that it
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` 4 could depending on how the Board characterizes the
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` 5 appeal, itself.
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` 6 If the appeal does go forward and is
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` 7 properly lodged, it's not automatic, necessarily
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` 8 automatic that the jurisdiction per [phonetic]
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` 9 meeting the research and that if the Board, itself,
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`10 were to characterize the appeal as forfeits or
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`11 frivolous, that the IPR proceeding would be able to
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`12 go forward.
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`13 And our position is that given the
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`14 basis of the Board's decision, in particular the
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`15 waiver decision; not the fact that [inaudible] and
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`16 IPR's, the Board agreed the patent order on that
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`17 piece.
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`18 On the basis in which the Board denied
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`19 the motion on the waiver, we feel that particular
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`20 decision is unsalable [phonetic] and that bringing
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`21 that up on appeal would qualify for such a
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`22 certification, so if the Board were to certify that
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`23 the appeal, again, is forfeit or frivolous, the IPR
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`24 could continue forward.
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`Hearing - January 3, 2018
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`18
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` 1 JUDGE HARLOW: Understood. With that,
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` 2 please feel free to address the -- your position on
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` 3 the stay, as well as our jurisdiction during the
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` 4 appeal in whichever order you prefer.
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` 5 MR. REED: So having heavily addressed
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` 6 the -- the issue regarding the jurisdiction opinion
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` 7 appeal, but as I mentioned earlier, I do think some
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` 8 additional context is important here because what we
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` 9 have are two competing congressional attempts.
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`10 Certainly they have their interest in
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`11 their claim of sovereign immunity, but there's also
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`12 a congressional intent that IPR's are to be an
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`13 effective alternative to litigation.
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`14 Now, we have offered -- the Board is
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`15 aware we have offered to stipulate to stay these
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`16 proceedings if Patent Owner would agree to stay the
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`17 associated litigation.
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`18 We have a patent that's expired.
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`19 Potential damages are fixed at this point. There
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`20 will be no prejudice to Patent Owner in putting the
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`21 litigation on hold while this issue gets resolved.
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`22 The Patent Owner's refused that request and that
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`23 creates a dilemma. The dilemma is that Congress
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`24 intended for the next interparty review to be an
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`Hearing - January 3, 2018
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`19
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` 1 efficient alternative to federal litigation.
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` 2 JUDGE HARLOW: Counsel, to go back to
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` 3 the status of the co-pending District Court
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` 4 litigation, can you please provide us with an update
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` 5 of where that case stands, when and if a trial date
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` 6 has been set and anything else you feel might be
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` 7 pertinent?
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` 8 MR. REED: My understanding in terms
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` 9 of this particular -- we have a motion to stay the
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`10 litigation pending in the Trial Court which has been
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`11 pending for several months, which has not been ruled
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`12 on by the District Court.
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`13 And I'll defer to my colleagues who
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`14 are running that litigation as to whether a trial
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`15 date has been set. Mr. Mayle, do you have -- can
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`16 you answer that question?
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`17 MR. MAYLE: Yes. An order has been
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`18 recently issued. A trial date has been set. I
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`19 think it's in 2019. Discovery has been -- discovery
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`20 has started, so the case has started to move forward
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`21 while the District Court considers this motion.
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`22 JUDGE HARLOW: Okay. Thank you very
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`23 much.
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`24 MR. REED: So going back, our concern
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`Hearing - January 3, 2018
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`20
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` 1 then is that if the Board grants the patent
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` 2 order [inaudible] and delays this IPR while the
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` 3 litigation continues to move forward full speed,
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` 4 which it's doing right now, that the congressional
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` 5 intent will be frustrated.
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` 6 The District Court litigation could be
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` 7 near completion before this particular appeal on
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` 8 sovereign immunity works its way through the Federal
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` 9 Circuit. I understand --
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`10 JUDGE HARLOW: Counsel, to interrupt
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`11 just one more time, your motion to stay that's
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`12 pending in the District Court, is that a motion to
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`13 stay pending resolution of the IPR's or pending the
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`14 appeal of the sovereign immunity decision? Can
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`15 you -- can you clarify that a bit, please?
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`16 MR. REED: It's to stay pending
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`17 resolution of the IPR.
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`18 JUDGE HARLOW: Thank you. And what
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`19 district are -- are you before?
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`20 MR. REED: We are in Minnesota.
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`21 JUDGE HARLOW: Okay, thank you.
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`22 Sorry. Please proceed.
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`23 MR. REED: Again, our concern is that
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`24 given the timing of appeal and the uncertainty
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`Hearing - January 3, 2018
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`21
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` 1 regarding how long the Federal Circuit will take in
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` 2 deciding this particular issue, our concern is the
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` 3 litigation could be near completion or at completion
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` 4 before this appeal works its way through the Federal
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` 5 Circuit.
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` 6 So even if the Federal Circuit affirms
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` 7 the Board's determination, which we submit it will
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` 8 happen, it will be somewhat of a hollow victory
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` 9 because the congressionally intended benefit of IPR
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`10 will have been lost to us.
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`11 In other words, if Patent Owner loses
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`12 on the sovereign immunity claim at the Federal
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`13 Circuit, delaying the procession of this IPR for
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`14 what could be a considerable amount of time, ending
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`15 appeal effectively would give them a victory anyway
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`16 by eliminating the potential impact with the IPR on
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`17 the ongoing litigation.
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`18 But for that reason we believe that we
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`19 have an equally compelling intent and concern for
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`20 having IPR continue going forward that counters
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`21 their concern regarding policy concern regarding
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`22 sovereign immunity. Now, with respect to the
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`23 ability of the Board to stay these proceedings, we
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`24 think there's an open question of whether the Board
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`Hearing - January 3, 2018
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`22
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` 1 actually possesses the statutory authority to
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` 2 voluntarily stay these proceedings in light of
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` 3 the -- in light of the appeal.
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` 4 Whether there's divestiture
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` 5 jurisdiction is one question, but in terms of the
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` 6 voluntary stay, which I heard Patent Owner
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` 7 requesting here, I do not believe that there is a
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` 8 provision, a statutory provision that permits the
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` 9 Board to enter such a stay now that the Motion to
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`10 Dismiss has been decided.
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`11 Given of course if an agency's power
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`12 is limited to its statutory authority, I think that
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`13 there should be a briefing on that issue as to
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`14 whether the Board even has authority to grant relief
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`15 that Patent Owner requested during the call today.
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`16 JUDGE HARLOW: Thank you. Is there
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`17 anything further?
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`18 MR. REED: That is all, Your Honor.
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`19 JUDGE HARLOW: Thank you very much.
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`20 Counsel for Patent Owner, I'd like to revisit the
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`21 issue raised by counsel for Petitioner regarding the
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`22 co-pending District Court litigation. Is it a fair
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`23 summary of Patent Owner's position that regardless
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`24 of whether the Patent Trial and Appeal Board enters
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`Hearing - January 3, 2018
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`23
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` 1 a stay of the IPR proceedings, Patent Owner will not
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` 2 agree to a stay of the co-pending District Court
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` 3 proceedings?
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` 4 MR. GUINTA: That is correct, Your
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` 5 Honor.
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` 6 JUDGE HARLOW: Okay. Patent Owner, is
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` 7 there anything else you would like to say in
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` 8 response to Petitioner's arguments?
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` 9 MR. GUINTA: Yes, Your Honor. So a
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`10 few points. So on the Petitioner's argument about
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`11 congressional intent and staying the litigation,
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`12 it's our position that -- they have a motion pending
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`13 before the Court.
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`14 It is up -- it is up to the District
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`15 Court in Minnesota whether the Court believes
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`16 there's good grounds to stay that proceeding and it
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`17 is not the purview of this Board to inject itself
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`18 into that litigation and potentially impose -- not
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`19 impose a stay here in an attempt to compel a stay in
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`20 the litigation that the District Court in Minnesota
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`21 is not inclined to grant.
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`22 The core issue here -- Petitioner's
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`23 counsel keeps referring to congressional intent.
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`24 The core issue is that the state has a
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`O'Brien & Levine Court Reporting Solutions
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`Hearing - January 3, 2018
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`24
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` 1 constitutional right that will be violated if the
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` 2 Courts disagree with the Court's decisions and this
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` 3 proceeding proceeds on the merits. The state can
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` 4 never get that back.
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` 5 And I've cited -- we've cited numerous
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` 6 authority and counsel hasn't explained any basis for
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` 7 suggesting that that authority is not controlling
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` 8 here. They haven't cited a single case where a
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` 9 tribunal did not stay a proceeding pending judicial
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`10 review of a constitutional [inaudible] questions.
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`11 So it's our position that the law is
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`12 clear on that and that congressional intent do not
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`13 trump the University's constitutional rights and it
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`14 doesn't trump the law.
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`15 In terms of whether the Board has
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`16 authority to stay, so there is no statutory deadline
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`17 for when the preliminary patent response is due.
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`18 The Board has already stayed this proceeding for
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`19 many, many months.
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`20 If counsel were correct that there was
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`21 no statutory authority to suspend the prior response
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`22 deadline, then the Board would have violated some
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`23 statutory requirement but there is
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