`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`X
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`:
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`:
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`CASE IPR2017—OO948
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`CASE IPR2017—Ol665
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`AMAZON.COM,
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`INC., AMAZON DIG:
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`SERVICES,
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`INC., AMAZON
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`FULFILLMENL SERVICES,
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`INC.,
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`HULU, LLC, NETFLIX,
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`INC., and
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`GOOGLE, LLC,
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`Petitioners,
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`V.
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`UNILOC LUX
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`
`
`
`
`%OURG S.A.,
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`Respondent.
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`
`Telephonic conference
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`Silver Spring, Maryland
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`Thursday, December 21, 2017 —
`
`Reported by:
`Cassandra E. Ellis, RPR
`Job no: 20378
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`TransPerfect Legal Solutions
`212—400—8845 — Depo@TransPerfect.com
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`GOOGLE 1016
`GOOGLE V. UNILOC
`|PR2017-01665
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`GOOGLE 1016
`GOOGLE V. UNILOC
`IPR2017-01665
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`1
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`Washington, Certified Shorthand Reporter — Hawai'i,
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`Registered Professional Reporter, Certified Livenote
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`Reporter, Realtime Systems Administrator, and Notary
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`
`Hearing before Judge David C. MCKone, Judge
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`Barbara A. Parvis, and Judge Michelle N. Wormmeester,
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`held telephonically, pursuant to agreement, before
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`
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`
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`Cassandra '. fillis, Certified Court Reporter —
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`Public of The State of Maryland.
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`A P P E A R A N CI
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`ON BEHALF OF PETITIONER:
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`KARL RENNER, ESQUIRE
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`
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`ADAM SHARTZER, ESOUTRE
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`
`FISH & RICHARDSON
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`The McPherson Building
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`90; 15th Street, N.W.
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` Suite 700
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`Washington, D.C.
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`20005
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`Renner@fr.com
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`Shartzer@fr.com
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`Brett@etheridgelaw.com
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`BRETT MANGRUM, ESOUTRE
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`JfiFFRfiY HUANG, ESQUTRE
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`ON BEHALF OF RESPONDENT:
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`ETHERTDGE LAW GROUP
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`1515 Northtown East Boulevard
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`Mesquite, Texas
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`75150
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`C O N T E N T S
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`PROCEED:
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`P R O C E E D I N G S
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`JUJGj MCKONE: We are on the
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`line for the IPR20177948 and
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`IPR2017—1665 matters.
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`I have
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`Judges Parvis and Wormmeester with
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`me on the call, it sounds like
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`there is a court reporter on the
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`joined by Adam Shartzer.
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`JUJGj MCKONE: Okay. Who
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`
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`call,
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`is there —— I understand
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`there's several petitioners in the
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`Amazon case,
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`I'm going to refer to
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`them collectively as Amazon,
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`for
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`convenience.
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` Is there anyone on the line
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`for petitioner Amazon? Okay, I‘ll
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`take that as a no.
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`Is there
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`anyone on the line for petitioner
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`Google?
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`MR. RENNER: Yes, Your
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`Honor,
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`this is Karl Renner,
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`from
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`Fish and Richardson, and i'm
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`will be doing the speaking today
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` for Google?
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`MR. RENNER:
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`Thank you, Your
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`Honor, we‘ll probably both
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`contribute, but Mr. Shartzer will
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`be take :he lead on that.
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`JUDGE MCKONE: Okay.
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`
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`assume that Mr. Mangrum will be
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`owner Uniloc.
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`JUJGj MCKONE: Okay.
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`there anyone on the line for
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`patent owner Uniloc?
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`MR. MANGRUM: Yes, Your
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`Honor, good morning. This is
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`Brett Mangrum,
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`lead counsel for
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`Uniloc, and I'll be doing the
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`speaking today.
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`JUJGj MCKONE: Okay.
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`Is
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`there anyone else on the line for
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`patent owner?
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`MR. HUANG: Yes, Your Honor,
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`this is Jeffrey Huang,
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`for patent
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`I will
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`doing the speaking, unless you
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`introduce yoursel: otherwise,
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`Mr. Huang.
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` If there is anyone else on
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`the line and wishes to speak
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`please first identify yourself and
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`in the 948 case, and after we ——
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`court reporter.
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`JUJGj MCKONE: Okay.
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`the party you represent.
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`Now, which party has
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`arranged for the court reporter?
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`MR. RENNER: Your Honor,
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`it's Google has arranged for the
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`Please, when you get a transcript,
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` file it as an exhibit in the case.
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`MR. RENNER: Yes, Your
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`Honor.
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`Thank you.
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`JUDGE MCKONE: Okay.
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`So the
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`reason why we are having this call
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`is Amazon filed a petition
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`challenging the challenge patent
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`after we received a preliminary
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`response in that case Google filed
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`another petition challenging the
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`same patent in the 1665 case, on
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`grounds it significantly
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`overlapped with the —— the ground
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`in the 948 case.
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`Patent owner,
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`in its
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`3253 as a defense, and is asking
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`already said has a likelihood of
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`preliminary response in the l665
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`case, has raised 35 USC Section
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`us to if to deny the petition in
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`1665 for —— for section 3253.
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`Now, as we stated in our ,,
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`our order of last week, we do see
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`merit
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`in the 325D defense, but we
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`also have to weigh that against
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`the —— if we were to deny it then
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`Google would not have an
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`opportunity to —— to challenge
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`this patent on art that we've
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`success.
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`So our thought was a joinder
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`would be a possible compromise
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`position between denying Google‘s
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`petition outright and —— on one
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`hand, and on the other hand
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`subjecting the patent owner to
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`serial attacks with similar art.
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`So we asked the parties to
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`meet and confer and determine
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`whether they could agree to
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`joinder and, if so, what the terms
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`of that joinder might
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`look like.
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`terms would be, or whether we
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`what the parties' disagreement is
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`and determine whether we ought to
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`So our understanding is that
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`the parties have not been able to
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`reach agreement or at least not ——
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`not entirely.
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`For the purposes of
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`this call is for us to understand
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`join the case, cases, or what the
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`should just simply consider the
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`1665 petition and make a ruling on
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`that.
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`So we'll start with ——
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`with —— with Google.
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`So i assume,
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`during my talking here, no one
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`from Amazon has —— has joined,
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`is
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`that correct? Okay.
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`So we'll start with
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`petitioner, Google, because we
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`need to start with someone.
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`So as a result of the meet
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`and confer does any party object
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`to joinder in principal or is the
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`dispute rather around,
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`i guess,
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`the terms of —— of a possible
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`joinder?
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`MR. SHARTZER: Your Honor,
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`this is Adam Shartzer,
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`for Google,
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`and L can certainly address that.
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`JUJGj MCKONE:
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`Go ahead.
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`I believe the
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`MR. SHARTZER:
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`parties do not have a
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`disagreement,
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`in principal, with
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`respect to joinder. As you
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`suggested,
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`there is, however,
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`disagreement with respect to what
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`that joinder looks like and the
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`terms of it.
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`it is Google's position that
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`it has brought forth substantially
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`for
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`and meaningfully different
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`arguments with respect to in one
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`ground overlapping art and with
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`respect to Google's second ground
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`some art did overlap but also a
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`meaningfully different reference,
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`the Colloso (phonetic)
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`reference,
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`and Google would like to have the
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`benefit of carrying its arguments
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`forward in a proceeding on the
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`argument that it made with respect
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`to the references in its petition.
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`Google made arguments,
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`instance, with respect to source
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`code that is in the Domello
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`(phonetic)
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`reference, and there is
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`an expert declaration attached to
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`Google's petition in support
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`explaining what a person of
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`ordinary skill would understand
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`from that source code.
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`Those ——
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`JUJGj MCKONE:
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`I think,
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`in
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`is that —— is
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`our order,
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`I made it clear that
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`we're not here to reargue the 325D
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`issues.
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`MR. SHARTZER: Okay.
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`JUJGj MCKONE:
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`So my
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`understanding of your position is
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`Google wants to press the
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`arguments that it made in its ——
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`in its petition that are —— that
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`it contends are substantially
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`different from those pressed in
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`the Amazon petition,
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`that,
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`I guess, your position in a
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`nutshell.
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`MR. RENNER: Yes, Your
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`Honor —— this is Mr. Renner ——
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`yes, Your Honor, that's correct.
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`And i think the only reason to go
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`down the path that we were just
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`talking about is to help Your
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`Honors,
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`if it weren't apparent,
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`to
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`note exactly that,
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`that these are,
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`we think, materially different
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`presentations of the grounds. And
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`that speaks to whether or not
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`there's a reason to concern
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`ourselves with trying to put
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`them
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`proposed that's —— that's of
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`on a different schedule,
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`same
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`schedule, and frankly, have the
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`
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`arguments come along with, but
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`we'll let that rest as —— as
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`you're noting, and maybe just talk
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`about the schedule that we
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`interest to you.
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`MR. MANGRUM:
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`I would like
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`to present the patent owner's
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`position.
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` JUJGj MCKONE:
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`
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`who's speaking?
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`I'm sorry,
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`MR. RENNER: This is Brett
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`Mangrum for Uniloc, patent owner.
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`point, Your Honor, Mr. Renner
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`JUDGZ MCKONE: Okay. Well,
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`—— I will —— I will let ——
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`I wi“ let you speak after ——
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`after Google's had a chance to put
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` forth its position.
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`MR. MANGRUM: But Your Honor
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`asked whether or not we agreed,
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`in
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`principal,
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`to that
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`joinder, and I
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`wanted to answer that question,
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`but we can —— but we can wait
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`until Google has presented its ——
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`JUDGE MCKONE: Please.
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`MR. RENNER: And to that
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`again, our intentions in answering
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`that was only to suggest that both
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`parties came to one another with
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`an expression of —— 0: what
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`joinder might
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`look like.
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`And so our —— our take from
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`that is that each party is willing
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`or at least amenable to
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`considering joinder, it was really
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`the "what does it look like" is
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`where we really had a hard time to
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`coming to terms with one another.
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`So if we conveyed otherwise
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`that's all our intention was
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`there.
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`JUJGj MCKONE: Okay.
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`MR. RENNER: But as to the
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`schedule we proposed, and how
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`joinder would look,
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`if you're
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`amenable to, we're happy to take
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`you through that.
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`JUJGj MCKONE: Yes.
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`MR. SHARTZER: This is Adam
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`Shartzer,
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`for Google.
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`The
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`schedule that we had proposed to
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`Uniloc was one essentially where
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`there would be a slight delay in
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`the current proceeding between
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`Uniloc and Amazon. We would then
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`Amazon and Google to coordinate on
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`give Uniloc an opportunity to
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`respond to the differences in the
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`arguments made by Google. And
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`then what would happen is,
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`essentially,
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`the schedule would
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`pick back up with what we propose
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`is the time about a fiveiweek
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`delay in the current deadlines.
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`And when I say picked back
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`up, once Uniloc files a response
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`to Google‘s petition then Amazon
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`and Google would simultaneously
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`file a reply brief, about five
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`weeks later,
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`that would allow
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`a joint deposition, on a single
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`day,
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`so we're not taxing the
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`Uniloc's declarants any more than
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` would otherwise occur in a single
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`joined proceeding.
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`And then,
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`from there,
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`essentially a five—week delay
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`would roll through the rest of the
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`deadlines in the schedule, moving
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`the hearing from early May to
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`early June.
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`And then,
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`from there,
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`board either would have
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`So that would ——
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`approximately nine weeks to
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`a final written decision or
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`joinder situation, as we've
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`common,
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`the board could take
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`advantage of the —— the —— the
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`additional time it could grant
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`itself to issue a final written
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`decision in a joinder situation.
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`JUJGj MCKONE:
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`You are
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`anticipating extending our
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`schedule beyond the final written
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`decision deadline in 948?
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`MR. SHARTZER:
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`It was a
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`MR. SHARTZER: Yes, Your
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`possibility. There was ——
`
`essentially we move the hearing
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`about a month, which would
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`certainly compress the amount of
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`time that the board had to issue a
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`final written decision, and to the
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`extent the board needed more time
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`than nine weeks that would
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`certainly be an option of the
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`board to —— to extend the schedule
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`if, you know, at the board's
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`discretion.
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`JUDGE MCKONE:
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`Now, was ——
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`was Amazon or the Amazon
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`petitioners part of the meet and
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`confer process?
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`Honor,
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`they were.
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`JUJGj MCKONE: Did they,
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`since they‘re apparently not on
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`the line today, were they —— did
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`they agree or disagree with
`
`extending the final written
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`decision deadline in the 948 case?
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`present —— press your additional
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`MR. SHARTZER: Your Honor,
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`they were neutral.
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`They were not
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`going to take a position. But
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`they appeared to be fine with a
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`schedule that included additional
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`time just for the board to issue a
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`single final written decision that
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`could handle both cases moving
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`forward.
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`JUJGj MCKONE: Okay.
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`So to
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`summarize your —— Google's
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`position,
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`if there was a joinder
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`you would —— you would prefer
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`joinder that allowed you to
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`arguments presented in the 1665
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`case that were not presented in
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`the 948 case, and you would
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`propose approximately a five—week
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`delay in the deadlines in order to
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` allow for those issues to get
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`vetted, and that might result in
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`an extension of the final written
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`decision deadline in 948;
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`is that
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`accurate?
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`language in section 311 or 315C
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`MR. SHARTZER: Yes, Your
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`Honor, that's accurate. There ,,
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`again,
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`there is case law support
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`for that in the Enzymotec
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`proceeding, it's IPR2014—00556,
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`paper 19,
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`in that particular
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`decision a board determined to
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`join a second filed petition and
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`allowed additional arguments to be
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`brought into that proceeding,
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`detecting that there was neither
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`that required the board to limit
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`the second petitioner to just the
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`issues of the first petition.
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`JUJGj MCKONE: Okay.
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`Anything else,
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`then, Google,
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`before I turn to the patent owner?
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`MR. RENNER: One last,
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`this
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`is Mr. Renner again,
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`just one last
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`note,
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`I think you maybe picked up
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`on this,
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`I want to make sure it‘s
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`clear,
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`in joinder situations we‘ve
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`seen articulated is that the
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`joinder cases are outside of the
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`one—year bar is not applicable.
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`So that if the nine weeks
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`weren't sufficient we don't
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`believe that the proposal that
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`we're making requires the board to
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`go into its six—month period that
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`is also allowable, it's not ——
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`it's not really an invasion of
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`that period, it's just simply the
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`typical schedule that's imposed on
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`the board is —— is the —— and yet
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`if nine weeks were sufficient then
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`maybe the one year could still be
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`in any event.
`observed,
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`JUJGj MCKONE: Okay.
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`MR. RENNER:
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`Thank you, Your
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`Honor.
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`JUDGE MCKONE: Would you
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`envision a change in the hearing
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`date,
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`then,
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`in the 948 case?
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`MR. RENNER: We do, as
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`Mr. Shartzer has pointed out, we
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`think the five weeks that we're
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`compressing later parts of the
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`talking about,
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`that allows for
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`patent owner to respond to the
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`issues that are newly raised here,
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`and then get our schedule
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`consistent with —— with each of
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`the proceedings thereafter.
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`We think rather than
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`it could carry through, it would
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`just shift the oral argument by
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`the same five weeks.
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` If there were opportunities
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`to compress later on we would be
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`open to considering them, of
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`course, but we thought the
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`simplest would be to carry that
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`through.
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`MR. SHARTZER: And to be
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`clear ,, this is Adam Shartzer for
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`Google, again —— the schedule that
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`we proposed to Uniloc would move
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`the hearing from May 8th,
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`to June
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`6th, 2018, of course, that's
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`obviously subject to the board‘s
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`availability, which we didn't have
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`the benefit of when we posed the
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`schedule, but we are proposing
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`of delay in order to sync the
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`schedule that five weeks would,
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`if
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`what is a somewhat limited amount
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`schedules.
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`JUJGj MCKONE: All right.
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`Patent owner, what is ,, you've
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`been waiting patiently, here, what
`
`is your position?
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`MR. RENNER: Yes, good
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`morning, Your Honor. Again,
`
`thank
`
`you for the opportunity to be
`
`heard today.
`
`
`
`_ wanted to just clarify one
`
`However, we just point out
`
`point
`
`from one of the original
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`questions, and that is, Uniloc
`
`does not necessarily concede
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`joinder is appropriate, here.
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`However,
`
`in the interest of
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`compromise we were prepared and
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`did discuss the possibility of
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`joinder under certain terms, and
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`offered a terms of joinder to the
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`opposing counsel during the meet
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`and confer.
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`that in this instance the if as
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`the board noted in its order the
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`deadline is passed for joinder.
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`So we're not necessarily conceding
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`joinder is correct. However ——
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`JUJGj MCKONE: Well,
`
`the
`
`deadline is for petitioner to
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`request
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`joinder.
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`MR. RENNER: Exactly.
`
`
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`in view of the board's
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`instructions I think we met and
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`confer we did cite to them, and
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`conferred and provided a proposal.
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`I would like to discuss the terms
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`of that proposal.
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`So petitioner's offered a
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`case today,
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`they did not offer a
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`case during the meet and confer,
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`so this is the first time that
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`they brought up any case law that
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`allegedly supports their position.
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`However,
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`for our meet and
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`collectively,
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`the group, pulled up
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`a case and read from it during the
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`meet and confer that supports
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`patent owner's position.
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`50 our position is this:
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`To
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`the extent
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`joinder is allowed
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`petitioner should take a limited
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`understudy role.
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`The understudy
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`role is a term I'm sure the board
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`is familiar with, it's been
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`applied in other cases.
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`the original petition, but then
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`Now,
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`there's actually a case
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`with surprisingly similar facts,
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`it is, and this is the case that
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`we brought up as the group during
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`the call, it's case IPRZOl6—OOO89,
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`it's :nnopharma Licensing versus
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`Senju Pharmaceutical, and in that
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`case here‘s just some facts,
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`there
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`was a follow—on petition that
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`essentially had the same ground as
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`they added additional grounds, and
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`the board had not yet reviewed on
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`those additional grounds.
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`So the
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`same question came up, should we
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`join those proceedings and what
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`should be the parameters of
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`joinder.
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`And in that case,
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`in the
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`answer to facilitating joinder,
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`what was decided is that the
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`concerns, and the board's already
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`follow—on petitioners would take
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`an understudy role and that the
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`joinder they would be joined to
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`the original petition under the
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`same grounds instituted in the
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`original —— petition —— petition,
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`and the new grounds would ——
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`would —— would not be considered
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`by the board.
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`And there was reasons for
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`that,
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`I mean,
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`there's some policy
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`noted that in its order, here in
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`this instance, and in the prior
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`instance,
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`the petitioners have 7*
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`Google has taken —— has the
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`benefit of patent owner's response
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`to the original petition. And
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`since we've retooled and revamped
`
`their petition based on our
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`response,
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`so it's kind of like a
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`second follow—on that's an
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`extension of that briefing,
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`almost.
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`And then we —— one of the
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`problems we have with the proposal
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`of opposing counsel is that it's
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`really not a request for joinder,
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`it's almost,
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`in a sense,
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`a reverse
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`joinder, where the follow—on
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`petition controls the schedule and
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`grounds that have not even been
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`the forlow—on petitioners
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`articurate and argue based on
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`instituted by the board.
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`And I want to —— we had a
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`call earlier in this matter, with
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`the board, when we discussed how
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`to proceed in —— in the instance
`
`of a contingent notice to amend,
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`which the board likely recalls.
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`And there it was decided that we
`
`were instructed that we would
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`proceed.
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`So I'm talking about the
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`original case, we would proceed in
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`the original case according to the
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`original scheduling order.
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`So pursuant to those
`
`instructions patent owner filed
`
`its contingent motion to amend,
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`and its formal response in the
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`original trial,
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`so I'm talking
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`about the 948 on timeliness. We
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`Under this proposed revised
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`timely filed pursuant to that
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`deadline.
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`schedule the response,
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`to that
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`motion to amend,
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`the opposition
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`would effectively be given an
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`additional five weeks.
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`So not
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`only is it a reverse joinder
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`scenario it's also a scenario
`
`where patent owner met their
`
`deadline and then —— and when we
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`tried to just buy the fact that
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`there will be additional five
`
`weeks for the —— in the original
`
`case for the petitioners to then
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`respond.
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`inconsistent with the case we
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`And so the if the delaying
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`the schedule, and having a reverse
`
`joinder where the follow—on
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`petitioners essentially control,
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`not take an understudy role but
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`take the lead role, and introduce
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`new arguments that haven't even
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`been instituted, we think,
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`is just
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`cited and highly prejudicial to
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`the patent owner.
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`JUJGj MCKONE: Okay.
`
`Now,
`
`as between us instituting on the
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`new —— the 1665 petition, and
`
`setting the separate schedule for
`
`that case, and joinder of 1665 to
`
`the 948 case, with the new issues,
`
`and setting a combined schedule
`
`there, which would be,
`
`
`
`I guess,
`
`patent owner's preference, and to
`
`make clear, we haven't made any
`
`decisions on the merits of the
`
`separate issues. And it's in
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`1665 petition yet.
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`MR. MANGRUM: Understood,
`
`
`and i appreciate the question
`
`allowing us to respond to that, we
`
`would prefer to keep,
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`to the
`
`extent the trial's even instituted
`
`to keep them
`on the new grounds,
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`separate. We believe they're
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`interest to my client to proceed
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`in the original case as
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`expeditiously as possible.
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`
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`JUJGj MCKONE:
`
`So you would
`
`prefer,
`
`if we decide we ought to
`
`go forward on the 1665 case, you
`
`would prefer that to just proceed
`
`to your question regarding
`
`
`
`on its own separate schedule?
`
`MR. MANGRUM: That is
`
`correct.
`
`
`
`
`JUJGj MCKONE: Okay.
`
`Does 7* does Google have anything
`
`
`else? Actually, before Google,
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`patent owner, do you have anything
`
`else to say on the issue?
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`MR. MANGRUM:
`
`NO, Your
`
`Honor.
`
`
`
`JUDGE MCKONE: Okay. Google
`
`do you have any response?
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`MR. RENNER: Your Honor,
`
`just to Uniloc's final point,
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`there,
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`proceeding under a separate
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`schedule or a joined schedule, you
`
`know, certainly we r, we
`
`
`approached the issue 0:
`
`joinder
`
`with Uniloc because the board
`
`requested us to do that.
`
`
`If it's Uniloc's preference
`
`to proceed separately, you know,
`
`certainly, you know, it sounds
`
`like that is their preference, and
`
`there is precedent for that,
`
`the
`
`3Shape case, which actually came
`
`after the Innopharma case,
`
`so the
`
`3Shape is IPR2016700481,
`
`in legal
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`paper number 12, 3Shape was a ——
`
`
`
`the board rejected that argument,
`
`was a third petitioner in nine,
`
`that shared a 102 ground with all
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`three petitions that had been
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`filed.
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`There the patent owner had
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`argued that 325D should apply, but
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`and if and it moved forward on
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`the —— the difference —— the ——
`
`the overlapping grounds and the
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`different grounds, essentially
`
`allowing the parties to proceed
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`separately and not detecting any
`
`type of 325D issues.
`
`And so I
`
`just wanted to
`
`supplement the record, at least
`
`with that case, and say that
`
`certainly if the board's inclined
`
`to institute and move forward
`
`is essentially there's multiple
`
`separately on Google's petition
`
`that is something that Google is
`
`
`amenable to, and for which there
`
`is support.
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`MR. MANGRUM: And, Your
`
`Honor,
`
`this is Brett Mangrum,
`
`for
`
`patent owner,
`
`I
`
`just wanted to
`
`clarify an earlier answer,
`
`if I
`
`understood the question.
`
`So there
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`options, here.
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`The patent owner's
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`preference is actually joinder,
`
` for the reasons articulated
`
`earlier, but
`
`joinder under the
`
`limited understudy role. We
`
`
`
`then we believe the proceedings
`
`believe that serves everyone's
`
`interests. And —— and —— and
`
`applying the same understudy role
`
`conditions set forth in the
`
`2016—89 case, that's our
`
`preference.
`
`
`
`But if —— i: the question
`
`is, essentially, what I'm told is
`
`a reverse joinder that Google‘s
`
`proposing or —— or proceed
`
`independently in the different
`
`matter,
`
`that the reverse joinder
`
`we feel is just highly
`
`
`
`prejudicial.
`
`So if that's the question
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`should be kept ,, and in the event
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`that the board decides to
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`institute, if that's the question
`
`we believe it should be
`
`independent or separate.
`
`
`
`JUJGj MCKONE:
`
`To summarize,
`
`it's patent owner's position that
`
`if we should consider —— if we go
`
`forward with Google's new issues
`
`you prefer that it go forward in a
`
`be essentially joinder on the
`
`separate case on a separate
`
`schedule?
`
`MR. MANGRUM: That's
`
`correct.
`
`
`
`
`JUJGj MCKONE: Okay.
`
`MR. MANGRUM: And in the
`
`event the board is inclined to
`
`consider a joinder under the same
`
`parameters as the Innopharma,
`
`where there is joinder, but
`
`there's no new issues,
`
`there would
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`
`
`original petitions,
`
`the 948
`
`that would actually be
`petition,
`
`our preference. We believ it
`
`serves all interests.
`
`MR. RENNER: Your Honor,
`
`
`counsel for Google, i: you have ——
`
`if we may say another word?
`
`
`JUDGE MCKONE: Okay.
`
`MR. RENNER: Sir,
`
`this is
`
`Mr. Renner again, and two
`
`comments, one is that of al: of
`
`reflects that even the petitioner
`
`the options prior to,
`
`that is the
`
`
`
`option that we actually least
`
`prefer,
`
`a rideialong joinder.
`
`In
`
`the case that's been cited,
`
`the
`
`Innopharma case, we think is
`
`distinct. We think that the
`
`understudy role that was described
`
`in that case is wholly
`
`inappropriate here.
`
` In that case the record
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`that was second filing classified
`
`the grounds they were presenting
`
`as essentially the same as those
`
`grounds that had earlier been
`
`provided.
`
`In our case, as you
`
`heard Mr. Shartzer began our talk
`
`today, we think that the
`
`presentation and the application
`
`of the art is quite different in
`
`our petition as it relates to the
`
`first filed petition.
`
`So we think the Innopharma
`
`
`case is very specific on that
`
`point and submits material
`
`distinction.
`
`And then as to the other two
`
`Honor's whatever discretion would
`
`grounds or two approaches we just
`
`want to see this done as
`
`efficiently and effectively as
`
`possible.
`
`So we're amenable to Your
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`have, but we're amenable to either
`
`approach that is a separately
`
`conducted proceeding, where the
`
`material differences can be
`
`vetted, we think most efficiently,
`
`again,
`
`in this forum, since the
`
`board is taking this up as opposed
`
`to a later different forum.
`
`
`3ut alternatively,
`
`if we
`
`could have a schedule that is
`
`consolidated in the way that we‘ve
`
`described we think that's a fair
`
`
`
`joinder and an understudy role
`
`way to efficiently move forward
`
`here, as well.
`
`
`
`JUJGj MCKONE: Okay.
`
`MR. MANGRUM: Your Honor,
`
`this is Brett Mangrum.
`
`
`
`
`JUDGE MCKONE: Hold on, I'll
`
`give you another chance in a
`
`moment.
`
`So for Google, as between
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`with no new issues, and outright
`
`denial of Google's petition,
`
`Google, do you have a preference
`
`as between those two?
`
`MR. RENNER:
`
`Sorry,
`
`
`I —— I
`
`
`think i was expecting the question
`
`to be a little different.
`
`Can you
`
`
`repeat it just to make sure :‘m
`
`getting it right?
`
`
`
`JUJGj MCKONE: As between
`
`joinder with the 984 case, under
`
`the terms of the 948 case, as an
`
`understudy,
`
`in the understudy
`
`role, as between that and outright
`
`denial of Google's petition under
`
`
`3253, does Google have a
`
`in the 3Shape case for moving
`
`preference?
`
`MR. SHARTZER: Well, Your
`
`Honor,
`
`it‘s —— it is not something
`
`that we have discussed with Google
`
`and our client,
`
`there is precedent
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`forward on substantial grounds in
`
`a separate proceeding.
`
` JUJGj MCKONE: We understand
`
`
`
`different from anything that has
`
`
`that, and that's one o:
`
`the things
`
`we will be considering, but one of
`
`our other options is to deny the
`
`1616 —— 1665 petition under
`
`section 325D.
`
` If we reach the conclusion
`
`that that —— that that ought to
`
`be —— that that's the correct
`
`result, would you oppose joinder
`
`to the 948 in an understudy role
`
`in order to protect Google in the
`
`event that Amazon settles?
`
`MR. RENNER: Your Honor,
`
`we're not
`
`in a position to be able
`
`to accept a joinder under those
`
`particular terms. And we do have,
`
`you know —— our second ground in
`
`our petition is certainly
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`been instituted in the current
`
`proceeding, and with Amazon, and
`
`at minimum we would think that
`
`that grounds ought to be heard
`
`certainly as a matter of, you
`
`know, fairness and certainly for
`
`completeness of the record.
`
`MR. SHARTZER: And Your
`
`Honor, you seem to be in command
`
`of this, I‘ll say it just to make
`
`like a moment ago patent owner
`
`
`
`sure it‘s on the table, we do
`
`think, as a matter of policy,
`
`these proceedings being ones that
`
`are affected to relieve district
`
`courts that otherwise could be
`
`held more efficiently here, we
`
`have some concerns over —— over
`
`that kind of approach, however,
`
`because it seems like that might
`
`create the most inefficiency.
`
`
`
`JUJGj MCKONE: Okay.
`
`Sounds
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`wanted to say one more thing.
`
`MR. MANGRUM: Yes, Your
`
`Honor, and thank you for the
`
`opportunity.
`
`
`
`_ wanted to correct the
`
`record of something,
`
`in attempting
`
`IPR.
`
`to distinguish Innopharma
`
`Licensing versus Senju
`
`Pharmaceutical case IPR2016—0089,
`
`paper number 13,
`
`the counsel for
`
`petitioner seems to suggest that
`
`there were no additional grounds
`
`authorized or —— or considered in
`
`the followion petition, and that‘s
`
`just not correct.
`
`
`I‘m reading from paper
`
`number 13,
`
`the board said, and I
`
`quote,
`
`Innopharma's petition
`
`includes additional grounds not
`
`authorized in the inter partes
`
`review instituted in the loop in
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`So i, and I i, I apologize,
`
`I'm done with the page, because I
`
`had screen scraped this, but
`
`that's from paper 13, it's very
`
`clear in that matter that there
`
`were new grounds. And so the
`
`point of distinction is really
`
`illusory.
`
`And the second point
`
`introduced cases without providing
`
`to make is in good faith Uniloc
`
`did its research be_ore the meet
`
` .C
`
`I want
`
`
`
`and confer, and provided this case
`
`to opposing counsel during the
`
`meet and confer, and then gave
`
`opposing counsel the opportunity
`
`to pull it up during the meet and
`
`confer and read it and consider
`
`it.
`
`Here, opposing counsel's
`
`lied behind the law, and for the
`
`first time during the call
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`any notice to patent owner that it
`
`was going to even present these
`
`cases or arguments with respect to
`
`this case. And it's kind of a
`
`prejudicial strategy to, you know,
`
`
`for the first time, during a call,
`
`introducing case law.
`
`To the extent the board‘s
`
`going to even consider that Uniloc
`
`would appreciate the opportunity
`
`to maybe even have a briefing or
`
`discussion of that further.
`
`It‘s
`
`
`it
`we
`we
`
`just
`
`MR. RENNER: Your Honor,
`
`had no cases cited to us during
`
`
`we're not asking for any
`
`additional briefing here.
`
`MR. MANGRUM: Okay.
`
`
`: just
`
`want to at least make the record
`
`clear of the circumstances of how
`
`Uniloc is prepared to discuss case
`
`law in our meet and confer and we
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`the meet and confer by opposing
`
`counsel.
`
`MR. RENNER: Your Honor, on
`
`that note, if I may, I'd just
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