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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`)
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`) )
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`WESTERN DIGITAL
`
`CORPORATION,
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`Claimant,
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`) Case No.
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`) IPR2018-00082
`
`) )
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` Patent No.
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`vs.
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`SPEX TECHNOLOGIES, INC., ) 6,088,802
`
`Patent Owner. )
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`)
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`-------------------------- )
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`PTAB CONFERENCE CALL
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`Thursday, August 2, 2018
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`Reported by:
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`Stacey L. Daywalt
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`JOB NO. 145849
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`TSG Reporting - Worldwide 877-702-9580
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`SPEX Technologies, Inc.
`IPR2018-00082 Ex. 2007
`1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
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` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`)
`
`) )
`
`WESTERN DIGITAL
`
`CORPORATION,
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`Claimant,
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`) Case No.
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`) IPR2018-00082
`
`) )
`
` Patent No.
`
`vs.
`
`SPEX TECHNOLOGIES, INC., ) 6,088,802
`
`Patent Owner. )
`
`)
`
`-------------------------- )
`
`PTAB CONFERENCE CALL
`
`Thursday, August 2, 2018
`
`Reported by:
`
`Stacey L. Daywalt
`
`JOB NO. 145849
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`TSG Reporting - Worldwide 877-702-9580
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`SPEX Technologies, Inc.
`IPR2018-00082 Ex. 2007
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`Page 2
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` Thursday, August 2, 2018
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` 1:00 p.m.
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` PTAB Conference Call, held before
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`Lynne E. Pettigrew, Daniel N. Fishman and
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`Charles J. Boudreau, before Stacey L. Daywalt,
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`a Court Reporter and Notary Public of the
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`A P P E A R A N C E S:
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`(All appearances are telephonic)
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` GIBSON, DUNN & CRUTCHER
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` Attorneys for Petitioner
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` 1050 Connecticut Avenue, NW
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` Washington, DC 20036
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` BY: BRIAN BUROKER, ESQ.
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` BROWN RUDNICK
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` Attorneys for Patent Owner
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` 7 Times Square
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` New York, New York 10036
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` BY: ENRIQUE ITURRALDE, ESQ.
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` ADMINISTRATIVE PATENT JUDGE: Hello,
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`this is Judge Boudreau. I have Judges Fishman
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`and Pettigrew on the line with me.
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` This is a call in Case
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`IPR2018-00082, Western Digital versus SPEX
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`Technologies.
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` Do we have counsel for Petitioner
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`Western Digital on the line?
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` MR. BUROKER: Yes, Your Honor. This
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`is Brian Buroker from Gibson Dunn.
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` And I believe -- I'll let the others
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`announce themselves, but I believe we have a
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`couple of other colleagues of mine on the phone
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`listening as well.
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` MR. SILVER: Blair Silver from
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`Gibson Dunn as well.
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` ADMINISTRATIVE PATENT JUDGE: And do
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`we have counsel for Patent Owner SPEX
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`Technologies on the line?
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` MR. ITURRALDE: Yes, Your Honor.
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`This is Enrique Iturralde for SPEX
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`Technologies, Patent Owner.
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` ADMINISTRATIVE PATENT JUDGE: Thank
`
`you.
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` And does either party have a court
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`reporter on?
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` MR. ITURRALDE: Your Honor, I
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`believe that a court reporter is on the line.
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` THE REPORTER: I am on the line.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`Thank you.
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` And I'd just ask whoever retained
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`the court reporter please file a copy of the
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`transcript as soon as you receive it.
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` MR. BUROKER: Yes. This is
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`Petitioner. We engaged the court reporter, and
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`we will do the filing. Thank you.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`Thank you.
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` So I believe that Patent Owner
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`originally scheduled this call, so I'll let you
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`start, Mr. Iturralde.
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` MR. ITURRALDE: Yes, Your Honor.
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`Thank you. This is Enrique Iturralde for the
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`Patent Owner.
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` We requested this conference call to
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`inform the board pursuant to a scheduling order
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`that the Patent Owner will -- the Patent Owner
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`SPEX will elect to not file a Patent Owner's
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`response to the petition. SPEX is prepared to
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`file a paper to that effect should the board
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`require a filling.
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` ADMINISTRATIVE PATENT JUDGE: Yes,
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`we can go ahead and authorize that.
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` And just to be clear, you are aware
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`that the scheduling order also states that any
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`arguments not raised in the response will be
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`deemed waived. And that would extend to not
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`filing a Patent Owner response. And it would
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`be assumed that you'll be waiving any arguments
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`that you might have against anything that was
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`raised in the petition.
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` Is that understood?
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` MR. ITURRALDE: Yes, Your Honor,
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`Patent Owner understands that.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`Thank you.
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` Let me just -- hold on just one
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`minute. Okay?
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` Sorry about that. I'm back. Okay.
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` And we would appreciate it if you
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`would file a paper just stating that you do
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`intend to waive the Patent Owner response.
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` MR. ITURRALDE: Sure, Your Honor.
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`We can do that.
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` ADMINISTRATIVE PATENT JUDGE: All
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`right. Thank you.
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` So now we'll hear from Mr. Buroker.
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` MR. BUROKER: Yes. This is Brian
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`Buroker from Petitioner.
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` We were processing the July 23rd
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`order when Patent Owner asked for this
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`conference call, so we wanted to go ahead and
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`raise the issue that we were considering
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`raising in response to the July 23rd order,
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`which was that we would like to take advantage
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`of the suggestion in that order that the
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`Petitioner would request the authorization to
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`file a motion asking the board to waive the
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`rules and allow a reply. And we believe we
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`have good cause to do so.
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` We believe the circumstances of the
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`SAS decision and the way in which the
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`proceedings have taken place so far in
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`combination with when we filed the petition, we
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`weren't clear what the claim construction was
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`going to be for one of the terms. And we now
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`have a claim construction from both the
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`District Court and then from the preliminary
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`claim construction adopted by the panel.
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` And we believe we have evidence that
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`the ground that was instituted for the Claims 1
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`to 11 and 12 render the claims obvious, and we
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`want to point to the additional evidence that
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`demonstrates the obviousness.
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` And we believe that the current
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`construct of the rules weren't set out with the
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`framework in mind of what happens now in view
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`of the SAS decision, which is you've got an
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`institution on grounds that -- where the
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`preliminary view in the institution decision
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`suggests that we haven't met our burden.
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` We believe that we should have the
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`right to demonstrate why the claims are obvious
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`in view of the ground, and that's the
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`references combined in the petition.
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` And we believe that if we don't get
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`that opportunity, there's a due process
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`problem, and so the Federal Rules should be
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`waived.
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` The Federal Circuit repeatedly has
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`held that it's contemplated that there will be
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`new evidence that comes to light during these
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`proceedings and that the petition is not all
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`the evidence that can be presented by the
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`Petitioner. You can submit additional
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`evidence. And that's what we are asking to do.
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` As you all know, we tried to submit
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`information through supplemental information.
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`That evidence is not formally in the record,
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`but we believe we should have some vehicle.
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`And if it's a reply, we think that that's
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`the -- what we would like to do to set aside
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`the rules to allow us to file that reply, get
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`that evidence into the record, even if the
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`Patent Owner waives its Patent Owner response.
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` But we should have a right to
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`demonstrate to the board that the ground it
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`instituted demonstrates the obviousness of the
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`claim.
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` ADMINISTRATIVE PATENT JUDGE:
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`Mr. Iturralde, would you like to respond to
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`Mr. Buroker?
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` MR. ITURRALDE: Yes, Your Honor.
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`Thank you.
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` Patent Owner opposes this request
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`that the board already considered the specific
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`issue of whether -- on its May 9th conference
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`call. The transcript is -- was filed as
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`Exhibit 2006.
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` And the board already considered the
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`specific issue of whether or not Petitioner
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`would be able to file a reply. And the board
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`stated if Patent Owner were to waive its option
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`for filing a Patent Owner response, waive it in
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`writing, that the Petitioner would have no
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`basis for which to file a reply brief.
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` At this juncture we believe the
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`Petitioner has already had ample opportunity to
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`present its arguments and to move to enter
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`supplemental information. And the board has
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`already taken a close look at the information
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`that the Petitioner wants to enter into the
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`record and has already found that these issues
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`would present new arguments that supplement the
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`petition improperly. And Patent Owner would
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`oppose for at least those reasons.
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` ADMINISTRATIVE PATENT JUDGE: I'm
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`sorry. I was having some difficulty with my
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`telephone here.
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` Were you able to hear anything that
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`I just said?
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` MR. BUROKER: No, Your Honor. After
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`Mr. -- Enrique spoke, we didn't hear anything
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`else.
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` ADMINISTRATIVE PATENT JUDGE: I
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`apologize for that.
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` So I had said that in the July 23rd,
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`2018 order, we did state that Petitioner may
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`request authorization to file a motion asking
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`us to waive our rules and allow a reply upon
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`persuasive showing of good cause. And so the
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`statement that a reply would not be authorized
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`as an absolute matter here is -- wouldn't be
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`accurate.
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` That said, Mr. Buroker, what is the
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`basis for waiving the rules here?
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` We're having a bit of trouble
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`understanding this. The decision on
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`institution in this case was entered after the
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`decision in SAS, and so this isn't a situation
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`where we've retroactively added some claims
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`back in. So I'm interested in hearing a little
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`bit more about what your basis is for waiving
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`the rules here.
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` MR. BUROKER: I think the basic is
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`that the general framework of how things
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`proceed in an IPR now that -- you know,
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`previously the board would never entertain
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`argument on claims that it didn't find in the
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`institution decision if the burden had been
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`preliminarily met. And so it made sense that
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`the rules would lay out that the opposition in
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`the Patent Owner's response would deal with the
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`arguments first, because in every other
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`institution decision, all the claims were
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`preliminarily found to be invalid. And so the
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`Patent Owner's response naturally would just
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`deal with challenging the invalidity
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`determination or the initial determination, and
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`a reply would then go forward and respond to
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`that.
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` Now we've got situations in all of
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`these in the post-SAS era, including this case
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`where it was -- the SAS decision came out a few
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`weeks before the institution, where the
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`preliminary determination in the institution
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`decision is a bit of a mixed bag. Some claims
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`were found to be where we haven't met the
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`burden, and some claims are -- your institution
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`decision found that there was not sufficient
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`evidence to meet the burden.
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` On those claims there has to be a
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`vehicle for us to convince the board why we are
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`correct.
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` And if the Patent Owner waives its
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`response like it is saying it's going to do
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`here and we can't submit supplemental
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`information, which we attempted to do, and we
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`can't submit a reply, what is the vehicle
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`otherwise for us to make our record?
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` And that was the point we were
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`trying to make in the submission we made, is if
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`we don't get some vehicle to present additional
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`argument and convince the board why we were
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`right, then there is a preordained outcome and
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`there is a due process problem. And we need to
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`be able to make that argument in an -- whatever
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`document you want to call it, whether it's a
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`reply or supplemental information.
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` There's evidence here to demonstrate
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`why the grounds instituted, the
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`Harari/Wang/Dumas grounds, shows that these
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`claims are invalid. And we are asking for some
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`vehicle to set aside the rules so we can make
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`that argument before you all reach a final
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`written decision based only -- if the ruling is
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`that we don't get to file a reply, then the
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`only evidence you will be ruling on would be
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`what's in our petition; and therefore, the
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`institution decision would necessarily look a
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`lot like the final written decision. There has
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`to be some vehicle for new evidence to come
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`into the record after an institution decision
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`to address those claims where your initial
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`determination was that the burden wasn't met.
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` And in this case there is a change
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`of claim construction. There was a change in
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`claim construction in the District Court.
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`There was expert testimony that came to light
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`after the petition that we are trying to get
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`into the record. And all those things should
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`be considered, we believe, for fundamental
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`fairness and due process.
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` And the current rules, candidly,
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`aren't set up to address this. They do say
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`that, you know, the default is that you only
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`get in a reply to respond to what's in the
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`Patent Owner's response. Again, that made
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`sense when the Patent Owner response was only
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`dealing with -- was likely to respond to every
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`claim because all of the claims were
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`preliminarily deemed to be invalid.
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` But now that the -- that there are
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`institution decisions that deal with a mixed
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`bag, or at least some claims that aren't
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`preliminarily determined to be invalid, there
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`has to be a vehicle available to Petitioners.
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` ADMINISTRATIVE PATENT JUDGE: Well,
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`we don't understand SAS to change our rule that
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`a reply is allowed only to respond to issues in
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`the Patent Owner response.
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` I mean, we -- a request for
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`rehearing would have been the vehicle to
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`reconsider what we -- Petitioner argues that we
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`might have missed in the decision on
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`institution.
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` And Petitioner in this case didn't
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`file a request for a hearing. Is that correct?
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` MR. BUROKER: Well, that's correct,
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`because a reconsideration is only limited to
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`the evidence in the petition.
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` And what we are saying, Your Honor,
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`is that we should be permitted to present
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`additional evidence in addition to what was in
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`the petition. Now that there is an institution
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`and the trial is instituted in that trial
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`proceeding, we should be permitted to present
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`additional evidence. So a reconsideration
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`would not have allowed us to do that.
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` And you're right the reply rule
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`currently says that it's limited only to the
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`response, and SAS doesn't change that rule.
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`But the way that the board has implemented the
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`rules that it's going to institute on every
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`claim and every ground, there has to be a
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`procedural mechanism.
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` And that's why we're asking to set
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`aside the current rules to allow that new
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`evidence to be submitted and considered before
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`you issue a final written decision.
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` ADMINISTRATIVE PATENT JUDGE: All
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`right. Well, we considered the arguments, and
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`I think we're going to go ahead and authorize
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`briefings here.
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` Let me just put you on a brief hold
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`for a minute while I confer with my panel.
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` MR. BUROKER: Okay. Thank you.
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` (Recess was taken from 1:17 p.m. to
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`1:19 p.m.)
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`This is Judge Boudreau. I'm back on the line.
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` I've conferred with my panel, and
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`we're going to go ahead and authorize a motion
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`for leave to file a reply in the absence of
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`Patent Owner's response. And that motion will
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`be limited to five pages and will also
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`authorize an opposition limited to five pages.
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` Mr. Buroker, would you be able to
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`get that motion on file within a week from
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`today? Let me see. So that would be by
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`August 8th.
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` MR. BUROKER: If we could have till
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`Friday, that would be great, because we might
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`not get the transcript till tomorrow, and we'd
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`like to review that, if possible.
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` So if we could have till the 9th,
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`next Friday, that would be great. But
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`otherwise, the 8th would -- we could make that
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`work too.
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` Oh, I'm sorry. I'm saying Friday
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`the 9th. The 9th is Thursday.
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` Yes, if we could have till the 9th,
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`that would be great.
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` ADMINISTRATIVE PATENT JUDGE:
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`Till -- the 9th is Thursday, that's right.
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` MR. BUROKER: Yep.
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` ADMINISTRATIVE PATENT JUDGE: Yeah,
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`I may have misspoken.
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` And then the opposition, Mr.
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`Iturralde, one week after that? So the 16th?
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` MR. ITURRALDE: That's fine, Your
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`Honor. Thank you.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`Thank you.
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` And just to be clear, in the motion,
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`Mr. Buroker, you may describe the new evidence,
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`but don't file any new exhibits unless and
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`until we grant the motion.
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` MR. BUROKER: Okay. Understood.
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` ADMINISTRATIVE PATENT JUDGE: All
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`right.
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` With that, is there anything else
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`that either party would like to bring up at
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`this time?
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` MR. ITURRALDE: No, Your Honor.
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`That's all for Patent Owner. Thank you.
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` MR. BUROKER: Nothing else for
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`Petitioner.
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` ADMINISTRATIVE PATENT JUDGE: Okay.
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`Thank you both.
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` This call is adjourned.
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` (Time Noted: 1:21 p.m.)
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`District of Columbia, to wit:
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` I, Stacey L. Daywalt, a Notary
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`Public of the District of Columbia, do hereby
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`certify that the proceedings were recorded
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`stenographically by me and this transcript is a
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`true record of the proceedings.
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` I further certify that I am not of
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`counsel to any of the parties, nor an employee
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`of counsel, nor related to any of the parties,
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`nor in any way interested in the outcome of
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`this action.
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` As witness my hand and Notarial Seal
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`this 7th day of August, 2018.
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` __________________________________________
`
` Stacey L. Daywalt, Notary Public
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` My Commission Expires: 4/14/2021
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