From: Trials [mailto:Trials@USPTO.GOV]
`Sent: Thursday, October 19, 2017 1:22 PM
`To: Trials; Victor Hardy; Heidi Keefe
`Cc: Weinstein, Mark; David Silbert; Minghui Yang; Sharif E. Jacob; Mead, Lowell; Nancy Linck
`Subject: RE: IPR2013-00480 and IPR2013-00481 Request for Conference Call
`
`Counsel:
`
`In light of the Federal Circuit's decision to affirm-in-part and reverse-in-part, the panel did not take
`further action, as the further actions proposed by Patent Owner are not consistent with the Federal
`Circuit's mandate.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`-----Original Message-----
`From: Trials
`Sent: Friday, December 02, 2016 5:09 PM
`To: Victor Hardy <vhardy@dpelaw.com>; Keefe, Heidi <hkeefe@cooley.com>
`Cc: Trials <Trials@USPTO.GOV>; Weinstein, Mark <mweinstein@cooley.com>; David Silbert
`<DSilbert@KVN.com>; Minghui Yang <myang@dpelaw.com>; SJacob@kvn.com; Mead, Lowell
`<lmead@cooley.com>; Nancy Linck <nancylinck@outlook.com>
`Subject: RE: IPR2013-00480 and IPR2013-00481 Request for Conference Call
`
`Counsel,
`
`The Board has received the Federal Circuit's mandate, and will issue any necessary orders in due course.
`No further briefing or conference calls are necessary at this time.
`
`Thanks,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`
`SRA - Exhibit 2127
`Facebook, Inc. et al. v. SRA, LLC
`IPR2013-00480
`
`1 of 3
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`

`

`-----Original Message-----
`From: Victor Hardy [mailto:vhardy@dpelaw.com]
`Sent: Thursday, December 01, 2016 12:51 PM
`To: Keefe, Heidi <hkeefe@cooley.com>
`Cc: Trials <Trials@USPTO.GOV>; Weinstein, Mark <mweinstein@cooley.com>; David Silbert
`<DSilbert@KVN.com>; Minghui Yang <myang@dpelaw.com>; SJacob@kvn.com; Mead, Lowell
`<lmead@cooley.com>; Nancy Linck <nancylinck@outlook.com>
`Subject: RE: IPR2013-00480 and IPR2013-00481 Request for Conference Call
`
`The Federal Circuit did not conclude that claims 1 and 5 of the '494 patent and claim 21 of the '571
`patent were unpatentable but rather merely concluded that the grounds relied on by the Board to
`determine those claims had not been proven unpatentable were in error. The Board did not make any
`findings regarding the other limitations (and arguments of SRA) of the claims and neither did the Federal
`Circuit. Thus, on remand, the Board should consider those other limitations and arguments. As the
`PTAB recognizes, all appeals from the PTAB decided by the Federal Circuit are in fact remands to the
`PTAB to take action consistent with the Federal Circuit's opinion. This one is no exception.
`
`Since the opinion did not find the claims unpatentable, but merely found the grounds relied upon for
`the Board's for patentability in error, the Board must take up the remaining unadjudicated issues and
`limitations in a manner consistent with the opinion.
`
`-----Original Message-----
`From: Keefe, Heidi [mailto:hkeefe@cooley.com]
`Sent: Monday, November 28, 2016 11:58 PM
`To: Victor Hardy
`Cc: trials@uspto.gov; Weinstein, Mark; David Silbert; Minghui Yang; SJacob@kvn.com; Mead, Lowell
`Subject: Re: IPR2013-00480 and IPR2013-00481 Request for Conference Call
`
`Petitioners respectfully disagree with Patent Owner. The Federal Circuit has issued its mandate and
`there is no further action to be taken by the Board in this matter beyond effectuating that mandate.
`
`On September 9, 2016, the Federal Circuit issued its judgment reversing the determination that claims 1
`and 5 of the '494 patent and claim 21 of the '571 patent were not proven invalid (and confirming the
`invalidity of the remaining claims at issue, so that all claims at issue are invalid). The Federal Circuit did
`not remand the cases to the Board for any further proceedings. Patent Owner subsequently filed
`petitions for rehearing by the Federal Circuit. The Federal Circuit denied those petitions.
`
`The Federal Circuit has issued its mandate. The arguments Patent Owner raises in its email below were
`not raised during the merits briefing. The Federal Circuit explicitly considered and rejected all of the
`arguments Patent Owner raised in its merits briefing, and denied Patent Owner's petitions for rehearing
`and rehearing en banc that attempted to raise untimely new arguments. Nothing remains for the Board
`or the Patent Office to do in these IPR proceedings except to cancel the invalid claims.
`
`Respectfully, Heidi Keefe.
`
`On Nov 23, 2016, at 11:27 AM, Victor Hardy <vhardy@dpelaw.com<mailto:vhardy@dpelaw.com>>
`wrote:
`
`
`2 of 3
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`

`

`Your honors,
`Patent Owner requests a conference call to discuss whether the Appellate decision has addressed all
`outstanding factual issues in IPR Nos. IPR2013-00480 and IPR2013-00481. The Federal Circuit's opinion
`did not address arguments made by Patent Owner to the Board and make factual finding as to all of the
`limitations with respect to claims 1 and 5 of the '494 patent and claim 21 of the '571 patent.
`Importantly, the Court's Opinion never states that all of the limitations are present of any of the above
`claims in the cited art, nor does it ever explicitly find that any of these claims is unpatentable. For
`example, the Board found dependent claim 5 of the '494 patent patentable because independent claim
`1 was patentable. The Final Written Decision never addressed the elements of claim 5 and the Board's
`Decision explicitly states that it did not reach the limitations of claim 5. The Federal Circuit never
`addressed claim 5's limitations in its opinion or made factual findings with respect to the claim-thus
`claim 5 remains completely unadjudicated.
`Similar issues remain outstanding for claim 1 of the '494 patent and claim 21 of the ''571 patent-
`particularly with respect to the claimed alignment of steps (especially, the deriving step) with respect to
`a specific selected node. See Petitions for Rehearing. Patent Owner therefore requests the Board's
`consideration of these issues before final resolution of these IPRs.
`Patent Owner requests permission to file supplemental briefing identifying unaddressed issues among
`the voluminous filings and discussion of these issues in light of the Court's opinion. Patent Owner is
`available the week of November 28.
`Victor Hardy
`
`
`
`
`
`3 of 3
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