Fife, Ashley
`
`From:
`
`Sent:
`To:
`Cc:
`Subject:
`
`Vignone, Maria <Maria.Vignone@USPTO.GOV> on behalf of Trials
`<Trials@USPTO.GOV>
`Wednesday, March 25, 2015 8:16 AM
`Rosato, Michael; Trials
`Argenti, Matthew; Eliot.Williams@bakerbotts.com; hop.guy@bakerbotts.com
`RE: IPR2015-00059, 60, 61, 67, 68, and 81
`
`Counsel: Patent Owner is hereby authorized to file a motion for additional discovery that is limited to the issue of
`whether the Dish entities are un-named real parties-in-interest. Patent Owner is advised that limited and targeted
`motions are more likely to be granted than broad and sweeping motions. In the event a motion for additional discovery
`is filed, Petitioner may oppose the motion in accordance with the timing and page limits set forth in Board rules.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571-272-4645
`
`
`
`
`
`From: Rosato, Michael [mailto:mrosato@wsgr.com]
`Sent: Tuesday, March 24, 2015 3:01 PM
`To: Trials
`Cc: Argenti, Matthew; Eliot.Williams@bakerbotts.com; hop.guy@bakerbotts.com
`Subject: IPR2015-00059, 60, 61, 67, 68, and 81
`
`Dear Trials:
`
`Caltech (Patent Owner) would like a conference call to discuss 1) scheduling a time for routine
`discovery and to discuss authorization for additional discovery; and 2) authorization for additional
`briefing.
`
`On March 18, 2015, in response to an invitation from the Board to do so, both Petitioner (Hughes)
`and Patent Owner concurrently filed briefs directed to the issue of whether the petitions in these
`proceedings properly identify all real parties-in-interest. With its brief Petitioner included newly
`executed declaration testimony (not previously authorized by the Board). Caltech requests that the
`Board set a time for routine discovery pursuant to 37 C.F.R. § 42.51(b)(ii).
`
`Caltech also requests a conference call to discuss whether the Board will authorize some simple
`additional discovery related to the foundation for the declaration. The Board indicated its willingness
`to consider this request during the telephonic hearing held on February 25, 2015, as reflected in the
`hearing transcript (Ex. 2016) at 21:11-17.
`
`
`1
`
`CALTECH - EXHIBIT 2017
`
`

`

`Should the Board deem Hughes’ unauthorized new testimony improper and expunges it from the
`record, then the above discovery may be unnecessary.
`
`In addition, while Petitioner has had an opportunity to respond to Caltech’s arguments regarding the
`real party-in-interest, the same cannot be said for Caltech. For this reason we also request
`authorization for a short Caltech reply brief – this request can be addressed during the call.
`
`Caltech is available for a call during the following times:
`• Wednesday, March 25th, 1:30 – 4pm EST
`• Thursday, March 26th, Noon – 4pm EST
`
`
`Sincerely,
`
`Michael T Rosato (Counsel for Patent Owner Caltech)
`Wilson Sonsini Goodrich & Rosati
`[o] 206.883.2529 | [f] 206.883.2699
`mrosato@wsgr.com
`
`
`
`This email and any attachments thereto may contain private, confidential, and privileged material for the sole
`use of the intended recipient. Any review, copying, or distribution of this email (or any attachments thereto) by
`others is strictly prohibited. If you are not the intended recipient, please contact the sender immediately and
`permanently delete the original and any copies of this email and any attachments thereto.
`
`2
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