Argenti, Matthew
`
`From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Vignone, Maria <Maria.Vignone@USPTO.GOV> on behalf of Trials
`<Trials@USPTO.GOV>
`Thursday, November 12, 2015 7:44 AM
`Rosato, Michael; Trials
`Argenti, Matthew; Torczon, Richard; Eliot.Williams@bakerbotts.com;
`hop.guy@bakerbotts.com
`RE: IPR2015-00059
`
`Counsel,
`
`For this particular request, the panel does not wish to hold a conference call. Patent Owner is hereby authorized to file
`a combined motion to exclude and motion to strike in accord with applicable rules. Petitioner may oppose, also in
`accord with applicable rules.
`
`Thank you,
`
`Maria Vignone
`Paralegal Operations Manager
`Patent Trial and Appeal Board
`571-272-4645
`
`
`
`From: Rosato, Michael [mailto:mrosato@wsgr.com]
`Sent: Thursday, November 12, 2015 7:09 AM
`To: Trials
`Cc: Argenti, Matthew; Torczon, Richard; Eliot.Williams@bakerbotts.com; hop.guy@bakerbotts.com
`Subject: IPR2015-00059
`
`Dear Trials,
`
`Caltech (Patent Owner) requests authorization to file a motion to strike certain evidence and portions of the Hughes
`(Petitioner) Reply to Patent Owner Response (Paper 29, “Petitioner’s Reply”). Specifically, the motion to strike would
`address the following:
`
`Evidence and New Argument Relating to Divsalar Reference and Status as a Printed Publication
`• Exhibit 1064 (Declaration of Robin Fradenburgh), based on Petitioner’s failure to make Ms. Fradenburgh
`available for cross-examination, subsequent refusal to withdraw the testimony, and continued reliance; and
`• Portions of Petitioner’s Reply raising new theory of unpatentability contending that the Divsalar reference
`constitutes prior art under 102(a), based on failure to raise this argument in the Petition.
`
`
`New Evidence Related to Real Party-in-Interest Issue
`• Exhibit 1076 (Declaration of Timothy Jezek), based on the Board’s previous decision to expunge an identical
`exhibit (see Paper 21 p. 4) and Petitioner’s failure to request authorization to file a motion to submit
`supplemental information.
`
`
`New Evidence Going to the Merits of the Instituted Ground
`
`1
`
`CALTECH - EXHIBIT 2031
`
`

`
`• Exhibit 1074 (Supplemental Declaration of Henry Pfister), based on the prejudice of new claim constructions first
`appearing in Petitioner’s Reply rather than in the Petition.
`
`
`In the interest of efficiency Caltech is willing to combine the requested motion to strike with its motion to exclude
`evidence, currently due on December 21, 2015. The Board might decide to authorize the requested filing by email –
`otherwise, the parties are available for conference call at the following times:
`
`
`• Monday 11/16 between 1:00 and 3:00 eastern
`• Tuesday 11/17 between 1:30 and 5:00 eastern
`
`The Petitioner has been consulted and has indicated that it will oppose this request.
`
`Regards,
`
`
`
`Michael T Rosato
`Wilson Sonsini Goodrich & Rosati
`[o] 206.883.2529 | [f] 206.883.2699
`mrosato@wsgr.com
`
`
`
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