Kevin McNish
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Attachments:
`
`Shishima, Gina <gina.shishima@nortonrosefulbright.com>
`Tuesday, May 05, 2015 1:45 PM
`'Trials@uspto.gov'
`Kevin McNish; Andrew Heinz; CeraMedic Service; Garrett, Mark; Owens, Tom;
`Platonova, Natalia
`IPR2015-00398 (Reitter) and IPR2015-00424 (Lowery) Request for Telephone
`Conference regarding Real Party in Interest
`IPR2015-00398 Petioner's Reply to Patent Owner Preliminary Response .pdf;
`Declaration for Real Party In Interst-signed.pdf; IPR2015-00424 Petitioner's Reply to
`Patent Owner Preliminary Response.pdf; Declaration for Real Party in Interest-
`unsigned.pdf
`
`Dear Paralegal Reitter and Paralegal Lowery,
`
`Petitioner CeramTec GmbH in the two above-referenced cases respectfully requests a telephone conference
`with the Board to request
`                 
` 1) permission to file a limited reply motion to each of the Patent Owner’s Preliminary Responses in the
`above referenced cases (Paper 7 in IPR2015-00398 and Paper 8 in IPR2015-00424) regarding Real Party-in-
`Interest (RPI), and/or
`                 
` 2) a decision about the RPI issue prior to the statutory deadlines of 6 months from the Notices
`According a Filing Date, which is July 12, 2015 for IPR 2015-00398 (Paper 6) and July 13, 2015 for IPR 2015-
`00424 (Paper 5). Both IPR petitions were filed on December 12, 2014, at least a month prior to the Notices.
`
`Petitioner asks for these requests because Zimmer and Zimmer Holdings—CeramTec’s customers that the
`Patent Owner contends are RPIs—were served by the Patent Owner on July 2, 2014. While Petitioner does not
`acquiesce that July 2, 2015 is the one-year bar date according to 35 USC 315(b), Patent Owner may contend
`that July 2, 2015 is the relevant date under 315(b). As July 2, 2015 precedes the 6-month dates from the Notices
`in both cases, Petitioner requests relief to file a reply motion and/or receive a decision about the RPI issues
`raised in the Patent Owner’s Preliminary Responses prior to July 2, 2015 so that the Petitioner may file
`additional petitions with different RPIs, should the Board decide accordingly.
`
`Permission to file a reply on the issue of RPI is consistent with cases such as Atlanta Gas Light Co. v. Bennett
`Regulator Guards, Inc., IPR2013-00453, Paper 22, slip op. at 4 (authorizing reply to Patent Owner’s
`supplemental preliminary response); Reflectix, Inc. v. Promethean Insulation Tech. LLC, IPR 2015-00039,
`Paper 13, slip. op. at 3; Hyundai Motor America v. Diamond Coating Technologies, LLC, IPR2014-01553,
`Paper 16; Galderma S.A. and Q-Med AB v. Allergan Indus., SAS, IPR2014-01417, Paper 12; and Aruze Gamin
`Macau, Ltd. v. MGT Gaming, Inc. IPR2014-01288, Paper 9, slip. op. at 3.
`
`Copies of the reply motions and signed and unsigned versions of the declaration (both will be signed shortly and
`are substantively similar) are attached.
`
`Alternatively, Petitioner will request during the telephone conference that 3) it be granted permission to file a
`motion under 37 CFR 42.5(b) for the Board to waive or suspend the requirement of 37 CFR 42.8(b)(1) and
`permit Petitioner to file in each case prior to July 2, 2015 an amended Mandatory Notice with the RPIs that the
`Board deems to satisfy 37 CFR 42.8(b)(1).
`
`1
`
`Exhibit 2310 Page 001
`
`CeraMedic Ex. 2310
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328
`
`

`
`
`Patent Owner has indicated it will oppose all three requests.
`
`Petitioner and Patent Owner are available at any time after 11:30 a.m. EDT on Thursday, May 7, or Friday, May
`8, to discuss these issues on a conference call, if that time is convenient for the Board.
`
`Respectfully submitted,
` 
`Gina Shishima
` 
`Lead Counsel for Petitioner, CeramTec GmbH
` 
`Gina Shishima, Ph.D. | Head of IP Transactions and Patent Prosecution, United States 
`Norton Rose Fulbright US LLP
`98 San Jacinto Boulevard, Suite 1100, Austin, Texas 78701-4255, United States
`Tel +1 512 536 3081 | Fax +1 512 536 4598
`gina.shishima@nortonrosefulbright.com
`
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`2
`
`Exhibit 2310 Page 002
`
`CeraMedic Ex. 2310
`CeramTec GmbH v. CeraMedic LLC
`Case IPR2015-01328