`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Tuesday, July 28, 2015 3:34 PM
`Worth, Gerald E.
`Trials; david.cavanaugh@wilmerhale.com; michaelh.smith@wilmerhale.com;
`don.steinberg@wilmerhale.com; Capraro, Jr., Joseph A.; PTABMattersBoston
`RE: IPR2015-01375, request for permission to submit a Request for Certificate of
`Correction
`
`Counsel: Ex parte communication is prohibited in PTAB inter partes proceedings. 37 C.F.R. 42.5(d). All future email
`correspondence to the Board regarding this case must include (Cc) opposing counsel.
`
`In response to Patent Owner’s specific inquiry made in the original email, PO should not file any papers, including a
`request to a department of the Office outside of the PTAB to issue a Certificate of Correction, while the case is pending
`before the PTAB. 37 CFR 42.3.
`
`In lieu of a motion, at this time, Patent Owner may address the alleged error(s) in its preliminary response.
`
`Regards,
`
`Derek Taylor
`Patent Trial and Appeal Board
`571‐272‐7822
`
`
`
`From: Worth, Gerald E. [mailto:gworth@proskauer.com]
`Sent: Tuesday, July 28, 2015 12:41 PM
`To: Trials
`Subject: IPR2015-01375, request for permission to submit a Request for Certificate of Correction
`
`Dear Sir
`
`
`The Patent Owner seeks permission to request that the Commissioner issue a Certificate of Correction for U.S. Patent
`No. 8,048,000. The U.S. Patent and Trademark Office (PTO) issued U.S. Patent No. 9,048,000 on June 2, 2015, which is
`subject to IPR2015‐01375, filed June 12, 2015.
`
`
`The Patent Owner, Energetiq, Inc., wishes to submit a request asking the PTO to correct errors in issued claim 25, as
`follows:
`
`
`…emitted by the plasma and reflecting the plasma-generated [[lt]] light toward the sapphire [[window.]]
`window, wherein the emitted light and laser [[ever y]] energy pass through the window.
`
`
`These errors are clearly disclosed in the records of the PTO, e.g., on page 6 of the Amendment and Response filed by the
`Patent Owner on March 5, 2015 during prosecution of the application.
`
`
`However, 37 CFR 1.322(a)(3) now recites the following:
`
`
`1
`
`Energetiq
`Exhibit 2003, Page 1
`Case IPR2015-01375
`
`
`
`"(3) If the request relates to a patent involved in an interference or trial before the Patent Trial and Appeal Board, the
`request must comply with the requirements of this section and be accompanied by a motion under §41.121(a)(2),
`§41.121(a)(3), or §42.20 of this title."
`
`
`
`The Patent Owner suggests that no motion need be filed with the PTAB for this purpose at this time since a trial has not
`been granted.
`
`
`Please let us know if we need to seek permission from the PTAB to submit a Request for Certificate of Correction seeking
`the above corrections.
`
`
`Sincerely yours,
`
`Jerry Worth
`
`
`Gerald E. Worth, P.E.
`Patent Counsel
`
`Proskauer
`One International Place
`Boston, MA 02110-2600
`d 617.526.9626
`f 617.526.9899
`c 860.460.4318
`gworth@proskauer.com
`
`
`
`
`
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`
`
`2
`
`Energetiq
`Exhibit 2003, Page 2
`Case IPR2015-01375