From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Rene Vazquez
`Holloway, Clay
`raymond joao; Steven W. Ritcheson (HGD Law Firm); PG_JCMS; FCCimino@Venable.com;
`MSWoodworth@Venable.com; jackson.ho@klgates.com; Martinez, Stephanie; Kadaba, Wab; Baca, Mike
`Re: IPR Nos. 2015-1482; 1484; 1485; and 1486
`Friday, July 17, 2015 2:33:35 PM
`
`Clay,
`
`Thank you for sending us these documents and offering to answer additional questions; we do have
`a few more. The documents you forwarded only seem directed to a couple of topics – that
`Petitioners purportedly began the filing process at the 11th hour and that there was some sort of
`delay in the documents being filed. There is other pertinent information needed to fully
`understand whether this is a technical/clerical issue, as you have represented, or something else
`completely. For example, we cannot determine from the information you sent so far whether or not
`Petitioner had fully prepared and finalized all seven IPR petitions on June 23, 2015, as you are now
`claiming, which would include payment for and service of each petition on the patent owner. Along
`with that information, we would ask that Petitioners provide answers, including any supporting
`documentation, to the following questions for each IPR petition (2015-01466, -01477, -01478, -
`01482, -01484, -01485, -01486):
`
`
`· Upon review of the screen shots you provided, only one shows a date and time on June 23.
`One shows a date of nearly 6:00 am on June 24, and the rest contain no date or time
`information. Moreover, none of the screenshots show anything other than routine progress
`of the ordinary document upload process . How is it that these screen shots demonstrate
`technical difficulties occurred?
`· It appears that the petitions were not actually shipped on June 23 as stated in the
`electronically-filed certifications. The shipping information on the boxes received by Mr.
`Joao and Mr. Ritcheson indicate the boxes from both Venable and Kilpatrick were not
`shipped until June 24. When were these petitions served?
`· Is it your position that the certificates of service filed with the PTAB are all accurate with
`respect to date and method of service?
`· When was payment made by petitioners?
`
`
`As you may appreciate, this is a complicated, and frankly, very concerning matter for JCMS. JCMS is
`continuing to work through the details and will review the additional information received from you
`to determine if any additional questions remain.
`
`Regards,
`
`René
`
`On Jul 16, 2015, at 3:08 PM, Holloway, Clay
`<CHolloway@kilpatricktownsend.com> wrote:
`
`Page 1 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`Ms. Vazquez,
`
`Attached please find all emails to the PTAB and the screen shots referenced therein
`and in my email. As for phone calls, I received a call from a Maria McNaan (sp?) at
`1:48pm EDT from phone number 571-272-4645 explaining what I referenced in my
`email that we should first reach out to you, appeared counsel, and see if the motion
`would be opposed or not.
`
` am happy to answer any other questions.
`
` I
`
`
`Clay Holloway
`Kilpatrick Townsend & Stockton LLP
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6537 | cell 770 778 6158 | fax 404 541 3484
`cholloway@kilpatricktownsend.com | My Profile | vCard
`
`From: Rene Vazquez [mailto:rvazquez@hgdlawfirm.com]
`Sent: Thursday, July 16, 2015 11:36 AM
`To: Holloway, Clay
`Cc: raymond joao; Steven W. Ritcheson (HGD Law Firm); PG_JCMS;
`FCCimino@Venable.com; MSWoodworth@Venable.com; jackson.ho@klgates.com;
`Martinez, Stephanie; Kadaba, Wab; Baca, Mike
`Subject: Fwd: IPR Nos. 2015-1482; 1484; 1485; and 1486
`
`Mr. Holloway,
`
`Mr. Joao brought your email below to my attention. As an initial matter, please copy
`me on all future correspondence regarding any of the IPRs filed against the Joao
`Control & Monitoring Systems, LLC (“JCMS”) patents, as I am backup counsel for said
`IPRs.
`
`We are in the process of evaluating your request. To this end, we request that you
`please forward copies of the screenshots that you referenced in your email. In
`addition, we request that you please forward copies of any written communications
`with the PTAB regarding this issue, to the extent such written communications exist.
`Finally, if you have had any telephone discussions with the PTAB regarding this issue,
`then please provide us with the names of the individuals that you spoke with at the
`PTAB.
`
`We look forward to receiving this information.
`
`Best regards,
`
`René
`
`
`
`
`
`Page 2 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`<image001.jpg>
`
`
`
`
`René A. Vazquez
`Of Counsel
`
`rvazquez@hgdlawfirm.com
`www.hgdlawfirm.com
`
`18296 St. Georges Ct.
`Leesburg, Virginia 20176
`Tel: 205-236-3336
`Toll Free: 1-800-241-9779
`Direct: 571-206-1375
`Cell: 703-989-2244
`Fax: 205-327-9114
`
`ALABAMA•CALIFORNIA•D.C. METRO•GEORGIA
`•NEW JERSEY•NEW YORK
`
`
`
`
`
`Begin forwarded message:
`
`From: raymond joao <rayjoao@optonline.net>
`Subject: FW: IPR Nos. 2015-1482; 1484; 1485; and 1486
`Date: July 16, 2015 at 10:45:47 AM EDT
`To: "Steven W. Ritcheson (HGD Law Firm)" <swritcheson@hgdlawfirm.com>,
`Rene Vazquez <rvazquez@hgdlawfirm.com>
`
`
`
`-------- Begin forwarded message --------
`
`Subject: IPR Nos. 2015-1482; 1484; 1485; and 1486
`
`Date: 07/16/15 09:44:43 AM
`
`From: "Holloway, Clay" <CHolloway@kilpatricktownsend.com>
`
`To: "rayjoao@optonline.net" <rayjoao@optonline.net>
`Cc: "Woodworth, Megan S." <MSWoodworth@Venable.com>,
`"Cimino, Frank C., Jr." <FCCimino@Venable.com>, "Ho, Jackson"
`<Jackson.Ho@klgates.com>, "Martinez, Stephanie"
`<SMartinez@kilpatricktownsend.com>, "Kadaba, Wab"
`<WKadaba@kilpatricktownsend.com>, "Baca, Mike"
`<MBaca@kilpatricktownsend.com>
`
`Mr. Joao,
`
`My name is Clay Holloway and I am backup counsel for the Petitioners in the above
`listed IPRs. I am writing this morning to indicate the Petitioners’ intention in these IPRs
`to file motions with PTAB seeking to afford these four IPRs a filing date of June 23,
`
`Page 3 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`2015. For IPR Nos. 1482; 1485; and 1486 the process for filing the Petitions began at
`approximately 10:50pm on June 23 but because of technical issues with PRPS (the
`system refused to accept properly formatted exhibits absent repeated submission) the
`filings took approximately seven hours to upload. Screen shots indicating the difficulty
`and notice to the PTAB began before Midnight on the 23d. For IPR No. 1484, the PRPS
`system continually and erroneously failed to recognize the filer as an authorized user
`of the payment account associated with the Petition. As you are likely aware, the PTAB
`has regularly found that such clerical and technical issues ought not to preclude the
`affording of a filing date for Petitions and other Filings in the IPR context.
`
`After notifying the PTAB of these issues, the PTAB indicated we should wait for patent
`owner to enter and appearance in the matters and then seek your input on whether
`you will oppose the motions. Now that you have appeared in all four petitions, we
`inquire as to whether you will oppose these motions.
`
`Please let us know at you earliest convenience.
`
`Regards,
`Clay
`
`<image002.jpg>
`
`
`
`Clay Holloway
`
`Kilpatrick Townsend & Stockton LLP
`
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`
`office 404 815 6537 | cell 770 778 6158 | fax 404 541 3484
`
`cholloway@kilpatricktownsend.com | My Profile | vCard
`
`
`
`
`
`Confidentiality Notice:
`
`This communication constitutes an electronic communication within the meaning of the Electronic Communications
`Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of
`this message. This transmission, and any attachments, may contain confidential attorney-client privileged information
`and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any
`of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us
`immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without
`reading or saving in any manner.
`
`***DISCLAIMER*** Per Treasury Department Circular 230: Any U.S. federal tax advice contained in this
`communication (including any attachments) is not intended or written to be used, and cannot be used, for the
`purpose of (i) avoiding penalties under the Internal Revenue Code or (ii) promoting, marketing or recommending to
`another party any transaction or matter addressed herein.
`
`
`Page 4 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`<image003.gif>
`
`
`From: "Holloway, Clay" <CHolloway@kilpatricktownsend.com>
`Subject: IPR 2015-1482, 2015-1485, 2015-1486 -- Request for the
`Assignment of Panel(s)
`Date: June 26, 2015 at 2:55:21 PM EDT
`To: "trials@uspto.gov" <trials@uspto.gov>
`Cc: "Kadaba, Wab" <WKadaba@kilpatricktownsend.com>, "Cimino, Frank
`C., Jr." <FCCimino@Venable.com>, "Woodworth, Megan S."
`<MSWoodworth@Venable.com>, "Ho, Jackson"
`<Jackson.Ho@klgates.com>, "Robinson, Natasha"
`<NaRobinson@kilpatricktownsend.com>, "Holloway, Clay"
`<CHolloway@kilpatricktownsend.com>
`
`To the Board of Patent Appeals and Interferences:
`
`My name is Clay Holloway and I am Backup Counsel for the Petitioners in IPR Nos.
`2015-1482, 2015-1485, and 2015-1486 which were being filed on June 23, 2015 when
`technical issues in the PRPS system prevented completion of that process. Petitions
`2015-1482 and 2015-1485 challenge claims of U.S.P.N. 7,397,363 and Petition 2015-
`1486 challenges claim of U.S.P.N. 6,549,130.
`
` I
`
` am writing to request the early assignment of a Board Panel for each of Petitions
`2015-1482, 2015-1485, and 2015-1486, so that Petitioners may seek permission from
`the Board to file a Motion to Afford the Correct Filing Date for each of these Petitions
`as June 23, 2015. As would be demonstrated by the motion, we attempted to
`complete filing of the Petitions on June 23, 2015. We filed the Petitions once we were
`able to work around technical problems that we encountered with the PRPS system,
`which ultimately resulted in a filing after midnight and a provisional filing date of June
`24, 2015.
`
`The Board’s consideration and favorable action is respectfully requested.
`
`Respectfully submitted,
`
`Clay Holloway
`Registration No. 58,011
`Backup Counsel for Petitioner, CoxCom LLC
`
`
`
`<image001.gif>
`
`Clay Holloway
`Kilpatrick Townsend & Stockton LLP
`
`Page 5 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6537 | cell 770 778 6158 | fax 404 541 3484
`cholloway@kilpatricktownsend.com | My Profile | vCard
`
`Confidentiality Notice:
`This communication constitutes an electronic communication within the meaning of the Electronic Communications
`Privacy Act, 18 U.S.C. Section 2510, and its disclosure is strictly limited to the recipient intended by the sender of
`this message. This transmission, and any attachments, may contain confidential attorney-client privileged information
`and attorney work product. If you are not the intended recipient, any disclosure, copying, distribution or use of any
`of the information contained in or attached to this transmission is STRICTLY PROHIBITED. Please contact us
`immediately by return e-mail or at 404 815 6500, and destroy the original transmission and its attachments without
`reading or saving in any manner.
`
`From: "Ho, Jackson" <Jackson.Ho@klgates.com>
`Subject: IPR 2015-01484: Request for Early Assignment of a Board
`Panel
`Date: June 30, 2015 at 6:43:15 PM EDT
`To: "Trials@uspto.gov" <Trials@uspto.gov>
`Cc: "Cimino, Frank (EXTERNAL)" <fccimino@venable.com>, "Simons,
`David A." <David.Simons@klgates.com>, "Woodworth, Megan
`(EXTERNAL)" <mswoodworth@venable.com>, "Kadaba, Wab"
`<WKadaba@kilpatricktownsend.com>, "Holloway, Clay"
`<CHolloway@kilpatricktownsend.com>
`
`To the Patent Trial and Appeal Board:
`
`My name is Jackson Ho and I am Lead Counsel for the Petitioners in IPR No.
`2015-1484, which challenge claims of U.S. Patent No. 7,277,010.
`
` I
`
` am writing to request an early assignment of a Board Panel for IPR No. 2015-
`1484, so that Petitioners may seek permission from the Board to file a Motion to
`Afford the Correct Filing Date of June 23, 2015 for the petition. As will be
`demonstrated by the motion, Petitioners attempted to complete the filing of the
`Petition on June 23, 2015, but an unintentional technical/clerical error prevented
`the completion of the process. The technical/clerical error ultimately resulted in
`a filing after midnight and a provisional filing date of June 24, 2015.
`
`The Board’s consideration and favorable action is respectfully requested.
`
`Respectfully submitted,
`
`Jackson Ho
`Reg. No. 72,360
`
`<image001.jpg>
`
`Page 6 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`Jackson Ho
`K&L Gates LLP
`630 Hansen Way
`Palo Alto, CA 94304
`Phone: +1.650.798.6719
`Fax: +1.650.798.6701
`jackson.ho@klgates.com
`www.klgates.com
`
`
`From: "Robinson, Natasha" <NaRobinson@kilpatricktownsend.com>
`Subject: FW: Problems with System - request 6/23/15 file date
`Date: June 24, 2015 at 12:33:24 AM EDT
`To: "Trials@USPTO.GOV" <Trials@USPTO.GOV>,
`"'Althea.Wilburn@USPTO.GOV'" <Althea.Wilburn@USPTO.GOV>
`
`Please note, still having issue with the system, see the attached second capture.
`
`Natasha Robinson
`Paralegal
`Kilpatrick Townsend & Stockton LLP
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6265 | cell 347 495 4944 | fax 404 541 4710
`narobinson@kilpatricktownsend.com | www.kilpatricktownsend.com | vCard
`
`From: Robinson, Natasha
`Sent: Wednesday, June 24, 2015 12:23 AM
`To: 'Trials@USPTO.GOV'; 'Althea.Wilburn@USPTO.GOV'
`Subject: Problems with System - request 6/23/15 file date
`
`PTAB,
`
` I
`
` was trying to file IPRs and having issues with the system when uploading my exhibits
`that are properly sized under 25 megabytes. I am now back on the system and have
`been able to upload, but of course, it is now after midnight and 6/24/15. I am going to
`file my 3 IPRs and respectfully request the filing date of 6/23/15. After a few
`unsuccessful attempts to upload, I finally took a snip it of what was transpiring when I
`was trying to file (see the attached).
`
` I
`
` am also sending this email to Althea Wilburn, as I know as a contact to make sure that
`PTAB receives this email request.
`
` am going to contact PTAB in the morning when your office is open to further discuss.
`
` I
`
`
`Thank you,
`Natasha Robinson
`
`Page 7 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`
`<image001.gif>
`
`Natasha Robinson
`Paralegal
`Kilpatrick Townsend & Stockton LLP
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6265 | cell 347 495 4944 | fax 404 541 4710
`narobinson@kilpatricktownsend.com | www.kilpatricktownsend.com | vCard
`
`<Capture 2.PNG>
`
`From: "Robinson, Natasha" <NaRobinson@kilpatricktownsend.com>
`Subject: FW: Problems with System - request 6/23/15 file date
`Date: June 24, 2015 at 2:23:45 AM EDT
`To: "Trials@USPTO.GOV" <Trials@USPTO.GOV>,
`"'Althea.Wilburn@USPTO.GOV'" <Althea.Wilburn@USPTO.GOV>
`
`Still having issues filing
`
`Natasha Robinson
`Paralegal
`Kilpatrick Townsend & Stockton LLP
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6265 | cell 347 495 4944 | fax 404 541 4710
`narobinson@kilpatricktownsend.com | www.kilpatricktownsend.com | vCard
`
`From: Robinson, Natasha
`Sent: Wednesday, June 24, 2015 12:33 AM
`To: 'Trials@USPTO.GOV'; 'Althea.Wilburn@USPTO.GOV'
`Subject: FW: Problems with System - request 6/23/15 file date
`
`Please note, still having issue with the system, see the attached second capture.
`
`Natasha Robinson
`Paralegal
`Kilpatrick Townsend & Stockton LLP
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6265 | cell 347 495 4944 | fax 404 541 4710
`narobinson@kilpatricktownsend.com | www.kilpatricktownsend.com | vCard
`
`From: Robinson, Natasha
`Sent: Wednesday, June 24, 2015 12:23 AM
`To: 'Trials@USPTO.GOV'; 'Althea.Wilburn@USPTO.GOV'
`Subject: Problems with System - request 6/23/15 file date
`
`PTAB,
`
`
`Page 8 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`I was trying to file IPRs and having issues with the system when uploading my exhibits
`that are properly sized under 25 megabytes. I am now back on the system and have
`been able to upload, but of course, it is now after midnight and 6/24/15. I am going to
`file my 3 IPRs and respectfully request the filing date of 6/23/15. After a few
`unsuccessful attempts to upload, I finally took a snip it of what was transpiring when I
`was trying to file (see the attached).
`
` I
`
` am also sending this email to Althea Wilburn, as I know as a contact to make sure that
`PTAB receives this email request.
`
` am going to contact PTAB in the morning when your office is open to further discuss.
`
` I
`
`
`Thank you,
`Natasha Robinson
`
`<image001.gif>
`
`Natasha Robinson
`Paralegal
`Kilpatrick Townsend & Stockton LLP
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6265 | cell 347 495 4944 | fax 404 541 4710
`narobinson@kilpatricktownsend.com | www.kilpatricktownsend.com | vCard
`
`<Capture3.PNG>
`
`From: "Robinson, Natasha" <NaRobinson@kilpatricktownsend.com>
`Subject: Problems with System - request 6/23/15 file date
`Date: June 24, 2015 at 12:23:15 AM EDT
`To: "Trials@USPTO.GOV" <Trials@USPTO.GOV>,
`"'Althea.Wilburn@USPTO.GOV'" <Althea.Wilburn@USPTO.GOV>
`
`PTAB,
`
` I
`
` was trying to file IPRs and having issues with the system when uploading my exhibits
`that are properly sized under 25 megabytes. I am now back on the system and have
`been able to upload, but of course, it is now after midnight and 6/24/15. I am going to
`file my 3 IPRs and respectfully request the filing date of 6/23/15. After a few
`unsuccessful attempts to upload, I finally took a snip it of what was transpiring when I
`was trying to file (see the attached).
`
` I
`
` am also sending this email to Althea Wilburn, as I know as a contact to make sure that
`PTAB receives this email request.
`
` am going to contact PTAB in the morning when your office is open to further discuss.
`
` I
`
`Page 9 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008
`
`

`
`
`Thank you,
`Natasha Robinson
`
`<image001.gif>
`
`Natasha Robinson
`Paralegal
`Kilpatrick Townsend & Stockton LLP
`Suite 2800 | 1100 Peachtree Street NE | Atlanta, GA 30309-4528
`office 404 815 6265 | cell 347 495 4944 | fax 404 541 4710
`narobinson@kilpatricktownsend.com | www.kilpatricktownsend.com | vCard
`
`<Capture.PNG>
`
`<Capture
`2.png><Capture3.png><Capture4.png><Capture5.png><Capture7.png>
`<Capture8.png>
`
`Page 10 of 10
`
`Patent Owner JCMS’s Exhibit No. 2008