`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials
`Monday, October 29, 2018 4:45 PM
`Chad Nydegger
`Carter, R. Trevor; Jonas, Victor P.; Sullivan, Timothy M.; David R. Todd; Anderson, Nick
`M.; Mike Frodsham
`RE: IPR2015-01691 [WNDMS-DMS1.FID1642524]
`
`Counsel:
`No conference call is necessary. An order will be rendered in due course.
`
`Regards,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Chad Nydegger <CNydegger@WNLaw.com>
`Sent: Monday, October 29, 2018 1:06 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Carter, R. Trevor <Trevor.Carter@FaegreBD.com>; Jonas, Victor P. <Victor.Jonas@FaegreBD.com>; Sullivan, Timothy
`M. <Timothy.Sullivan@faegrebd.com>; David R. Todd <DTodd@WNLaw.com>; Anderson, Nick M.
`<nick.anderson@faegrebd.com>; Mike Frodsham <MFrodsham@WNLaw.com>
`Subject: IPR2015‐01691 [WNDMS‐DMS1.FID1642524]
`
`Dear Board,
`
`I represent the Patent Owner in IPR2015‐01691. On September 17, 2018, the Board issued an order (Paper 47)
`authorizing, inter alia, Petitioner to file a brief and supporting expert declaration to address claims that were initially not
`instituted for trial, but were recently instituted on remand from the Court of Appeals for the Federal Circuit based on
`SAS Institute Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018) (see Paper 46 at 2). In authorizing Petitioner to file a brief and
`supporting declaration on the newly instituted claims, the Board admonished that “Petitioner may not submit new
`evidence, issues, or argument that it could have presented earlier, e.g. to make out a prima facie case of
`unpatentability.” (Paper 47, p. 8.) On October 19, 2018, Petitioner filed Petitioner’s Supplemental Brief Addressing Newly
`Instituted Claims 8, 11, 13 and 21‐23 ( “Supplemental Brief”) and the Supplemental Declaration of Joseph J. Beaman Jr.
`(“Supplemental Beaman Declaration”). (Paper 48 and Exh. 1038.) Contrary to the Board’s instructions, the Supplemental
`Brief and Supplemental Beaman Declaration contain new argument and evidence to make out a prima facie case of
`unpatentability that could have been presented earlier in connection with the original Petition. Thus, Patent Owner
`seeks authorization from the Board to file a motion to strike the improper portions of the Supplement Brief and to
`exclude the improper portions of the Supplemental Beaman Declaration.
`
`Counsel for Patent Owner are generally available Monday through Wednesday this week to hold a conference call with
`the Board should it like to discuss this issue.
`
`Yours truly,
`Chad Nydegger
`
`IP2015-01691
`Ex. 3003
`
`1
`
`
`
`CHAD E. NYDEGGER
`WORKMAN | NYDEGGER
`OFFICE DIRECT:801‐321‐8810
`EMAIL: CNYDEGGER@WNLAW.COM
`BIOGRAPHY: CNYDEGGER
`
`
`
`
`
`
`PRIVACY: This e-mail may contain information that is privileged or confidential. If you are not the intended recipient, please delete the e-mail and any attachments and notify the
`sender immediately, and do not use, copy, or disclose to anyone any of the contents hereof.
`
`2
`
`
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