Reister, Andrea
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Tuesday, November 29, 2016 4:49 PM
`Reister, Andrea; Trials
`Robbins, Jennifer L; Longton, Rick; Krygowski, Evan; Matthew Dowd;
`wjenks@jenksiplaw.com; sparmelee@wsgr.com; mrosato@wsgr.com; jmills@wsgr.com;
`mfedowitz@merchantgould.com; devans@merchantgould.com;
`gspeier@carlsoncaspers.com; jali@carlsoncaspers.com
`RE: IPR2016-00204 (IPR2016-01101, -01242, -01245 joined) Request for Conference
`
`Counsel,
`
`The panel authorizes Patent Owner to file a two-page submission, specifically identifying what issue(s) in the Reply,
`according to Patent Owner, exceed the proper scope of a reply, or where, according to Patent Owner, the Reply uses image
`text boxes and citation formats to improperly exceed the required word count. No explanation, elaboration, or discussion
`should be included in the submission. We further authorize Petitioner to file a two-page responsive submission to Patent
`Owner’s submission. In relation to the scope of the Reply, the responsive submission should not include arguments and
`explanations. It should simply, on a point-by-point basis, identify by citation specific portions of the Patent Owner
`Response that it believes justifies the material in the Reply. In the same responsive submission, Petitioner also may
`provide a short response regarding points raised by Patent Owner regarding the required word count. When rendering a
`final written decision, we will consider both submissions.
`
`Patent Owner’s two-page, non-argumentative submission is due on December 5, 2016, and Petitioner’s two-page
`responsive submission is due on December 9, 2016.
`
`Thanks,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Reister, Andrea [mailto:areister@cov.com]
`Sent: Monday, November 28, 2016 7:40 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Robbins, Jennifer L <jrobbins@cov.com>; Longton, Rick <rlongton@cov.com>; Krygowski, Evan
`<EKrygowski@cov.com>; Matthew Dowd <mjdowd@dowdpllc.com>; wjenks@jenksiplaw.com; sparmelee@wsgr.com;
`mrosato@wsgr.com; jmills@wsgr.com; mfedowitz@merchantgould.com; devans@merchantgould.com;
`gspeier@carlsoncaspers.com; jali@carlsoncaspers.com
`Subject: IPR2016-00204 (IPR2016-01101, -01242, -01245 joined) Request for Conference
`
`Dear PTAB:
`
` I
`
` write on behalf of Patent Owner in IPR2016-00204 (IPR2016-01101, -01242, -01245
`joined). Petitioner’s Reply and accompanying exhibits filed on November 14, 2016 include argument
`and evidence outside the scope of a proper reply as defined in 37 C.F.R. § 42.23(b). Accordingly,
`Patent Owner requests a conference with the Board to seek authorization to file a motion to strike, or
`other paper suitable to address the arguments and evidence outside the scope of a proper reply. In
`addition, Patent Owner seeks guidance from the Board on the permissibility of using image text boxes
`
`1
`
`Argentum Pharm. v. Research Corp. Techs., IPR2016-00204
`RCT EX. 2191 - 1/2
`
`

`
`and citation formats without spaces when doing so affects the word count of the Reply by
`approximately 200 words.
`
`The parties have met and conferred regarding the issues. Counsel for the parties are available for a
`conference on December 6, 2016 at 2:00 PM. Counsel for Petitioners are copied on this
`communication.
`
`Respectfully,
`
`Andrea G. Reister
`
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001-4956
`T +1 202 662 5141 | areister@cov.com
`www.cov.com
`
`
`
`
`
`
`
`
`2
`
`Argentum Pharm. v. Research Corp. Techs., IPR2016-00204
`RCT EX. 2191 - 2/2