`Monday, January 30, 2017 4:33 PM
` Trials
`FW: IPR2016-00418 and IPR 2016-00421
`
`Hawthorne, Eric W.
`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Please see below
`
`Thanks
`Andrew
`
`From: Mandir, William H. [mailto:wmandir@sughrue.com]
`Sent: Monday, January 30, 2017 4:30 PM
`To: Joseph Melnik <jmelnik@jonesday.com>
`Cc: Trials <Trials@USPTO.GOV>; Kellogg, Andrew <Andrew.Kellogg@USPTO.GOV>; Joe Beauchamp <jbeauchamp@JonesDay.com>;
`plambrianakos@brownrudnick.com; Albert Liou <aliou@JonesDay.com>; Paul.Steadman@dlapiper.com; Matthew.Satchwell@dlapiper.com;
`Gianni.minutoli@dlapiper.com; Nicholas.panno@dlapiper.com; gjanik@jvllp.com; shsu@jvllp.com; Rabena, John F. <jrabena@sughrue.com>
`Subject: Re: IPR2016‐00418 and IPR 2016‐00421
`
`Dear Mr. Kellogg,
`
`Please advise if under the current circumstances whether it is necessary for Toyota'a counsel to be present at the Hearing on February 2nd.
`
`Sincerely,
`
`William H. Mandir
`Lead Counsel for Toyota
`
`Sent from my iPhone
`
`On Jan 30, 2017, at 4:10 PM, Joseph Melnik <jmelnik@jonesday.com> wrote:
`
`Mr. Kellogg
`
`On behalf of the remaining Petitioners, Honda will argue at the hearing scheduled on February 2nd.
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`1
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`
`
`Regards
`
`Joe
`
`Joseph Melnik
`
`JONES DAY® - One Firm Worldwide℠
`1755 Embarcadero Road
`Palo Alto, California 94303
`650-687-4151 (direct)
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`
`----- Message from "Trials" <Trials@USPTO.GOV> on Mon, 30 Jan 2017 19:54:57 GMT -----
`
`From: "Trials" <Trials@USPTO.GOV>
`"Mandir, William H." , "Lambrianakos, Peter" , "Joe Beauchamp" , "Albert Liou" , "Sean Hsu" , paul.steadman@dlapiper.com, matthew.satchwell@dlapiper.com, Gianni.minutoli@dlapiper.com, Nicholas.panno@dlapiper.com,
`To:
`"Glenn Janik" , "Rabena, John F."
`"Trials"
`CC:
`Subject: RE: IPR2016-00418 and IPR 2016-00421
`
`Counsel,
`
`The panel requests that, given the settlement of the Toyota entity, the remaining Petitioner entities notify the Board, as soon as possible, which one
`will argue for Petitioner at the hearing scheduled on February 2 for IPR2016-00418.
`
`For both IPR2016-00418 and -421, Toyota Motor Corp. is authorized to file the requested motions and an unredacted settlement agreement (as an
`Exhibit).
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`2
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`
`
`From: Mandir, William H. [mailto:wmandir@sughrue.com]
`Sent: Friday, January 27, 2017 4:53 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Lambrianakos, Peter <PLambrianakos@brownrudnick.com>; Joe Beauchamp <jbeauchamp@JonesDay.com>; Albert Liou <aliou@JonesDay.com>; Sean Hsu
`<shsu@jvllp.com>; Glenn Janik <gjanik@jvllp.com>; Rabena, John F. <jrabena@sughrue.com>
`Subject: Re: IPR2016‐00418 and IPR 2016‐00421
`
`Dear PTAB,
`
`Petitioner Toyota Motor Corporation and Patent Holder have agreed to settle all of their disputes, including to request termination of IPR 2016‐00421 and
`withdrawal of Petitioner from IPR2016‐00418. IPR2016‐00418 is currently scheduled for an oral hearing on February 2, 2017. Petitioners Honda and Nissan
`have joined IPR 2016‐00418, and we have copied their counsel on this message.
`
`
`We respectfully request a conference call to seek permission to file a joint motion to terminate IPR 2016‐00421 and for Petitioner to withdraw from IPR 2016‐
`00418, as well as a joint motion to file the settlement agreement (upon its execution) as business confidential information in each of the two pending
`cases. Counsel for Petitioner and Patent Owner are presently available and will make themselves available at the Board's convenience.
`
`Respectfully submitted,
`
`
`William H. Mandir
`Lead Counsel for Petitioner
`
`
`William H. Mandir
`Sughrue Mion, PLLC | 2100 Pennsylvania Ave., N. W. Washington, DC 20037| Office: 202-663-7959 | Fax: 202-293-7860
`wmandir@sughrue.com - www.sughrue.com
`
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`William H. Mandir
`Sughrue Mion, PLLC | 2100 Pennsylvania Ave., N. W. Washington, DC 20037| Office: 202-663-7959 | Fax: 202-293-7860
`wmandir@sughrue.com - www.sughrue.com
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