Trials@uspto.gov
`571-272-7822
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`Paper: 33
`Entered: July 17, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`____________
`
`Cases IPR2016-01268
`Patent 8,365,742 B2
`____________
`
`
`
`Before BRIAN J. McNAMARA, JEREMY M. PLENZLER, and
`JO-ANNE M. KOKOSKI, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`

`

`IPR2016-01268
`Patent 8,365,742 B2
`
`This Order is in response to Petitioner’s email dated July 13, 2017,
`attached. Petitioner seeks to correct certain clerical errors in the Reply
`(Paper 30) it filed on July 5, 2017. Petitioner represents that Patent Owner
`does not oppose Petitioner’s request.
`Specifically, Petitioner requests authorization to make the following
`corrections to pages 5, 6, 19, 21, 24, 26, and 28 of its Reply:
`Page
`Citation/Sentence
`Corrected Citation/Sentence
`5
`Ex. 1023 at 84:24-85:4
`Ex. 1023 at 41:6-21
`6
`Ex. 1023, 40:4-13, 48:21-49:14 Ex. 1023, 39:15-40:13, 48:13-
`49:14
`Ex. 1001 at 5:48-50, Fig 19;
`Ex. 1027, ¶ 9
`
`6
`
`Ex. 1023, 88:25-89:11; Ex.
`1001 at 5:48-50, Fig 19; Ex.
`1027, ¶ 9
`Ex. 2016 at 50:8-14.
`
`Ex. 1012 at 38
`Ex. 1027 at ¶ 55
`
`19
`(FN2)
`21
`24
`
`26
`
`28
`(FN3)
`
`Ex. 1023 at 115:9-116:14; Ex.
`2016 at 50:8-14.
`Ex. 1012-00038
`Ex. 1015 at ¶¶ 56-59; Ex. 1027
`at ¶ 55
`It would have been a simple
`matter to assemble Hon 043’s
`device …
`… between the section of
`cavity wall that has ejection
`holes 24 and the outlet.
`
`It would have been a simple
`matter to assembly Hon 043’s
`device …
`… between the section of
`cavity wall that has ejection
`holes 26 and the outlet.
`
`2
`
`
`We have reviewed the record and we are persuaded that the asserted
`errors are typographical. Accordingly, we authorize Petitioner to file, as a
`paper in this proceeding, an errata sheet identifying the corrections to be
`made, including the paper number and page number.
`
`
`

`

`IPR2016-01268
`Patent 8,365,742 B2
`
`It is
`ORDERED that Petitioner is authorized to file, as a paper, an errata
`sheet identifying the corrections to be made to its Reply (Paper 30), as
`discussed herein.
`
`
`
`
`
`
`
`
`3
`
`

`

`IPR2016-01268
`Patent 8,365,742 B2
`
`From: Feng, Yuezhong [mailto:yfeng@brinksgilson.com]
`Sent: Thursday, July 13, 2017 3:02 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: MWise@perkinscoie.com; JHamilton@perkinscoie.com; JDerosier@perkinscoie.com;
`Bowen, Tyler R. (Perkins Coie) <TBowen@perkinscoie.com>; ACandeloro@perkinscoie.com;
`patentprocurement@perkinscoie.com; RJR-Fontem IPR Team <RJR-
`FontemIPRTeam@brinksgilson.com>
`Subject: IPR2016-01268
`
`Dear PTAB,
`
`Petitioner requests authorization to file a motion to correct clerical errors in Petitioner’s
`Reply Brief filed on July 5, 2017 in IPR2016-01268. The basis for the request is
`summarized below.
`
`
`On July 5, 2017, Petitioner filed its Reply Brief in IPR2016-01268 (Paper 30). Shortly
`after filing, Petitioner discovered clerical errors in the Reply Brief. Specifically,
`Petitioner seeks to correct clerical errors on the following pages:
`
`
`Page
`5
`6
`6
`
`Citation/Sentence
`Ex. 1023 at 84:24-85:4
`Ex. 1023, 40:4-13, 48:21-49:14
`Ex. 1023, 88:25-89:11; Ex. 1001 at
`5:48-50, Fig 19; Ex. 1027, ¶ 9
`19 (FN2) Ex. 2016 at 50:8-14.
`
`21
`24
`
`Ex. 1012 at 38
`Ex. 1027 at ¶ 55
`
`26
`
`It would have been a simple matter
`to assembly Hon 043’s device …
`28 (FN3) … between the section of cavity wall
`that has ejection holes 26 and the
`outlet.
`
`Corrected Citation/Sentence
`Ex. 1023 at 41:6-21
`Ex. 1023, 39:15-40:13, 48:13-49:14
`Ex. 1001 at 5:48-50, Fig 19; Ex. 1027,
`¶ 9
`Ex. 1023 at 115:9-116:14; Ex. 2016
`at 50:8-14.
`Ex. 1012-00038
`Ex. 1015 at ¶¶ 56-59; Ex. 1027 at ¶
`55
`It would have been a simple matter
`to assemble Hon 043’s device …
`… between the section of cavity wall
`that has ejection holes 24 and the
`outlet.
`
`
`
`Petitioner asked Patent Owner via email whether Patent Owner would oppose a motion
`to make the above corrections. Patent Owner indicated via email on July 13, 2017 that
`it would not oppose Petitioner’s motion, and that Patent Owner’s counsel is available
`for a conference call this Friday, July 14, or on Tuesday or Wednesday next week, July 18
`or 19. Petitioner is also available for a conference call during those days.
`4
`
`

`

`IPR2016-01268
`Patent 8,365,742 B2
`
`
`
`Petitioner requests a conference to seek authorization to file a motion to correct the
`above-listed clerical errors in Petitioner’s Reply Brief.
`
`
`Thank you for your consideration.
`
`
`Yuezhong Feng, Ph.D.
`Intellectual Property Attorney
`312.321.7738 | Direct
`yfeng@brinksgilson.com
`Feng Biography
`www.brinksgilson.com
`
`Assistant: Kim Ewing
`312.245.3435 |
`kewing@brinksgilson.com
`
`
`
`BRINKS GILSON & LIONE
`NBC Tower - Suite 3600 | 455 N. City front Plaza Drive | Chicago, IL 60611
`
`Please Note: This message is intended for the individual or entity named above and may
`constitute a privileged and confidential communication. If you are not the intended
`recipient, please do not read, copy, use, or disclose this message. Please notify the
`sender by replying to this message, and then delete the message from your system.
`Thank you.
`
`
`
`
`
`
`5
`
`

`

`IPR2016-01268
`Patent 8,365,742 B2
`
`PETITIONER:
`
`Ralph J. Gabric
`Robert Mallin
`Yuezhong Feng
`BRINKS GILSON & LIONE
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
`
`
`PATENT OWNER:
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`
`
`
`6
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