`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Tuesday, June 12, 2018 8:19 AM
`Kenneth Weatherwax; David Hoffman; Trials
`Nathan Lowenstein; IPR@sjclawpc.com; Jeffrey Shneidman
`RE: IPR2016-01622 (Kingston v Polaris)
`
`Counsel,
`
`Patent Owner’s requests are denied.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>
`Sent: Monday, June 11, 2018 4:16 AM
`To: David Hoffman <Hoffman@fr.com>; Trials <Trials@USPTO.GOV>
`Cc: Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>; IPR@sjclawpc.com; Jeffrey Shneidman
`<shneidman@fr.com>
`Subject: RE: IPR2016‐01622 (Kingston v Polaris)
`
`Members of the Board,
`
`Patent Owner agrees that it is prepared to provide the full basis for its request via email, if, given the circumstances,
`the Board wishes to receive argument via email.
`
`Respectfully,
`
`Kenneth Weatherwax
`Lead Counsel for Patent Owner
`
`From: David Hoffman [mailto:Hoffman@fr.com]
`Sent: Monday, June 11, 2018 12:33 AM
`To: Kenneth Weatherwax; Trials@uspto.gov
`Cc: Nathan Lowenstein; IPR@sjclawpc.com; Jeffrey Shneidman
`Subject: RE: IPR2016-01622 (Kingston v Polaris)
`
`
`
`Members of the Board,
`
`
`Petitioner objects to this supplemental request that was not provided to Petitioner prior to Patent
`Owner’s email to the Board. Petitioner opposes both requests. Petitioner understands that the
`1
`
`Polaris Ex. 2019
`1 Kingston v. Polaris, IPR2016-01622, Page 1 of 4
`
`
`
`Board does not wish to receive argument by email unless the Board requests it. If the Board would
`like, however, Petitioner can provide the full basis for that opposition, which is based on both the
`substance and timing of the request.
`
`
`Best regards,
`
`
`David Hoffman
`Counsel for Petitioner
`
`
`From: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>
`Sent: Saturday, June 9, 2018 12:29 AM
`To: Trials@uspto.gov
`Cc: David Hoffman <Hoffman@fr.com>; Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>;
`IPR@sjclawpc.com; Jeffrey Shneidman <shneidman@fr.com>
`Subject: RE: IPR2016‐01622 (Kingston v Polaris)
`
`
`To the Honorable Board:
`
`In reference to its request earlier today (see below), Patent Owner respectfully requests that the authorization include
`authorization to address the Director’s 5/21/18 Supplemental Brief on SAS filed in the PGS case and to submit pages 8‐
`10 of that Brief as an exhibit. See Trial Prac. Guide, 77 FR at 48758 c.2 (“parties should be prepared to discuss with a
`Trial Section paralegal why the call is needed and what materials may be needed during the call, e.g., a particular
`exhibit.”).
`
`
`Also, to repeat, the date that the parties are available if a call is preferred is 9AM‐2PM Wednesday June 13.
`
`
`For the Board’s convenience, Patent Owner hereby restates below its entire request with the above points added.
`‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`To the Honorable Board:
`
`In the above‐referenced matter (Kingston v. Polaris, IPR2016‐01622) Patent Owner respectfully requests
`authorization to brief the impact of yesterday’s decision in PGS Geophysical AS v. Iancu, ‐‐‐ F.3d ‐‐‐‐ (Fed. Cir.
`2018), before a decision is issued on Petitioner’s request for rehearing in this matter. In the alternative, if the
`Board prefers a call, Patent Owner requests a call, and the parties are available for a call Wednesday June 13
`between 9AM and 2PM Eastern Daylight Time.
`
`
`PGS addresses the effect of SAS Institute, Inc. v. Iancu on existing partial institution decisions. Patent Owner is
`prepared to explain why the PGS case supports denial of rehearing in this matter.
`
`If, arguendo, the Board currently has jurisdiction in this matter it is undisputed that jurisdiction will expire no
`later than the appellate deadline, which is currently June 14th. In view of that constraint and the fact that
`Petitioner lead counsel of record is traveling until Monday, Patent Owner respectfully proposes that each party
`be authorized to file a 1 page brief strictly limited to addressing the impact (if any) of the PGS case on the
`present matter by noon Eastern Daylight Time Tuesday, May 12. Patent Owner requests that this authorization
`include authorization to address the Director’s 5/21/18 Supplemental Brief on SAS filed in the PGS case, and to
`submit pages 8‐10 of that Brief as an exhibit. See Trial Prac. Guide, 77 FR at 48758 c.2 (“parties should be
`prepared to discuss with a Trial Section paralegal why the call is needed and what materials may be needed
`during the call, e.g., a particular exhibit.”).
`
`I am authorized to state that Petitioner opposes this proposal.
`‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐‐
`
`2
`
`Polaris Ex. 2019
`1 Kingston v. Polaris, IPR2016-01622, Page 2 of 4
`
`
`
`Respectfully,
`
`
`Kenneth Weatherwax
`Lead Counsel for Patent Owner
`
`
`Kenneth Weatherwax | Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, California 90067
`Office: 310.307.4503
`
`
`From: Kenneth Weatherwax
`Sent: Friday, June 08, 2018 9:39 AM
`To: Trials@uspto.gov
`Cc: hoffman@fr.com; Nathan Lowenstein; IPR@sjclawpc.com; Jeffrey Shneidman
`Subject: RE: IPR2016-01622 (Kingston v Polaris)
`
`
`Dear Board:
`
`
`The date below that the parties are available for a call is 9AM‐2PM Wednesday June 13. Apologies for inadvertently
`omitting it.
`
`‐Ken
`
`
`From: Kenneth Weatherwax
`Sent: Friday, June 08, 2018 8:40 AM
`To: Trials@uspto.gov
`Cc: hoffman@fr.com; Nathan Lowenstein; IPR@sjclawpc.com; Jeffrey Shneidman (shneidman@fr.com)
`Subject: IPR2016-01622 (Kingston v Polaris)
`
`
`To the Honorable Board:
`
`In the above‐referenced matter (Kingston v. Polaris, IPR2016‐01622) Patent Owner respectfully requests authorization
`to brief the impact of yesterday’s decision in PGS Geophysical AS v. Iancu, ‐‐‐ F.3d ‐‐‐‐ (Fed. Cir. 2018), before a decision
`is issued on Petitioner’s request for rehearing in this matter. In the alternative, if the Board prefers a call, Patent
`Owner requests a call, and the parties are available for a call between 9AM and 2PM Eastern Daylight Time.
`
`
`PGS addresses the effect of SAS Institute, Inc. v. Iancu on existing partial institution decisions. Patent Owner is
`prepared to explain why the PGS case supports denial of rehearing in this matter.
`
`If, arguendo, the Board currently has jurisdiction in this matter it is undisputed that jurisdiction will expire no later than
`the appellate deadline, which is currently June 14th. In view of that constraint and the fact that Petitioner lead counsel
`of record is traveling until Monday, Patent Owner respectfully proposes that each party be authorized to file a 1 page
`brief strictly limited to addressing the impact (if any) of the PGS case on the present matter by noon Eastern Daylight
`Time Tuesday, May 12.
`
`I am authorized to state that Petitioner opposes this proposal.
`
`
`Respectfully submitted,
`
`
`Kenneth Weatherwax | Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, California 90067
`Office: 310.307.4503
`
`3
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`Polaris Ex. 2019
`1 Kingston v. Polaris, IPR2016-01622, Page 3 of 4
`
`
`
`
`
`
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`
`4
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`Polaris Ex. 2019
`1 Kingston v. Polaris, IPR2016-01622, Page 4 of 4
`
`