`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Trials
`Thursday, November 30, 2017 5:01 PM
`Chang, Joni; Arpin, James; Bisk, Jennifer
`Trials
`FW: IPR2017-00714 Petitioner Request for Authorization
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`Please see below
`
`Thanks
`Andrew
`
`From: Colic, Nick [mailto:Nick.Colic@dbr.com]
`Sent: Thursday, November 30, 2017 4:51 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Beyer, Carrie <Carrie.Beyer@dbr.com>; Papst ‐ IPR <PapstIPR@fitcheven.com>; Devkar, Andrew V.
`<andrew.devkar@morganlewis.com> (andrew.devkar@morganlewis.com) <andrew.devkar@morganlewis.com>;
`Bregman, Dion M. (dion.bregman@morganlewis.com) <dion.bregman@morganlewis.com>; Scott Miller
`(SMiller@sheppardmullin.com) <SMiller@sheppardmullin.com>; Darren Franklin (DFranklin@sheppardmullin.com)
`<DFranklin@sheppardmullin.com>; Rupp, Brian C. <Brian.Rupp@dbr.com>
`Subject: IPR2017‐00714 Petitioner Request for Authorization
`
`Dear Board,
`
`Joined Petitioners Samsung and Olympus are seeking authorization to allow Joined Petitioners to make filings and
`otherwise participate in this IPR in light of the changed circumstances for the Original Petitioner ZTE (USA).
`
`In particular, Original Petitioner is in the process of finalizing settlement with Patent Owner and does not intend to file
`the Petitioner’s Reply. In ZTE’s place, the Joined Petitioners intend to file the Petitioner’s Reply, which is currently due
`on December 22, 2017. The Joined Petitioners may also take the deposition of Patent Owner’s expert prior to
`submitting the Reply. Based on our discussions with lead counsel for ZTE, our understanding is that Original Petitioner
`does not oppose the Joined Petitioners participating in the IPR, including taking the depositions of Patent Owner’s
`expert and filing the Petitioner’s Reply. Moreover, Original Petitioner does not intend to separately take the deposition
`or file the Reply, and our understanding is that Original Petitioner will instead rely on the Joined Petitioners’ deposition
`and Reply in the unlikely event the settlement is not able to be finalized.
`
`The Joined Petitioners have conferred with Patent Owner, who does not oppose the Joined Petitioners’ participation in
`the IPR provided that ZTE and the Joined Petitioners will not be filing separate Replies or seeking separate depositions
`(as mentioned above, this is not the case).
`
`Original Petitioner ZTE recently filed Updated Mandatory Notices, on November 27, 2017, designating counsel for Joined
`Petitioner Samsung as lead counsel for Petitioners. However, the order granting joinder indicates that “no filing by
`Petitioner Olympus and Samsung alone will be allowed without prior authorization by the Board.” Accordingly, the
`Joined Petitioners seek an order or other appropriate authorization from the Board to make filings and otherwise
`actively participate in this IPR. The Board recently granted a similar unopposed request by Joined Petitioner Olympus in
`IPR2017‐00415 and ‐00443, authorizing Olympus to file the Petitioner’s Reply, participate in discovery, and present oral
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`argument at the hearing in each IPR proceeding. LG Electronics, Inc. v. Papst Licensing GmbH, IPR2017‐00415, Order ‐
`Conduct of the Proceeding, Paper 17 (Nov. 6, 2017).
`
`As a further administrative detail, Petitioner’s Lead Counsel also needs to be granted filing privileges in PTAB E2E for
`IPR2017‐00714, unless the Board prefers another means of allowing Joined Petitioners to make filings.
`
`We look forward to your reply and are available for a telephone conference if requested by the Board.
`
`Best regards,
`
`Nick Colic
`Counsel for Petitioner
`
`Nick Colic
`Drinker Biddle & Reath LLP
`1500 K Street, N.W.
`Washington, DC 20005-1209
`(202) 230-5115 office
`(202) 842-8465 fax
`(312) 259-6324 mobile
`Nick.Colic@dbr.com
`www.drinkerbiddle.com
`
`
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