From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Bryan Wilson
`Trials
`BriggsH@gtlaw.com; SchindlerB@gtlaw.com; ullmers@gtlaw.com; PrisuaGTIPR@gtlaw.com; John C. Carey;
`Adam C. Underwood; Maria Martucci; Thomas K. Landry
`RE: IPR2017-01188 - Unauthorized paper filing
`Friday, September 21, 2018 8:19:59 AM
`image508599.png
`
`Dear Honorable Board,
`
`
`It is Petitioner’s below email that is frivolous and warrants sanctions.
`
`“A party dissatisfied with a decision of the Board may file a request for rehearing without
`prior authorization from the Board.” 37 C.F.R. § 42.71(d). See also 37 C.F.R. 42, Office Patent Trial
`Practice Guide, part II, §P (77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (further stating that “[t]he
`opposing party should not file a response to a request for rehearing absent a request from the
`Board.”) Here, Patent Owner was dissatisfied with the Board’s September 5, 2018 email decision
`expunging the Sur-Reply, thus, no authorization was required to request rehearing of that decision.
`
`Further, Petitioner’s accusation that Patent Owner has ignored the Board’s rules at least
`three times is simply untrue. The “unauthorized papers” Petitioner refers to include the Corrected
`Preliminary Response that the Board expressly authorized in a subsequent Order (Paper 20), the
`expunged Sur-Reply (Paper 64) that Patent Owner believes it filed as a matter of right provided by
`the recent Trial Practice Guide Update, and the request for rehearing (Paper 67) under 37 C.F.R.
`§41.71(d) for which no authorization was required. Accordingly, Petitioner’s request for sanctions is
`completely baseless.
`
`Paradoxically, in the very same email in which Petitioner incorrectly alleges that Patent
`Owner has ignored the Board’s rules, Petitioner requests relief in violation of the Board’s rules. First,
`37 C.F.R. § 42.20(a) requires that “[r]elief, other than a petition requesting the institution of a trial,
`must be requested in the form of a motion,” not an email. Second, even if Petitioner’s email to the
`Board is considered a motion requesting sanctions, the email violates the Board’s rules as being
`unauthorized under 37 C.F.R. § 42.20(b) which states that “[a] motion will not be entered without
`Board authorization.”
`
`Respectfully,
`
`Bryan Wilson
`
`
`Bryan Wilson​
`Registered Patent Attorney
`Carey Rodriguez Milian Gonya, LLP
`1395 Brickell Avenue, Suite 700
`​Miami, Florida 33131
`305-372-7474 (phone)
`305-372-7475 (fax)
`
`

`

`Bwilson@careyrodriguez.com
`www.careyrodriguez.com
`
`From: ullmers@gtlaw.com <ullmers@gtlaw.com>
`Sent: Thursday, September 20, 2018 3:52 PM
`To: trials@uspto.gov
`Cc: PrisuaGTIPR@gtlaw.com; John C. Carey <JCarey@careyrodriguez.com>; Adam C. Underwood
`<aunderwood@careyrodriguez.com>; Bryan Wilson <Bwilson@careyrodriguez.com>; Maria
`Martucci <MMartucci@careyrodriguez.com>; Thomas K. Landry <tlandry@careyrodriguez.com>
`Subject: IPR2017-01188 - Unauthorized paper filing
`
`Dear Honorable Board,
`
` I
`
` respectfully request the following on behalf of Petitioner’s lead counsel, Heath Briggs:
`
`
`Patent Owner filed a request for rehearing (Paper 67) and 3 accompanying exhibits (2017-2019) late
`last evening. Patent Owner’s filing was not authorized by 37 C.F.R. 42.71(d) or any other rule or
`order in this proceeding. Thus, Patent Owner’s request was an unauthorized filing. Accordingly,
`Petitioner respectfully requests that the Board expunge Patent Owner’s unauthorized paper and
`accompanying exhibits, as the Board has done previously with respect to Patent Owner’s
`unauthorized Corrected Preliminary Response (see Paper 19) and Patent Owner’s unauthorized Sur-
`Reply (see Paper 64 and the Board’s Sept. 5, 2018 email expunging the same).
`
`This is at least the third instance where Patent Owner has ignored the Board’s rules and filed
`unauthorized papers (see papers 19 and 64), which improperly burdens the Board’s and Petitioner’s
`time and resources. Petitioner, thus, respectfully requests sanctions under 37 C.F.R. 42.12 in
`addition to expunging Patent Owner’s unauthorized filing. Specifically, Petitioner requests that the
`Board reprimand Patent Owner for its repeated failure to comply with the applicable rules and issue
`an order providing for compensatory expenses, including attorney fees under § 42.12(b)(6),
`associated with Petitioner’s response to this unauthorized filing.
`
`Regards,
`
`Stephen M. Ullmer
`Associate
`Greenberg Traurig, LLP | 4 Embarcadero Ctr, Ste. 3000 | San Francisco, CA 94111-5983
`Tel 415.655.1261 | Cell 415.691.5634
`ullmers@gtlaw.com | www.gtlaw.com
`
`
`
`
`

`

`If you are not an intended recipient of confidential and privileged information in this email, please
`delete it, notify us immediately at postmaster@gtlaw.com, and do not use or disseminate such
`information.
`
`