From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Sommer, Andrew R.
`Trials
`Mathas, Kurt A.; Nutter, Michael K.; UT507-IPR@foley.com; ssnader@unither.com; dcarsten@wsgr.com; rtorczon@wsgr.com; bdelafield@wsgr.com;
`vascarrunz@wsgr.com; GQuillin@foley.com
`RE: IPR2017-01621, IPR2017-01622: Requests for Authorization
`Wednesday, February 14, 2018 1:03:09 PM
`image005.png
`image002.png
`
`Your Honors,
`
`In response to Mr. Kellog’s email from February 12, the parties have conferred and provide the following times that they are
`available for a conference call: Thursday, February 22 at 1-2 or 4-5 or Friday, February 23 at 1-noon, 1-2, and 3-5 (all times
`eastern).
`
`The following briefly describes the factual basis for the motions Petitioner requests authorization to file:
`
`1. Supplemental Information Under Rule 42.123(a):
`
`One issue in this proceeding is whether the Ghofrani reference is “by another.” Petitioner would like authorization to supplement
`the record with the following documents, which Petitioner contends relates to the aforementioned issue:
`
`
`· Two documents related to a proceeding in Maryland state court between one of the named inventors and Patent Owner,
`in which the inventor disputed the inventorship and ownership of the involved patent.
`
`· A declaration from the prosecution history of a parent patent application that includes as an attachment correspondence
`between certain named inventors and the prosecuting attorney in which inventorship of the challenged patents is
`discussed.
`
`2. Motion for Additional Discovery Under Rule 42.51(b)(2):
`
`The prosecution history declaration identified in the second bullet point includes redactions. The sole information sought by
`Petitioner in its motion for additional discovery is an un-redacted copy of the declaration and its attachments.
`
`Please let us know if the panel requires any additional information, or would like copies of the documents in question in advance
`of any teleconference.
`
`Best regards,
`
`Andrew R. Sommer
`Reg. No. 53,932
`
`
`
`Andrew R. Sommer
`Partner
`Winston & Strawn LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`D: +1 (202) 282-5896
`F: +1 (202) 282-5100
`Bio | VCard | Email | www.winston.com
`
`
`
`

`

`
`From: Trials [mailto:Trials@USPTO.GOV]
`Sent: Monday, February 12, 2018 3:03 PM
`To: Sommer, Andrew R. <ASommer@winston.com>; Trials <Trials@USPTO.GOV>
`Cc: Mathas, Kurt A. <KMathas@winston.com>; Nutter, Michael K. <MNutter@winston.com>; UT507-IPR@foley.com;
`ssnader@unither.com; dcarsten@wsgr.com; rtorczon@wsgr.com; bdelafield@wsgr.com; vascarrunz@wsgr.com;
`GQuillin@foley.com
`Subject: RE: IPR2017-01621, IPR2017-01622: Requests for Authorization
`
`Counsel, we have received Petitioner’s request for authorization to file a motion to submit supplemental information pursuant to 37
`C.F.R. 42.123(a) and a motion for additional discovery under 37 C.F.R. 42.51(b)(2).
`
`The parties should meet and confer and send several times that they are available for a conference call to the trials mailbox. Please
`provide times on February 8 or later as the panel is not available before that time. We also request that Petitioner briefly describe the
`factual basis for both proposed motions in the email in one or two sentences, without providing any argument.
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Sommer, Andrew R. [mailto:ASommer@winston.com]
`Sent: Friday, February 9, 2018 3:15 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Mathas, Kurt A. <KMathas@winston.com>; Nutter, Michael K. <MNutter@winston.com>; UT507-IPR@foley.com;
`ssnader@unither.com; dcarsten@wsgr.com; rtorczon@wsgr.com; bdelafield@wsgr.com; vascarrunz@wsgr.com;
`GQuillin@foley.com
`Subject: IPR2017-01621, IPR2017-01622: Requests for Authorization
`
`Your Honors,
`
`Petitioner seeks authorization to file 2 motions: a motion to submit supplemental information pursuant to 37 C.F.R. 42.123(a)
`and a motion for additional discovery under 37 C.F.R. 42.51(b)(2). Petitioner and Patent Owner have conferred about Petitioner’s
`request, and Patent Owner opposes both requests for authorization to file the motions.
`
`Please let us know if the panel would like to schedule a call with counsel for the parties or would like additional information about
`the discovery sought or the supplemental information to be filed. Petitioner has provided details to Patent Owner already but is
`not providing them here at Patent Owner’s request.
`
`Best regards,
`
`Andrew R. Sommer
`Reg. No. 53,923
`
`
`
`Andrew R. Sommer
`Partner
`Winston & Strawn LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`D: +1 (202) 282-5896
`F: +1 (202) 282-5100
`Bio | VCard | Email | www.winston.com
`
`

`

`
`
`
`
`
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