EXHIBIT 3001
`
`
`
`From: Mallin, Robert <rmallin@brinksgilson.com>
`Sent: Thursday, July 26, 2018 8:09 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Wise, Michael (Perkins Coie) (MWise@perkinscoie.com) <MWise@perkinscoie.com>; Hamilton,
`Joseph (Perkins Coie) (JHamilton@perkinscoie.com) <JHamilton@perkinscoie.com>; Bowen, Tyler R.
`(Perkins Coie) (TBowen@perkinscoie.com) <TBowen@perkinscoie.com>; RJR-Fontem IPR Team <RJR-
`FontemIPRTeam@brinksgilson.com>
`Subject: IPR2018-00631: Request for Teleconference to seek authorization to file a reply
`
`
`To the Board
`
`Pursuant to 37 C.F.R. § 42.108(c), Petitioner requests authorization to file a Reply
`to Patent Owner’s (“P.O.”) Preliminary Response in the above-referenced
`IPR. This same request is being made in each of IPR2018-00631, IPR2018-00632,
`IPR2018-00633, and IPR2018-00634.
`
`Petitioner seeks leave to file a reply for the following limited purposes of
`addressing PO’s argument concerning issue preclusion and 35 USC 314(a).
`Petitioner contends that good cause exists to address both issues.
`
`First, Petitioner could not have anticipated PO’s issue preclusion argument because
`it is legally improper. PO has not cited a single case where issue preclusion is
`applied based on an institution decision. Based on an analysis of statutory and
`regulation language, district courts have explained that issue preclusion does not
`arise from an institution decision. Top-Co Inc. v. Blackhawk Specialty Tools, LLC,
`No. 4:14-CV-1937, slip op. at 7 (S.D. Tex. May 2, 2016) (“Taken on the whole, a
`denial at the preliminary phase of the IPR proceedings does not statutorily, or at
`common law, collaterally estop a party from raising the same arguments at the
`district court.”) (opinion attached). The Board has also made clear that institution
`decisions are preliminary and may change upon development of the
`record. Sandisk Corp. v. Netlist, Inc., IPR2014-00971, Paper 36 at 6-7 (April 27,
`2016) ("In a decision issued subsequent to the filing of Petitioner's Request, our
`reviewing court rejected a similar argument, and explicitly stated that the Board is
`not bound by any findings made in its Institution Decision."); Mylan Pharms. Inc.
`v. UCB Pharm. GMBH, IPR2016-00512, Paper 12 at 29 (PTAB July 20, 2016)
`("This is not a final decision as to the construction of any claim term or the
`patentability of claims 1-16. Our final decision will be based on the full record
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`developed during trial."). By comparison, the decisions relied on in PO’s
`preliminary response were based on the Board’s Final Decisions after completion
`of a trial and a full record; and they were subject to further review (that was sought
`and dismissed). See Exs. 2057-58.
`
`Second, Petitioner seeks to address PO’s argument that the Board should exercise
`its discretion un 35 U.S.C. § 314(a) and deny this petition under General
`Plastics. The arguments made could not have been anticipated because this
`petition is the first and only petition relating to the 9,339,062 patent that Petitioner
`has ever filed or been involved with. Petitioner is not attempting to get a second
`bite at invalidity through a follow-on petition. Instead, Petitioner filed its petition
`in response to being sued by PO in March 2017. Notably, PO had filed three prior
`lawsuits against Petitioner in April, May and June 2016, but did not assert the
`patent-at-issue here. And, when PO finally did file its March 2017 lawsuit against
`Petitioner, that was the 23rd lawsuit that PO had filed relating to its patents. PO’s
`arguments relating to 314(a) are inappropriate where they are the result of its
`litigation strategy. Decision dated Feb. 6, 2018 at 26 (Paper 8), Samsung Elec. Am.
`v. Uniloc, IPR2017-01801, Paper 8 at 26 (Feb. 6, 2018 P.T.A.B.) (Patent Owner’s
`complaint about the multiple IPR petitions “is not persuasive when the volume
`appears to be a direct result of its own litigation activity.”).
`
`PO advised that it opposes this request. The parties are available for a call next
`week on Monday or Tuesday after 12.00 pm EDT.
`
`Regards
`Robert
`
`
`
`Robert Mallin
`Intellectual Property Attorney
`312.321.4221 | Direct
`773.294.4419 | Mobile
`rmallin@brinksgilson.com
`Mallin Biography
`www.brinksgilson.com
`
`Assistant: Joan Schumaker
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