`Andrew Gordon; Rahlin, Katie
`Trials; Steinert, Adam; Gregory Gonsalves
`RE: Petitioner Request for Permission to File Motions to Withdraw IPRs 2018-01389/91/92/94
`Wednesday, July 24, 2019 2:20:33 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`Petitioner is authorized to file, within 5 business days, a motion to withdraw in each of the identified
`IPRs, and that each motion is limited to 5 pages.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: Andrew Gordon <andrew@agordonlawfirm.com>
`Sent: Wednesday, July 24, 2019 12:36 PM
`To: Rahlin, Katie <KRahlin@fredlaw.com>
`Cc: Trials <Trials@USPTO.GOV>; Steinert, Adam <ASteinert@fredlaw.com>; Gregory Gonsalves
`<gonsalves@gonsalveslawfirm.com>
`Subject: Re: Petitioner Request for Permission to File Motions to Withdraw IPRs 2018-
`01389/91/92/94
`
`Dear Board,
`
`e-Numerate does not oppose Merrill’s request to withdraw. e-Numerate feels that the IPRs should
`be terminated in view of Merrill's decision to direct its attorneys to stop participating in them.
`
`Regards,
`
`Andrew Gordon (counsel for Patent Owner)
`
`On Jul 24, 2019, at 9:15 AM, Rahlin, Katie <KRahlin@fredlaw.com> wrote:
`
`Dear Board,
`
`Petitioner requests permission to file motions to withdraw from IPRs 2018-
`01389/91/92/94. Petitioner wishes to withdraw the appearances of its counsel
`(Katherine J. Rahlin and Adam R. Steinert), as well as withdraw its participation in the
`IPR proceedings.
`
`
`
`
`The related civil action in the U.S. District Court for the District of Delaware, captioned
`e-Numerate Solutions, Inc., and e-Numerate, LLC, v. Mattress Firm Holding Corp., Merrill
`Communications LLC, and Merrill Corp., No. 1:17-cv-00933, has been dismissed, as
`Patent Owner’s infringement allegations are no more extensive than what is covered
`by the United States of America’s authorization and consent. Since dismissal of that
`case, Patent Owner filed a lawsuit against the United States of America in the Court of
`Federal Claims, captioned e-Numerate Solutions, Inc. et al v. The United States of
`America, No. COFC-1-19-cv-00859, alleging infringement of the four patents at issue in
`IPRs 2018-01389/91/92/94. The Government has indicated that it will indemnify
`Merrill for any claim of infringement of any of the four patents at issue in the IPRs.
`
`Therefore, Petitioner respectfully request the Board grant it permission to file motions
`to withdraw its counsel from the IPRs, as well as withdraw its participation in the IPR
`proceedings. Patent Owner has indicated that it does not oppose this request.
`
`Best Regards,
`
`Katherine Rahlin (counsel for Petitioner)
`
`
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