`Sent:
`To:
`Cc:
`
`Subject:
`
`Counsel,
`
`Trials
`Thursday, November 29, 2018 2:51 PM
`Mark J. DeBoy; Trials; Jason Shapiro
`ZTE_FractusIPRs; Lindner, David; Sobieraj, James; Beaupre, Jon; Chen, Gang; Patrick
`Finnan
`RE: ZTE v Fractus - IPR2018-01456, -01451, -01455, -01457, and -01462
`
`The Board authorizes Patent Owner to file motions under 37 CFR 42.20 to Request a District Court-Type Claim
`Construction in inter partes reviews IPR2018-01456, -01451, -01455, -01457, and -01462. The Board notes that IPR2018-
`01461 has also been paneled, so to the extent Patent Owner wishes to include that case in its motions, permission is
`granted
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: Mark J. DeBoy <mjd@usiplaw.com>
`Sent: Friday, November 16, 2018 5:10 PM
`To: Trials <Trials@USPTO.GOV>; Jason Shapiro <js@usiplaw.com>
`Cc: ZTE_FractusIPRs <ZTE_FractusIPRs@brinksgilson.com>; Lindner, David <dlindner@brinksgilson.com>; Sobieraj,
`James <jsobieraj@brinksgilson.com>; Beaupre, Jon <jbeaupre@brinksgilson.com>; Chen, Gang
`<gchen@brinksgilson.com>; Patrick Finnan <PJF@usiplaw.com>
`Subject: RE: ZTE v Fractus ‐ IPR2018‐01456, ‐01451, ‐01455, ‐01457, and ‐01462
`
`Your Honors,
`
`After a brief telephone conversation with Supervisory Paralegal Specialist Hawthorne, Patent Owner is renewing its
`request to file Motions under 37 CFR 42.20 to Request a District Court‐Type Claim Construction in inter partes reviews
`IPR2018‐01456, ‐01451, ‐01455, ‐01457, and ‐01462, the proceedings that have been paneled at this time.
`
`Patent Owner believes there is good cause for such motions because, among other things, the patents in IPR2018‐
`01451, ‐01455, ‐01457, and ‐01462 will all expire within 18 months of the entry of the Notice of Filing Date Accorded to
`Petition, the patent in IPR2018‐01456 will expire a few days later and before any appeal is concluded, and Petitioner
`requested a district court‐type claim construction in its petitions.
`
`Petitioner believes this request is untimely but does not oppose application of the Phillips standard in IPR2018‐01451, ‐
`01455, ‐01457, and ‐01462, and will defer to the Board to apply its rules in evaluating the petition in IPR2018‐01456.
`
`Should the Board desire a teleconference to discuss this request, Counsel for Patent Owner and Petitioner are both
`available on Monday, November 19 from 10:30 am – 1:30 pm CT, November 20 from 10 am – 3 pm CT, and November
`21 from 10 am – 2 pm CT.
`
`1
`
`IPR2018-01456, 01451, 01455, 01457, 01462
`Ex. 3001
`
`
`
`If any of the above‐referenced inter partes reviews have not yet been paneled, Patent Owner respectfully requests that
`this request be considered in the proceedings that have been paneled.
`
`
`Respectfully submitted,
`Mark DeBoy
`Counsel for Patent Owner
`
`
`
`Mark J. DeBoy
`Attorney
`
`
`
`mjd@usiplaw.com
`Direct: 240‐864‐2459
`Fax: 301‐762‐4056
`
`Information contained within this email and its attachments, if any, may be confidential and/or privileged. This email is intended to be reviewed only by the individual
`to whom it is addressed. If you are not the intended recipient or an authorized representative of the intended recipient, please be aware that any review,
`dissemination, or copying of the information contained within this email and its attachments, if any, is prohibited. If you have received this email in error, please
`immediately notify me by return email and delete this email from your system.
`
`From: Trials [mailto:Trials@USPTO.GOV]
`Sent: Friday, November 16, 2018 4:04 PM
`To: Jason Shapiro <js@usiplaw.com>
`Cc: ZTE_FractusIPRs <ZTE_FractusIPRs@brinksgilson.com>; Lindner, David <dlindner@brinksgilson.com>; Sobieraj,
`James <jsobieraj@brinksgilson.com>; Beaupre, Jon <jbeaupre@brinksgilson.com>; Chen, Gang
`<gchen@brinksgilson.com>; Patrick Finnan <PJF@usiplaw.com>; Mark J. DeBoy <mjd@usiplaw.com>
`Subject: RE: ZTE v Fractus ‐ IPR2018‐01456, ‐01451, ‐01455, ‐01457, ‐01461, ‐01462, and ‐01463
`
`Counsel, IPRs2018‐01461 and 01463 have yet to be paneled. Please renew your request at the paneling of
`those cases.
`
`Best regards,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`From: Jason Shapiro <js@usiplaw.com>
`Sent: Friday, November 16, 2018 2:54 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: ZTE_FractusIPRs <ZTE_FractusIPRs@brinksgilson.com>; Lindner, David <dlindner@brinksgilson.com>; Sobieraj,
`James <jsobieraj@brinksgilson.com>; Beaupre, Jon <jbeaupre@brinksgilson.com>; Chen, Gang
`<gchen@brinksgilson.com>; Patrick Finnan <PJF@usiplaw.com>; Mark J. DeBoy <mjd@usiplaw.com>
`Subject: ZTE v Fractus ‐ IPR2018‐01456, ‐01451, ‐01455, ‐01457, ‐01461, ‐01462, and ‐01463
`
`
`Your Honors,
`
`
`2
`
`
`
`Patent Owner requests permission to file Motions under 37 CFR 42.20 to Request a District Court‐Type
`Claim Construction in the above‐referenced IPR proceedings. Patent Owner believes there is good cause
`for such motions because, among other things, the patents in IPR2018‐01451, ‐01455, ‐01457, ‐01461, ‐
`01462, and ‐01463 will all expire within 18 months of the entry of the Notice of Filing Date Accorded to
`Petition, the patent in IPR2018‐01456 will expire a few days later and before any appeal is concluded,
`and Petitioner requested a district court‐type claim construction in its petitions.
`
`
`Petitioner believes this request is untimely but does not oppose application of the Phillips standard in
`IPR2018‐01451, ‐01455, ‐01457, ‐01461, ‐01462, and ‐01463, and will defer to the Board to apply its
`rules in evaluating the petition in IPR2018‐01456.
`
`
`Should the Board desire a teleconference to discuss this request, Counsel for Patent Owner and
`Petitioner are both available on Monday, November 19 from 10:30 am – 1:30 pm CT, November 20 from
`10 am – 3 pm CT, and November 21 from 10 am – 2 pm CT.
`
`
`Respectfully submitted,
`Jason Shapiro
`Counsel for Patent Owner
`
`Jason Shapiro
`Partner
`
`
`
`js@usiplaw.com
`Direct: 240‐864‐2434
`Fax: 301‐762‐4056
`
`Information contained within this email and its attachments, if any, may be confidential and/or privileged. This email is intended to be reviewed only by the individual
`to whom it is addressed. If you are not the intended recipient or an authorized representative of the intended recipient, please be aware that any review,
`dissemination, or copying of the information contained within this email and its attachments, if any, is prohibited. If you have received this email in error, please
`immediately notify me by return email and delete this email from your system.
`
`3
`
`