Jared Newton
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`
`
`Trials <Trials@USPTO.GOV>
`Tuesday, August 6, 2019 4:46 PM
`Jared Newton; Trials
`'Jennifer Bailey'; David Xue; Karineh Khachatourian; Steve Schlather; Adam P. Seitz; PTO-
`Edmonds; John Edmonds
`RE: IPR2019-00127 and IPR2019-01107 - Motion for Joinder
`
`[EXTERNAL EMAIL]
`
`Counsel,
`
`No call is necessary. Petitioner Canon may file a two-page sur-reply to address the issues identified in the email
`below. Petitioner shall file this email thread as an exhibit. Both the sur-reply and exhibit must be filed by August 13,
`2019.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Jared Newton <jarednewton@quinnemanuel.com>
`Sent: Tuesday, August 6, 2019 1:20 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: 'Jennifer Bailey' <jennifer.bailey@eriseip.com>; David Xue <david.xue@rimonlaw.com>; Karineh Khachatourian
`<karinehk@rimonlaw.com>; Steve Schlather <sschlather@ip-lit.com>; Adam P. Seitz <adam.seitz@eriseip.com>; PTO-
`Edmonds <pto-edmonds@ip-lit.com>; John Edmonds <jedmonds@ip-lit.com>
`Subject: IPR2019-00127 and IPR2019-01107 - Motion for Joinder
`
`Dear Board:
`
`Petitioner Canon in the ‘127 proceeding requests authorization to file a two-page sur-reply to address the following
`issues raised in the reply that Petitioners Go-Pro and Garmin filed in connection with their motion for joinder in the
`‘1107 proceeding:
`
`1. GoPro and Garmin’s argument that Canon is seeking a per se rule against joinder in circumstances involving
`different claim construction standards, which Canon believes is inaccurate.
`
`2. GoPro and Garmin’s reliance on Priceline.com LLC and Booking.com B.V. v. DDR Holdings, LLC, IPR2019-00440,
`which Canon believes is not applicable to the facts of this case because the original petitioner did not oppose
`joinder.
`
`
`
`Canon has conferred with Patent Owner Cellspin, and Petitioners GoPro and Garmin. Cellspin does not oppose Canon’s
`request for a sur-reply. GoPro and Garmin oppose. If the Board believes a conference call would be helpful, the parties
`
`1
`
` IPR 2019-00127 - Canon Exhibit 1034, Page 1
`
`

`

`are available on Friday, August 9, between 2:30 and 4 pm ET. Counsel for Cellspin, GoPro, and Garmin are copied on this
`email.
`
`
`Best Regards,
`
`Jared Newton
`Partner,
`Quinn Emanuel Urquhart & Sullivan, LLP
`
`1300 I Street, NW, Suite 900
`Washington, D.C. 20005
`202-538-8108 Direct
`202.538.8000 Main Office Number
`202.538.8100 FAX
`jarednewton@quinnemanuel.com
`www.quinnemanuel.com
`
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