Trials
`Mark.Lezama; Trials
`Lesovitz, Jeffrey; Guest-TekIPR; Doug.Muehlhauser; BoxNomadix
`RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`Monday, May 4, 2020 5:07:06 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`The parties are authorized to file a joint motion to terminate. The parties must also file any agreements
`required under 35 U.S.C. § 317(b), or, if there are no such agreements, the parties should represent that in
`the motion.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Mark.Lezama <Mark.Lezama@knobbe.com>
`Sent: Saturday, May 2, 2020 6:09 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>; Guest-TekIPR <Guest-TekIPR@bakerlaw.com>;
`Doug.Muehlhauser <Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`To the Board:
`
`I write on behalf of both Petitioner and Patent Owner in cases IPR2019-00211 and IPR2019-00253.
`The Ninth Circuit has lifted the temporary stay of the District Court’s permanent injunction, and the
`injunction is thus restored. The parties therefore jointly request authorization to file motions to
`terminate these two IPR proceedings.
`
`If the Board believes a conference call is necessary, any time on Tuesday, May 5, or Wednesday, May
`6, would work.
`
`Sincerely,
`
`Mark Lezama
`Partner
`mark.lezama@knobbe.com
`949-721-5362 Direct
`Knobbe Martens
`2040 ‌Main ‌St., 14th Fl.
`Irvine, ‌CA ‌92614
`www.knobbe.com/mark-lezama
`
`IPR2019-00211
`IPR2019-00253
`EX. 3003
`
`

`

`From: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>
`Sent: Friday, May 1, 2020 3:16 PM
`To: Mark.Lezama <Mark.Lezama@knobbe.com>; Trials <Trials@USPTO.GOV>
`Cc: Guest-TekIPR <Guest-TekIPR@bakerlaw.com>; Doug.Muehlhauser
`<Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`Dear Board,
`
`In further effort to keep the Board apprised of the status of the injunction, attached is an Order from
`the Ninth Circuit, denying Petitioner’s emergency motion to stay the district court’s permanent
`injunction and granting Patent Owner’s emergency motion to lift the stay of the permanent
`injunction. In addition, attached is a Notice of Appeal of the permanent injunction, which Guest-Tek
`previously filed, instituting an appeal of the permanent injunction, which is still pending.
`
`Sincerely,
`Jeff Lesovitz
`Counsel for Petitioner
`
`From: Mark.Lezama <Mark.Lezama@knobbe.com>
`Sent: Friday, May 1, 2020 1:08 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>; Guest-TekIPR <Guest-TekIPR@bakerlaw.com>;
`Doug.Muehlhauser <Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`IPR2019-00211, IPR2019-00253
`
`To the Board:
`
`In an effort to keep the Board apprised of the status of Patent Owner Nomadix’s permanent
`injunction against Petitioner in the federal courts, Patent Owner attaches an order from the Ninth
`Circuit setting the briefing schedules for Patent Owner’s emergency motion to lift the district court’s
`temporary stay and Petitioner’s emergency motion for a stay pending appeal.
`
`Sincerely,
`
`Mark Lezama
`Partner
`mark.lezama@knobbe.com
`949-721-5362 Direct
`Knobbe Martens
`2040 ‌Main ‌St., 14th Fl.
`Irvine, ‌CA ‌92614
`www.knobbe.com/mark-lezama
`
`

`

`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, April 28, 2020 7:10 AM
`To: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>; Trials <Trials@USPTO.GOV>
`Cc: Guest-TekIPR <Guest-TekIPR@bakerlaw.com>; Doug.Muehlhauser
`<Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>; Mark.Lezama
`<Mark.Lezama@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`Counsel,
`
`The Board’s earlier authorization is withdrawn in light of the District Court’s stay.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>
`Sent: Monday, April 27, 2020 10:24 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Guest-TekIPR <Guest-TekIPR@bakerlaw.com>; Doug.Muehlhauser@knobbe.com; BoxNomadix
`<BoxNomadix@knobbe.com>; Mark.Lezama <Mark.Lezama@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`Dear Mr. Kellogg,
`
`Pursuant to my email on Friday, April 24 at 9:38 pm (copied below), Petitioner withdrew its request
`for authorization to file a joint motion to terminate the IPRs. I apologize for any confusion.
`
`Sincerely,
`Jeff Lesovitz
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, April 27, 2020 9:56 AM
`To: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>; Trials <Trials@USPTO.GOV>
`Cc: Guest-TekIPR <Guest-TekIPR@bakerlaw.com>; Doug.Muehlhauser@knobbe.com; BoxNomadix
`<BoxNomadix@knobbe.com>; Mark.Lezama <Mark.Lezama@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`Counsel,
`
`

`

`
`The parties are authorized to file a joint motion to terminate. The parties must also file any agreements
`required under 35 U.S.C. § 317(b), or, if there are no such agreements, the parties should represent that in
`the motion.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>
`Sent: Friday, April 24, 2020 9:38 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Guest-TekIPR <Guest-TekIPR@bakerlaw.com>; Doug.Muehlhauser@knobbe.com; BoxNomadix
`<BoxNomadix@knobbe.com>; Mark.Lezama <Mark.Lezama@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`Dear Board,
`
`Further to Mr. Lezama’s below emails, attached is an Order issued this evening from the district
`court granting Petitioner’s application to stay, and staying, the judgment and order granting
`injunctive relief in Case No. CV19-04980 in the United States District Court for the Central District of
`California. In view of this Order, Petitioner hereby withdraws its request for authorization to move
`to terminate IPR2019-00211 and IPR2019-00253.
`
`Sincerely,
`
`Jeff Lesovitz
`Counsel for Petitioner
`
`From: Mark.Lezama <Mark.Lezama@knobbe.com>
`Sent: Friday, April 24, 2020 5:22 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>; Guest-TekIPR <Guest-TekIPR@bakerlaw.com>;
`Doug.Muehlhauser <Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`To the Board,
`
`Following up on the e-mail below regarding the parties’ joint request for authorization to move to
`terminate IPR2019-00211 and IPR2019-00253, Patent Owner is attaching for the Board’s
`convenience a copy of the judgment and accompanying order granting permanent injunctive relief in
`
`

`

`Case No. CV19-04980 in the United States District Court for the Central District of California.
`
`Sincerely,
`
`Mark Lezama
`Partner
`mark.lezama@knobbe.com
`949-721-5362 Direct
`Knobbe Martens
`2040 ‌Main ‌St., 14th Fl.
`Irvine, ‌CA ‌92614
`www.knobbe.com/mark-lezama
`
`
`From: Mark.Lezama <Mark.Lezama@knobbe.com>
`Sent: Friday, April 24, 2020 1:49 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>; Guest-TekIPR <Guest-TekIPR@bakerlaw.com>;
`Doug.Muehlhauser <Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`To the Board:
`
`Petitioner and Patent Owner have conferred regarding the district court’s April 22nd Order,
`submitted in my email of yesterday, requiring the parties to jointly request authorization to file a
`motion to terminate IPR2019-00211 and IPR2019-00253 by today. As required by the district court,
`the parties hereby jointly request authorization to file a motion to terminate the IPR proceedings.
`
`If the Board would like to schedule a conference call with the parties to discuss this request, the
`parties are available this afternoon, Monday from 1-3pm Eastern, or Tuesday from 2-4pm Eastern.
`
`Sincerely,
`
`Mark Lezama
`Partner
`mark.lezama@knobbe.com
`949-721-5362 Direct
`Knobbe Martens
`2040 ‌Main ‌St., 14th Fl.
`Irvine, ‌CA ‌92614
`www.knobbe.com/mark-lezama
`
`
`From: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>
`Sent: Friday, April 24, 2020 9:25 AM
`To: Mark.Lezama <Mark.Lezama@knobbe.com>; Trials <Trials@USPTO.GOV>
`Cc: Guest-TekIPR <Guest-TekIPR@bakerlaw.com>; Doug.Muehlhauser
`<Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`
`

`

`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`Dear Board,
`
`Petitioner and Patent Owner are in the process of conferring regarding the district court’s April
`22nd Order requiring the parties to jointly request authorization to file a motion to terminate
`IPR2019-00211 and IPR2019-00253 by today. As required by the district court, the parties
`tentatively plan on submitting an email later today regarding such authorization.
`
`In addition, on the January 29, 2020 conference call with the parties, the Board directed the
`parties to keep the Board apprised of parallel district court filings and occurrences. However,
`the district court’s April 22 Order requires that Guest-Tek not take any further action in the
`IPRs. Out of an abundance of caution to ensure that Guest-Tek is in full compliance with the
`district court’s Order, Guest-Tek does not presently intend on sending the Board any further
`district court filings, appeals, or related notifications. We apologize for any inconvenience
`this may cause to the Board.
`
`Respectfully,
`
`Jeff Lesovitz
`Counsel for Petitioner
`
`From: Lesovitz, Jeffrey
`Sent: Thursday, April 23, 2020 11:12 AM
`To: 'Mark.Lezama' <Mark.Lezama@knobbe.com>; Trials <Trials@USPTO.GOV>
`Cc: Guest-TekIPR <Guest-TekIPR@bakerlaw.com>; Doug.Muehlhauser
`<Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`Subject: RE: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`Mark,
`
`You were not authorized to send your below email on behalf of Petitioner. We specifically told you
`that Petitioner did not receive the Court’s order and your proposed email (sent below) until late last
`night, and that Petitioner was still in the process of reviewing and discussing them both internally.
`
`Regards,
`Jeff
`
`From: Mark.Lezama <Mark.Lezama@knobbe.com>
`Sent: Thursday, April 23, 2020 10:34 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>; Guest-TekIPR <Guest-TekIPR@bakerlaw.com>;
`Doug.Muehlhauser <Doug.Muehlhauser@knobbe.com>; BoxNomadix <BoxNomadix@knobbe.com>
`Subject: IPR2019-00211, IPR2019-00253 - Joint motion to terminate; permanent injunction
`
`
`[External Email: Use caution when clicking on links or opening attachments.]
`
`

`

`PTAB Trials,
`
`Petitioner and Patent Owner in IPR2019-00211 and IPR2019-00253 hereby seek leave to
`immediately file a joint motion to terminate those proceedings. As set forth in the attached
`judgment entered yesterday, the United States District Court for the Central District of California has
`ordered Petitioner to join Patent Owner in seeking termination and has permanently enjoined
`Petitioner from “participating any further in, or otherwise taking any further action in, each of
`IPR2019-00211[ and] IPR2019-00253” and also from “taking any steps to avoid termination.”
`
`Mark Lezama
`Partner
`mark.lezama@knobbe.com
`949-721-5362 Direct
`Knobbe Martens
`2040 ‌Main ‌St., 14th Fl.
`Irvine, ‌CA ‌92614
`www.knobbe.com/mark-lezama
`
`
`
`
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`message.
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`
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`NOTICE: This email message is for the sole use of the intended recipient(s) and may contain confidential and
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