`
`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Hello Enrique,
`
`Lavenue, Lionel <lionel.lavenue@finnegan.com>
`Wednesday, January 30, 2019 4:38 PM
`Iturralde, Enrique W.; Schulz, Bradford; Bell, Cory
`AGIS-Lit; Hartman, Sarah G.
`RE: ZTE v. AGIS IPRs
`
` I
`
` appreciate the citation to my 2013 article, however, as you are aware, the caselaw is ever changing. And, not only has
`the caselaw changed, but the circumstances here are much different.
`
`Your understanding of the issues is also incorrect, and your conclusion that, “because ZTE chose the district court as its
`forum to challenge the validity of these patents, ZTE is statutorily barred from filing and maintaining these petitions,” is
`also flawed. The issue here is different from your erroneous characterization, at least because we filed a joinder petition
`and because of the differing factual circumstances.
`
`As to joinder, in particular, the statute permits joinder by “any person who properly files a petition under section 311.”
`35 U.S.C. 315(c) (emphasis added). In view of this statutory language regarding “any person” that may file for joinder,
`the Board has concluded that, “when ‘any person’ is read in light of § 311(a), the only person excluded by the language
`is the owner of the patent at issue.” Target v. Destination Maternity Co., Case IPR2014-00508, Paper 28, p. 7 (PTAB
`2015) (expanded panel). Accordingly, ZTE--which is not the patent owner--was permitted to request joinder under the
`statute.
`
`Thus, ZTE will not withdraw its IPR2019-00389 (’838 patent), IPR2019-00485 (’970 patent), and IPR2019-00487 (’055
`patent) petitions.
`
`Of course, if you wish to further discuss these matters with the Board, then feel free to do so at your convenience.
`
`Regards,
`
`
`Lionel
`
`
`From: Iturralde, Enrique W. <EIturralde@brownrudnick.com>
`Sent: Monday, January 28, 2019 3:21 PM
`To: Lavenue, Lionel <lionel.lavenue@finnegan.com>; Schulz, Bradford <Bradford.Schulz@finnegan.com>; Bell, Cory
`<Cory.Bell@finnegan.com>
`Cc: AGIS-Lit <agislit@brownrudnick.com>; Hartman, Sarah G. <SHartman@brownrudnick.com>
`Subject: ZTE v. AGIS IPRs
`
`EXTERNAL Email:
`
`
`
`Hi Lionel,
`
`I write to request that ZTE immediately withdraw its frivolous IPR petitions against AGIS in IPR2019-00389 (’838 patent),
`IPR2019-00485 (’970 patent), and IPR2019-00487 (’055 patent). ZTE filed these petitions after filing its October 9, 2018
`complaint for declaratory judgment for invalidity of the same patents in the Northern District of California. As you
`
`1
`
`IPR2019-00485, Exhibit 2002
`Patent Owner, AGIS Software Development
`Page 1
`
`
`
`already know, Section 315(a)(1) prohibits a declaratory-judgment plaintiff from filing an IPR petition if the plaintiff filed a
`declaratory judgment complaint for invalidity before filing the IPR petition. (See
`https://www.finnegan.com/en/insights/behind-bars-a-closer-look-at-the-statutory-bars-for-filing-
`inter.html.) Accordingly, because ZTE chose the district court as its forum to challenge the validity of these patents, ZTE
`is statutorily barred from filing and maintaining these petitions.
`
`
`ZTE lacked the requisite Rule 11 basis to file the petitions, and ZTE has no Rule 11 basis to maintain any petitions on the
`’838, ’970, and ’055 patents. ZTE's petitions advance frivolous grounds by statutorily-barred party and constitute an
`improper use of these proceedings. AGIS has been diligent in reviewing ZTE's filings and preparing responses to the
`petitions. AGIS reserves all rights and remedies, particularly for sanctions under 37 CFR 42.12, should ZTE maintain
`these petitions.
`
`
`Please confirm, by 5:00 PM ET Wednesday, January 28th, that ZTE will withdraw its petitions in IPR2019-00389, IPR2019-
`00485, and IPR2019-00487.
`
`
`Regards,
`Enrique
`
`
`
`
`
`
`Enrique W. Iturralde
`
`Brown Rudnick LLP
`Seven Times Square
`New York, NY 10036
`T: 212-209-4936
`F: 212-938-2936
`eiturralde@brownrudnick.com
`www.brownrudnick.com
`
`
`
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