From:
`To:
`Cc:
`Subject:
`Date:
`
`Jeremy Monaldo
`Trials; brett@etheridgelaw.com
`PR39521-0060IP1@fr.com; AXF-PTAB; PTAB Inbound; Deepa Acharya; Grace Kim; Jim@EtheridgeLaw.com; Ryan@EtheridgeLaw.com; Jeff Huang; Brian Koide; Karl Renner
`RE: IPR2019-00510 // Re. challenged claim 18
`Friday, May 15, 2020 5:57:29 PM
`
`Your Honors,
`
`The Board asked the parties to set forth “whether there is an agreement between the parties to withdraw claim 18 from consideration in IPR2019-
`00510.” Petitioners understand that it is Uniloc’s position that:
`
` Uniloc is willing to withdraw claim 18 from the IPR, and
`
`Claim 18 of the 079 patent has been finally held invalid, Uniloc is estopped from asserting claim 18 in any pending or future litigation as a
`result of that finding, and the estoppel is not party specific. Rather, the estoppel applies to claim 18 of the 079 patent and Uniloc is
`estopped from any assertion of that claim against any party.
`
`Based on this understanding, Petitioners agree to withdraw the challenge to claim 18.
`
`Best Regards,
`Jeremy
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, April 29, 2020 1:46 PM
`To: Jeremy Monaldo <Monaldo@fr.com>; brett@etheridgelaw.com; Trials <Trials@USPTO.GOV>
`Cc: PR39521-0060IP1@fr.com; AXF-PTAB <AXF-PTAB@fr.com>; PTAB Inbound <PTABInbound@fr.com>; Deepa Acharya
`<deepaacharya@quinnemanuel.com>; Grace Kim <gkim@fr.com>; Jim@EtheridgeLaw.com; Ryan@EtheridgeLaw.com; Jeff Huang
`<jhuang@etheridgelaw.com>; Brian Koide <brian@etheridgelaw.com>; Karl Renner <renner@fr.com>
`Subject: RE: IPR2019-00510 // Re. challenged claim 18
`
`Counsel,
`
`The Board appreciates the parties attempts to streamline the issues in IPR2019-00510 by discussing the withdrawal of claim 18 (recently held
`unpatentable by the Federal Circuit) from consideration.
`
`In light of the received emails, the parties shall meet and confer and jointly file an email no later than May 16, 2020 setting forth whether there is an
`agreement between the parties to withdraw claim 18 from consideration in IPR2019-00510.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Jeremy Monaldo <Monaldo@fr.com>
`Sent: Tuesday, April 28, 2020 11:21 PM
`To: brett@etheridgelaw.com; Trials <Trials@USPTO.GOV>
`Cc: PR39521-0060IP1@fr.com; AXF-PTAB <AXF-PTAB@fr.com>; PTAB Inbound <PTABInbound@fr.com>; Deepa Acharya
`<deepaacharya@quinnemanuel.com>; Grace Kim <gkim@fr.com>; Jim@EtheridgeLaw.com; Ryan@EtheridgeLaw.com; Jeff Huang
`<jhuang@etheridgelaw.com>; Brian Koide <brian@etheridgelaw.com>; Karl Renner <renner@fr.com>
`Subject: RE: IPR2019-00510 // Re. challenged claim 18
`
`Your Honors,
`
`In response to Uniloc’s indication that it “will not petition for certiorari” on the adverse claim 18 indefiniteness decision in the related matter, we
`inspired outreach to Uniloc’s litigation counsel to confirm that Uniloc will withdraw the assertion of claim 18 in litigation against each of the
`Petitioners. The response from Uniloc’s litigation counsel was equivocal, indicating only that “we have not given thought to how to proceed” and
`“it is not our policy to assert claims that have been finally held invalid.” See, e.g., Attached Email from James Foster at Prince Lobel. Given that
`Uniloc did not definitively commit to withdraw claim 18 from pending litigations involving Petitioners and that Uniloc likewise was unwilling to
`confirm non-assertion of claim 18 in any future litigation against Petitioners, Petitioners cannot withdraw the challenge to claim 18 at this time. If,
`
`IPR2019-0510
`Ex. 3001 p. 1 of 2
`
`

`

`however, Uniloc definitively commits to withdrawing claim 18 from the pending litigations involving Petitioners and confirms that Uniloc will not
`assert claim 18 of the ’079 patent in any future litigation against Petitioners, Petitioners would agree to withdraw the present challenge to claim
`18.
`
`Best Regards,
`Jeremy
`
`Jeremy Monaldo :: Principal :: Fish & Richardson P.C.
`+1 (202) 626-7717 direct :: Monaldo@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`From: brett@etheridgelaw.com <brett@etheridgelaw.com>
`Sent: Friday, April 24, 2020 10:20 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: PR39521-0060IP1@fr.com; AXF-PTAB <AXF-PTAB@fr.com>; PTAB Inbound <PTABInbound@fr.com>; Jeremy Monaldo <Monaldo@fr.com>;
`Deepa Acharya <deepaacharya@quinnemanuel.com>; Grace Kim <gkim@fr.com>; Jim@EtheridgeLaw.com; Ryan@EtheridgeLaw.com; Jeff Huang
`<jhuang@etheridgelaw.com>; Brian Koide <brian@etheridgelaw.com>
`Subject: IPR2019-00510 // Re. challenged claim 18
`
`[Caution: This is an external email. Do not click links or open attachments unless you recognize the sender and
`know the content is safe]
`
`Honorable Board:
`
`Pursuant to the Board’s instructions, given during oral argument yesterday in IPR2019-00510, that Patent Owner provide an update on its
`intentions in view of the recent federal circuit affirmance in Appeal. No. 19-2072 (affirming district court judgment of invalidity of claim 18), Patent
`Owner confirms to the Board that it will not petition for certiorari in that related matter.
`
`Respectfully,
`Brett Mangrum
`Counsel for Patent Owner
`Reg. No. 64,783
`
`****************************************************************************************************************************
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`information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the
`sender by reply email and destroy all copies of the original message.
`****************************************************************************************************************************
`
`****************************************************************************************************************************
`This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged
`information. Any unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the
`sender by reply email and destroy all copies of the original message.
`****************************************************************************************************************************
`
`IPR2019-0510
`Ex. 3001 p. 2 of 2
`
`