From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Follow Up Flag:
`Flag Status:
`
`Dear Board,
`
`Lesovitz, Jeffrey <JLesovitz@bakerlaw.com>
`Wednesday, October 30, 2019 6:16 PM
`Trials
`Goettle, Daniel; Rocci, Steven; Guest-TekIPR; BoxNomadix; 2dgm; Amy.Rodriguez;
`William.Shreve
`IPR2019-01191 -- Request to Submit Petitioner's Reply to Patent Owner Preliminary
`Response
`
`Follow up
`Flagged
`
`Petitioner Guest Tek Interactive Entertainment Ltd. respectfully requests authorization from the Board to
`promptly file a short reply to Patent Owner’s October 11, 2019 preliminary response. Specifically, Guest Tek
`requests authorization to file a reply limited to addressing Patent Owner’s newly raised arguments as to the
`priority date of the challenged claims and Patent Owner’s backup argument under 35 U.S.C. § 314(a), and
`believes that there is good cause for submitting a reply.
`
`First, Guest Tek intends to briefly address Patent Owner’s first argument that the challenged claims are entitled
`to an October 20, 2000 priority date. Guest Tek believes there is good cause for a reply addressing the specific
`applications relied upon by Patent Owner because the 917 patent claims priority to over 14 different patent
`applications, which in turn incorporate numerous other patent applications. In its proposed reply, Guest Tek
`intends to briefly address why: (1) the 060 application/890 provisional’s general disclosure of comparing an
`attribute received from a source device with profiles does not amount to performing that comparison
`specifically based on a source IP address as recited in limitations 1.C and 11.C (see Patent Owner’s prelim.
`resp. § VI.B.4); (2) why the Federal Circuit’s Knowles case is exactly on point as a result of that general, rather
`than specific, disclosure (prelim. resp. at 20); (3) why mere reference in the 890 provisional to “pass-through IP
`addresses,” for example, is far from disclosing the specific requirements of limitations 1.D and 11.D (prelim.
`resp. § VI.B.6); and (4) why block 220 in Figure 2’s reference to determining authorization based on an
`attribute associated with a “source, destination or content” (prelim. resp. § VI.B.6) does not disclose
`authentication based on both a source IP address and destination IP address (let alone the other requirements of
`combined limitations 1.C/11.C and 1.D/11.D).
`
`Second, Guest Tek also intends to briefly address Patent Owner’s backup argument that the Board should deny
`institution under Section 314(a). There is good cause because Guest Tek could not have reasonably predicted
`Patent Owner raising this argument in view of the correct facts regarding the district court case. In its proposed
`reply, Guest Tek intends to explain why: (1) Guest Tek did not delay in filing the IPR petition (prelim. resp. §
`VII.A.1) at least because the proceedings in the district court case were stayed for close to a year, Guest Tek
`diligently prepared its petition, and Guest Tek timely filed the petition after the stay was lifted; (2) the district
`court case is irrelevant to this inter partes review at least because invalidity of the 917 patent is not likely to be
`decided at the district court; even if it were, the district court would not reach a final decision until well after the
`Board’s decision; and the district court is also in the process of possibly rescheduling the trial date, which Guest
`Tek has requested be no earlier than the end of 2020; and (3) certain PTAB decisions that Patent Owner cites
`are inapposite, while other decisions in which the PTAB refused to deny institution under Section 314(a) apply.
`
`1
`
`IPR2019-01191
`Ex. 3001 p. 1 of 2
`
`

`

`In sum, Guest Tek respectfully requests the Board’s authorization to file the foregoing reply. If authorized,
`Guest Tek’s reply will only respond to arguments raised in the Patent Owner preliminary response as outlined
`above, will be promptly filed, and will comply with 37 C.F.R. §§ 42.23 and 42.24(c).
`
`Counsel for Patent Owner has stated that it opposes Petitioner’s request. Counsel for the parties are available
`for a conference call with the Board on Monday, November 4 at 2-5pm EST or the same time on Tuesday,
`November 5.
`
`Sincerely,
`Jeff
`
`Jeffrey W. Lesovitz
`Partner
`
`
`
`Cira Centre
`2929 Arch Street | 12th Floor
`Philadelphia, PA 19104-2891
`T +1.215.564.2406
`
`jlesovitz@bakerlaw.com
`bakerlaw.com
`
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`IPR2019-01191
`Ex. 3001 p. 2 of 2
`
`2
`
`