From:
`Sent:
`To:
`Cc:
`Subject:
`
`Follow Up Flag:
`Flag Status:
`
`Hi John,
`
`Jensen, Travis <tjensen@orrick.com>
`Tuesday, December 3, 2019 4:32 PM
`John Downing
`Jonathan K. Waldrop; Rodney R. Miller; Herman, K. Patrick; Fintiv
`RE: IPR2020-00019
`
`Follow up
`Flagged
`
`On our call today you asked about any PTAB rules, etc. that support Apple’s request. Section II.B.6 of the July 2019 Trial
`Practice Guide Update is informative on this subject and instructs that parties should submit district court Markman
`rulings “as soon as that determination becomes available. Preferably, the prior claim construction determination should
`be submitted with the petition, preliminary response, or response, along with explanations.” Apple believe its request is
`consistent with the PTAB’s guidance to submit Markman rulings, “along with explanations,” at the earliest
`opportunity. Absent further input from Fintiv, Apple will send the email below to the Board at 6pm PT today. Thanks,
`Travis
`
`###################
`
`Patent Trial and Appeal Board,
`
`The district court issued its Markman order on Nov. 27, 2019 for U.S. Pat. 8,843,125 (the challenged patent in IPR2020-
`00019). The parties met and conferred on Nov. 25 and Dec. 3 regarding Apple’s request to file a 5-page paper (and
`accompanying exhibits) that address how Apple contends the prior art satisfies one claim construction issued by the
`district court that was not proposed by either party. Fintiv opposes Apple’s request. Apple requests a conference call
`with the Board to address this issue. The parties are available for a call with Board on Wednesday (Dec. 4), Thursday
`(Dec. 5), and Friday (Dec. 6) before 3pm ET.
`
`From: John Downing <JDowning@kasowitz.com>
`Sent: Tuesday, December 03, 2019 11:37 AM
`To: Jensen, Travis <tjensen@orrick.com>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; Fintiv <Fintiv@kasowitz.com>
`Subject: RE: IPR2020-00019
`
`Travis,
`
`I will circulate a dial in shortly. We can make ourselves available Wednesday, Thursday and Friday, except 12-2pm
`pacific Thursday.
`
`John
`
`From: Jensen, Travis [mailto:tjensen@orrick.com]
`Sent: Monday, December 2, 2019 2:20 PM
`
`1
`
`IPR2020-00019
`Fintiv EX2004 Page 1
`
`Christine Rehak
`

`

`To: John Downing <JDowning@kasowitz.com>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; Fintiv <Fintiv@kasowitz.com>
`Subject: RE: IPR2020-00019
`
`John,
`
`Although we do not believe an additional meet and confer is necessary since the Board’s email raised no new issues and
`you have not identified anything new or different that we haven’t already discussed in the prior meet and confer, we are
`willing to join another call tomorrow at noon PT. Please circulate a calendar invite.
`
`In the meantime, in view of Fintiv’s stated opposition to Apple’s proposal, we renew our request that you provide
`availability for a call with the Board this Wednesday-Friday. Thanks, Travis
`
`From: John Downing <JDowning@kasowitz.com>
`Sent: Monday, December 02, 2019 2:56 PM
`To: Jensen, Travis <tjensen@orrick.com>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; Fintiv <Fintiv@kasowitz.com>
`Subject: RE: IPR2020-00019
`
`Travis,
`
`We believe another meet-and-confer is necessary in view of the Board’s email. Please let us know if Apple disagrees.
`
`John
`
`From: Jensen, Travis [mailto:tjensen@orrick.com]
`Sent: Friday, November 29, 2019 12:58 PM
`To: John Downing <JDowning@kasowitz.com>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; Fintiv <Fintiv@kasowitz.com>
`Subject: RE: IPR2020-00019
`
`Hi John,
`
`We now have the Markman order from the district court. We’ve already met and conferred and you have stated that
`Fintiv opposes Apple’s proposal. Is there anything new or different that you believe we need to meet and confer
`about? If so, please let us know what it is and we can talk about it Tuesday at noon PT. What is your availability for a
`call with the Board next Wednesday-Friday? Thanks, Travis
`
`From: John Downing <JDowning@kasowitz.com>
`Sent: Wednesday, November 27, 2019 10:06 AM
`To: Jensen, Travis <tjensen@orrick.com>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; Fintiv <Fintiv@kasowitz.com>
`Subject: RE: IPR2020-00019
`
`Travis,
`
`2
`
`IPR2020-00019
`Fintiv EX2004 Page 2
`
`

`

`Fintiv opposes Apple’s request for leave to amend its petition.
`
`Per the Court’s order below, we are free to meet and confer again Tuesday of next week between 11-2 PST. Please let
`us know if this works for you.
`
`Thanks,
`
`John
`
`From: Trials [mailto:Trials@USPTO.GOV]
`Sent: Tuesday, November 26, 2019 12:11 PM
`To: John Downing <JDowning@kasowitz.com>; Jensen, Travis <tjensen@orrick.com>; Trials <Trials@USPTO.GOV>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; T61PTABDocket <T61PTABDocket@orrick.com>; P52PTABDocket
`<P52PTABDocket@orrick.com>
`Subject: RE: IPR2020-00019
`
`Dear Counsel,
`
`The panel does not view this as a matter requiring immediate attention such that normal procedures for requesting a call
`with the Board cannot be followed. See Consolidated Trial Practice Guide 9-10. Accordingly, the panel instructs the
`parties to meet and confer and attempt to reach agreement on Petitioner’s request so that further communications with
`the panel on this issue can be as productive as possible. In future communications, the parties should indicate whether
`there is agreement on the request or not, and what times both parties are available to meet should a call be necessary. In
`complying with these instructions the parties are directed to 37 C.F.R. 42.100(b), which states that the Office will consider
`any claim construction determination in a civil action that is timely made of record in the proceeding
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: John Downing <JDowning@kasowitz.com>
`Sent: Sunday, November 24, 2019 10:38 PM
`To: Jensen, Travis <tjensen@orrick.com>; Trials <Trials@USPTO.GOV>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; T61PTABDocket <T61PTABDocket@orrick.com>; P52PTABDocket
`<P52PTABDocket@orrick.com>
`Subject: RE: IPR2020-00019
`
`Patent Trial and Appeal Board:
`
`Patent Owner in the below referenced action, Fintiv, is available for a call with the Board on Tuesday (12/3) before
`2:30pm EST, Wednesday (12/4), Thursday (12/5), and Friday (12/6).
`
`3
`
`IPR2020-00019
`Fintiv EX2004 Page 3
`
`

`

`We are not available on the days referenced by Apple’s counsel below. Our team has reached out to Apple’s counsel to
`schedule a meet-and-confer to coordinate mutually agreeable times for a conference with the Board and learn about the
`scope of Apple’s proposed amendments.
`
`Thanks,
`
`John
`
`John Downing
`Kasowitz Benson Torres LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, CA 94065
`Tel. (650) 453-5426
`Fax. (650) 362-9430
`JDowning@kasowitz.com
`
`This e-mail and any files transmitted with it are confidential and may be subject to the attorney-client privilege. Use or disclosure of this e-mail or any
`such files by anyone other than a designated addressee is unauthorized. If you are not an intended recipient, please notify the sender by e-mail and
`delete this e-mail without making a copy.
`From: Jensen, Travis [mailto:tjensen@orrick.com]
`Sent: Friday, November 22, 2019 1:53 PM
`To: Trials@uspto.gov
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; John Downing
`<JDowning@kasowitz.com>; Herman, K. Patrick <pherman@orrick.com>; T61PTABDocket
`<T61PTABDocket@orrick.com>; P52PTABDocket <P52PTABDocket@orrick.com>
`Subject: IPR2020-00019
`
`Patent Trial and Appeal Board,
`
`**EXTERNAL EMAIL**
`
`Petitioner Apple Inc. wishes to notify the Board that the district court in Fintiv, Inc. v. Apple Inc., Case No. 6:18-CV-372-
`ADA (W.D. Tex.) issued oral claim constructions for the claim terms at issue in IPR2020-00019. Apple requests a
`conference call with the Board to seek leave to file the forthcoming Markman Order as well as a 5-page paper (and
`accompanying exhibits) that address how Apple contends the prior art satisfies one claim construction issued by the
`district court that was not proposed by either party.
`
`Apple is available Monday, Tuesday, and Wednesday of next week (Nov. 25-27) for a call. Despite Apple’s requests,
`Fintiv has not provided its availability for a call with the Board. Thanks, Travis
`
`Travis M. Jensen
`Partner, IP Litigation
`
`Orrick
`Silicon Valley
`
`4
`
`

`

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`For more information about Orrick, please visit http://www.orrick.com.
`
`In the course of our business relationship, we may collect, store and transfer information about you. Please see our privacy policy at
`https://www.orrick.com/Privacy-Policy to learn about how we use this information.
`
`NOTICE TO RECIPIENT | This e-mail is meant for only the intended recipient of the transmission, and may be a communication privileged by law. If you
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`For more information about Orrick, please visit http://www.orrick.com.
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`In the course of our business relationship, we may collect, store and transfer information about you. Please see our privacy policy at
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`NOTICE TO RECIPIENT | This e-mail is meant for only the intended recipient of the transmission, and may be a communication privileged by law. If you
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`For more information about Orrick, please visit http://www.orrick.com.
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`In the course of our business relationship, we may collect, store and transfer information about you. Please see our privacy policy at
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`5
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`IPR2020-00019
`Fintiv EX2004 Page 5
`
`