`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Tuesday, July 7, 2020 1:00 PM
`Cavanaugh, David; Trials
`Zhong, Annita; Sheasby, Jason; Wells, Maclain; #PanOptisIPRs [Int/Ext]; Kipnis, Jason;
`Haag, Joseph; Goldenberg, Richard; Sooter, Mindy; Deol, Ravi; Nemtzow, Alex
`RE: IPR2020-00642, IPR2020-00465, IPR2020-00466
`
`Counsel,
`
`Patent Owner is authorized to file a 6-page sur-reply in IPR2020-00642 and an 8-page sur-reply in each of IPR2020-
`00465 and IPR2020-00466, due on July 10, 2020. Each sur-reply shall only (1) address the Apple v. Fintiv factors the
`Board considers in determining whether to exercise its discretion to institute review when there is a related proceeding
`pending in district court, and (2) respond to arguments raised in Petitioner’s reply. The parties are reminded that the
`Board will not consider any arguments regarding the merits that were not raised in the Petition or the Preliminary
`Response. This authorization supersedes the Board’s June 25 authorization for sur-replies in these cases. No further
`briefing or expanded page limits will be authorized.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Cavanaugh, David <David.Cavanaugh@wilmerhale.com>
`Sent: Friday, July 3, 2020 9:23 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Zhong, Annita <HZhong@irell.com>; Sheasby, Jason <JSheasby@irell.com>; Wells, Maclain <MWells@irell.com>;
`#PanOptisIPRs [Int/Ext] <PanOptisIPRs@irell.com>; Kipnis, Jason <Jason.Kipnis@wilmerhale.com>; Haag, Joseph
`<Joseph.Haag@wilmerhale.com>; Goldenberg, Richard <Richard.Goldenberg@wilmerhale.com>; Sooter, Mindy
`<Mindy.Sooter@wilmerhale.com>; Deol, Ravi <Ravi.Deol@wilmerhale.com>; Nemtzow, Alex
`<Alex.Nemtzow@wilmerhale.com>
`Subject: Re: IPR2020‐00642, IPR2020‐00465, IPR2020‐00466
`
`Your Honors:
`
`Petitioner opposes Patent Owners’ request for additional pages. Should the Board find it helpful, Petitioner is prepared
`to explain why it opposes Patent Owners’ request, either in an email or on a conference call.
`
`Respectfully,
`
`David L. Cavanaugh
`Counsel for Petitioner
`
`David L. Cavanaugh
`WilmerHale
`1875 Pennsylvania Ave. NW
`
`1
`
`Optis Cellular Ex 2036-p. 1
`Apple v Optis Cellular
`IPR2020-00465
`
`
`
`Washington, DC 20006
`
`On Jul 3, 2020, at 1:59 PM, Zhong, Annita <HZhong@irell.com> wrote:
`
`EXTERNAL SENDER
`
`Your Honors:
`
`Patent Owner requests the Board to authorize 6 additional pages for each of its sur‐replies (for a total of
`10 pages each) to address improper content in Apple’s replies filed yesterday in IPR2020‐00465, ‐00466
`and ‐00642. Patent Owner is available at the Board’s convenience if the Board deems a call is necessary.
`
`Specifically, when the Board authorized the replies, the Board specifically limited their “scope to the
`issue addressed in Apple v. Fintiv, i.e., the six factors the Board considers in determining whether to
`exercise its discretion to institute review when there is a related proceeding pending in district
`court.” Petitioner Apple clearly exceeded the scope of reply authorized by Board, using the reply to: (1)
`address the constitutionality of the Fintiv decision; (2) responding substantively to the POPRs on the
`technical merits, in effect using the POPRs as a roadmap; (3) creating “new” facts, including announcing
`that it would alter the grounds of the IPR2020‐00466 petition by dropping one of the asserted grounds
`in the petition and announcing in a cryptic letter sent less than 30 minutes before it filed the replies that
`it was going to drop certain grounds of invalidity in the district court for the patents involved in IPR2020‐
`00465 and IPR2020‐00466.
`
`Patent Owner is entitled to fully address these new arguments, including the attempt to alter the
`petition long after the 315(b) statutory deadline. This would, however, require more than the 4 pages
`that the Board previously authorized. For example, Patent Owner needs the additional pages to fully
`explain (i) why Petitioner’s technical counter‐arguments are not found anywhere in the petition, (ii) why
`they are incorrect, (iii) why the grounds that Petitioner is now trying to abandon in the district court are
`actually cumulative of the remaining ground(s), (iv) why the tactic that Apple is attempting at the last
`minute of dropping grounds in the Petition and in the district court violates both the statute and Board
`regulations in addition to being ineffectual in the district court, where Patent Owner has not agreed to
`the removal of the relevant prior art from the case; and (v) why the constitutional argument has no
`merit.
`
`Patent Owner has asked Petitioner whether it would object to the request for additional pages, and it
`has not responded. Given the deadline for the sur‐replies (7/9/2020), Patent Owner has no choice but
`to seek Your Honors’ guidance at the earliest opportunity.
`
`Respectfully,
`
`H. Annita Zhong
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067‐4276
`Telephone: (310) 203‐7183
`Fax: (310) 556‐5385
`
`2
`
`Optis Cellular Ex 2036-p. 2
`Apple v Optis Cellular
`IPR2020-00465
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, June 25, 2020 12:40 PM
`To: Zhong, Annita <HZhong@irell.com>; Cavanaugh, David <David.Cavanaugh@wilmerhale.com>; Trials
`<Trials@USPTO.GOV>
`Cc: Sheasby, Jason <JSheasby@irell.com>; Wells, Maclain <MWells@irell.com>; #PanOptisIPRs [Int/Ext]
`<PanOptisIPRs@irell.com>; Kipnis, Jason <Jason.Kipnis@wilmerhale.com>; Haag, Joseph
`<Joseph.Haag@wilmerhale.com>; Goldenberg, Richard <Richard.Goldenberg@wilmerhale.com>;
`Sooter, Mindy <Mindy.Sooter@wilmerhale.com>; Deol, Ravi <Ravi.Deol@wilmerhale.com>; Nemtzow,
`Alex <Alex.Nemtzow@wilmerhale.com>
`Subject: RE: Petitioner’s Request for Reply to POPR in IPR2020‐00642, IPR2020‐00465, IPR2020‐00466
`
`
`Counsel,
`
`
` call is not necessary at this time. In light of the designation of the decision in Apple v. Fintiv as
`precedential, Petitioner is authorized to file an 8-page Reply to Patent Owner’s Preliminary Response in
`each case on or before Thursday, July 2, 2020. Patent Owner is authorized to file a 4-page Sur-Reply in
`each case on or before Friday, July 10, 2020. Both the Reply and Sur-Reply shall be limited in scope to
`the issue addressed in Apple v. Fintiv, i.e., the six factors the Board considers in determining whether to
`exercise its discretion to institute review when there is a related proceeding pending in district court.
`
`
`Regards,
`
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`
`From: Zhong, Annita <HZhong@irell.com>
`Sent: Wednesday, June 24, 2020 12:20 PM
`To: Cavanaugh, David <David.Cavanaugh@wilmerhale.com>; Trials <Trials@USPTO.GOV>
`Cc: Sheasby, Jason <JSheasby@irell.com>; Wells, Maclain <MWells@irell.com>; #PanOptisIPRs [Int/Ext]
`<PanOptisIPRs@irell.com>; Kipnis, Jason <Jason.Kipnis@wilmerhale.com>; Haag, Joseph
`<Joseph.Haag@wilmerhale.com>; Goldenberg, Richard <Richard.Goldenberg@wilmerhale.com>;
`Sooter, Mindy <Mindy.Sooter@wilmerhale.com>; Deol, Ravi <Ravi.Deol@wilmerhale.com>; Nemtzow,
`Alex <Alex.Nemtzow@wilmerhale.com>
`Subject: RE: Petitioner’s Request for Reply to POPR in IPR2020‐00642, IPR2020‐00465, IPR2020‐00466
`
`
`Dear Board,
`
`
`As Patent Owner informed Petitioner, Fintiv factors were not new. This is made clear by the Fintiv
`decision, which cites to Consolidated Trial Practice Guide November 2019, NHK and a number of other
`cases issued before the petition filing date when summarizing the six factors. IPR2020‐00019, Paper 11
`at 5 (“When the patent owner raises an argument for discretionary denial under NHK due to an earlier
`trial date, the Board’s decision have balanced the following factors . . . .”) & n.7. Thus, it was
`foreseeable at the time of filing that such factors should be fully addressed. And Petitioner did attempt
`to address them, though half‐heartedly. See IPR2020‐00465 Pet. 8‐9; IPR2020‐00466 Pet. 5‐6; IPR2020‐
`00642 Pet. 6‐7.
`
`In its email, Petitioner does not assert that any changed circumstance in the parallel proceeding justifies
`its request—as was the case in Fintiv. Nor can it, because if anything, the accelerated trial schedule
`
` A
`
`3
`
`Optis Cellular Ex 2036-p. 3
`Apple v Optis Cellular
`IPR2020-00465
`
`
`
`would put the final written decisions even further after the end of the trial: Currently the trial is to start
`on August 3, 2020, making the FWDs due 13 months after the end of trial.
`
`
`Nor is it fair for to Patent Owner that Petitioner should be able to give short shrift to the factors already
`enumerated in the trial practice guide and NHK (which was designated precedential long before the
`petitions were filed) and then give 8 pages to address those shortfalls. This would encourage petitioners
`to withhold arguments, review Patent Owner’s responses and then craft answers to them. In this
`particular case, it would also allow Petitioner to add 8 pages to each of its petitions whose word counts
`were all near the 14,000 limit (13,995; 13,998; 13914 respectively). That is not how the whole IPR
`framework is intended to work.
`
`
`Nevertheless, if the Board grants Petitioner’s request, Patent Owner requests that it be also given the
`same page numbers in each proceeding to address Petitioner’s arguments raised in the Replies.
`
`
`Respectfully,
`
`
`H. Annita Zhong
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067‐4276
`Telephone: (310) 203‐7183
`Fax: (310) 556‐5385
`
`
`From: Cavanaugh, David <David.Cavanaugh@wilmerhale.com>
`Sent: Wednesday, June 24, 2020 7:42 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Zhong, Annita <HZhong@irell.com>; Sheasby, Jason <JSheasby@irell.com>; Wells, Maclain
`<MWells@irell.com>; #PanOptisIPRs [Int/Ext] <PanOptisIPRs@irell.com>; Kipnis, Jason
`<Jason.Kipnis@wilmerhale.com>; Haag, Joseph <Joseph.Haag@wilmerhale.com>; Cavanaugh, David
`<David.Cavanaugh@wilmerhale.com>; Goldenberg, Richard <Richard.Goldenberg@wilmerhale.com>;
`Sooter, Mindy <Mindy.Sooter@wilmerhale.com>; Deol, Ravi <Ravi.Deol@wilmerhale.com>; Nemtzow,
`Alex <Alex.Nemtzow@wilmerhale.com>; Cavanaugh, David <David.Cavanaugh@wilmerhale.com>
`Subject: Petitioner’s Request for Reply to POPR in IPR2020‐00642, IPR2020‐00465, IPR2020‐00466
`
`
`Dear Honorable Board:
`
`
`The Patent Owner recently filed Patent Owner Preliminary Responses (POPRs) in the identified IPRs. In
`light of the recent precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020‐00019, Paper 11 (PTAB,
`March 20, 2020) (precedential), Petitioner respectfully requests leave to submit replies to the POPRs in
`the following proceedings to address the issue of discretionary institution denials under 35 U.S.C. §
`314(a):
`
`
`
`
`
`
`IPR2020‐00642
`IPR2020‐00465
`IPR2020‐00466
`
`
`
`Petitioner has good cause for a Reply to address the Fintiv decision, which was decided and designated
`precedential after the Petitions were filed. Because Petitioner could not predict that the Board would
`issue such an intervening decision, basic fairness and due process provides good cause for a
`response. The Board has already permitted Replies to address Fintiv in other proceedings, and
`Petitioner believes the Board would benefit from supplemental briefing here.
`
`
`4
`
`Optis Cellular Ex 2036-p. 4
`Apple v Optis Cellular
`IPR2020-00465
`
`
`
`Patent Owners oppose Petitioner’s request, and state that the Fintiv factors were not new and
`Petitioner knew or should have known the need to address these factors. In addition, Patent Owners
`allege that the request amounts to a surreptitious attempt to evade the word limit on the Petitions.
`
`
`Petitioner requests 8 pages, which would be due 5 business days after the request is authorized.
`
`If the Board would like to schedule a conference call relating to this request, counsel for Petitioner and
`Patent Owner are available on Thursday, June 25th from 10:00 a.m. ‐ 11:30 a.m. or 3:00 p.m. ‐ 5:00 p.m.
`and Friday, June 26th from 10:00 a.m. ‐ 12:00 p.m. (all Eastern Time).
`
`
`Respectfully,
`
`
`David Cavanaugh
`Counsel for Petitioner
`
`
`David L. Cavanaugh | WilmerHale
`60 State Street 1875 Pennsylvania Avenue NW
`Boston MA 02109 Washington, DC 20006 USA
`+1 617 526 6036 (t) +1 202 663 6025 (t)
`+1 617 526 5000 (f) +1 202 663 6363 (f)
`david.cavanaugh@wilmerhale.com
`
`
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`
`5
`
`Optis Cellular Ex 2036-p. 5
`Apple v Optis Cellular
`IPR2020-00465
`
`