From: Trials trials@uspto.gov
`Subject: RE: Apple v. Parus; IPR Nos. 2020-
`Date: July 9, 2020 at 11:14 AM
`To: Adam Seitz adam.seitz@eriseip.com, Trials Trials@USPTO.GOV
`Cc: McNamara, Michael MMcNamara@mintz.com, Renaud, Michael MTRenaud@mintz.com, Meunier, William
`WAMeunier@mintz.com, DeVoogd, Drew DHDeVoogd@mintz.com, Casey, Sean SMCasey@mintz.com, Jennifer Bailey
`jennifer.bailey@eriseip.com, Chalynda Giles chalynda.giles@eriseip.com, ptab@eriseip.com
`
`Counsel,
`
`Petitioner is authorized to file, in each of IPR2020-00686 and IPR2020-00687, a seven (7) page reply
`to the Preliminary Response limited to addressing the arguments in the Preliminary Response
`regarding the Fintiv factors. The replies are due by July 23, 2020. Patent Owner is authorized to file,
`in each case, a seven (7) page sur-reply to Petitioner’s reply. The sur-replies are due August 6, 2020.
`The parties are not authorized to brief any other issues, such as claim construction, in the replies or
`sur-replies.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Adam Seitz <adam.seitz@eriseip.com>
`Sent: Wednesday, July 8, 2020 4:56 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: McNamara, Michael <MMcNamara@mintz.com>; Renaud, Michael
`<MTRenaud@mintz.com>; Meunier, William <WAMeunier@mintz.com>; DeVoogd, Drew
`<DHDeVoogd@mintz.com>; Casey, Sean <SMCasey@mintz.com>; Jennifer Bailey
`<jennifer.bailey@eriseip.com>; Chalynda Giles <chalynda.giles@eriseip.com>;
`ptab@eriseip.com
`Subject: Apple v. Parus; IPR Nos. 2020-
`To the Board:
`I am writing on behalf of Petitioner Apple Inc. regarding IPR Nos. 2020-00686 and 2020-
`00687. Apple seeks leave to file a 12-page reply to both of Patent Owner Preliminary
`Responses (Paper 6 in both proceedings). Specifically, Apple seeks leave to file 10
`pages addressing the Board’s recent precedential decision in Apple v. Fintiv, IPR2020-
`0019, Paper 11 (March 20, 2020). Apple also requests an additional 2-pages addressing
`Parus’ claim construction argument on “instruction set” ascribing actions taken in the
`district court by another defendant to Apple.
`Apple submitted its petitions in both proceedings on March 18, 2020. The precedential
`Fintiv decision subsequently issued on March 20, 2020. Given this timing, Apple was
`unable to address the Fintiv factors in its original petition. Parus, in its POPR, devotes 18
`pages to arguing why the Board should exercise its discretion and deny the petition under
`the Fintiv factors. Parus also faults Apple for not addressing any of the Fintiv factors—an
`impossibility given the timing of Apple’s petition and the Fintiv decision. It would have
`been impossible for Apple to foresee and guess the Board’s decision and analysis in
`
`IPR2020-00686
`Apple EX1033 Page 1
`
`

`

`been impossible for Apple to foresee and guess the Board’s decision and analysis in
`Fintiv when drafting its original petition. As such, Apple requests 10 pages in a reply for
`both petitions to respond to Parus’ 18-page Fintiv argument in its POPR.
`
`Apple also separately requests leave to file an additional two-pages in its reply directed
`towards Parus’ claim construction argument on the term “instruction set.” In its POPR,
`Parus argues Apple’s proposed construction of “instruction set” is incorrect because “it
`[Apple] and the other defendants submitted a claim construction brief” that is inconsistent
`with the position Apple advanced with the Board. (IPR2020-00686, at 48; IPR2020-
`00687, at 49). This is incorrect. In the co-pending litigation, another defendant
`(Amazon.com) submitted those arguments, not Apple, and Apple would use its addition
`two pages in the reply to explain this mischaracterization and correct the record on the
`lack of any inconsistencies in Apple’s claim construction positions before the Board and
`the district court. Apple could not have foreseen that Parus would ascribe another
`defendant’s claim construction position to Apple. As such, Apple additionally requests two
`pages in the replies to address this issue.
`
`Parus opposes both of these requests.
`
`Counsel for Parus is on vacation this week but has indicated his availability starting
`Monday, July 13. Counsel for Apple can be available at any time next week for a phone
`call with the Board.
`
`Sincerely,
`
`Adam Seitz
`Erise IP
`Counsel for Petitioner
`
`IPR2020-00686
`Apple EX1033 Page 2
`
`