From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Lloyd Pollard
`Bhattacharyya, Arpita; Trials
`McCauley, Robert; Garcia, Marta; Chen, Reuben; Kenneth Dyer; Nonie Barrigar; Selburn, Gail
`Re: IPR2020-00747 | Asetek Danmark A/S v. CoolIT Systems Inc.
`Tuesday, June 11, 2024 12:00:21 AM
`image004.png
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Patent Trial and Appeal Board,
`Counsel for the parties have met and conferred regarding the Board’s e-mailed orders
`dated May 15, 2024, and June 4, 2024.
`
`Petitioner Asetek Danmark A/S and Patent Owner CoolIT Systems, Inc. agree that,
`pursuant to a confidential settlement agreement, Petitioner Asetek promised not to
`participate in any further proceedings relating to the ’567 patent.
`
`Following the parties’ recent communications, Patent Owner’s position remains as follows:
`
`·
`
`·
`
`·
`
`Petitioner’s promise to refrain from further participating in this proceeding to settle
`the parties’ prior dispute should be treated as an abandonment of this proceeding
`and a request for adverse judgment pursuant to 37 C.F.R. § 42.73(b) (as the
`language of the C.F.R. existed at the time the parties entered the settlement
`agreement);
`Neither ground reference asserted against the ’567 patent satisfies the Federal
`Circuit’s construction of “matingly engaged”; and
`Asetek should not escape the estoppel imposed by § 315(e) at this advanced
`stage of the proceeding.
`
`Thus, Patent Owner respectfully requests that the Board:
`
`·
`
`·
`
`Grant Patent Owner permission to submit a copy of the settlement agreement
`under seal; and
`Issue a final written decision confirming patentability or, if additional briefing is
`necessary, conduct a teleconference to discuss how to proceed.
`
`Petitioner disagrees as noted below.
`
`Best regards,
`-Lloyd Pollard, Reg. No. 64,793
`Counsel for Patent Owner CoolIT Systems, Inc.
`
`Lloyd L. Pollard II
`Patent Attorney
`
`workman nydegger
`Office-Direct: 801-322-8461
`LPollard@WNlaw.com
`
`IPR2020-00757
`Ex. 3004
`
`

`

`
`From: Bhattacharyya, Arpita <Arpita.Bhattacharyya@finnegan.com>
`Date: Monday, June 10, 2024 at 8:46 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: McCauley, Robert <Robert.McCauley@finnegan.com>, Garcia, Marta
`<Marta.Garcia@finnegan.com>, Chen, Reuben <rchen@cooley.com>, Kenneth Dyer
`<KDyer@wnlaw.com>, Nonie Barrigar <NBarrigar@WNLaw.com>, Lloyd Pollard
`<LPollard@wnlaw.com>, Selburn, Gail <Gail.Selburn@finnegan.com>
`Subject: RE: IPR2020-00747 | Asetek Danmark A/S v. CoolIT Systems Inc.
`
`Dear Patent Trial and Appeal Board,
`
`Under a confidential agreement with Patent Owner, CoolIT Systems Inc., Petitioner Asetek
`Danmark A/S may not and will not participate in the IPR. Asetek attempted to reach
`agreement with CoolIT to allow Asetek to withdraw from the IPR under Section 317(a) by
`filing a joint motion to terminate the IPR with respect to Asetek, but CoolIT refused. While
`Asetek agrees to not participate in the IPR by not filing substantive papers, Asetek does not
`agree to abandoning the IPR or to adverse judgment with respect to this IPR.
`
`Sincerely,
`
`Arpita Bhattacharyya
`Counsel for Petitioner Asetek Danmark A/S
`
`Arpita Bhattacharyya, Ph.D. | Bio
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`3300 Hillview Avenue, Palo Alto, CA 94304-1203
`650.849.6650 | fax 650.849.6666 | arpita.bhattacharyya@finnegan.com | www.finnegan.com
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, June 4, 2024 5:53 AM
`To: Trials <Trials@USPTO.GOV>; Lloyd Pollard <LPollard@wnlaw.com>
`Cc: Bhattacharyya, Arpita <Arpita.Bhattacharyya@finnegan.com>; McCauley, Robert
`<Robert.McCauley@finnegan.com>; Garcia, Marta <Marta.Garcia@finnegan.com>; Chen, Reuben
`<rchen@cooley.com>; Kenneth Dyer <KDyer@wnlaw.com>; Nonie Barrigar
`<NBarrigar@WNLaw.com>
`Subject: RE: PR2020-00747 | Asetek Danmark A/S v. CoolIT Systems Inc.
`
`
`Counsel,
`
`The Board has not yet received a response to the May 15, 2024, order that directed the parties to
`either (1) file a notice or stipulation, signed by counsel for Petitioner, confirming that due to the
`provisions of a confidential settlement, Petitioner will no longer participate in this proceeding, or (2)
`meet and confer and inform the Board of their respective positions.
`
`
`

`

`The parties and their counsel of record are ordered to comply with the May 15, 2024, Order on or
`before June 10, 2024.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, May 15, 2024 2:29 PM
`To: Lloyd Pollard <LPollard@wnlaw.com>; Trials <Trials@USPTO.GOV>
`Cc: Bhattacharyya, Arpita <arpita.bhattacharyya@finnegan.com>; McCauley, Robert
`<robert.mccauley@finnegan.com>; Garcia, Marta <marta.garcia@finnegan.com>; Chen, Reuben
`<rchen@cooley.com>; Kenneth Dyer <KDyer@wnlaw.com>; Nonie Barrigar
`<NBarrigar@WNLaw.com>
`Subject: RE: PR2020-00747 | Asetek Danmark A/S v. CoolIT Systems Inc.
`
`Counsel,
`
`In order to proceed, the Board requires confirmation on the record from Petitioner that Petitioner
`does not intend to participate further in this proceeding. The parties are, therefore, directed to file
`a notice or stipulation, signed by counsel for Petitioner, confirming that due to the provisions of a
`confidential settlement, Petitioner will no longer participate in this proceeding. The notice or
`stipulation should also indicate that Petitioner understands and consents that its decision to refrain
`from further participation in this proceeding may be treated as a request for adverse judgment
`pursuant to 37 C.F.R. § 42.73(b).
`
`If the parties are unable or unwilling to submit such a notice or stipulation, they are ordered to
`confer and inform the Board via email of their respective positions.
`
`Regards,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`
`From: Lloyd Pollard <LPollard@wnlaw.com>
`Sent: Thursday, May 9, 2024 5:19 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bhattacharyya, Arpita <arpita.bhattacharyya@finnegan.com>; McCauley, Robert
`<robert.mccauley@finnegan.com>; Garcia, Marta <marta.garcia@finnegan.com>; Chen, Reuben
`
`

`

`<rchen@cooley.com>; Kenneth Dyer <KDyer@wnlaw.com>; Nonie Barrigar
`<NBarrigar@WNLaw.com>
`Subject: PR2020-00747 | Asetek Danmark A/S v. CoolIT Systems Inc.
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Patent Trial and Appeal Board,
`
`Following remand of this IPR and pursuant to the Board’s Standard Operating Procedure 3,
`Patent Owner CoolIT Systems, Inc. (CoolIT) and Petitioner Asetek Danmark A/S (Asetek)
`have conferred.
`
`CoolIT informed Asetek of its position that neither ground reference asserted against U.S.
`Patent No. 9,057,567 (’567 patent) satisfies the Federal Circuit’s construction of “matingly
`engaged.”
`
`Asetek confirmed that it will no longer participate in this IPR pursuant to a confidential
`settlement agreement between the parties.
`
`Accordingly, CoolIT respectfully requests that the Board issue a final written decision
`confirming patentability of all challenged claims in the ’567 patent. Alternatively, if the
`Board finds additional briefing to be necessary, CoolIT respectfully requests leave to submit
`up to 20 pages of briefing by August 15, 2024, to address deficiencies in the asserted
`grounds and ground references under the Federal Circuit’s construction of “matingly
`engaged.”
`
`Should the Board wish to conduct a teleconference, counsel for Patent Owner is presently
`available through June 15, 2024, as follows (all times listed are in the Pacific time zone):
`
`
`May 21, 10 am – 12 pm
`May 23, 1:30 – 4 pm
`May 24
`May 29, 1 - 6 pm
`June 3
`June 7
`June 10
`June 14
`
`
`Counsel for Petitioner Asetek Danmark A/S is copied on this e-mail.
`
`Best regards,
`-Lloyd L. Pollard II
`Reg. No. 64,793
`Counsel for Patent Owner CoolIT Systems, Inc.
`
`
`Lloyd L. Pollard II
`
`

`

`Shareholder | Patent Attorney
`Office-Direct: (801) 322-8461
`Mobile: (503) 475-5155
`Email: LPollard@wnlaw.com
`
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