Strang, Jonathan (DC)
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Tuesday, October 27, 2020 12:21 PM
`Strang, Jonathan (DC); Trials
`CulChromeIPRs@irell.com; Grant, Max (NY-DC); Greenfield, Adam (DC); Laramy,
`Christine (CH); Grabowski, Alex (CH); gtuyiringire@irell.com; KVakili@irell.com; Mike
`Fleming
`RE: (corrected email) RE: IPR2020-01068 (O-I Glass v. Culchrome) - Reply to POPR
`
`Counsel: The Board determines that no conference call is necessary. Patent Owner’s Sur-reply exceeds the scope of a
`proper responsive paper by raising a new theory of discretionary denial (based on the Fintiv factors) and a new assertion
`of an alleged relationship between Ardagh and Petitioner. Those new arguments are supported by new evidence submitted
`with the Sur-Reply. We agree with Petitioner that the proper remedy, based on the totality of circumstances, including the
`statutory due date of the Board’s decision on institution, is to authorize limited additional briefing.
`
`Petitioner is authorized to file a Second Reply, limited to four pages of substantive argument, by November 3, 2020.
`Petitioner may come forward with (1) arguments necessary to respond to the two new issues raised in the Sur-reply; and
`(2) evidence necessary to respond to the new evidence advanced by Patent Owner in support of the Sur-Reply (namely,
`Exhibits 2015–2020). Patent Owner may file a Second Sur-reply limited to four pages of substantive argument, by
`November 10, 2020. Patent Owner’s Second Sur-reply shall be strictly limited to responding to arguments
`raised in Petitioner’s Second Reply. Patent Owner is not authorized to file new evidence in support of
`its Second Sur-reply. For each argument raised in the Second Sur-reply, Patent Owner shall provide a
`pin-citation (line and page number) to the Second Reply and identify with particularity the argument
`to which it is responsive, for example, by including a parenthetical statement explaining the reasons it
`is responsive. Those pin-citations and parenthetical explanations shall count toward Patent Owner’s four page limit.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Jonathan.Strang@lw.com <Jonathan.Strang@lw.com>
`Sent: Friday, October 23, 2020 4:52 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: CulChromeIPRs@irell.com; Max.Grant@lw.com; Adam.Greenfield@lw.com; Christine.Laramy@lw.com;
`Alex.Grabowski@lw.com; gtuyiringire@irell.com; KVakili@irell.com; Mike Fleming <mfleming@irell.com>
`Subject: (corrected email) RE: IPR2020-01068 (O-I Glass v. Culchrome) - Reply to POPR
`
`Dear Board,
`
`Petitioner submits this corrected email because Petitioner inadvertently copy/pasted Patent Owner’s position
`incorrectly. Petitioner apologizes for any confusion, and asks the Board to ignore Petitioner’s previous and incorrect
`email.
`
`The following is correct:
`
`-------------------
`
`1
`
`O-I Glass, Inc.
`Exhibit 1074
`O-I Glass v. Culchrome
`IPR2020-01068
`
`Ex. 1074-001
`
`

`

`
`Petitioner O-I Glass seeks a four-page sur-surreply. Petitioner outlines the dispute as follows:
`
`
`Patent Owner’s Surreply (Paper 9) exceeded the scope of a proper surreply and violated the parties’ agreement
`memorialized in the emails between the parties and to the Board (see email below). Because Petitioner cannot
`now “unring the bell,” Petitioner seeks a 4-page sur-surreply to address Patent Owner’s four pages of new
`arguments and supporting evidence.
`
`Per the parties’ agreement, Petitioner’s Reply (Paper 8) was “narrowly tailored” to address Patent Owner’s sole
`argument for a discretionary denial, i.e., the General Plastic factors (Paper 7, POPR at 12-24).
`
`The parties agreed that Patent Owner’s Surreply would likewise “address the arguments raised in the
`Reply.” Patent Owner, however, spent over three pages of its five-page Sur-reply arguing the Fintiv factors for
`the first time. Patent Owner also addressed its previous General Plastic argument, but in doing so, improperly
`alleged for the first time a relationship between Ardagh and Petitioner based on Ex. 2018, a press release dated
`April 25, 1998, and Ex. 2019, a 2003 SEC 10-Q form for the quarter ending June 30, 2003.
`
`Accordingly, Petitioner has good cause to submit a four-page brief responding to Patent Owner’s belated
`arguments and evidence. Patent Owner does not oppose Petitioner’s request for briefing so long as Patent
`Owner is allowed to respond, but Petitioner opposes any further briefing by Patent Owner.
`
`
`Patent Owner responds:
`
`
`Patent Owner disagrees that Patent Owner’s Sur-Reply (Paper 9, Oct. 16, 2020) exceeds the proper scope of the
`sur-reply. Patent Owner’s Sur-Reply is in accordance with the parties’ agreement and complies with 37 CFR §
`42.23. Patent Owner’s Sur-Reply is limited to responding only to the discretionary denial arguments raised in
`Petitioner’s Reply to the Patent Owner Preliminary Response (Paper 8, Oct. 9, 2020).
`
`In any event, Patent Owner will not oppose Petitioner’s request for leave to file a 4-page sur-sur-reply to Patent
`Owner’s Sur-Reply in the subject IPR on the following conditions:
`
`
`• Petitioner’s 4-page sur-sur-reply will be narrowly tailored to address arguments presented by Patent
`Owner in its Sur-Reply directed to discretionary denial under § 314(a);
`• Patent Owner would likewise be entitled to a 4 page reply to Petitioner’s sur-sur-reply to address the
`arguments raised in the sur-sur-reply; and
`• Petitioner’s sur-sur-reply will be due one week from the date of the Board authorization and Patent
`Owner’s reply will be due one week from entry of Petitioner’s sur-sur-reply.
`
`
`If necessary, the parties are available for a conference call at the following times:
`• Thursday, October 29 – 11:00 a.m. ET to 3:00 p.m. ET (8:00 a.m. PT to noon PT)
`• Friday, October 30 – 11:00 a.m. ET to 3:00 p.m. ET (8:00 a.m. PT to noon PT)
`• Monday, November 2 –1:00 p.m. ET to 4:00 p.m. ET (10:00 a.m. PT to 1:00 p.m. PT).
`
`
`Respectfully,
`
`Jonathan Strang
`Counsel for Petitioner O-I Glass
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, October 02, 2020 8:06 AM
`
`2
`
`Ex. 1074-002
`
`

`

`To: Strang, Jonathan (DC) <Jonathan.Strang@lw.com>; Trials <Trials@USPTO.GOV>
`Cc: CulChromeIPRs@irell.com; Grant, Max (NY-DC) <Max.Grant@lw.com>; Greenfield, Adam (DC)
`<Adam.Greenfield@lw.com>; Laramy, Christine (CH) <Christine.Laramy@lw.com>; Grabowski, Alex (CH)
`<Alex.Grabowski@lw.com>; gtuyiringire@irell.com; KVakili@irell.com; Mike Fleming <mfleming@irell.com>
`Subject: RE: IPR2020-01068 (O-I Glass v. Culchrome) - Reply to POPR
`
`Counsel: The Board authorizes the additional briefing, subject to the terms and conditions agreed to by the parties and set
`forth in Petitioner’s Oct. 1, 2020, email to trials@uspto.gov. The Reply is due Oct. 9, 2020. The Sur-Reply is due Oct. 16,
`2020.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Jonathan.Strang@lw.com <Jonathan.Strang@lw.com>
`Sent: Thursday, October 1, 2020 11:25 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: CulChromeIPRs@irell.com; Max.Grant@lw.com; Adam.Greenfield@lw.com; Christine.Laramy@lw.com;
`Alex.Grabowski@lw.com; gtuyiringire@irell.com; KVakili@irell.com; Mike Fleming <mfleming@irell.com>
`Subject: IPR2020-01068 (O-I Glass v. Culchrome) - Reply to POPR
`
`Dear Board,
`
`Petitioner O-I Glass seeks leave to file a five-page Reply addressing the § 314(a) discretionary denial arguments raised in
`Patent Owner Culchrome’s POPR. Good cause exists because Petitioner could not meaningfully address, predict, or
`rebut Patent Owner’s arguments, or the facts as they currently stand, when it filed its Petition.
`
`The parties’ counsel have met and conferred, and have come to an agreement:
`
`
`• Petitioner’s five-page reply would be narrowly tailored to address arguments presented by Patent Owner in its
`POPR directed to discretionary denial under § 314(a);
`
`• Patent Owner would likewise be entitled to a five-page sur-reply to address the arguments raised in the Reply;
`and
`
`
`
`
`
`• Petitioner’s reply would be due one week from the date of the Board authorization, and Patent Owner’s sur-
`reply would be due one week from entry of Petitioner’s reply.
`
`
`Because Patent Owner does not oppose Petitioner’s request so long as Patent Owner is also authorized to file a sur-reply
`of equal length and with equal time to reply, and the parties have come to the agreement above, a conference call is
`likely unnecessary. If Board desires a call, the parties will confer and provide times when both parties’ counsel are
`available.
`
`Respectfully,
`
`Jonathan Strang
`Counsel for Petitioner O-I Glass
`
`3
`
`Ex. 1074-003
`
`

`

`
`Jonathan M. Strang
`
`
`LATHAM & WATKINS LLP
`555 Eleventh Street, NW
`Suite 1000
`Washington, D.C. 20004-1304
`Direct Dial: +1.202.637.2362
`Fax: +1.202.637.2201
`Email: jonathan.strang@lw.com
`https://www.lw.com
`
`
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`
`4
`
`Ex. 1074-004
`
`