From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Foster, Theo
`Trials
`Michael Hawkins; IPR35548-0111IP1; Rick Bisenius; Nicholas Stephens; Jennifer Huang; Kenneth Darby; Sangki
`Park; Tom Reger; Brian Strand; Theo Foster IPR; David McCombs IPR; Scott Jarratt IPR
`IPR2020-01141, -01143: Request to reply to Patent Owner’s Preliminary Responses
`Thursday, October 29, 2020 6:53:10 PM
`image001.png
`
`To the Honorable Board:
`
`Pursuant to 37 CFR 42.108(c), Petitioner requests leave to file a Preliminary Reply to Patent Owner’s
`Preliminary Response in each of IPR2020-01141 and IPR2020-01143 to address two independent
`issues:
`
`1. The relevance of Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 24 (June 16, 2020) (designated Informative July 13, 2020) to this case.
`Good cause exists because Sand Revolution II was designated Informative after the Petitions
`were filed, and this case has striking procedural similarities to Sand Revolution II, including
`Petitioner’s stipulation in the litigation which is not yet reflected in the IPR record. See
`IPR2020-00846, Paper 9 (Oct. 21, 2020) (granting Preliminary Reply to address intervening
`Sand Revolution). Good cause also exists because Patent Owner relies on evidence that did
`not exist at the time the petitions were filed (e.g., Ex. 2012 (Docket Entry Regarding Trial
`Date)) and fails to explain the full relevance of that new evidence (e.g., Ex. 2010 (Case
`Schedule setting dates for issues in IPR and litigation to diverge via narrowing of asserted
`claims)).
`2. Patent Owner’s arguments are directed to embodiments in Carrie (e.g., Figs. 5, 6) that are not
`relied upon in the Petitions. Good cause exists because Petitioner could not have reasonably
`anticipated that Patent Owner would present arguments against a different combination from
`that in the Petitions. Good cause also exists because Patent Owner’s misstatements about
`the Petitions and proposed combination are the basis for its arguments under Fintiv factor 6.
`
`Petitioner requests authorization for a five-page reply to the POPR in each case. Petitioner does not
`oppose granting Patent Owner sur-replies of the same length.
`
`Petitioner and Patent Owner have conferred. Patent Owner opposes this request due to alleged
`prejudices/lack of good cause that can be explained in a conference call.
`
`Conference Call Availability
`If necessary, the parties are available for a conference call with the Board at the following times:
`Friday, 10/30 between 8AM-3PM ET
`Monday, 11/2 between 8AM-1PM ET or 3PM-4PM ET
`Tuesday, 11/3 between 8AM-1PM ET
`Wednesday, 11/4 after 1:30PM ET
`
`Best regards,
`Theo Foster
`Counsel for Petitioner
`
`IPR2020-01141, -01143
`Ex. 3001
`
`

`

`Theo Foster
`Partner
`theo.foster@haynesboone.com
`
`Haynes and Boone, LLP
`2505 North Plano Road
`Suite 4000
`Richardson, TX 75082-4101
`
`(t) +1 972.739.8649
`(m) +1 214.417.9095
`
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