Trials
`Day, Jim; Trials
`"gonsalves@capitoliplaw.com"; "yoon@capitoliplaw.com"; Callaway, Daniel; Liaw, Winston
`RE: IPR2020-01235 and IPR2020-01301
`Wednesday, August 26, 2020 4:51:51 PM
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`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`In IPR2020-01235, Petitioner is authorized to file the order by the Federal Circuit Court of Appeals
`granting a petition for writ of mandamus filed by Petitioner seeking transfer of the related district court
`lawsuit from the Western District of Texas to the Northern District of California. The order should be
`filed as an exhibit. Petitioner is not authorized at this time to file a motion to submit supplemental
`information under 37 C.F.R. 42.123(c), which applies after a trial has been instituted. This email will be
`filed as a Board exhibit in IPR2020-01235.
`
`IPR2020-01301 has not yet been assigned to a panel. After the case is assigned, the panel will respond to
`Petitioner’s request with respect to IPR2020-01301.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Day, Jim <JDay@fbm.com>
`Sent: Wednesday, August 19, 2020 8:03 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: 'gonsalves@capitoliplaw.com' <gonsalves@capitoliplaw.com>; 'yoon@capitoliplaw.com'
`<yoon@capitoliplaw.com>; Callaway, Daniel <DCallaway@fbm.com>; Liaw, Winston
`<WLiaw@fbm.com>
`Subject: IPR2020-01235 and IPR2020-01301
`
`Dear PTAB:
`
`Petitioner respectfully requests permission to file a motion to submit supplemental information
`under 37 C.F.R. 42.123(c) in IPR2020-01235 and IPR2020-01301. The supplemental information is
`an order by the Federal Circuit Court of Appeals granting a petition for writ of mandamus filed by
`Petitioner seeking transfer of the related district court lawsuit from the Western District of Texas to
`the Northern District of California. Petitioner could not have submitted the Federal Circuit order
`with its petitions in these proceedings because it issued on July 28, 2020, several weeks after the
`petitions were filed.
`
`In earlier correspondence between the parties, Patent Owner’s lead counsel confirmed that Patent
`
`Ex. 3001
`
`

`

`Owner will not oppose Petitioner’s request to submit the Federal Circuit order as supplemental
`information in these two proceedings.
`
`Respectfully,
`
`James L. Day
`Reg. No. 72,681
`Counsel for Petitioner
`
`James L. Day
`Partner
`he/him/his
`jday@fbm.com
`D 415.954.4414
`
`235 Montgomery Street 17th FL
`San Francisco, CA 94104
`www.fbm.com
`
`This email has been scanned for email related threats and delivered safely by Mimecast.
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`
`Ex. 3001
`
`