`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Lawrence,
`
`Deighan, Kyle
`Tuesday, August 10, 2021 1:32 PM
`Sung, Lawrence
`Tucker, Todd; Reulbach, John; Summers, Teresa; Sylvia, Mary
`RE: IPR Nos. 2020-01573, 2020-01711, 2021-00017, 2021-00065, 2021-00066
`
`Thank you for your email and for offering to send a follow‐up joint email to Dr. Quintana. Given the approaching due
`dates for Petitioner’s replies in the IPRs, we think it is best to seek further guidance from the Board on this issue. We
`will be responding to the Board’s email shortly to provide our availability for a conference call.
`
`Regards,
`Kyle
`
`From: Sung, Lawrence <LSung@wiley.law>
`Sent: Tuesday, August 10, 2021 11:06 AM
`To: Deighan, Kyle <KDeighan@Calfee.com>
`Cc: Tucker, Todd <TTucker@Calfee.com>; Reulbach, John <JReulbach@calfee.com>; Summers, Teresa
`<TSummers@wiley.law>; Sylvia, Mary <MSylvia@wiley.law>
`Subject: RE: IPR Nos. 2020‐01573, 2020‐01711, 2021‐00017, 2021‐00065, 2021‐00066
`
`Dear Kyle:
`
`Patent Owners have not received any reply from Dr. Quintana to our joint July 19, 2021 letter and email. Patent
`Owners would be willing to send a follow-up joint email to Dr. Quintana seeking his availability for deposition in
`Spain. Please advise whether Petitioner wishes to do so. Thank you.
`
`Lawrence
`
`Lawrence M. Sung, Ph.D.
`Attorney at Law
`lsung@wiley.law
`
`Wiley Rein LLP • 1776 K Street NW • Washington, DC 20006
`o: 202.719.4181
`Download V-Card | wiley.law | Bio
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, August 9, 2021 1:08 PM
`To: Deighan, Kyle <KDeighan@Calfee.com>
`Cc: Tucker, Todd <TTucker@Calfee.com>; Reulbach, John <JReulbach@calfee.com>; Sung, Lawrence
`<LSung@wiley.law>; Summers, Teresa <TSummers@wiley.law>; Sylvia, Mary <MSylvia@wiley.law>
`Subject: RE: IPR Nos. 2020‐01573, 2020‐01711, 2021‐00017, 2021‐00065, 2021‐00066
`
`Counsel, as a follow‐up to the Board’s email of earlier today, we recognize that there was some delay in the
`Board’s message reaching the parties’ counsel. Please update the Board as soon as possible on the parties’
`
`1
`
`Petitioner - New World Medical
`Ex. 1044, p. 1 of 5
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`
`
`progress in scheduling the deposition of Dr. Quintana. If a conference call is desired, please let us know the
`parties’ availability over the course of this week.
`
`Thank you,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`From: Deighan, Kyle <KDeighan@Calfee.com>
`Sent: Friday, July 30, 2021 5:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Conn, Paula <Paula.Conn@USPTO.GOV>; Tucker, Todd <TTucker@Calfee.com>; Reulbach, John
`<JReulbach@calfee.com>; LSung@wiley.law; TSummers@wiley.law; MSylvia@wiley.law
`Subject: RE: IPR Nos. 2020‐01573, 2020‐01711, 2021‐00017, 2021‐00065, 2021‐00066
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`Dear PTAB,
`
`In accordance with the Board’s instructions in the July 26th email below, Petitioner writes to provide another update
`regarding scheduling the deposition of Dr. Manuel Quintana in Spain in the above‐referenced proceedings. It is
`Petitioner’s understanding that Dr. Quintana has still not yet responded to the parties’ joint letter sent on Monday, July
`19th.
`
`Given the approaching due dates for Petitioner’s reply briefs in the above‐referenced proceedings, if the parties are
`unable to make additional progress scheduling Dr. Quintana’s deposition by next Friday, August 6th, Petitioner
`respectfully requests: (a) a conference call with the Board for guidance on how the parties should proceed; and/or (b)
`authorization to move to strike Dr. Quintana’s declaration in the above‐referenced proceedings. Thank you for your
`time and assistance in resolving this matter.
`
`Best regards,
`Kyle Deighan
`
`
`
`
`
`
`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
` kdeighan@calfee.com
`216.622.8551 Phone
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, July 26, 2021 9:05 AM
`To: Deighan, Kyle <KDeighan@Calfee.com>; Trials <Trials@USPTO.GOV>
`Cc: Conn, Paula <Paula.Conn@USPTO.GOV>; Tucker, Todd <TTucker@Calfee.com>; Reulbach, John
`<JReulbach@calfee.com>; LSung@wiley.law; TSummers@wiley.law; MSylvia@wiley.law
`Subject: RE: IPR Nos. 2020‐01573, 2020‐01711, 2021‐00017, 2021‐00065, 2021‐00066
`
`Counsel,
`
`2
`
`Petitioner - New World Medical
`Ex. 1044, p. 2 of 5
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`
`
`
`Regarding Counsel’s email dated July 23, 2021, the Board appreciates the parties’ cooperation in this matter and
`authorizes more time to coordinate the subject deposition. Please update the Board by July 30, 2021, as suggested.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Deighan, Kyle <KDeighan@Calfee.com>
`Sent: Friday, July 23, 2021 3:06 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Conn, Paula <Paula.Conn@USPTO.GOV>; Tucker, Todd <TTucker@Calfee.com>; Reulbach, John
`<JReulbach@calfee.com>; LSung@wiley.law; TSummers@wiley.law; MSylvia@wiley.law
`Subject: RE: IPR Nos. 2020‐01573, 2020‐01711, 2021‐00017, 2021‐00065, 2021‐00066
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`Dear PTAB,
`
`In accordance with the Board’s instructions during the telephonic hearing last Thursday, July 15th regarding the
`deposition of Dr. Manuel Quintana in the above‐referenced proceedings, the parties write to provide an update on
`progress in scheduling Dr. Quintana’s deposition in Spain. Following the teleconference with the Board, the parties
`cooperated to prepare a joint letter requesting that Dr. Quintana be available for deposition in Spain regarding his May
`17, 2021 sworn affidavit. Patent Owner’s counsel sent the letter via email and expedited international delivery to Dr.
`Quintana on Monday, July 19th, and requested a response from Dr. Quintana by today, Friday, July 23rd. Dr. Quintana
`has not yet responded to the letter.
`
`Given that Dr. Quintana has not yet responded to the deposition request and that the parties are still working to set up
`Dr. Quintana’s deposition in Spain, Petitioner New World Medical, Inc. respectfully requests the opportunity to provide
`another update to the Board regarding Dr. Quintana’s deposition by next Friday, July 30th. Thank you for your time in
`assisting the parties to resolve this matter.
`
`Best regards,
`Kyle Deighan
`
`
`
`
`
`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
` kdeighan@calfee.com
`216.622.8551 Phone
`From: Conn, Paula <Paula.Conn@USPTO.GOV>
`Sent: Monday, July 12, 2021 2:40 PM
`To: Deighan, Kyle <KDeighan@Calfee.com>; Tucker, Todd <TTucker@Calfee.com>; Reulbach, John
`<JReulbach@calfee.com>; LSung@wiley.law; TSummers@wiley.law; MSylvia@wiley.law
`
`3
`
`Petitioner - New World Medical
`Ex. 1044, p. 3 of 5
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`
`
`Cc: Trials <Trials@USPTO.GOV>
`Subject: RE: IPR Nos. 2020‐01573, 2020‐01711, 2021‐00017, 2021‐00065, 2021‐00066
`
`Counsel,
`
` A
`
` conference call has been scheduled for Thursday, July, 12, 2021, at 10:00 am EST.
`Call‐in number: (866) 692‐
`3158
`Passcode: 8583307
`
`Please email trials@uspto.gov with any questions and concerns.
`
`Paula Conn
`Paralegal Specialist
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`Phone: 571-272-4589
`Email: paula.conn@uspto.gov
`
`
`From: Deighan, Kyle <KDeighan@Calfee.com>
`Sent: Friday, July 9, 2021 3:02 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Tucker, Todd <TTucker@Calfee.com>; Reulbach, John <JReulbach@calfee.com>; Sung, Lawrence
`<LSung@wiley.law>; Summers, Teresa <TSummers@wiley.law>; Sylvia, Mary <MSylvia@wiley.law>
`Subject: IPR Nos. 2020‐01573, 2020‐01711, 2021‐00017, 2021‐00065, 2021‐00066
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`Dear PTAB:
`
`We represent Petitioner New World Medical, Inc. in the above‐referenced IPR proceedings. We write to request a
`teleconference with the Board to seek the Board’s guidance on an issue that has arisen regarding the deposition of one
`of Patent Owner’s witnesses in the above‐referenced proceedings. Patent Owner has submitted uncompelled direct
`testimony in the form of a declaration by Dr. Manuel Quintana, who is located in Spain. Patent Owner has indicated that
`Dr. Quintana will not be made available for deposition in the United States. Petitioner believes Dr. Quintana should
`appear for in‐person deposition in the United States in accordance with 37 C.F.R. § 42.53(b)(2). The parties have met
`and conferred but have not reached an agreement as to the location of Dr. Quintana’s deposition. Petitioner therefore
`requests a conference call with the Board. The parties are available Wednesday, July 14 from 12‐5pm eastern and
`Thursday, July 15 from 10am‐3pm eastern for a conference call.
`
`Best regards,
`Kyle Deighan
`
`
`
`Kyle T. Deighan
`Not Licensed in Ohio; Licensed in DC and NY
`kdeighan@calfee.com
`216.622.8551 Office
`
`4
`
`Petitioner - New World Medical
`Ex. 1044, p. 4 of 5
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`
`
`216.241.0816 Fax
`
`
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`5
`
`Petitioner - New World Medical
`Ex. 1044, p. 5 of 5
`New World Medical, Inc. v. MicroSurgical Tech., Inc., IPR2020-01573
`
`