`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Matthew Smith; Trials
`Jay Chung; Philip Wang; rak_ecofactor@raklaw.com; Andrew Baluch; Beth Laughton
`RE: IPR2021-00054, Google v. EcoFactor, U.S. Pat. No. 10,534,382
`Thursday, May 27, 2021 2:46:14 PM
`
`Counsel,
`
`Petitioner is authorized to file a motion requesting a stay of Reexamination No. 90/014,679. Petitioner
`shall file the motion no later than 5 business days from today. The motion, which shall be no longer than
`7 pages, shall address the factors set forth in the Notice Regarding Options for Amendments by Patent
`Owner through Reissue or Reexamination During a Pending AIA Trial Proceeding (April 2019), 84 FR
`16654.
`
`Patent Owner may file a responsive paper, no longer than 7 pages, no later than 5 business days after
`Petitioner files its motion.
`
`Only portions of the prosecution history of Reexamination No. 90/014,679 may be filed as exhibits.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Matthew Smith <smith@smithbaluch.com>
`Sent: Wednesday, May 26, 2021 2:23 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jay Chung <jchung@raklaw.com>; Philip Wang <pwang@raklaw.com>;
`rak_ecofactor@raklaw.com; Andrew Baluch <baluch@smithbaluch.com>; Beth Laughton
`<laughton@smithbaluch.com>
`Subject: IPR2021-00054, Google v. EcoFactor, U.S. Pat. No. 10,534,382
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board,
`
`Petitioner Google LLC requests authorization to file a motion to stay co-pending ex parte
`reexamination 90/014,679, which deals with the patent-at-issue in this proceeding, U.S. Pat. No.
`10,534,382. The ex parte reexamination was filed by a third party, and is at an early stage (a
`reexamination has been ordered, but no office action has issued).
`
`Counsel for Patent Owner EcoFactor has indicated that it does not oppose a stay of the
`reexamination proceeding, nor Google’s request to file a motion to stay, but takes no position
`on any specific arguments or assertions that might be made in a motion to stay.
`
`
`
`
`Respectfully,
`
`M. Smith, counsel for Petitioner
`
`Matthew A. Smith
`SMITH BALUCH LLP
`(202) 669-6207
`smith@smithbaluch.com
`
`
`