Brett Mangrum
`Specht, Kara; Trials
`Howard@wisnialaw.com; derek@soreylaw.com; Ryan Loveless; Jim Etheridge; Brian Koide;
`jstephens@etherideglaw.com; Jeff Huang; IPTeam; Arner, Erika
`RE: IPR2021-00058, IPR2021-00084, and IPR2021-000127 - Petitioner"s Request for Reply
`Friday, March 5, 2021 11:48:00 AM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Your Honors,
`
`Petitioner misrepresents the facts. Patent Owner expressed opposition to the motion and requested
`clarification of the basis for which the Petitioner alleges good cause. Petitioner only just this
`morning disclosed via email the authority it now cites to the Board. Petitioner has yet to disclose to
`Patent Owner why the facts and authority it cites allegedly provides good cause. Under the
`circumstances, Patent Owner can only maintain its previously expressed opposition. Patent Owner
`further submits that the second issue Petitioner identified (referenced as no. “(2)” in Petitioner’s
`email) is purely legal and is ripe for board resolution because both parties have already briefed their
`respective positions.
`
`Respectfully,
`Brett Mangrum
`Counsel for Patent Owner
`
`From: Specht, Kara <Kara.Specht@finnegan.com>
`Sent: Friday, March 5, 2021 10:31 AM
`To: trials@uspto.gov
`Cc: Brett Mangrum <brett@etheridgelaw.com>; Howard@wisnialaw.com; derek@soreylaw.com;
`Ryan Loveless <ryan@etheridgelaw.com>; Jim Etheridge <jim@etheridgelaw.com>; Brian Koide
`<brian@etheridgelaw.com>; jstephens@etherideglaw.com; Jeff Huang
`<jhuang@etheridgelaw.com>; IPTeam <IPTeam@etheridgelaw.com>; Arner, Erika
`<erika.arner@finnegan.com>
`Subject: IPR2021-00058, IPR2021-00084, and IPR2021-000127 - Petitioner's Request for Reply
`
`Your Honors,
`
`Petitioner requests authorization to file a 7-page pre-institution reply to address two issues
`presented by Patent Owner’s Preliminary Response. In particular, there is good cause for Petitioner
`to reply on: (1) application of NHK Spring/Fintiv in view of intervening legal and factual
`circumstances (e.g., new decisions including Sotera Wireless Inc. v. Masimo Corp, IPR2020-01019,
`Paper No. 12 (Dec. 1, 2020) and joinder petitions filed by Lyft and Bumble (IPR2021-00422 and
`IPR2021-00423)), and (2) the status of U.S. Patent App. Pub. No. 2003/0055983 as prior art in view
`of Patent Owner’s reliance on non-analogous case law, including B.E. Tech., L.L.C. v. Google, Inc., No.
`2015-1827, 2016 WL 6803057, at *7 (Fed. Cir. Nov. 17, 2016); Intel Corp. v. Alacritech, Inc., IPR2017-
`01391, Paper 81 at 43−44 (PTAB November 26, 2018); and Nichia Corp. v. Emcore Corp., IPR2012-
`00005, Paper 27 at 4, (PTAB June 3, 2013).
`
`Petitioner has corresponded with Patent Owner’s counsel about this request, but they have not said
`IPR2021-00058, -00084, -00127
`Ex. 3002
`
`

`

`whether they will oppose. In any event, if the Board grants this reply, Petitioner would not object to
`a sur-reply of equal length for the Patent Owner.
`
`If a call is needed, Petitioner’s counsel is available at the Board’s convenience next week. Counsel for
`Patent Owner has listed their availability next week as Thursday, March 10 or Friday, March 11, from
`11am EST to 2pm EST.
`
`Best regards,
`Kara Specht
`Counsel for Petitioner
`
`Kara Specht
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`271 17th Street, NW, Suite 1400, Atlanta, GA 30363-6209
`404.653.6481 | fax 404.653.6444 | kara.specht@finnegan.com | www.finnegan.com
`
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`
`