`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials
`Friday, March 5, 2021 2:11 PM
`David Holt
`Tiffany.miller@dlapiper.com; Jim.heintz@dlapiper.com; IPR50095-0015IP1;
`IPR50095-0016IP1; Robert Asher; Bruce D. Sunstein; Wendy J. Demoracski
`RE: IPR2021-00144 or IPR2021-00145: Petitioner’s Request to File Relevant Documents
`From Co-Pending Litigation
`
`Counsel,
`
`The Board has considered Petitioner’s request to file certain documents from the co‐pending litigations and a
`5‐page brief to address how the documents may impact the Board’s Fintiv analysis in these proceedings. The
`Board also has considered Patent Owner’s non‐opposition under certain conditions. The Board has
`determined that the documents and briefing may be useful to the Board. Accordingly, the Board authorizes
`Petitioner to file the documents and a 5‐page brief, as outlined in Petitioner’s email to the Board, no later than
`March 10, 2021. The Board also authorizes a 1‐week extension to Patent Owner’s Preliminary Response, to
`March 17, 2021, and an additional 1200 words for a total of 15,200 words. The Board will memorialize these
`authorizations in an Order, which will issue in due course. The Board appreciates that the parties were able to
`come to agreement, and a conference call is not necessary at this time.
`
`Thank you,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`From: David Holt <DTH@fr.com>
`Sent: Thursday, March 4, 2021 3:14 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Tiffany.miller@dlapiper.com; Jim.heintz@dlapiper.com; IPR50095‐0015IP1 <IPR50095‐0015IP1@fr.com>; IPR50095‐
`0016IP1 <IPR50095‐0016IP1@fr.com>; Robert Asher <RAsher@sunsteinlaw.com>; Bruce D. Sunstein
`<BSunstein@sunsteinlaw.com>; Wendy J. Demoracski <WDemoracski@sunsteinlaw.com>
`Subject: IPR2021‐00144 or IPR2021‐00145: Petitioner’s Request to File Relevant Documents From Co‐Pending Litigation
`
`
`
`Honorable Board,
`
`In order to keep the Board apprised of ongoing developments in the co‐pending litigations related to the above‐
`referenced IPRs, Petitioner respectfully requests leave to file the following documents with the Board:
`
`
` “Amended Agreed Scheduling Order” filed 11/13/20 in Neonode Smartphone LLC v. Apple Inc., 6:20‐cv‐00505
`(W.D. Tex.)
` “Order Staying Case Pending Completion of Venue Discovery” filed 12/08/20 in Neonode Smartphone LLC v.
`Apple Inc., 6:20‐cv‐00505 (W.D. Tex.)
`
`1
`
`
`
` “Text Order GRANTING [36] Motion to Stay Case” filed 12/11/20 in Neonode Smartphone LLC v. Samsung
`Electronics Co. Ltd. and Samsung Electronics America, Inc., 6:20‐cv‐00507 (W.D. Tex.)
` “Plaintiff Neonode Smartphone LLC’s Unopposed Motion to Extend Venue Discovery Deadlines” filed 02/16/21
`in Neonode Smartphone LLC v. Apple Inc., 6:20‐cv‐00505 (W.D. Tex.)
`
`
`
`Because these developments arose after Petitioner filed the above‐referenced IPRs against the ’879 and ’993 patents,
`Petitioner also respectfully requests a 5‐page brief to explain how these developments impact the Board’s Fintiv analysis
`with respect to the petitions.
`
`
`Patent Owner does not oppose this request under the following conditions: (1) Petitioner’s 5‐page brief should be filed
`before Patent Owner’s Preliminary Response, which is currently due next Wednesday, March 10; and (2) Patent Owner
`should be given an extension to allow filing of its Preliminary Response one week after the filing of the 5‐page brief; and
`(3) in view of Petitioner’s additional pages, the Preliminary Response should be given an additional 1200 words for a
`total of 15,200 words.
`
`
`Petitioner is agreeable to these conditions, and would be ready to file its 5‐page brief no later than Wednesday, March
`10.
`
`
`The parties counsel are available for a teleconference to discuss this request on Friday (3/5) at 12:30a‐2:30pET or
`Monday (3/8) at 4‐6pET. If your honors require additional availability, please let us know.
`
`
`Sincerely
`
`
`David Holt
`Principal
`Fish & Richardson P.C.
`1000 Maine Ave. SW, Washington DC 20024
`Direct: +1-202-626-7783 :: Facsimile: +1-877-769-7945
`DTH@fr.com :: fr.com
`
`
`
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