From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Parham Hendifar; Trials
`Nathan Lowenstein; Kenneth Weatherwax; Vinson Lin; Philip Graves; David Holt; Tiffany.miller@dlapiper.com;
`Jim.heintz@dlapiper.com; IPR50095-0015IP1; Karl Renner
`RE: IPR2021-00144 Joint Request to Modify Schedule
`Friday, February 25, 2022 4:23:34 PM
`
`Counsel,
`
`Thank you for your email responding to the Board’s questions. The Board has considered the
`parties’ proposal to modify due dates 2 and 3 of the Scheduling Order and will allow the parties to
`modify those due dates as set forth in the joint request to the Board on February 17, 2022. The
`parties need not file anything with the Board at this time, as the Board will enter the email
`communications with the Board into the record to memorialize the parties’ agreement and the
`Board’s authorization.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`
`From: Parham Hendifar <hendifar@lowensteinweatherwax.com>
`Sent: Tuesday, February 22, 2022 2:49 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>; Kenneth Weatherwax
`<weatherwax@lowensteinweatherwax.com>; Vinson Lin <Lin@lowensteinweatherwax.com>; Philip
`Graves <philipg@hbsslaw.com>; David Holt <DTH@fr.com>; Tiffany.miller@dlapiper.com;
`Jim.heintz@dlapiper.com; IPR50095-0015IP1 <IPR50095-0015IP1@fr.com>; Karl Renner
`<renner@fr.com>
`Subject: Re: IPR2021-00144 Joint Request to Modify Schedule
`
`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,
`
`Patent Owner appreciates the Board’s consideration of the parties’ joint request. As Patent Owner’s
`counsel entered an appearance in this matter just last week, it is unfortunately not able at this time
`to advise the Board whether Patent Owner will file a motion to amend. If Patent Owner does file a
`motion to amend, it would of course appreciate the opportunity to avail itself of the pilot program.
`However, if the Board believes that it is not feasible to utilize the pilot program with the parties’
`
`

`

`requested extension, Patent Owner will forego the opportunity to utilize the pilot program so that
`the requested extension can be granted.
`
`Regards,
`
`Parham Hendifar | Lowenstein & Weatherwax LLP
`1880 Century Park East., Suite 815, Los Angeles, CA 90067
`Office: 310.307.4510
`
`
`From: Trials <Trials@USPTO.GOV>
`Date: Tuesday, February 22, 2022 at 8:18 AM
`To: Parham Hendifar <hendifar@lowensteinweatherwax.com>, Trials <Trials@USPTO.GOV>
`Cc: Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>, Kenneth Weatherwax
`<weatherwax@lowensteinweatherwax.com>, Vinson Lin <Lin@lowensteinweatherwax.com>,
`Philip Graves <philipg@hbsslaw.com>, David Holt <DTH@fr.com>,
`"Tiffany.miller@dlapiper.com" <Tiffany.miller@dlapiper.com>, "Jim.heintz@dlapiper.com"
`<Jim.heintz@dlapiper.com>, IPR50095-0015IP1 <IPR50095-0015IP1@fr.com>, Karl Renner
`<renner@fr.com>
`Subject: RE: IPR2021-00144 Joint Request to Modify Schedule
`
`Counsel,
`
`The Board has received the parties joint request and would like to know whether Patent Owner
`anticipates filing a motion to amend and, if so, whether Patent Owner intends to select one or
`more of the pilot program options—preliminary guidance and/or a revised motion to amend.
`The Board requests this information to determine whether the requested modifications to due
`dates 2 and 3 of the Scheduling Order are feasible in light of the December 2, 2022 statutory date
`for the Board’s final written decision in the proceeding.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`
`From: Parham Hendifar <hendifar@lowensteinweatherwax.com>
`Sent: Thursday, February 17, 2022 1:18 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Nathan Lowenstein <lowenstein@lowensteinweatherwax.com>; Kenneth Weatherwax
`
`

`

`<weatherwax@lowensteinweatherwax.com>; Vinson Lin <Lin@lowensteinweatherwax.com>; Philip
`Graves <philipg@hbsslaw.com>; David Holt <DTH@fr.com>; Tiffany.miller@dlapiper.com;
`Jim.heintz@dlapiper.com; IPR50095-0015IP1 <IPR50095-0015IP1@fr.com>; Karl Renner
`<renner@fr.com>
`Subject: IPR2021-00144 Joint Request to Modify Schedule
`
`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,
`
`The Parties jointly write to request that the Board modify Due Dates 1, 2 and 3 in IPR2021-00144 per
`the table below. Given that the scheduling order (Paper 27 at 8) prohibits the parties from
`modifying the entirety of due dates 2, 3, the parties hereby request the Board’s authorization for
`said modification. Good cause exists for the requested modification because Patent Owner has
`retained new counsel, who entered an appearance in this matter on February 14, 2022, just a few
`days ago, and requires additional time to review the relevant materials and prepare a Patent Owner
`Response and other responsive documents. New proposed due dates are:
`
`
`New Due Date 1: March 25, 2022
`New Due Date 2: June 24, 2022
`New Due Date 3: August 5, 2022
`
`
`Should the Board wish to have a conference call with the parties, the parties are generally available
`on Friday, February 18, Tuesday February 22 and Wednesday February 23.
`
`Respectfully submitted,
`
`Parham Hendifar | Lowenstein & Weatherwax LLP
`1880 Century Park East., Suite 815, Los Angeles, CA 90067
`Office: 310.307.4500
`
`
`