From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Trials
`Henning Schmidt; Trials
`Chassman, Peter J.; Mitchell, Jonah; Morgan, Christine; cshanahan@reedsmith.com; Detrixhe, Jonathan I.; Jay
`Kesan; Alfonso Chan
`RE: Qualcomm, ZyXEL v. UNMRI, IPR2021-00375 - Authorization to replace rough transcript with final, and
`correct clerical error
`Tuesday, February 22, 2022 3:32:32 PM
`
`Counsel: Patent Owner’s papers listed in the table have been expunged. Patent Owner is authorized
`to file the agreed upon replacements for Patent Owner’s Objections to Evidence filed in IPR2021-
`00375 and IPR2021-00377, and later send to the Board an e-mail requesting expungement of the
`corresponding prior versions of Patent Owner’s Objections to Evidence.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`From: Henning Schmidt <hschmidt@dimuro.com>
`Sent: Monday, February 21, 2022 2:00 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Chassman, Peter J. <PChassman@ReedSmith.com>; Mitchell, Jonah
`<JMitchell@ReedSmith.com>; Morgan, Christine <CMorgan@ReedSmith.com>;
`cshanahan@reedsmith.com; Detrixhe, Jonathan I. <JDetrixhe@ReedSmith.com>; Jay Kesan
`<jay@jaykesan.com>; Alfonso Chan <achan@shorechan.com>; Henning Schmidt
`<hschmidt@dimuro.com>
`Subject: RE: Qualcomm, ZyXEL v. UNMRI, IPR2021-00375 - Authorization to replace rough transcript
`with final, and correct clerical error
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Mrs. King,
`
`Pursuant to your below email, Patent Owner has filed the below indicated replacement papers, and
`accordingly requests that the below indicated superseded papers are expunged. This request is not
`opposed by Petitioners.
`
`
`IPR
`
`Filing
`
`Replacement Paper
`Number
`
`Original Paper
`Number to be
`expunged
`
`

`

`IPR2021-00375
`IPR2021-00375
`IPR2021-00377
`IPR2021-00582
`
`PO Motion to Amend
`PO Response
`PO Response
`PO Response
`
`37
`38
`36
`35
`
`27
`28
`26
`27
`
`
`As further discussed in your below email, Patent Owner and Petitioners have agreed to make the
`limited corrections specifically agreed by the parties and approved by the Board regarding Patent
`Owner’s Objections to Evidence filed as Paper 31 in IPR2021-00375 and Paper 30 in IPR2021-00377.
` Patent Owner and Petitioners have further agreed to modify all citations to the rough transcript of
`the deposition of Petitioner’s expert Dr. Roy in these papers with respective citations to the final
`transcript. With the Board’s approval, Patent Owner will file the agreed replacement papers and will
`then send a notification thereof to you and identify the old papers to be expunged. This request is
`not opposed by Petitioners.
`
`Please contact me with any questions. Thank you very much for your help!
`
`Sincerely,
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Tuesday, December 21, 2021 8:27 AM
`To: Henning Schmidt <hschmidt@dimuro.com>; Trials <Trials@USPTO.GOV>
`Cc: Chassman, Peter J. <PChassman@ReedSmith.com>; Mitchell, Jonah
`<JMitchell@ReedSmith.com>; Morgan, Christine <CMorgan@ReedSmith.com>;
`cshanahan@reedsmith.com; Detrixhe, Jonathan I. <JDetrixhe@ReedSmith.com>; Jay Kesan
`<jay@jaykesan.com>; Alfonso Chan <achan@shorechan.com>
`Subject: RE: Qualcomm, ZyXEL v. UNMRI, IPR2021-00375 - Authorization to replace rough transcript
`with final, and correct clerical error
`
`Counsel:
`
`Patent Owner’s email does not indicate whether Patent Owner’s requests are opposed. Patent
`Owner should hold a meet and confer with Petitioner to determine whether Petitioner
`opposes Patent Owner’s requests. If Patent Owner’s request to refile Patent Owner’s
`Response is unopposed, Patent Owner is authorized in each of IPR2021-00375, IPR2021-
`00377, and IPR2021-00582 to file a substitute Patent Owner Response limited to updating the
`citations to the rough transcript (e.g., IPR2021-00375, Ex. 2014) with citations to the certified
`final transcript (to be filed as Ex. 2015 in IPR2021-00375). No other changes are authorized.
`Patent Owner also is authorized to file the certified final transcript in each of IPR2021-00375,
`IPR2021-00377, and IPR2021-00582.
`
`If Patent Owner’s Motion to Exclude evidence is unopposed, Patent Owner is authorized to
`refile the Motion to Exclude in each of IPR2021-00375, IPR2021-00377, and IPR2021-00582
`
`

`

`with a corrected caption and certificate of compliance and no other changes.
`
`Following the filing of replacement papers, Patent Owner shall send another email to
`Trials.gov with notification that the replacement papers have been filed. Patent Owner shall
`provide in that email for each of IPR2021-00375, IPR2021-00377, and IPR2021-00582 the
`paper numbers of the papers to be expunged, i.e., Patent Owner’s original Response (Paper
`28) and Patent Owner’s Motion to Exclude (Paper 31) in IPR2021-00375.
`
`If Petitioner opposes Patent Owner’s requests, the parties shall send an email with dates and
`times both parties are available for a call.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`From: Henning Schmidt <hschmidt@dimuro.com>
`Sent: Friday, December 17, 2021 2:52 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Henning Schmidt <hschmidt@dimuro.com>; Chassman, Peter J. <PChassman@ReedSmith.com>;
`Mitchell, Jonah <JMitchell@ReedSmith.com>; Morgan, Christine <CMorgan@ReedSmith.com>;
`cshanahan@reedsmith.com; Detrixhe, Jonathan I. <JDetrixhe@ReedSmith.com>; Jay Kesan
`<jay@jaykesan.com>; Alfonso Chan <achan@shorechan.com>
`Subject: Qualcomm, ZyXEL v. UNMRI, IPR2021-00375 - Authorization to replace rough transcript
`with final, and correct clerical error
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`Patent Owner writes to address two issues.
`
`
`1. By agreement of the parties, the deposition of Petitioner’s expert, Dr. Roy, was taken on
`Dec. 6, 2021, only one day in advance of the due date for Patent Owner’s Response and
`Motion to Amend. As a result, Patent Owner submitted the rough transcript of the Roy
`deposition as EX2014 and cited thereto in its Patent Owner response (Paper 28).
` Petitioner has objected to the rough transcript, and Patent Owner has received the final
`
`

`

`transcript on Dec. 16, 2021. Patent Owner therefore propose the following:
`a. submitting the final transcript as EX2015 to replace and expunge EX2014 (the
`rough transcript)
`b. file a substitute Patent Owner response limited to updating the citations to EX2014
`(rough) with citations to EX2015 (certified final) to replace and expunge Patent
`Owner’s original Response (Paper 28)
`
`
`
`2. Upon review of the filed version of Paper 31 (Patent Owner’s Motion to Exclude
`Evidence), it has come to Patent Owners’ attention that a technical error occurred in the
`conversion of the word file to pdf format. Patent Owner therefore requests authorization
`to refile Patent Owner’s Motion to Exclude with a corrected caption and certificate of
`compliance and no other changes, and to expunge the corrupted version of the Motion at
`Paper 31. The Motion to Exclude due date has not yet passed.
`
`
`Sincerely,
`
`Henning Schmidt, Esq
`DiMuroGinsberg, P.C.
`Inglewood Business Center
`1502 Inglewood, B
`Austin, TX, 78741
`(: (512) 826-7067
`*: HSchmidt@DiMuro.com
`Confidentiality: The information contained in this e-mail and any attachments is confidential and privileged information and intended
`only for the use of the individual or entity to whom it is intended. This e-mail and any attachments are or may constitute information
`which is confidential and privileged as an attorney-client communication and/or as attorney work product. If the reader of this e-mail is
`not the intended recipient, or the employee or agent responsible to deliver this communication to the intended recipient, you are hereby
`notified that any distribution, copying, or use of this communication, electronic or otherwise, is strictly prohibited. Furthermore, we
`expressly reserve and do not waive any privilege. If you have received this communication in error, please notify us immediately by
`telephone or by reply to the sender via e-mail, and please delete this e-mail and any accompanying attachments from your inbox, recycle
`bin, and any other directory, file, or electronic storage. Thank you for your cooperation.
`
`
`