`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Cook, Brian; Carlson, Megan; Trials
`Whilt, Nicholas; Yagura, Ryan K.; Liang, Mark; Haber, Ben; nrubin@raklaw.com; pwang@raklaw.com
`RE: Oral Hearing in IPR2021-00591
`Friday, June 10, 2022 12:41:08 PM
`
`Counsel,
`
`Based on Petitioner’s withdrawal of the Request for Oral Hearing, no hearing will be held.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`From: Cook, Brian <bcook@omm.com>
`Sent: Thursday, June 9, 2022 2:13 PM
`To: Carlson, Megan <Megan.Carlson@USPTO.GOV>; Trials <Trials@USPTO.GOV>
`Cc: Whilt, Nicholas <nwhilt@omm.com>; Yagura, Ryan K. <ryagura@omm.com>; Liang, Mark
`<mliang@omm.com>; Haber, Ben <bhaber@omm.com>; nrubin@raklaw.com; pwang@raklaw.com
`Subject: RE: Oral Hearing in IPR2021-00591
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Honorable Board and Ms. Carlson,
`
`The Petitioners and Patent Owner have reached an agreement in principle, settling all litigation
`regarding the patent at issue in IPR2021-00591, and that litigation is now stayed pending final
`settlement. Once the final agreement is signed in the next few weeks, the parties anticipate seeking
`authorization to file a motion to terminate this IPR in its entirety. Accordingly, Petitioners withdraw
`their request for an oral hearing, which we believe obviates the need to select an in-person or
`remote hearing format.
`
`Counsel for Patent Owner is copied on this communication and is in agreement.
`
`Best regards,
`
`Brian Cook
`
`Counsel for Petitioners
`
`
`
`Samsung Electronics Co., Ltd. and
`Samsung Electronics America Co.
`
`
`O’Melveny
`Brian M. Cook
`bcook@omm.com
`O: +1-213-430-6496
`
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Website | LinkedIn | Twitter | Bio
`This message and any attached documents contain information from the law firm of O'Melveny & Myers LLP that
`may be confidential and/or privileged. If you are not the intended recipient, you may not read, copy, distribute, or
`use this information. If you have received this transmission in error, please notify the sender immediately by reply
`e-mail and then delete this message.
`
`
`
`From: Carlson, Megan <Megan.Carlson@USPTO.GOV>
`Sent: Tuesday, June 7, 2022 1:46 PM
`To: Whilt, Nicholas <nwhilt@omm.com>; Yagura, Ryan K. <ryagura@omm.com>; Cook, Brian
`<bcook@omm.com>; Haber, Ben <bhaber@omm.com>; Liang, Mark <mliang@omm.com>;
`nrubin@raklaw.com; pwang@raklaw.com
`Cc: Trials <Trials@USPTO.GOV>
`Subject: Oral Hearing in IPR2021-00591
`
`
`[EXTERNAL MESSAGE]
`
`Counsel,
`
`The scheduling order in this proceeding provided that the final hearing, if requested by either
`party, would take place at USPTO Headquarters in Alexandria, Virginia. Petitioner has now
`requested a hearing.
`
`In light of the USPTO re-opening, the hearing in this proceeding may be conducted in person
`in this location or virtually by video conference. Please inform the Board by email to
`Trials@uspto.gov, no later than June 14, whether the parties would prefer either a video
`hearing or an in-person hearing. To the extent the parties disagree, they should meet and
`confer before emailing the Board; if the dispute cannot be resolved by meeting and
`conferring, the parties should inform the Board of each party’s individual preferences. PTAB
`will only conduct an in-person hearing when requested by all parties.
`
`For the parties’ information in making this decision, two judges will appear remotely by video,
`and to the extent the parties prefer an in-person hearing, one judge will appear in-person
`
`
`
`from USPTO Headquarters in Alexandria.
`
`Thank you,
`
`Megan Carlson
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-1650
`Megan.Carlson@uspto.gov
`
`
`
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