`To:
`Cc:
`
`Subject:
`Date:
`
`William Ramey
`Trials; Jacob Henry
`USPTO; Kelly Hughes; roshan@unifiedpatents.com; Eric Buresh; jordan@unifiedpatents.com; ptab@eriseip.com;
`Nick Apel
`Re: Unified Patents, LLC v. Authwallet LLC, IPR2021-01260 (Patent No. 9,292,852)
`Wednesday, October 5, 2022 7:48:24 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`We ar withdrawing the surreply.
`
`William P. Ramey, III
`Ramey LLP
`5020 Montrose Blvd., Suite 800
`Houston, Texas 77006
`(713) 426-3923
`(832) 689-9175 (fax)
`wramey@rameyfirm.com
`www.rameyfirm.com
`
`This email contains privileged and confidential information. If you are not the intended
`recipient please delete and notify the sender.
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, October 5, 2022 5:41:24 PM
`To: Trials <Trials@USPTO.GOV>; Jacob Henry <jhenry@rameyfirm.com>
`Cc: William Ramey <wramey@rameyfirm.com>; USPTO <uspto@rameyfirm.com>; Kelly Hughes
`<kelly@unifiedpatents.com>; roshan@unifiedpatents.com <roshan@unifiedpatents.com>; Eric
`Buresh <eric.buresh@eriseip.com>; jordan@unifiedpatents.com <jordan@unifiedpatents.com>;
`ptab@eriseip.com <ptab@eriseip.com>; Nick Apel <nick.apel@eriseip.com>
`Subject: RE: Unified Patents, LLC v. Authwallet LLC, IPR2021-01260 (Patent No. 9,292,852)
`
`As of this email, Patent Owner has not filed its corrected Sur-Reply. The parties are directed to meet
`and confer and provide times they are mutually available for a conference call to discuss this matter.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`IPR2021-01260
`Ex. 3001
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, September 21, 2022 4:48 PM
`To: Jacob Henry <jhenry@rameyfirm.com>; Trials <Trials@USPTO.GOV>
`Cc: William Ramey <wramey@rameyfirm.com>; USPTO <uspto@rameyfirm.com>; Kelly Hughes
`<kelly@unifiedpatents.com>; roshan@unifiedpatents.com; Eric Buresh <eric.buresh@eriseip.com>;
`jordan@unifiedpatents.com; ptab@eriseip.com; Nick Apel <nick.apel@eriseip.com>
`Subject: RE: Unified Patents, LLC v. Authwallet LLC, IPR2021-01260 (Patent No. 9,292,852)
`
`Counsel:
`
`No conference call is necessary. Patent Owner is authorized to withdraw the Sur-Reply and Exhibit
`2009 and may file a new, compliant Sur-Reply within 2 days of this email.
`
`Thank you,
`
`Megan Carlson
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Jacob Henry <jhenry@rameyfirm.com>
`Sent: Wednesday, September 21, 2022 3:53 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: William Ramey <wramey@rameyfirm.com>; USPTO <uspto@rameyfirm.com>; Kelly Hughes
`<kelly@unifiedpatents.com>; roshan@unifiedpatents.com; Eric Buresh <eric.buresh@eriseip.com>;
`jordan@unifiedpatents.com; ptab@eriseip.com; Nick Apel <nick.apel@eriseip.com>
`Subject: Unified Patents, LLC v. Authwallet LLC, IPR2021-01260 (Patent No. 9,292,852)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`RE: Unified Patents, LLC v. Authwallet LLC, IPR2021-01260 (Patent No. 9,292,852)
`To the Honorable Board,
`The Parties have conferred and agree that Patent Owner’s Sur-Reply (filed September 15, 2022) is
`not compliant with the rules. Specifically, Patent Owner’s Sur-Reply exceeds the word count
`specified in 37 CFR § 42.24 (c)(4), raises new arguments which do not respond to arguments raised
`in Petitioner’s reply and is “accompanied by new evidence other than deposition transcripts of the
`cross-examination of any reply witness” in violation of 37 CFR § 42.23(b).
`Patent Owner seeks permission to withdraw its Sur-Reply and accompanying evidence. Petitioner
`does not oppose such a Request. Patent Owner further seeks permission to file a new, compliant
`Sur-Reply. To the extent the Board authorizes resubmission, Petitioner does not oppose provided
`that the new Sur-Reply is filed within two days of authorization from the Board.
`Alternatively, Petitioner seeks a motion to strike Patent Owner’s Sur-Reply and accompanying
`evidence in accordance with 37 CFR §§ 42.23, and 42.24.
`The parties are available for a teleconference on Thursday, September 22, and Friday, September
`23 to discuss the Board’s preferred course of action.
`
`
`
`Respectfully submitted,
`
`Jacob B. Henry
`Counsel
`
`Ramey LLP
`5020 Montrose Blvd, Suite 800
`Houston TX 77006 | LinkedIn
`M: 832-454-1456 | O: 832-581-4223
`
`
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