Trials
`Kenneth Weatherwax; Trials
`Keefe, Heidi; Morton, Phillip; Knight, Dustin M; Weinstein, Mark; Sal Lim; David Alberti; Robert Kramer;
`jnuttall@steptoe.com; Quarmby, Ben; srizzi@mckoolsmith.com; Jerry Tice; Nicholas Yakoobian
`RE: IPR2021-01455, IPR2021-01456, IPR2021-01457 - Patent Owner request for Board guidance prior to
`October 27 Sur-Reply
`Tuesday, October 25, 2022 2:47:39 PM
`
`From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Counsel,
`
`Patent Owner’s request to submit a five (5) page brief addressing objective evidence of
`nonobviousness introduced in the -00439 August district court trial, along with relevant
`objective indicia evidence from the trial, is granted. Petitioner may file a five (5) page
`response to Patent Owner’s brief addressing objective indicia of obviousness from the -00439
`trial, along with relevant objective indicia evidence from the trial. Patent Owner’s brief shall
`be filed by November 2, 2022, and Petitioner’s responsive brief shall be filed by November 11,
`2022.
`
`Thank you,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>
`Sent: Friday, October 21, 2022 4:26 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Keefe, Heidi <hkeefe@cooley.com>; Morton, Phillip <pmorton@cooley.com>; Knight, Dustin M
`<dknight@cooley.com>; Weinstein, Mark <mweinstein@cooley.com>; Sal Lim <slim@feinday.com>;
`David Alberti <dalberti@kramerday.com>; Robert Kramer <rkramer@kramerday.com>;
`jnuttall@steptoe.com; Quarmby, Ben <bquarmby@mololamken.com>; srizzi@mckoolsmith.com;
`Jerry Tice <jtice@kramerday.com>; Nicholas Yakoobian <Yakoobian@lowensteinweatherwax.com>
`Subject: IPR2021-01455, IPR2021-01456, IPR2021-01457 - Patent Owner request for Board guidance
`prior to October 27 Sur-Reply
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Honorable Board:
`
`In the above-captioned proceedings, Patent Owner Express Mobile respectfully requests the Board’s
`guidance regarding an argument and its supporting evidence based on events that have occurred
`since Patent Owner filed its Response to the Petition. Patent Owner believes this newly-arising
`IPR2021-01455, -01456, -01457
`Ex. 3001
`
`

`

`objective evidence is more efficiently presented in and filed with a short separate brief rather than in
`the Sur-Reply. Accordingly, Patent Owner seeks the Board’s guidance, and requests such
`authorization subject to such guidance, before it files its Sur-Reply, currently due in six days,
`Thursday, October 27.
`
`The newly-arising evidence in question is objective evidence (i.e., so-called secondary
`considerations) of non-obviousness based on the jury trial awarding damages for infringement and
`finding no invalidity of challenged claims of all three patents-at-issue in these IPRs, in Shopify Inc. et
`al. v. Express Mobile, Inc., Civil Action No. 19-cv-00439-RGA (D. Del.). The verdict in the district court
`trial was entered August 31, 2022. Patent Owner’s Response did not address the verdict or its effect
`as objective evidence of non-obviousness and could not have done so, because at that time the
`district court trial had yet to be held. It therefore constitutes new evidence that could not have
`been submitted with Patent Owner’s June 23, 2022 Response to the Petition. Such evidence may
`include for example the public verdict form, and excerpts of trial transcripts showing the rejected
`invalidity arguments. If the Board desires further information about this objective evidence of non-
`obviousness argument, Patent Owner is ready to provide it.
`
`The Sur-Reply is generally not intended for raising new arguments, and as described above, raising
`this objective evidence will likely involve evidence created in the course of the recent district court
`trial. Moreover, if Patent Owner presents this argument in its Sur-Reply, it expects Petitioner may
`request further, post-Sur-Reply briefing to respond. In light of the inefficiency of a Sur-Reply
`presentation and any such further post-Sur-Reply briefing, Patent Owner believes it is more efficient
`for this argument to be made in a separate brief of five (5) pages or less, attaching exhibits.
`
`In the event that the Board does not conclude that this request for a short brief separate from the
`Sur-Reply should be granted, then Patent Owner respectfully requests in the alternative that the
`Board authorize Patent Owner to file the objective evidence of nonobviousness from the August
`trial, as described above, as exhibits with the Sur-Reply on October 27.
`
`Patent Owner Express Mobile has conferred with Petitioner, which states that Petitioner opposes
`this request and that Petitioner is available October 26 between 3-5pm ET for a call with the Board
`about Patent Owner’s request. Patent Owner is available at that time, as well as on the afternoons of
`October 24 and 25 ET.
`
`
`Respectfully submitted to the Board,
`
`Kenneth Weatherwax
`Counsel for Patent Owner
`
`Kenneth Weatherwax | Lowenstein & Weatherwax LLP
`1016 Pico Boulevard
`Santa Monica, California 90405
`Mobile: 310.936.3088
`
`
`