From: Tim Riffe <riffe@fr.com>  
`Sent: Wednesday, January 19, 2022 9:32 PM 
`To: Trials <Trials@USPTO.GOV> 
`Cc: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>; Nathan Lowenstein 
`<lowenstein@lowensteinweatherwax.com>; Colette Woo <woo@lowensteinweatherwax.com>; Edward Hsieh 
`<hsieh@lowensteinweatherwax.com>; Vinson Lin <Lin@lowensteinweatherwax.com>; Neo 
`<neowireless_iprs@lowensteinweatherwax.com>; Karl Renner <renner@fr.com>; Usman Khan <khan@fr.com>; AXF‐
`PTAB <AXF‐PTAB@fr.com>; IPR00035‐0023IP1 <IPR00035‐0023IP1@fr.com>; PTAB Inbound <PTABInbound@fr.com>; 
`Tim Riffe <riffe@fr.com> 
`Subject: IPR2021‐01468 (Patent 10,075,941) Petitioner seeking Board's authorization for pre‐institution reply 
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on 
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`
`Dear Patent Trial and Appeal Board, 
`
`Petitioner requests the Board’s authorization to submit a pre-institution Petitioner Reply Brief in response to the
`Patent Owner Preliminary Response (POPR). As briefly explained below, Petitioner requests additional
`briefing to address Patent Owner’s incorrect remarks/misrepresentations regarding 1) the joint claim
`constructions recently proposed by the parties in the district court, and 2) Petitioner’s stipulations as they
`pertain to the Fintiv factors. Petitioner’s briefing is pertinent at least to Fintiv Factor 4 and the application of
`record evidence before the Board in Petitioner’s original petition to earlier and recently-developed joint claim
`constructions proposed by the parties.
`
`Claim Construction 
`
`In the POPR, Patent Owner argues that Petitioner’s IPR petition should be denied in light of the claim
`construction agreed upon by both parties in December 2021 (three months after the petition was filed) because
`Petitioner allegedly failed to disclose or apply the new joint constructions. See e.g., POPR at 49-60. Patent
`Owner fails to note that the parties agreed on the joint claim constructions in the district court one day before
`Patent Owner filed its POPR. Thus, Patent Owner was in prime position to submit evidence of the newly-
`agreed construction, while Petitioner was not. While Patent Owner took advantage of the timing of the
`construction agreement and subsequently dedicated more than 15 pages of its POPR on arguments related to the
`new constructions, Patent Owner offers factually incorrect characterizations of the references and the petition
`
`1
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`

`

`arguments in the POPR to argue that the references and Petition are somehow deficient. As one example, the
`POPR states that one of the primary references, PCT819, does “not describe the transmission diversity that was
`known at the time of the invention (cf. Ex. 2002 [Derryberry] 69); they describe only MIMO and the time
`diversity, frequency diversity, and spatial diversity that exists within MIMO systems.” POPR at 30-31. Yet, as
`the Petition sets forth, PCT819 discloses non-MIMO systems (“In an N-SIMO mode, a single data stream is
`allocated to each of a number of distinct terminals, with each terminal employing multiple antennas (i.e., SIMO
`terminals).”) EX-1009 at ¶[1007]; Petition at 57. This is just one example of Patent Owner’s
`mischaracterization of the references and petition arguments and evidence.  
`
` 
`Petitioner also seeks briefing to (1) provide case law examples of when varying claim construction at the PTAB
`and district courts have not precluded institution, (2) highlight the factually incorrect statements and
`misrepresentations made by Patent Owner in its POPR as they relate to the recently agreed-upon construction
`arguments, and (3) briefly explain that the prior art references and evidence of record in the originally-filed
`petition render the claims obvious whether the petition’s construction or subsequently agreed upon construction
`is considered.  
`
` 
`Fintiv Factors 
`
` 
`Patent Owner also presented factually incorrect statements in the POPR’s Fintiv section discussion. In
`particular, Patent Owner incorrectly contends that “Petitioner has not made any such stipulation before the trial
`court and has not informed Patent Owner it intends to make such a stipulation.” POPR at 41. On the contrary,
`Petitioner informed Patent Owner of Petitioner’s conditional stipulation the same day the petition was
`filed. Ex-1005, submitted with the Petition, is a copy of the letter sent by Petitioner’s counsel to Patent Owner’s
`counsel. Moreover, Patent Owner’s statement also misrepresents Petitioner’s action by failing to note that
`Petitioner’s stipulation was conditional upon institution. Thus, Petitioner is under no obligation to inform the
`district court of the stipulation or withdraw the asserted grounds until after an institution decision is made by the
`Board. 
`
` 
`Petitioner requests briefing with respect to Fintiv Factor 4, e.g., to provide additional remarks and submit
`evidence demonstrating that Patent Owner was informed of the stipulation by Petitioner as of the time of the
`petition filing.  
`
` 
`Meet and Confer 
`
` 
`Counsel for Petitioner contacted counsel for Patent Owner on Friday, January 14, 2022 regarding Petitioner’s
`request for authorization to file a reply. Petitioner asked Patent Owner to provide a response indicating whether
`Patent Owner opposes Petitioner’s request by Tuesday January 18. In response to Patent Owner’s counsel’s
`request for additional time in light of the holiday weekend, Petitioner granted Patent Owner an extension to
`Wednesday, January 19, 2022 at 8 PM ET to indicate whether or not Patent Owner opposed Petitioner’s
`request. Patent Owner’s counsel did not provide a response indicating whether Patent Owner opposes
`Petitioner’s request for briefing.  
`
` 
`Should the Board find it helpful and/or necessary to conduct a call, Petitioner’s counsel is available at the
`following times: 
`  
`
`Monday, January 24, 2022 after 12:30 pm ET 
`Tuesday, January 25, 2022 after 2:30 pm ET  
`
`
` 
`Should the Board require anything further, please advise. 
`  
`Sincerely, 
`
`2
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`

`

`  
`
`Tim Riffe 
`Counsel for Petitioner 
`
`
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