`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Trials
`Thursday, March 31, 2022 9:12 AM
`Paul Hart; Trials
`Reza Mirzaie; jmilkey@raklaw.com; Adam Seitz; ptab@eriseip.com; rak_futurelink@raklaw.com
`RE: Apple v. Future Link IPRs (IPR2021-01487, IPR2021-01488, IPR2022-00209): Request to Submit
`Order re Transfer
`
`Counsel, the Board will enter the Western District of Texas stay Order and this email chain as
`separate exhibits in each case without additional briefing or a teleconference.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703‐756‐1288
`
`
`
`
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Tuesday, March 29, 2022 1:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Reza Mirzaie <rmirzaie@raklaw.com>; jmilkey@raklaw.com; Adam Seitz <adam.seitz@eriseip.com>;
`ptab@eriseip.com; rak_futurelink@raklaw.com
`Subject: Apple v. Future Link IPRs (IPR2021‐01487, IPR2021‐01488, IPR2022‐00209): Request to Submit Order re
`Transfer
`
`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 Board,
`
` I
`
` represent Petitioner Apple Inc. in the following proceedings: IPR2021‐01487, IPR2021‐01488, IPR2022‐00209. In each
`of these proceedings, Patent Owner argued in its Preliminary Responses that institution should be denied under Fintiv in
`view of parallel litigation in the Western District of Texas. Yesterday, the Court issued the attached order in the parallel
`litigation, staying that case and stating that a subsequent order would issue transferring the case from the Western
`District of Texas to the Northern District of California. Accordingly, the schedule on which Patent
`Owner’s Fintiv arguments turn no longer applies.
`
`Petitioner requests a conference with the Board to discuss the following:
`1) Petitioner seeks to introduce the order granting transfer into each of the above‐listed proceedings.
`2) Petitioner requests permission to explain the relevance of transfer to Patent Owner’s Fintiv arguments. In both
`IPR2021‐01487, IPR2021‐01488, the Board’s deadline to institute review is just weeks away. To avoid burdening the
`Board with additional briefing close to its institution deadline, Petitioner proposes explaining the relevance of the
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`transfer order on a teleconference and submitting a transcript of that teleconference for the record. For IPR2022‐00209,
`Petitioner proposes the transfer relevance be addressed in a short three page brief.
`
`Petitioner emailed Patent Owner’s counsel yesterday to determine whether Patent Owner opposes Petitioner’s request.
`As of this email, Petitioner has not received a response from Patent Owner.
`
`Petitioner is available for the requested conference with the Board any time Wednesday‐Friday this week.
`
`Respectfully,
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 1340
`Greenwood Village, CO 80111
`(main) 913-777-5600
`(direct) 720-689-5441
`paul.hart@eriseip.com
`(fax) 913-777-5601
`www.eriseip.com
`
`5299 DTC Blvd.
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