From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Drake, Lauren; Cohen, Alexis; Trials
`Cavanaugh, David; Lantier, Gregory; Graber, Jennifer L.; Smolenski, Gilbert T.; Tran, Jasper; Gindler, David;
`Ramos, Javier
`RE: IPR2021-01532 and IPR2021-01533: Request for Reply to Patent Owner"s Preliminary Responses
`Thursday, January 6, 2022 3:22:13 PM
`
`Counsel, the Board recognizes that Patent Owner opposes Petitioner’s request to file a Reply to
`Patent Owner’s Response. However, the Board would find useful additional briefing from both
`parties in each of IPR2021-01532 and IPR2021-01533. Accordingly, in each case, Petitioner is
`authorized to file a Reply to Patent Owner’s Preliminary Response as requested. The Reply shall be
`limited to 10 pages and may address only the discretionary denial issues raised in the Patent
`Owner’s Preliminary Response and the proposed claim construction for the phrase “the shape of a
`M.” The Reply is due on or before January 13, 2022. Patent Owner is authorized to file a Sur-reply,
`limited to 10 pages to address Petitioner’s Reply in each case. The Patent Owner’s Sur-reply is due
`on or before January 21, 2022.
`
`The Board will file, as an exhibit in each proceeding, a copy of this email correspondence, including
`the request by Petitioner and the subsequent email by Patent Owner.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`From: Drake, Lauren <LDrake@milbank.com>
`Sent: Thursday, January 6, 2022 11:09 AM
`To: Cohen, Alexis <Alexis.Cohen@wilmerhale.com>; Trials <Trials@USPTO.GOV>
`Cc: Cavanaugh, David <David.Cavanaugh@wilmerhale.com>; Lantier, Gregory
`<Gregory.Lantier@wilmerhale.com>; Graber, Jennifer L. <Jennifer.Graber@wilmerhale.com>;
`Smolenski, Gilbert T. <Gilbert.Smolenski@wilmerhale.com>; Tran, Jasper <jtran@milbank.com>;
`Gindler, David <DGindler@milbank.com>; Ramos, Javier <JRamos@milbank.com>
`Subject: RE: IPR2021-01532 and IPR2021-01533: Request for Reply to Patent Owner's Preliminary
`Responses
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`IPR2021-01532 and IPR2021-01533
`
`Dear Honorable Board,
`
`

`

`
`Patent Owner respectfully requests that the Board ignore Petitioner’s merits arguments in the email
`below. The “Board practice does not permit merits arguments in e-mail communications” and the
`Board has made clear that “parties are to refrain from addressing the merits of an issue in e-mail
`correspondence with the Board.” Kingston Tech. Co. v. CATR Co., IPR2015-00149, Paper 22, at 2
`(P.T.A.B. June 05, 2015). While Patent Owner disagrees with Petitioner’s argument that “[g]ood
`cause exists to permit the Replies because the Patent Owner raised issues in the POPRs that were
`not foreseeable,” we will reserve our response for the conference call in accordance with the Board
`practice.
`
`Respectfully submitted,
`
`Lauren Drake
`
`Lauren Drake | Milbank | Partner
`Pronouns: she/her/hers
`2029 Century Park East, 33rd Floor | Los Angeles, CA 90067-3019
`T: +1 424.386.4320
`LDrake@milbank.com | milbank.com
`
`
`From: Cohen, Alexis <Alexis.Cohen@wilmerhale.com>
`Sent: Wednesday, January 5, 2022 5:06 PM
`To: trials@uspto.gov
`Cc: Cavanaugh, David <David.Cavanaugh@wilmerhale.com>; Lantier, Gregory
`<Gregory.Lantier@wilmerhale.com>; Graber, Jennifer L. <Jennifer.Graber@wilmerhale.com>;
`Smolenski, Gilbert T. <Gilbert.Smolenski@wilmerhale.com>; Cohen, Alexis
`<Alexis.Cohen@wilmerhale.com>; Tran, Jasper <jtran@milbank.com>; Drake, Lauren
`<LDrake@milbank.com>; Gindler, David <DGindler@milbank.com>; Ramos, Javier
`<JRamos@milbank.com>
`Subject: [EXT] IPR2021-01532 and IPR2021-01533: Request for Reply to Patent Owner's Preliminary
`Responses
`
`IPR2021-01532 and IPR2021-01533: Request for Reply to Patent Owner's Preliminary Responses
`
`Dear Honorable Board,
`
`Petitioners respectfully request authorization to file Replies to Patent Owner’s Preliminary
`Responses (POPRs) filed on December 27, 2021 in the above-referenced proceedings.
`
`The POPRs argue that the Panel should exercise discretion to deny the Petitions under Fintiv factors
`and based on multiple petitions. The POPRs include arguments related to events that occurred in a
`pending district court case after the Petitions were filed. Additionally, the POPRs include claim
`construction arguments regarding the “shape of a M” and annotated figures that were not included
`in Patent Owner’s claim construction briefing in the district court and therefore could not be
`foreseeably addressed in the Petition.
`
`Therefore Petitioners request a reply to the POPRs to address:
`
`

`

`The discretionary denial issues raised in the POPRs, including Fintiv factors, multiple petitions,
`and their applicability to these IPRs;
`
`Claim construction issues regarding the “shape of a M.”
`
`
`
`Good cause exists to permit the Replies because the Patent Owner raised issues in the POPRs that
`were not foreseeable and the just disposition of the issues in the IPRs requires the Petitioners
`provide an opportunity to respond.
`
`Petitioners respectfully request 10-pages in Reply for each IPR and that the authorized papers be
`due 10 days after authorization is given for the Replies.
`
`Petitioners have met and conferred with Patent Owner, and Patent Owner opposes Petitioners’
`request.
`
`The parties are available for a call with the Panel on Tuesday, January 11, after 2 PM ET and
`Wednesday, January 12, after 3 PM ET. The parties can make additional time available should the
`Board desire to have the conference at a different time.
`
`Respectfully submitted,
`
`Alexis Cohen
`
`
`
`Alexis Cohen | WilmerHale
`1875 Pennsylvania Avenue NW
`Washington, DC 20006 USA
`+1 202 663 6864 (t)
`+1 202 663 6363 (f)
`+1 518 225 2705 (m)
`alexis.cohen@wilmerhale.com
`
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