From:
`To:
`Cc:
`Subject:
`Date:
`
`Greg Gibbs
`Trials
`Duke, Clinton E.; Greenleaf, Kevin R.; Steven Olsen; Anita Bhushan; Jing Zhao
`RE: IPR2021-01560 and IPR2021-01534
`Tuesday, March 1, 2022 2:46:30 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Ms. King,
`This is Greg Gibbs of Weide & Miller. At the February 10th teleconference, the Panel granted
`our motion to withdraw as counsel for the Patent Owners for these 2 IPR matters.
`We await the issuance of an Order from the Panel. A transcript of the teleconference was filed
`on February 23rd.
`There are deadlines and important dates coming up for these IPR matters over which we have
`no control, influence, or involvement, and we are hoping for clarity that our participation in
`the matters is closed.
`Would you be able to advise of the status of the forthcoming Order granting our motion to
`withdraw as counsel?
`Any guidance you can provide will be greatly appreciated.
`Sincerely,
`Greg Gibbs
`
`Weide & Miller, Ltd.
`Patents, Trademarks, Copyrights, Trade Secrets and Related Litigation
`
`10655 Park Run Drive, Suite 100
`Las Vegas, NV 89144
`702-382-4804 (voice)
`702-382-4805 (facsimile)
`GGibbs@weidemiller.com
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, February 11, 2022 7:25 AM
`To: Steven Olsen <solsen@sropatent.com>; Johnson, Carrie <Carrie.Johnson@USPTO.GOV>; Trials
`<Trials@USPTO.GOV>
`Cc: clinton.duke@dentons.com; sarah.matthews@dentons.com; stacia.boren@dentons.com;
`abhushan2@gmail.com; Greg Gibbs <GGibbs@weidemiller.com>; Jing Zhao
`<jzhao@weidemiller.com>; mail_WeideMiller <mail@weidemiller.com>;
`kevin.greenleaf@dentons.com
`Subject: RE: IPR2021-01560 and IPR2021-01534
`
`Counsel: The Panel appreciates the input from the parties during the telephone conference. We
`remind Petitioner to file the transcript of the call as an exhibit as soon as it is available. We also
`remind the parties that we granted Patent Owner’s request for an extension of time to file a Patent
`Owner Preliminary Response to March 4, 2022. An Order will follow after we receive the transcript.
`
`

`

`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`From: Steven Olsen <solsen@sropatent.com>
`Sent: Wednesday, February 9, 2022 1:26 PM
`To: Johnson, Carrie <Carrie.Johnson@USPTO.GOV>; Trials <Trials@USPTO.GOV>
`Cc: clinton.duke@dentons.com; sarah.matthews@dentons.com; stacia.boren@dentons.com;
`abhushan2@gmail.com; GGibbs@weidemiller.com; jzhao@weidemiller.com;
`mail@weidemiller.com; kevin.greenleaf@dentons.com
`Subject: Re: IPR2021-01560 and IPR2021-01534
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Board,
`
` I
`
` am writing to advise that Petitioner does plan to provide a court reporter for this conference.
`
`
`Regards,
`
`Steven Olsen
`for Petitioner
`
`Law Office of Steven R. Olsen, PLLC
`P.O. Box 2092
`Inverness, FL 34451
`(352)586-6628
`solsen@sroPatent.com
`www.sroPatent.com
`
`
`
`
`On Feb 4, 2022, at 2:07 PM, Johnson, Carrie <Carrie.Johnson@USPTO.GOV> wrote:
`
`Counsel,
`
`

`

` A
`
` conference call has been scheduled for Thursday, February 10,
`2022, at 1:00 p.m. ET.
`
`Call-in number: 866-803-2146
`Passcode: 9815339
`
`Please email trials@uspto.gov with any questions or concerns.
`
`Regards,
`
`
`Carrie M. Johnson
`Paralegal Specialist
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`Phone: (571) 272-5169
`Email: carrie.johnson@uspto.gov
`
`
`
`
`From: Duke, Clinton E. <clinton.duke@dentons.com>
`Sent: Friday, February 4, 2022 12:41 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Matthews, Sarah <sarah.matthews@dentons.com>; Boren, Stacia
`<stacia.boren@dentons.com>; solsen@sropatent.com; abhushan2@gmail.com; Greg
`Gibbs <GGibbs@weidemiller.com>; jzhao@weidemiller.com; mail@weidemiller.com;
`Greenleaf, Kevin R. <kevin.greenleaf@dentons.com>
`Subject: Re: IPR2021-01560 and IPR2021-01534
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE
`SOURCE before responding, clicking on links, or opening attachments.
`
`Dear Board,
`
` I
`
` sincerely apologize for the inconvenience and multiple emails, but the dates and times
`in my previous email are incorrect.
` ​
`Counsel for both parties are available at the following dates and times to discuss Patent
`Owner's proposed motion for late response:
`
`

`

`· Tuesday, February 8, 3:00-5:00 EST
`· Wednesday, February 9, 3:00-5:00 EST
`· Thursday, February 10, 12:00-3:00 EST
`· Friday, February, 3:00-5:00 EST
`
`
`Sincerely,
`Clint
`
`<image001.jpg>
`
`
`
`
`
`
`Clinton Duke
`Shareholder/Registered Patent Attorney
`
`What’s Next? The answer is Talent. With more than
`20,000 people, 12,000 lawyers and 200 locations,
`Dentons has the talent for what you need, where you
`need it.
`
`O +1 801 415 3000 | D +1 801 297 1327 | US
`Internal 801327
`clinton.duke@dentons.com
`Bio | Website
`
`Dentons Durham Jones Pinegar P.C.
`111 South Main Street, Suite 2400, Salt Lake City, UT
`84111
`
`Davis Brown > East African Law Chambers > Eric
`Silwamba, Jalasi and Linyama > Durham Jones &
`Pinegar > LEAD Advogados > Rattagan Macchiavello
`Arocena > Jiménez de Aréchaga, Viana & Brause >
`Lee International > Kensington Swan > Bingham
`Greenebaum > Cohen & Grigsby > Sayarh & Menjra >
`Larraín Rencoret > For more information on the firms
`that have come together to form Dentons, go
`to dentons.com/legacyfirms
`
`Dentons is a global legal practice providing client services
`worldwide through its member firms and affiliates. This
`email may be confidential and protected by legal privilege. If
`you are not the intended recipient, disclosure, copying,
`distribution and use are prohibited; please notify us
`immediately and delete this email from your systems.
`Dentons records and stores emails sent to us or our
`affiliates in keeping with our internal policies and
`procedures. Please see dentons.com for Legal Notices.
`
`From: Duke, Clinton E.
`Sent: Friday, February 4, 2022 10:25 AM
`To: Trials <Trials@USPTO.GOV>
`
`

`

`Cc: Matthews, Sarah <sarah.matthews@dentons.com>; Boren, Stacia
`<stacia.boren@dentons.com>; solsen@sropatent.com <solsen@sropatent.com>; abhu
`shan2@gmail.com<abhushan2@gmail.com>; Greg Gibbs
`<GGibbs@weidemiller.com>; jzhao@weidemiller.com <jzhao@weidemiller.com>; mail
`@weidemiller.com <mail@weidemiller.com>; Greenleaf, Kevin R.
`<kevin.greenleaf@dentons.com>
`Subject: RE: IPR2021-01560 and IPR2021-01534
`
`Dear Board,
`
`Patent Owner recently became aware that it missed the deadline for its preliminary
`response and respectfully requests authorization to file a motion for a late response.
`Petitioner opposes the motion.
`
`Counsel for Patent Owner are available at the following times to discuss the motion:
`
`
`· Tuesday, February 8, 2:00-5:00 EST
`· Anytime Wednesday, February 9, except for 1:00–3:00 EST
`· Anytime Thursday, February 10, before 3:00 EST
`· Anytime Friday, February 11
`
`
`Sincerely,
`Clint
`
`
`<image001.jpg>
`
`Clinton Duke
`Shareholder/Registered Patent Attorney
`
`What’s Next? The answer is Talent. With more than
`20,000 people, 12,000 lawyers and 200 locations,
`Dentons has the talent for what you need, where you
`need it.
`
`O +1 801 415 3000 | D +1 801 297 1327 | US
`Internal 801327
`clinton.duke@dentons.com
`Bio | Website
`
`Dentons Durham Jones Pinegar P.C.
`111 South Main Street, Suite 2400, Salt Lake City, UT
`84111
`
`Fernanda Lopes & Associados > Guevara & Gutierrez
`> Paz Horowitz Abogados > Sirote > Adepetun Caxton-
`Martins Agbor & Segun > Davis Brown > East African
`Law Chambers > Eric Silwamba, Jalasi and Linyama >
`Durham Jones & Pinegar > LEAD Advogados >
`Rattagan Macchiavello Arocena > Jiménez de
`Aréchaga, Viana & Brause > Lee International >
`Kensington Swan > Bingham Greenebaum > Cohen &
`
`

`

`Grigsby > For more information on the firms that have
`come together to form Dentons, go
`to dentons.com/legacyfirms
`
`Dentons is a global legal practice providing client services
`worldwide through its member firms and affiliates. This
`email may be confidential and protected by legal privilege. If
`you are not the intended recipient, disclosure, copying,
`distribution and use are prohibited; please notify us
`immediately and delete this email from your systems.
`Dentons records and stores emails sent to us or our
`affiliates in keeping with our internal policies and
`procedures. Please see dentons.com for Legal Notices.
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, February 3, 2022 9:14 AM
`To: Matthews, Sarah <sarah.matthews@dentons.com>; Trials <Trials@USPTO.GOV>
`Cc: Duke, Clinton E. <clinton.duke@dentons.com>; Boren, Stacia
`<stacia.boren@dentons.com>; solsen@sropatent.com; abhushan2@gmail.com; Greg
`Gibbs <GGibbs@weidemiller.com>; jzhao@weidemiller.com; mail@weidemiller.com
`Subject: RE: IPR2021-01560 and IPR2021-01534
`
`[WARNING: EXTERNAL SENDER]
`
`Counsel,
`
`The Board received email correspondence concerning IPR2021-01560 and
`IPR2021-01534 that did not include counsel for Petitioner or existing counsel for
`Patent Owner. Please note that ex parte communications to the Board are not
`permitted. In all communications with the Board counsel must include counsel
`for all parties, including, under the circumstances presented, existing counsel for
`Patent Owner, because the pending motion to withdraw existing counsel for
`Patent Owner has not yet been granted.
`
`New counsel for Patent Owner must file a notice of appearance directly via the
`PTAB’s E2E system in both IPR2021-01560 and IPR2021-01534 to appear for
`Patent Owner in each case, as well as an updated mandatory notice in PTAB’s
`E2E.
`
`The Panel notes that Patent Owner was repeatedly informed both during prior
`teleconferences with the Board and by written order of the deadline to file a
`patent owner preliminary response. To the extent Patent Owner seeks an
`extension of any deadline, as with all requests for relief, including the time
`required for filing a preliminary response (which has passed in these cases),
`counsel must meet and confer with counsel for Petitioner to determine if the
`request is opposed. Counsel for Patent Owner must further schedule a
`
`

`

`conference call with the Panel to discuss the request and status of the cases
`before any relief is granted.
`
`Accordingly, counsel for Patent Owner should meet and confer and then inform
`the Board of at least two days and times during the week of February 7, 2022,
`when counsel for all parties are available. If new counsel has not made the
`necessary appearance in each case, or if the motion to withdraw existing counsel
`for Patent Owner has not been granted prior to the conference call, existing
`counsel for Patent Owner must be available and participate on the call.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`
`From: Matthews, Sarah <sarah.matthews@dentons.com>
`Sent: Wednesday, February 2, 2022 1:34 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Duke, Clinton E. <clinton.duke@dentons.com>; Boren, Stacia
`<stacia.boren@dentons.com>
`Subject: RE: IPR2021-01560 and IPR2021-01534
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE
`SOURCE before responding, clicking on links, or opening attachments.
`
`Ms. King,
`
`We have just today been retained by Patent Owner E.M.P. Enterprises, Inc. to represent
`them in this matter. Would you prefer that we file our PTO/AIA/81A POA on the PAIR side
`or upload it directly via the PTAB’s E2E?
`
`It’s my understanding that previous counsel missed the deadline for filing the optional
`patent owner preliminary response. Our client was not aware of the process of an Inter
`Partes Review and would appreciate the opportunity to file a patent owner preliminary
`response if that is still available. Please let us know if you’d still like a conference call to
`discuss the case.
`
`Best,
`Sarah
`<image002.jpg>
`
`

`

`Sarah Matthews
`Shareholder/Registered Patent Attorney
`
`What’s Next? The answer is Talent. With more than
`20,000 people, 12,000 lawyers and 200 locations,
`Dentons has the talent for what you need, where you
`need it.
`
`O +1 801 415 3000 | US Internal 801225
`sarah.matthews@dentons.com
`Bio | Website
`
`Dentons Durham Jones Pinegar P.C.
`111 South Main Street, Suite 2400, Salt Lake City, UT
`84111
`
`Fernanda Lopes & Associados > Guevara & Gutierrez
`> Paz Horowitz Abogados > Sirote > Adepetun Caxton-
`Martins Agbor & Segun > Davis Brown > East African
`Law Chambers > Eric Silwamba, Jalasi and Linyama >
`Durham Jones & Pinegar > LEAD Advogados >
`Rattagan Macchiavello Arocena > Jiménez de
`Aréchaga, Viana & Brause > Lee International >
`Kensington Swan > Bingham Greenebaum > Cohen &
`Grigsby > For more information on the firms that have
`come together to form Dentons, go
`todentons.com/legacyfirms
`
`Dentons is a global legal practice providing client services
`worldwide through its member firms and affiliates. This
`email may be confidential and protected by legal privilege. If
`you are not the intended recipient, disclosure, copying,
`distribution and use are prohibited; please notify us
`immediately and delete this email from your systems.
`Dentons records and stores emails sent to us or our
`affiliates in keeping with our internal policies and
`procedures. Please see dentons.com for Legal Notices.
`
`
`
`
`
`This email has been scanned for spam and viruses by Proofpoint Essentials. Click here to
`report this email as spam.
`
`

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