`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Jim Glass; Trials
`Thomas Pease; Gavin Snyder; QE-Taction-Apple; Kelly Hughes; ptab@eriseip.com; Jason Mudd
`RE: IPR2022-00057, -00058, -00059, -00060 (Apple v. Taction Technology)
`Monday, February 28, 2022 11:25:34 AM
`
`Counsel: Because the stay order is already in evidence, the Panel does not authorize any
`additional briefing.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`From: Jim Glass <jimglass@quinnemanuel.com>
`Sent: Friday, February 25, 2022 6:02 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Thomas Pease <thomaspease@quinnemanuel.com>; Gavin Snyder
`<gavinsnyder@quinnemanuel.com>; QE-Taction-Apple <qe-taction-apple@quinnemanuel.com>;
`Kelly Hughes <kelly.hughes@eriseip.com>; ptab@eriseip.com; Jason Mudd
`<jason.mudd@eriseip.com>
`Subject: RE: IPR2022-00057, -00058, -00059, -00060 (Apple v. Taction Technology)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`I am lead counsel for Patent Owner and write to further clarify our position on Petitioner’s request.
`
`It is Patent Owner’s position that additional briefing is not necessary as the district court’s stay order
`is already in evidence. Patent Owner, however, defers to the Board on this issue. Should the Board
`find additional briefing to be helpful and grants Petitioner’s request, Patent Owner respectfully
`requests that it be allowed to submit a sur-reply brief of the same number of pages and on the same
`timing as Petitioner’s reply brief.
`
`PO is available on the following dates and times for a call, should the Board require one:
`
`Tuesday, March 8, 10:30am-2:00PM
`Wednesday, March 9, 12:00-3:00
`
`IPR2022-00057, -00058, -00059, -00060
`Ex. 3001
`
`
`
`Thursday, March 10, 12:30-3:00
`
`Respectfully,
`
`James Glass
`
`James M. Glass |Chair, Post-Grant Patent Practice| Quinn Emanuel Urquhart & Sullivan, LLP | 51 Madison
`Avenue, 22nd Floor, New York, NY 10010 | Office: +1.212.849.7142|
`
`
`From: Adam Seitz <adam.seitz@eriseip.com>
`Sent: Friday, February 25, 2022 2:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: QE-Taction-Apple <qe-taction-apple@quinnemanuel.com>; Kelly Hughes
`<kelly.hughes@eriseip.com>; ptab@eriseip.com; Jason Mudd <jason.mudd@eriseip.com>
`Subject: Re: IPR2022-00057, -00058, -00059, -00060 (Apple v. Taction Technology)
`
`
`
`
`[EXTERNAL EMAIL from adam.seitz@eriseip.com]
`
`Your Honors,
`
`Petitioner Apple Inc. writes in connection with the above-mentioned IPRs (IPR2022-00057, -00058,
`-00059, -00060) to request authorization to file a short reply brief not to exceed 5 pages in each of
`these matters limited to Patent Owner’s arguments in its POPRs for discretionary denial under
`NHK/Fintiv. Petitioner submits that good cause exists because, as noted in the prior correspondence
`below, the district court has recently issued an order staying the co-pending litigation between the
`parties pending institution decisions in these matters. The stay order addresses both the trial date
`and the status of the work completed in the litigation. Patent Owner raised arguments regarding the
`stay motion in its POPR. Because the stay occurred after the filing of the Petitions in these matters
`the petitions were not able to address this fact. Petitioner has conferred with Patent Owner and
`Patent Owner indicated it would “defer to the Board’s judgment on this issue.”
`
`Counsel for Petitioner can be available for a telephone call at the Board’s convenience.
`
`Respectfully submitted,
`
`Adam Seitz
`Lead Counsel for Petitioner Apple
`
`
`
`
`On Jan 28, 2022, at 12:46 PM, Trials <Trials@USPTO.GOV> wrote:
`
`Counsel: Petitioner is authorized to file the Joint Claim Construction Statement,
`
`
`
`but not the stay order. If Patent Owner files a Preliminary Response and requests
`discretionary denial under NHK/Fintiv, after meeting and conferring with Patent
`Owner, Petitioner can renew its request to file the stay order.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`From: Adam Seitz <adam.seitz@eriseip.com>
`Sent: Thursday, January 27, 2022 5:50 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: qe-taction-apple@quinnemanuel.com; Kelly Hughes
`<kelly.hughes@eriseip.com>; ptab@eriseip.com; Jason Mudd
`<jason.mudd@eriseip.com>
`Subject: IPR2022-00057, -00058, -00059, -00060 (Apple v. Taction Technology)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE
`SOURCE before responding, clicking on links, or opening attachments.
`
`Your Honors:
`
`Counsel for Petitioner, Apple Inc., writes in connection with the above-referenced
`IPR matters (IPR2022-00057, -00058, -00059, -00060) to raise two items:
`
`1) First, Apple writes to notify the Board that the Court in the co-pending
`litigation between the parties (Case No. 21-cv-00812 pending in the U.S. District
`Court for the Southern District of California) has yesterday issued an order
`staying the litigation pending a decision from the Board on whether to institute
`these IPRs. Apple seeks authorization to file the district court’s order granting a
`stay as an exhibit to these proceedings.
`
`2) Second, Apple writes to request authorization to file as an exhibit with the
`Board a Joint Claim Construction Statement filed jointly by Apple and Patent
`Owner, Taction Technology, Inc., in the co-pending litigation between the parties.
`Apple makes this request to satisfy its duty of candor to inform the Board of any
`claim construction determinations by a Court as well as claim construction
`statements made by Petitioner or Patent Owner. Trial Practice Guide, (November
`2019 Update), 47, 49. Petitioner appreciates that the Trial Guide primarily focuses
`on submission of claim construction determinations and no judicial determination
`has yet been made in the parties’ co-pending lawsuit. However, out of an
`
`
`
`abundance of caution and in light of our duty of candor, Petitioner wants to make
`sure the Board has statements from the parties regarding claim construction that
`have been made of record in the litigation. Patent Owner has been contacted
`regarding this request to submit this exhibit and does not oppose this submission.
`Please confirm that Petitioner may be authorized to file the Joint Claim
`Construction Statement as an exhibit in each of these four IPR matters.
`
`Respectfully submitted,
`
`Adam Seitz
`Erise IP
`Lead Counsel for Petitioner Apple Inc.
`
`
`
`