Beamer, Norman
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials
`Wednesday, May 4, 2022 12:26 PM
`Walters, Chad; Trials
`keith.wood@hbsr.com; lawrence.cogswell@hbsr.com; timothy.meagher@hbsr.com;
`Kubehl, Doug; Rich, Harrison; Grado, Andrew; Becker, Jeff
`RE: IPR2022-00068 - Request to File Fintiv-Related Exhibit
`
`Counsel: Petitioner is authorized to file as an exhibit the referenced correspondence.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`From: Walters, Chad <chad.walters@bakerbotts.com>
`Sent: Tuesday, May 3, 2022 8:07 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: keith.wood@hbsr.com; lawrence.cogswell@hbsr.com; timothy.meagher@hbsr.com; Kubehl, Doug
`<doug.kubehl@bakerbotts.com>; Rich, Harrison <harrison.rich@BakerBotts.com>; Grado, Andrew
`<andrew.grado@bakerbotts.com>; Becker, Jeff <Jeff.Becker@BakerBotts.com>
`Subject: IPR2022-00068 - Request to File Fintiv-Related Exhibit
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`Dear Patent Trial and Appeal Board,
`
`Petitioner writes concerning IPR2022-00068 against U.S. Pat. No. 9,549,426 (the “‘426 Patent”).
`
`In order to keep the Board apprised of events occurring in the parallel district court litigation, Petitioner writes to inform
`the Board that Patent Owner has withdrawn its infringement claims regarding the ‘426 Patent and, in response,
`Petitioner is no longer pursuing its invalidity counterclaims as to that patent.
`
`As a result, invalidity issues with respect to the ‘426 Patent will no longer be decided in the district court
`litigation. Therefore there is no longer any basis for a Fintiv-based discretionary denial under 35 U.S.C. § 314(a) as
`initially argued by Patent Owner. Petitioner notes that it is currently maintaining its counterclaims of noninfringement
`of the ‘426 Patent in order to secure a final judgment of noninfringement; but, given that Patent Owner will not be
`pursuing an infringement claim on the ‘426 Patent, no invalidity issues regarding that patent will be addressed in the
`case.
`
`Petitioner requests authorization to file as an exhibit in this IPR correspondence between the parties evidencing the
`parties’ intent to no longer pursue these district court claims.
`
`1
`
`Ex. 3001
`
`

`

`Patent Owner consents to the filing of the proposed email correspondence as an exhibit, but disagrees with Petitioner’s
`above statement that “there is no longer any basis for a Fintiv-based discretionary denial under 35 U.S.C. § 314(a) as
`initially argued by Patent Owner,” for at least the reason that several of the Fintiv factors continue to weigh in favor of
`discretionary denial, including Fintiv factor 6 on the merits of the case.
`
`If the Board determines a conference call is necessary to discuss these issues, Petitioner and Patent Owner are available
`at the times below (EDT).
`
`May 9 (Monday): 10:00 am to 3:00 pm
`
`Best regards,
`Chad Walters
`Lead Counsel for Petitioner
`
`Baker Botts L.L.P.
`chad.walters@bakerbotts.com
`T +1.214.953.6511
`F +1.214.661.4511
`M +1.214.557.2423
`
`2001 Ross Avenue, Suite 900
`Dallas, TX 75201
`USA
`
`Confidentiality Notice:
`
`The information contained in this email and any attachments is intended only for the recipient[s] listed above and may be privileged
`and confidential. Any dissemination, copying, or use of or reliance upon such information by or to anyone other than the recipient[s]
`listed above is prohibited. If you have received this message in error, please notify the sender immediately at the email address
`above and destroy any and all copies of this message.
`
`2
`
`Ex. 3001
`
`