`Oaks, Brian
`joshua.goldberg@finnegan.com; qingyu.yin@finnegan.com; sydney.kestle@finnegan.com;
`robert.high@finnegan.com; jinwoo.kim@finnegan.com; Mayne, Morgan; Rich, Harrison; Meek, Kevin; Trials
`RE: IPR2022-00163: Filing of Statutory Disclaimer and Request for Adverse Judgment
`Wednesday, December 7, 2022 8:51:30 AM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel:
`
`Patent Owner is authorized to file a Request for Adverse Judgment Under 37 C.F.R. § 42.73(b)(2).
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-7822
`
`From: Oaks, Brian <Boaks@mwe.com>
`Sent: Thursday, November 17, 2022 4:37 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: joshua.goldberg@finnegan.com; qingyu.yin@finnegan.com; sydney.kestle@finnegan.com;
`robert.high@finnegan.com; jinwoo.kim@finnegan.com; Mayne, Morgan
`<morgan.mayne@bakerbotts.com>; Rich, Harrison <harrison.rich@BakerBotts.com>; Meek, Kevin
`<Kmeek@mwe.com>
`Subject: IPR2022-00163: Filing of Statutory Disclaimer and Request for Adverse Judgment
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Patent Trial and Appeal Board:
`
`On November 16, 2022, Patent Owner filed a statutory disclaimer in U.S. Patent No. 10,243,647
`disclaiming all challenged claims in IPR2022-00163—namely claims 1-8, 10-13, and 15-25. Adverse
`judgment terminating the trial is therefore appropriate under 37 C.F.R. § 42.73(b)(2).
`
`Patent Owner thus requests permission from the Board to file a Request for Adverse Judgment
`under 37 C.F.R. § 42.73(b)(2) to terminate the IPR proceeding.
`
`Best regards,
`Brian Oaks
`Lead Counsel for Patent Owner
`
`BRIAN OAKS
`Partner
`McDermott Will & Emery LLP 303 Colorado Street, Suite 2200, Austin, TX 78701
`Tel +1 512 726 2574 | Email boaks@mwe.com
`Website | vCard | Twitter | LinkedIn
`
`IPR2022-00163
`Ex. 3001
`
`
`
`Katie Carnes, Assistant to Brian Oaks
`Tel +1 737 282 2721 | Email kcarnes@mwe.com
`
`
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