Trials
`Brett Cooper; Trials
`Google-Scramoge-IPR; rak_scramoge@raklaw.com
`RE: IPR2022-00603: Request for Extension
`Thursday, July 7, 2022 2:50:16 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`In IPR2022-00603 Patent Owner has requested an extension of the due date for filing a Patent
`Owner Preliminary Response from July 8, 2022 to July 29, 2022. The basis for Patent Owner’s
`request is that on June 30, 2022 the parties executed a settlement agreement settling all
`matters in controversy between them, but that additional time is required for the parties to
`perform their obligations under the agreement and to file a motion to terminate the IPR.
`Patent Owner does not provide a reason why an extension of 3 weeks is required. We also
`note that, notwithstanding that the parties having executed a settlement agreement over a
`week ago, Patent Owner did not transmit its request for an extension until this morning – one
`day before its Preliminary Response is due.
`
`Under the circumstances, we extend the date for the filing of a Patent Owner Preliminary
`Response to July 29, 2022. As a Patent Owner Preliminary Response is optional, there will be
`no further extension of this due date. We also remind the parties to avoid transmitting such
`last minute requests to the Board, as a panel may be unavailable to act on such short notice.
`
`We further authorize the parties to file a Joint Motion to Terminate the IPR. Any agreement
`or understanding between the patent owner and a petitioner, including any collateral
`agreements referred to in such agreement or understanding made in connection with, or in
`contemplation of the termination shall be in writing and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of such proceeding as
`between the parties. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b). The Joint Motion to Terminate
`must update the Board concerning the status of any litigation or proceeding, including, but
`not limited to proceedings in the U.S. Patent and Trademark Office, involving the subject
`patent, and advise the Board whether any litigation or proceeding involving the subject patent
`is contemplated in the foreseeable future. The Joint Motion to Terminate also must include a
`copy of any agreement and include a statement certifying that there are no collateral
`agreements or understandings made in connection with, or in contemplation of, the
`termination of the proceeding.
`
`A party to a settlement may request that any written agreement be treated as business
`confidential information and be kept separate from the files of an involved patent. 35
`U.S.C. § 317(b); 37 C.F.R. § 42.74(c). The request must be filed with the settlement. Id. The
`parties are also authorized to file a Joint Request That The Settlement Agreement Be Treated
`As Business Confidential Information and kept separate from the files of the involved patent.
`
`IPR2022-00603
`Ex. 3001
`
`

`

`The parties should refer to this e-mail authorization when filing a Motion to Terminate or
`Preliminary Response.
`
`Thank you,
`
`Megan Carlson
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-1650
`Megan.Carlson@uspto.gov
`
`From: Brett Cooper <bcooper@raklaw.com>
`Sent: Thursday, July 7, 2022 9:55 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Google-Scramoge-IPR <PH-Google-Scramoge-IPR@paulhastings.com>;
`rak_scramoge@raklaw.com
`Subject: IPR2022-00603: Request for Extension
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board,
`
`On June 30, 2022, the parties executed an agreement settling all matters in controversy between the
`parties.
`
`Accordingly, the parties jointly request an extension until July 29, 2022 for Patent Owner’s Preliminary
`Response to permit the parties time to perform their obligations set forth by the agreement and file a
`motion to terminate the IPR.
`
`The parties can make themselves available for a conference call, should the Board find it helpful.
`
`Respectfully submitted,
`Brett Cooper
`Counsel for Patent Holder
`
`Brett E. Cooper
`Russ August & Kabat
`Office (310) 826-7474 x281
`Mobile (516) 359-9668
`Facsimile (310) 826-6991
`bio | email | vCard
`
`