Trials
`Brett Cooper; Trials
`Kappos, John; Westin, Cameron W.; Google-Scramoge-IPR; rak_scramoge@raklaw.com
`RE: IPR2022-00478, -00643, and -00683: Request for Extension
`Tuesday, July 12, 2022 8:34:41 AM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`Under the circumstances, the respective panels extend the date for the filing of a Patent
`Owner preliminary response to August 15, 2022. As a Patent Owner preliminary response is
`optional, there will be no further extension of this due date.
`
`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: Monday, July 11, 2022 10:47 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Kappos, John <jkappos@omm.com>; Westin, Cameron W. <cwestin@omm.com>; Google-
`Scramoge-IPR <PH-Google-Scramoge-IPR@paulhastings.com>; rak_scramoge@raklaw.com
`Subject: Re: IPR2022-00478, -00643, and -00683: 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 6, 2022, Petitioner and Patent Owner filed a Joint Motion to Stay All Deadlines and Notice of
`Settlement in the parallel district court actions between the parties involving the challenged patents.
` That motion notified the Court that all matters in controversy between the parties have been
`settled, in principle, and requested that the Court stay all deadlines.
`
`On June 29, 2022, the Board granted an extension for the Patent Owner Preliminary Response until
`July 15, 2022, in each IPR. The Board further stated that “[t]here will [be] no further extensions of
`this due date."
`
`On June 30, 2022, the parties fully executed an agreement settling all matters in controversy
`between the parties. The parties provide this update to keep the Board informed of the procedural
`status of the settlement.
`
`IPR2022-00683
`Ex. 3003
`
`
`Brett Cooper; Trials
`Kappos, John; Westin, Cameron W.; Google-Scramoge-IPR; rak_scramoge@raklaw.com
`RE: IPR2022-00478, -00643, and -00683: Request for Extension
`Tuesday, July 12, 2022 8:34:41 AM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`Under the circumstances, the respective panels extend the date for the filing of a Patent
`Owner preliminary response to August 15, 2022. As a Patent Owner preliminary response is
`optional, there will be no further extension of this due date.
`
`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: Monday, July 11, 2022 10:47 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Kappos, John <jkappos@omm.com>; Westin, Cameron W. <cwestin@omm.com>; Google-
`Scramoge-IPR <PH-Google-Scramoge-IPR@paulhastings.com>; rak_scramoge@raklaw.com
`Subject: Re: IPR2022-00478, -00643, and -00683: 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 6, 2022, Petitioner and Patent Owner filed a Joint Motion to Stay All Deadlines and Notice of
`Settlement in the parallel district court actions between the parties involving the challenged patents.
` That motion notified the Court that all matters in controversy between the parties have been
`settled, in principle, and requested that the Court stay all deadlines.
`
`On June 29, 2022, the Board granted an extension for the Patent Owner Preliminary Response until
`July 15, 2022, in each IPR. The Board further stated that “[t]here will [be] no further extensions of
`this due date."
`
`On June 30, 2022, the parties fully executed an agreement settling all matters in controversy
`between the parties. The parties provide this update to keep the Board informed of the procedural
`status of the settlement.
`
`IPR2022-00683
`Ex. 3003
`
`
`
`
`In light of the fully executed agreement, Patent Owner respectfully requests an extension
`until August 15, 2022 for Patent Owner’s Preliminary Responses to permit the parties time to
`perform their obligations set forth by the agreement and file motions to terminate the IPRs. The
`parties anticipate that motions to terminate the IPRs will be filed no later than August 15.
` The additional extension is warranted now in light of the executed agreement which requires
`additional time before the parties will be ready to file the motions to terminate. Patent Owner
`seeks the extension not for purposes of delay, but in recognition of the Board’s finite resources.
`
`Petitioner has indicated that it does not oppose Patent Owner’s request.
`
`The parties can make themselves available for a conference call, should the Board find it helpful.
`
`Respectfully submitted,
`Brett E. Cooper
`Russ August & Kabat
`Office (310) 826-7474 x281
`Mobile (516) 359-9668
`Facsimile (310) 826-6991
`bio | email | vCard
`
`On Jun 29, 2022, at 3:50 PM, Trials <trials@uspto.gov> wrote:
`
`Counsel:
`
`We have received requests to extend the due date for a Preliminary Response in each
`of the following cases, while the parties finalize a settlement agreement: IPR2022-
`00478, IPR2022-00643, IPR2022-00683. The due date for the Patent Owner Response
`is extended to July 15, 2022 in each case. There will no further extensions of this due
`date.
`
`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: Wednesday, June 29, 2022 1:31 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Kappos, John <jkappos@omm.com>; Westin, Cameron W. <cwestin@omm.com>;
`
`
`
`Google-Scramoge-IPR <PH-Google-Scramoge-
`IPR@paulhastings.com>; rak_scramoge@raklaw.com
`Subject: Re: IPR2022-00643: 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,
`
`The Board previously granted an extension until July 1 for Patent Owner’s Preliminary
`Response in the above-referenced IPR. Because the parties are still working to finalize the
`settlement agreement, the parties jointly request an additional 14-day extension until July 15
`for Patent Owner’s Preliminary Response. The parties anticipate that motions to terminate
`the IPR will be filed in due course. The parties can make themselves available for a
`conference call, should the Board find it helpful.
`
`Respectfully submitted,
`Brett E. Cooper
`Counsel for Patent Owner
`
`Brett E. Cooper
`Russ August & Kabat
`Office (310) 826-7474 x281
`Mobile (516) 359-9668
`Facsimile (310) 826-6991
`bio | email | vCard
`
`
`On Jun 9, 2022, at 5:54 PM, Brett Cooper <bcooper@raklaw.com> wrote:
`
`Dear Honorable Board,
`
`On June 6, Petitioner and Patent Owner filed a Joint Motion to Stay All
`Deadlines and Notice of Settlement in the parallel district court
`actions between the parties involving the challenged patents. That
`motion notified the Court that all matters in controversy between the
`parties have been settled, in principle, and requested that the Court stay
`all deadlines.
`
`In accordance with that joint motion to stay, the parties jointly request
`that the Board grant an extension until July 1, 2022, for Patent
`Owner’s Preliminary Response in IPR2022-00643 (US Patent 10,193,392).
` The parties anticipate that motions to terminate the IPRs will be filed in
`due course. The parties can make themselves available for a conference
`call, should the Board find it helpful.
`
`
`
`
`Respectfully submitted,
`Brett E. Cooper
`Counsel for Patent Owner
`
`Brett E. Cooper
`Russ August & Kabat
`Office (310) 826-7474 x281
`Mobile (516) 359-9668
`Facsimile (310) 826-6991
`bio | email | vCard
`
`
`
`
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