`Sent: Wednesday, July 20, 2022 3:04 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Diner, Bryan <bryan.diner@finnegan.com>; Kim, Kyu Yun <KyuYun.Kim@finnegan.com>; Eaddy,
`Geneva <Geneva.Eaddy@finnegan.com>; Mills, Jad <jmills@wsgr.com>; Torczon, Richard (External)
`<rtorczon@wsgr.com>; EXT- nstafford@wsgr.com <nstafford@wsgr.com>; Gregory, Dennis
`<dgregory@wsgr.com>; Winschel, Grace <gwinschel@wsgr.com>
`Subject: IPR2022-00722
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Board:
`
`
`Counsel for Patent Owner and Petitioner in the above-captioned IPR each approach the Board for
`certain relief about which the parties have met and conferred.
`
`
`Patent Owner respectfully seeks authorization to move to strike Petitioner’s Updated Mandatory
`Notices (Paper No. 9) submitted on July 11, 2022, for failing to comply with Rule 42.8(a)(3), and
`Petitioner opposes.
`
`
`Patent Owner hereby withdraws its request for the Board to deny institution based on parallel litigation
`(inclusive of Section II, pages 14-26, of the preliminary response, Paper No. 6). Patent Owner requests
`authorization to file a replacement version of Paper No. 6 that redacts Section II as well as these
`arguments from the remainder of the preliminary response (without adding any replacement
`material). Petitioner joins the request.
`
`
`Petitioner respectfully requests pre-institution reply briefing. Petitioner requests 5 pages to respond to
`Patent Owner’s 35 U.S.C. §325(d) and RPI arguments, with Patent Owner being afforded a sur-reply of
`equal length. Patent Owner is willing to agree to reply briefing as long as Petitioner refrains from
`addressing the substantive merits of the case in its reply. Petitioner believes that some merits issues are
`integral to the §325(d) arguments, making a restriction on how it may address §325(d) unduly
`prejudicial to Petitioner, and Patent Owner disagrees.
`
`
`Patent Owner and Petitioner are both available for a teleconference with the Board at the following
`times:
`
`
`• Tuesday, July 26th – any time between 2:00 pm ET and 4:00 pm ET
`• Wednesday, July 27th – any time between 2:00 pm ET and 4:00 pm ET
`• Thursday, July 28th – any time between 2:00 pm ET and 4:00 pm ET
`
`
`Respectfully submitted,
`
`Justin Hasford
`
`Justin J. Hasford |
`
`
`
`901 New York Avenue, NW, Washington, DC 20001-4413
`+1 202 408 4000 | fax +1 202 408 4400 | justin.hasford@finnegan.com
`www.finnegan.com | LinkedIn Profile | Finnegan AIA Blog
`
`
`
`
`
`
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please advise
`the sender by return e-mail and delete it from your mailbox. Thank you.
`
`
`
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