From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Haber, Ben
`Matthew Dowd; Trials
`Scott W. Hejny; ParusGoogleIPR; Robert Scheffel; Elliot Gee; James Quigley; Ari Rafilson; Kim Jackson; Hogan,
`Caitlin P.; EHunt-PTAB@wolfgreenfield.com
`RE: IPR2022-00805 - Google LLC v. Parus Holdings Inc.
`Friday, October 13, 2023 11:43:08 PM
`
`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 Order setting the Sanctions Hearing for October 24 ordered Parus to notify the Board
`by email of whether it desired a live hearing or a hearing by video, among other things. It
`further ordered Google to promptly respond to Parus’s email. Parus included a number of
`unrelated issues in its email, to which Google has not been authorized to respond.
`Accordingly, we limit our response to the matters authorized by the Board.
`
`Because Parus has requested an in-person hearing, Google will attend in person as well.
`Google may also have additional representatives join by video/teleconference, and we will
`coordinate those issues via PTABHearings@uspto.gov, as specified in the Board’s order.
`Google is available on the originally set hearing date. If the Board is inclined to reschedule
`the hearing, Google is also available on October 25 and November 2-3. As we explained to
`Parus, Google is unavailable on other days Parus requested in its rescheduling request
`below.
`
`Thank you
`Ben Haber
`Counsel for Petitioner
`
`From: Matthew Dowd <mdowd@dowdscheffel.com>
`Sent: Friday, October 13, 2023 6:33 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Scott W. Hejny <shejny@McKoolSmith.com>; ParusGoogleIPR
`<ParusGoogleIPR@mckoolsmith.com>; Robert Scheffel <rscheffel@dowdscheffel.com>; Elliot Gee
`<egee@dowdscheffel.com>; James Quigley <jquigley@McKoolSmith.com>; Ari Rafilson
`<arafilson@McKoolSmith.com>; Kim Jackson <kjackson@McKoolSmith.com>; Hogan, Caitlin P.
`<chogan@omm.com>; EHunt-PTAB@wolfgreenfield.com; Haber, Ben <bhaber@omm.com>
`Subject: IPR2022-00805 - Google LLC v. Parus Holdings Inc.
`
`[EXTERNAL MESSAGE]
`
`Dear Honorable Board,
`
`We received the Board’s October 11 order setting an oral hearing for October 24, 2023, and we are
`responding on behalf Patent Owner and Mr. Hejny (“Respondents”).
`
`(cid:44)(cid:51)(cid:53)(cid:21)(cid:19)(cid:21)(cid:21)(cid:16)(cid:19)(cid:19)(cid:27)(cid:19)(cid:24)
`(cid:40)(cid:91)(cid:17)(cid:3)(cid:22)(cid:19)(cid:19)(cid:22)
`
`

`

`
`1) Location of Hearing. Respondents request that the hearing be held in-person. In terms of
`location, Respondents request that the hearing to be held at either USPTO headquarters in
`Alexandria, Virginia or the Denver, Colorado Regional Office, with a preference for the former if the
`Board is willing to accommodate.
`
`2) Attendees. Respondents expect that John Campbell (lead counsel), Scott Hejny, Matthew J.
`Dowd, and Robert J. Scheffel will attend the hearing in person. Additional counsel and
`representatives for Parus may attend by video. Respondents’ counsel Mr. Dowd will present
`argument on the Order to Show Cause for Patent Owner and Mr. Hejny.
`
`3) Request to Reschedule. Respondents respectfully request that the hearing be rescheduled in
`order to accommodate several pre-existing commitments. Respondents respectfully request that
`the hearing be rescheduled to any day of October 25-27 or any day the week of October 30. As
`noted below based on the parties’ correspondence yesterday and today, Petitioner stated that it
`“take[s] no position on [Respondents’] request to move the hearing date” (with certain qualifiers),
`and Petitioner did not object to rescheduling the hearing to Wednesday, October 25, 2023.
`
`First, lead counsel John Campbell has a family commitment to his son on October 24. His son is a
`senior in high school. His son set a goal to qualify for the Texas state cross country meet for the first
`time and has been training hard to accomplish that goal. The state qualifying meet for his son is on
`October 24th. Lead counsel understands the seriousness of this hearing and proceeding, will attend
`the hearing in person, and would very much appreciate the opportunity to support his son as well.
`
`Second, Respondents’ counsel Mr. Dowd and his partner Robert J. Scheffel have several pressing
`deadlines in numerous appellate and litigation matters, including preparing reply briefs for four
`Federal Circuit appeals in which the responses are due October 18. Additionally, Mr. Dowd is
`currently scheduled for personal travel from October 19-22.
`
`Undersigned counsel conferred through email correspondence with Petitioner’s counsel on the
`request to reschedule. As noted above, Petitioner stated that it “take[s] no position on
`[Respondents’] request to move the hearing date,” (with certain qualifiers), and Petitioner did not
`object to rescheduling the hearing to Wednesday, October 25, 2023.
`
`Petitioner did assert that it intended to participate in the hearing, and it stated that Google’s lead
`counsel and “other representatives that Google intends to have at the hearing” are not available on
`October 26-27 and 30-31, though Petitioner did not identify the “other representatives” and did not
`confirm whether all of Petitioner’s attorneys are completely unavailable, even for participating by
`video or telephone.
`
`As noted below, the parties are available October 17 or 18, should a conference call be necessary.
`
`4) Request for Leave to File a Ten-Page Reply. We received Petitioner’s Response to Patent
`Owner’s and Scott W. Hejny’s Response to the Order to Show Cause on September 29, 2023. See
`Paper 30 and Exhibits 1062 and 1063. Petitioner’s submission contains a number of factual
`
`

`

`assertions (as well as the absence of information) addressing Respondents’ submissions.
`Respondents respectfully request leave to file a ten-page reply to address these factual assertions
`and related issues, to be filed in advance of the hearing.
`
`The parties have conferred through telephone calls and written correspondence. Petitioner opposes
`this request.
`
`The parties are available October 17 or 18, should a conference call be necessary.
`
`Respectfully submitted,
`
`Matthew J. Dowd
`Counsel for Respondents Parus Holdings Inc. and Scott W. Hejny
`
`Matthew J. Dowd
`Dowd Scheffel PLLC
`1717 Pennsylvania Avenue, NW
`Suite 1025
`Washington, D.C. 20006
`Direct: (202) 573-3853
`Office: (202) 559-9175
`mdowd@dowdscheffel.com
`http://www.dowdscheffel.com
`http://www.linkedin.com/in/matthewdowd
`
`
`
`