From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Ryan, Andrew
`Trials
`HID-IPRs; Devkar, Andrew V.; Bregman, Dion M.; Coyle, Steve; Geiger, Nicholas
`IPR2022-01006, IPR2022-01045, IPR2022-01089, IPR2022-01093, IPR2022-01094 - ASSA ABLOY AB et al. v.
`CPC Patent Technologies PTY Ltd.
`Tuesday, October 18, 2022 7:23:36 AM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`The parties respectfully submit this joint email to inform the Board of an agreement the parties have
`reached regarding additional discovery and, with the Board’s permission, additional briefing
`regarding the real part-in-interest and privity issues raised in Patent Owner’s preliminary responses
`filed in IPR2022-01006, IPR2022-01045 and IPR2022-01089 (Patent Owner expects to raise
`substantially similar real party in interest and privity issues in its upcoming preliminary responses in
`IPR2022-01093 and IPR2022-01094, due November 4, 2022).
`
`Additional Discovery
`Petitioner has agreed to respond to a limited set of discovery requests, which comprise one request
`for document production and five interrogatories. The requested documents consist of several
`written agreements between Apple, Inc. (“Apple”) and one or more of the Petitioners. Petitioners
`are endeavoring to produce the requested documents as soon as possible but must first obtain
`Apple’s consent to do so, and first require the entry of a Protective Order in these proceedings.
`Therefore, the precise timing of the document production is somewhat uncertain but Petitioners are
`hopeful that it will occur within two weeks. Petitioners will serve answers to the interrogatories by
`October 28. (While the parties have agreed to the limited discovery, Patent Owner does not waive
`its right to seek further discovery based on the content of the documents to be produced.)
`
`Proposed Additional Briefing
`The parties jointly submit the following proposal for the Board’s consideration:
`
`Within 14 days after service of the responsive documents, Patent Owner will file a
`supplement to its Preliminary Response of up to 10 pages. The subject matter of the
`proposed supplement will be limited to the significance of the additional discovery to
`the real party-in-interest and privity issues and will be equally applicable in each of
`the IPRs.
`
`Petitioners will then have 14 days to file a Reply to the Preliminary Response and
`supplement of up to 25 pages. If Petitioners are unable to obtain authorization to
`produce the agreements by November 6 (30 days before the first decision on
`institution is due), Petitioners would be authorized to file a Reply to the Preliminary
`Response of up to 20 pages.
`
`Patent Owner will then have 7 days to file a sur-reply of up to 7 pages.
`If the Board would like to hold a telephone conference with the parties, counsel for both parties are
`available at the following times (all times EST): Wed., Oct. 19 within 9-11 am; Fri., Oct. 21 within 9-10
`Ex. 3001
`
`

`

`am; Tue., Oct. 25 within 11am-2pm; Wed., Oct. 26 within noon-4pm; and Thu., Oct. 27 within 1-
`5pm.
`
`Finally, the parties request authorization to file a joint motion for a Protective Order.
`
`Thank you for your consideration,
`
`Jointly from counsel for Petitioners and Patent Owner.
`
`Email sent by:
`Andrew C. Ryan
`Partner
`Cantor Colburn LLP
`
`20 Church Street | 22nd Floor | Hartford, CT 06103-3207
`Work: 860-286-2929, ext. 1127 | Fax: 860-286-0115 |
`ryan@cantorcolburn.com
`www.cantorcolburn.com
`
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