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`Friday, May 24, 2024 at 14:28:03 Eastern Daylight TimeFriday, May 24, 2024 at 14:28:03 Eastern Daylight Time
`
`Subject:Subject: RE: IPR2022-01188, -1189, -1190, -1191, -1192, -1193 (Request for Conference Call)
`
`Monday, May 13, 2024 at 11:15:48 AM Eastern Daylight Time
`
`Date:Date:
`
`From:From:
`Trials
`To:To:
`Andrew Baluch, Trials
`CC:CC:
`Matthew Smith, carrie.beyer, kirstin.stolldebell, Jason Linger, Stephen Underwood
`
`Counsel,
`
`The Board has reviewed the par5es’ respec5ve posi5ons as set forth in Pe55oner’s email dated May 8,
`2024.
`
`Patent Owner submits that she will not engage in any ex parte communica5ons with the Office in the
`future concerning her specific cases. Pe55oner requests that we enter this as a s5pula5on into the
`record in these cases. Therefore, the par5es are directed to meet and confer to formalize Patent
`Owner’s posi5on into a formal s5pula5on to be signed by counsel for Patent Owner and Pe55oner. The
`formalized s5pula5on signed by counsel should be filed as a paper in each of the referenced cases.
`
`For these reasons, a conference call with the par5es is unnecessary at this 5me. If the par5es cannot
`agree on a s5pula5on to be filed, the Board will consider convening a conference call for the par5es to
`discuss the reasons for disagreement.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From:From: Andrew Baluch <baluch@smithbaluch.com>
`
`
`Sent:Sent: Wednesday, May 8, 2024 3:27 PM
`To:To: Trials <Trials@USPTO.GOV>
`Cc:Cc: Ma\hew Smith <smith@smithbaluch.com>; carrie.beyer <carrie.beyer@faegredrinker.com>;
`kirs5n.stolldebell <kirs5n.stolldebell@faegredrinker.com>; Jason Linger <jlinger@glaserweil.com>;
`Stephen Underwood <sunderwood@glaserweil.com>
`
`Subject:Subject: IPR2022-01188, -1189, -1190, -1191, -1192, -1193 (Request for Conference Call)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCEPLEASE CONSIDER THE SOURCE before
`
`
`responding, clicking on links, or opening a\achments.
`
`Dear Honorable Board:
`
`In response to the Board’s recent Paper 34 (entering Exhibits 3003–3006), Petitioners “wish to
`discuss the matter further” with the Board on a conference call. Paper 34 at 1. The entered Exhibits
`3003–3006 show that Ms. Hafeman has had improper ex parte communication with members of
`the Board (specifically Director Vidal and Judge Tierney) in violation of 37 C.F.R. § 42.5(d).
`Ex. 1049
`1 of 3
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`Petitioners are not currently seeking a sanction against Ms. Hafeman for these prior violations, but
`instead respectfully request an order from the Board stating that § 42.5(d) both: (i) prohibits the type
`of case-specific communications contained in the emails Ms. Hafeman sent to members of the
`Board and (ii) contains no distinction between communicating about substantive patentability
`issues on the one hand, versus communicating about procedural (or in Ms. Hafeman’s words
`“process”) issues on the other hand, as Ms. Hafeman appears to believe. Ex. 3005, 1; Ex. 3003, 6
`(“again not talking about my claims but the process”).
` 
`The parties have conferred regarding this matter and have taken the following positions:
` 
`Patent Owner’s position:
`Patent Owner believes such conference call is unnecessary as Ms. Hafeman now understands that
`she cannot have ex parte communications with the USPTO regarding her cases. Moreover, Patent
`Owner has filed appeals, and thus, the Federal Circuit now has exclusive jurisdiction over these
`cases.
` 
`Patent Owner agrees with Petitioners that no sanctions are warranted here.  The emails filed by the
`Board, involving Director Vidal, USPTO Advisor Dede Zecher, and Judge Tierney, show that Ms.
`Hafeman was invited to communicate with them about “a Sotera violation.”
` 
`Ms. Hafeman first reached out to Director Vidal, who put her in touch with her advisor Dede Zecher.
`Ms. Zecher responded, asking her “what you need help with.” Ms. Hafeman replied that she was
`seeking information about “a remedy that the USPTO ofers for a Sotera violation.” Ms. Zecher then
`added the PTAB’s Vice Chief, Mike Tierney, to the email chain.  Ms. Zecher stated that Judge Tierney
`“should be able to answer all your Sotera questions” and that Ms. Hafeman and Judge Tierney
`should “chat soon.” Judge Tierney agreed, and Judge Tierney and Ms. Hafeman participated in a
`Zoom meeting together.
` 
`Again, Ms. Hafeman now understands that she cannot engage in ex parte communications with the
`USPTO regarding her specific cases (and that she has counsel to communicate with the USPTO on
`her behalf).  If Ms. Hafeman has any further communications with the USPTO, she will not discuss
`her specific cases except through counsel and with all parties involved in the communications.
` 
`Petitioners’ position
`Petitioners respectfully request this order because Ms. Hafeman does not appear to understand
`the scope of §  42.5(d), given her repeated insistence to the Ofice of a purported distinction
`between substantive patentability issues versus “process” issues. Petitioners also respectfully
`request that Patent Owner’s stipulation above (“If Ms. Hafeman has any further communications
`with the USPTO, she will not discuss her specific cases except through counsel and with all parties
`involved in the communications.”) be entered into the record so that the stipulation may be
`enforced by the Board in the event of any future violations. Second, Ms. Hafeman’s ex parte
`communications continued as late as April 22 (see Ex. 3003, 1), nearly a month after she filed her
`appeal on March 25. The Board retains authority to enforce its rules during an appeal, especially for
`the purpose of protecting the integrity of these proceedings. Third, Petitioners dispute Patent
`Owner’s characterization of Exhibits 3003–3006 as showing that “Ms. Hafeman was invited to
`communicate with [Director Vidal and Judge Tierney]”; to the contrary, it was Ms. Hafeman who
`initiated contact, requested meetings, and urged specific action to be taken in these very
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`proceedings: “the[se] IPRs should be vacated.”  Ex. 3006, 14.
` 
`Parties’ Availability
` 
`If the Board would like to speak with the parties about this matter, the parties are available for a
`Board call at the following times:
` 
`Monday, May 13, 2pm-4pm ET
`Tuesday, May 14, 2pm-4pm ET
`
` 
`Respectfully submitted on behalf of Petitioners,
`
`Andrew Baluch
`
`SMITH BALUCH LLPSMITH BALUCH LLP
`+1.202.880.2397
`Counsel for Pe55oner Google
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