From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Trials
`Andrew Baluch
`Jason Linger; Stephen Underwood; Lawrence Hadley; Matthew Smith; kirstin.stolldebell; carrie.beyer; Trials
`RE: Google/Microsoft v. Hafeman, IPR2022-01188, -01189, -01190, -01191, -01192, -01193
`Monday, March 20, 2023 11:21:31 AM
`image002.png
`
`Counsel,
`
`From the Board –
`
`First, Patent Owner’s request to file a rehearing request out of time is denied. The Institution
`Decisions in these cases address discretionary denial in light of a Sotera stipulation. See, e.g.,
`IPR2022-01188, Paper 16 at 4–7. The referenced precedential decision addresses requirements for
`the Board when declining to exercise discretion to deny based on a “compelling merits” analysis.
`CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (February 27, 2023)
`(precedential). Thus, the issuance of this precedential decision does not impact these proceedings.
`
`Second, any dispute regarding the scope or alleged violation of stipulations should be addressed in
`the district court proceedings in which such stipulations are to have effect.
`
`Third, the parties may stipulate to extensions for certain due dates, including the date for the Patent
`Owner Response, as provided in the Scheduling Orders in these proceedings. See, e.g., IPR2022—
`01188, Paper 17 at 9–10. If the parties cannot agree on extensions, the parties may email the Board
`and ask for a conference call, providing times that the parties are available.
`
`This email will be entered in the record.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Andrew Baluch <baluch@smithbaluch.com>
`Sent: Monday, March 20, 2023 9:57 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jason Linger <jlinger@glaserweil.com>; Stephen Underwood <sunderwood@glaserweil.com>;
`Lawrence Hadley <lhadley@glaserweil.com>; Matthew Smith <smith@smithbaluch.com>;
`kirstin.stolldebell <kirstin.stolldebell@faegredrinker.com>; carrie.beyer
`<carrie.beyer@faegredrinker.com>
`Subject: Re: Google/Microsoft v. Hafeman, IPR2022-01188, -01189, -01190, -01191, -01192, -01193
`
`
`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,
`
`For completeness, Petitioners provide their position on Patent Owner’s Issue #2 (requesting 6-
`month extension under § 316(a)(11), or alternatively, 50-day extension of Due Dates 1-3). First, a 6-
`month extension under § 316(a)(11) of all deadlines and FWD is not warranted here. The district
`court trial date is in flux. Currently, the parties are third in line for the week of April 24th, and the
`court offered to push back the pretrial conference date. The court has not yet had an opportunity to
`respond to the parties’ alternative proposals regarding scheduling the pre-trial conference and trial.
`As for Patent Owner’s argument regarding potential “conflicting decisions and duplicative efforts,”
`this argument sounds in Patent Owner’s previously raised Fintiv argument for discretionary denial
`and does not warrant a § 316(a)(11) extension for the same reasons. Second, regarding an
`extension of Due Dates 1-3, Petitioners wish to avoid creating a new conflict with the district court
`schedule that is currently in flux, and therefore believe that waiting another week to potentially
`receive greater clarity from the court on the parties’ alternative schedule proposals will allow the
`parties to better avoid a scheduling conflict. After receiving clarity from the court, and assuming it
`avoids a conflict with either Due Date 1 and Due Date 2, Petitioners are open to an equal 30-day net
`enlargement of both Due Date 1 and Due Date 2 in accordance with the chart below. Patent Owner
`previously seemed receptive to the dates in the chart below. Waiting one week before stipulating to
`these dates is prudent and feasible, given that Patent Owner still has more than five weeks before its
`currently scheduled Response deadline.
`
`
`Due
`Date
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`
`
`Current
`Deadline
`
`4/26/23
`
`7/19/23
`
`8/30/23
`
`9/20/23
`
`10/11/23
`
`10/18/23
`
`10/25/23
`
`11/2/23
`
`Petitioner
`Proposal
`5/26/23 (30
`day ext.)
`9/17/23 (60
`day ext.)
`10/20/23 (51
`day ext.)
`9/20/23
`(cannot
`extend)
`10/13/23 (2
`day ext.)
`10/20/23 (2
`day ext.)
`10/25/23
`(cannot
`extend)
`11/2/23
`(cannot
`extend)
`
`

`

`Counsel for Petitioners
`Andrew Baluch
`SMITH BALUCH LLP
`+1.202.880.2397
`
`From: Jason Linger <jlinger@glaserweil.com>
`Date: Friday, March 17, 2023 at 5:00 PM
`To: trials@uspto.gov <trials@uspto.gov>
`Cc: Stephen Underwood <sunderwood@glaserweil.com>, Lawrence Hadley
`<lhadley@glaserweil.com>, Andrew Baluch <baluch@smithbaluch.com>, Matthew Smith
`<smith@smithbaluch.com>, kirstin.stolldebell <kirstin.stolldebell@faegredrinker.com>,
`carrie.beyer <carrie.beyer@faegredrinker.com>
`Subject: Google/Microsoft v. Hafeman, IPR2022-01188, -01189, -01190, -01191, -01192,
`-01193
`
`Dear Honorable Board,
`
`Patent Owner respectfully requests authorization, in the six IPR matters referenced above, (1) to file
`a request for rehearing of the institution decisions to address two changes in circumstances; and (2)
`for an extension of the deadlines in the Scheduling Order.
`
`Patent Owner’s Position
`
`
`Issue 1: Patent Owner requests authorization to file a request for rehearing of the institution
`decisions to address two developments: (1) the Director’s February 27, 2023 precedential
`decision in CommScope v. Dali Wireless; and (2) LG’s February 6, 2023 motion for summary
`judgment of invalidity (“MSJ”) in the District Court that violates LG’s Sotera stipulation by
`making the same invalidity challenge, based on an alleged lack of priority/written
`description, in both IPR and District Court.
`
`There is good cause to extend the time to seek rehearing, and consideration would be in the
`interests of justice, because LG’s MSJ raises serious “concerns of potentially conflicting
`decisions and duplicative efforts between the district court and the PTAB,” and the
`CommScope decision issued after the rehearing deadline had passed.
`
`Issue 2: Patent Owner’s Response is currently due on April 26, 2023, the same day that trial
`is scheduled to begin in the District Court. Patent Owner believes an extension of the POR
`deadline (and a corresponding extension for the remaining briefing) is warranted so that
`counsel can adequately prepare for trial and prepare its POR. An extension is also warranted
`because there is near-complete overlap in the IPR and District Court on the priority/written
`description challenge, and the District Court’s ruling on this issue in the next couple of
`months will impact this IPR, including how Patent Owner would address this issue in its POR.
`
`Thus, Patent Owner respectfully requests a six-month extension of all deadlines, including
`
`

`

`the final written decision, pursuant to 35 U.S.C. § 316(a)(11). Given the facts above, there is
`good cause for the extension to avoid “conflicting decisions and duplicative efforts.”
`Alternatively, Patent Owner requests a 50-day extension of Due Dates 1-3, a 5-day extension
`for Due Date 5, and a 2-day extension for Due Date 6.
`
`The parties have met and conferred, and Petitioners oppose both requests. Petitioners
`stated that they would not “entertain[] any adjustments to the IPR schedule” unless Patent
`Owner would agree to push back the pretrial conference, currently scheduled for April 5,
`until May or June, and delay the district court trial, currently scheduled for April 26, until Q4
`of 2023. Patent Owner cannot accept the request to push back the District Court’s pretrial
`conference and trial date—not only because it would delay a trial that has been scheduled
`for years, but also because extending both the IPR deadlines and trial date would simply
`push the same conflicts to a later date.
`
`
`Petitioners’ Position
`
`
`Patent Owner’s rehearing request was due February 14. 37 C.F.R. 42.71(d)(1). Petitioners
`oppose authorization for a belated rehearing request. First, the CommScope decision is not
`a “change[] in circumstances” because it did not change the law or analytical framework
`involving Sotera stipulations. Rather, CommScope involved only the “compelling merits”
`factor (factor 6 of Fintiv). In the instant proceedings, the Board declined to exercise its
`discretion under Fintiv in view of a Sotera stipulation (factor 4 of Fintiv) and thus did not
`violate CommScope's directive to address factor 6 last. Second, LG’s MSJ is not a “change[]
`in circumstances” at least because it was filed on February 6, more than a week before
`Patent Owner’s rehearing deadline of February 14. In any event, LG’s MSJ does not violate
`LG’s Sotera stipulation because the stipulation is limited to “grounds” that were raised or
`reasonably could have been raised in these IPRs, whereas the “priority/written description”
`issues in LG’s MSJ are relevant to prior art defenses in the litigation based solely on system
`prior art (not printed prior art).
`
`
`The Parties’ Availability for a Conference Call
`
`
`Monday, March 20, 12-5 Eastern
`Tuesday, March 21, 12-3 pm Eastern
`
`
`
`Please let me know me if the Board would like additional dates and times in which the parties are
`available for the conference call.
`
`Respectfully submitted,
`Jason Linger
`Counsel for Patent Owner Carolyn W. Hafeman
`
`
`
`Jason Linger | Associate
`
`

`

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`Main: 310.553.3000 | Direct: 310.282.6204 | Fax: 310.785.3504
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`
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