Trials
`Nicholas Stephens; Trials; "AXF-PTAB"; Andrew Patrick; bisenius@fr.com; leung@fr.com; pking@fr.com
`IPR50095-0045IP1; IPR50095-0045IP3; AppleIPR745-1; AppleIPR745-3; 2bcc@knobbe.com;
`2cmp@knobbe.com; 2jzk@knobbe.com; 2jup@knobbe.com; 2dck@knobbe.com
`RE: IPR2022-01291 - Petitioner"s Unopposed Request to Correct the Petition Under 37 CFR § 42.104(c)
`Friday, September 22, 2023 9:07:39 AM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`The Board intends to discuss Petitioner’s request (below) during the anticipated conference call later
`this month per the Board’s Order of September 5, 2023.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Thursday, September 21, 2023 1:37 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR50095-0045IP1 <IPR50095-0045IP1@fr.com>; IPR50095-0045IP3 <IPR50095-
`0045IP3@fr.com>; AppleIPR745-1 <AppleIPR745-1@knobbe.com>; AppleIPR745-3 <AppleIPR745-
`3@knobbe.com>
`Subject: IPR2022-01291 - Petitioner's Unopposed Request to Correct the Petition Under 37 CFR §
`42.104(c)
`
`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,
`
`During the parties’ recent meet and confer in relation to Patent Owner’s requested authorizations
`for a motion to strike and to submit additional evidence with its Sur-Reply, Patent Owner contended
`that Section I.D of Petitioner’s Reply “requests a substantive change to the petition to correct
`typographical errors,” and argued that “such a request can only be made via motion under §
`42.104(c).”
`
`While the Reply cited cases that Petitioner believes demonstrates authority for the Board to correct
`a typographical error even in the absence of a motion under § 42.104(c), out of an abundance of
`caution, Petitioner respectfully requests authorization under § 42.104(c) to correct the Petition’s
`typographical error as identified in Section I.D of the Reply. Specifically, in addressing limitations
`[20.0]-[20.8] in Ground 1B, the Petition at page 27 includes a mistaken cross-citation to limitations
`from independent claim 15 (i.e., [15.0]-[15.8]) rather than independent claim 1 (i.e., [1.0]-[1.7]).
`
`Exhibit 3003
`
`

`

`Petitioner proposes to correct the Petition by replacing the citation to “[15.0] - [15.8]” with “Ground
`1A, [1.0] - [1.7]” on page 27, consistent with the parallel limitations recited in claims 1 and 20.
`Petitioner proposes no other corrections to the body of the Petition. Clean and redlined versions of
`the proposed corrected Petition are attached for reference.
`
`Petitioner submits that good cause exists for the correction given that the parties have consistently
`addressed corresponding limitations from claims 1 and 20 together in the POR and Reply.
`Petitioner’s intent to cross-cite limitations [1.0]-[1.7] rather than [15.0]-[15.8] is also evident from
`the Petition’s proper cross-citation to claim 1 in addressing claim 20 in Ground 2B (pages 41-42) and
`Petitioner’s proper cross-citation to claim 1 in addressing claim 20 in both grounds of the Petition in
`IPR2022-01465. The Board has also confirmed that § 42.104(c) permits corrections to petitions
`based on motions filed after institution. See, e.g., Group III Int’l, Inc. v. Targus Int’l LLC, IPR2021-
`00371, Paper 88 at pp. 9-13 (PTAB July 6, 2022).
`
`The parties have conferred and Patent Owner indicates that it does not oppose Petitioner’s request.
`
`Should the Board desire a conference call, the parties will provide their availability. The parties are
`also amenable to discussing this request at the conference call that we anticipate scheduling later
`this month pursuant to the Board’s Order of September 5, 2023 (Paper 43).
`
`Best Regards,
`Nick Stephens
`
`Counsel for Petitioner Apple Inc.
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
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