Trials
`Nicholas Stephens; Trials
`IPR50095-0045IP1; Karl Renner; Andrew Patrick; Dan Smith; 2Bcc; AppleIPR745-1; Daniel Kiang; AppleIPR745-2@knobbe.com; AppleIPR745-3@knobbe.com; AppleIPR745-
`4@knobbe.com
`RE: IPR2022-01291, -01292, -01465, -01466 - Request for Leave to File Motions to Correct and Corrected Petitions
`Tuesday, October 4, 2022 12:16:19 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`Petitioner’s unopposed request for leave in the above identified proceedings to file corrected petitions, as specified in its September 29, 2022,
`email to the Board, is granted by the Panel. The Panel appreciates the cooperation of the Parties in reaching agreement on the request and finds a
`written motion is not necessary under the circumstances. Accordingly, in each proceeding Petitioner may file as a “Corrected Petition,” no later
`than October 7, 2022, a paper to correct the clerical errors identified by Petitioner in its September 29, 2022, email to the Board. No additional
`alteration of the original petitions is authorized in the corrected petitions to be filed. No teleconference with the Board will be scheduled at this
`time and a copy of this email exchange will be entered by the Board as an exhibit in each proceeding to document the relief authorized.
`
`Thank you,
`
`Megan Carlson
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Nicholas Stephens <nstephens@fr.com>
`Sent: Thursday, September 29, 2022 12:10 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR50095-0045IP1 <IPR50095-0045IP1@fr.com>; Karl Renner <renner@fr.com>; Andrew Patrick <patrick@fr.com>; Dan Smith
`<dsmith@fr.com>; 2Bcc <2Bcc@knobbe.com>; AppleIPR745-1 <AppleIPR745-1@knobbe.com>; Daniel Kiang <Daniel.Kiang@knobbe.com>;
`AppleIPR745-2@knobbe.com; AppleIPR745-3@knobbe.com; AppleIPR745-4@knobbe.com
`Subject: IPR2022-01291, -01292, -01465, -01466 - Request for Leave to File Motions to Correct and Corrected Petitions
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening attachments.
`
`Honorable Board,
`
`Petitioner respectfully requests leave under 37 CFR § 42.104(c) to file motions to correct inadvertent clerical errors within petitions identified by
`the subject of this email, and to submit a corrected petition accompanying the respective motion in each proceeding. The parties have conferred,
`and Patent Owner indicates that it does not oppose this request.
`
`Specifically, Petitioner proposes to strike the following clauses from the respective petition in each proceeding. These clauses incorrectly indicate
`that the ’745 patent issued after IPRs were filed on a parent of the ’745 patent in IPR2020-01722 and -01723.
`
`IPR2022-01291
`“, and approximately seven months after Apple filed IPRs challenging claims of related U.S. Patent No. 10,470,695 (“’695 Patent”)”
`(Petition, p. 3)
`“art applied in Apple’s IPRs, including” (Petition, p. 4)
`IPR2022-01292
`“, and approximately seven months after Apple filed IPRs challenging claims of related U.S. Patent No. 10,470,695 (“’695 Patent”)”
`(Petition, p. 3)
`“, despite being in possession of Apple’s earlier IPR petitions challenging claims of the related ’695 Patent based on those same
`references. See, generally, IPR2020-01722, -01723” (Petition, p. 78)
`“art applied in Apple’s IPRs, including” (Petition, p. 4)
`IPR2022-01465
`“, and approximately seven months after Apple filed IPRs challenging claims of related U.S. Patent No. 10,470,695 (“’695 Patent”)”
`(Petition, p. 3)
`“, despite being in possession of Apple’s earlier IPR petitions challenging claims of the related ’695 Patent based on those same
`references. See, generally, IPR2020-01722, -01723” (Petition, p. 77)
`“art applied in Apple’s IPRs, including” (Petition, p. 3)
`IPR2022-01466
`“, and approximately seven months after Apple filed IPRs challenging claims of related U.S. Patent No. 10,470,695 (“’695 Patent”)”
`(Petition, p. 3)
`“, despite being in possession of Apple’s earlier IPR petitions challenging claims of the related ’695 Patent based on those same
`references. See, generally, IPR2020-01722, -01723” (Petition, pp. 68-69)
`“art applied in Apple’s IPRs, including” (Petition, p. 3)
`
`Additionally, Petitioner proposes to replace the last paragraph on page 46 of the petition in IPR2022-01291 with the following paragraph:
`
`IPR2022-01291
`Ex. 3001
`
`

`

`
`
`There is no indication in the ’745 Patent’s file history that the examiner was even aware of, let alone substantively considered, Sarantos,
`Venkatraman, or Shie prior to allowing the ’772 Application. See, generally, APPLE-1002. Iwamiya is cited on the face of the ’745 patent,
`but was not relied on by the Examiner.
`
`
`The substitute paragraph would correct a clerical error that was made when the -01291 petition was filed concurrently with the -01292 petition on
`the same day (July 22, 2022). Upon further review, Petitioner found that the last paragraph on page 46 of the -01291 petition was inadvertently
`reproduced from pp. 77-78 of the -01292 petition, and as a result, identifies the prior art applied in the -01292 petition rather than the -01291
`petition.
`
`To the extent the Board would like to discuss the request on a call, the parties are available at the following times:
`
`
`Fri. 9/30 – 1:30pm-2:30pm ET
`Tues. 10/4 – 1pm-2pm ET
`
`
`Respectfully submitted,
`Nick
`
`Counsel for Petitioner
`
`Nick Stephens :: Principal :: Fish & Richardson P.C.
`612 766 2018 direct :: nstephens@fr.com :: fr.com
`
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