Trials
`Ferguson, Brian E.; Trials; Miller, Jeffrey
`Park, Jin-Suk; Hopkins, Matt
`RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`Tuesday, April 4, 2023 11:29:54 AM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`The parties proposed extended word limits in the email to the Board dated April 4, 2023 are
`approved. The following word limits shall apply:
`
`Patent Owner Response: 18,700
`
`Petitioner Reply: 7,000
`
`Patent Owner Sur-Reply: 7,000
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Ferguson, Brian E. <BEFerguson@winston.com>
`Sent: Tuesday, April 4, 2023 9:35 AM
`To: Trials <Trials@USPTO.GOV>; Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board:
`
`I am writing as counsel for Patent Owners and with the permission of counsel for Petitioners. The
`parties continue to work towards a settlement but have not finalized the terms. In view of the
`upcoming deadline for the Patent Owner Response and to alleviate the burden on the Board
`concerning the parties providing repeated non-substantive updates, the parties have conferred and,
`subject to the Board’s approval, have agreed to the following extensions of the word-count limits,
`based on the consolidation of the IPRs:
`
`Patent Owner Response: 18,700
`
`Exhibit 3001
`
`

`

`
`Petitioner Reply: 7,000
`
`Patent Owner Sur-Reply: 7,000
`
`Should the Board determine that a conference call is necessary, counsel for both parties are
`available at the Board’s convenience this Friday, April 7.
`
`Respectfully,
`
`Brian Ferguson
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, March 29, 2023 9:38 AM
`To: Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>; Trials <Trials@USPTO.GOV>; Ferguson, Brian
`E. <BEFerguson@winston.com>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`Dear counsel,
`
`Thank you for the update. The conference call may be deferred pending a further update from the
`parties by April 3rd. The parties are reminded that delaying this conference call will not result in a
`change to the due dates set forth in the relevant scheduling orders.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`From: Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>
`Sent: Tuesday, March 28, 2023 3:45 PM
`To: Trials <Trials@USPTO.GOV>; Ferguson, Brian E. <BEFerguson@winston.com>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`
`

`

`Petitioners and Patent Owners continue to work towards settlement. Because of this, the Parties
`request that the conference call be deferred and that they provide the Board with an update by
`April 3rd.
`
`Best Regards,
`Jeffrey Miller
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, March 6, 2023 9:02 AM
`To: Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>; Trials <Trials@USPTO.GOV>; Ferguson, Brian
`E. <BEFerguson@winston.com>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`
` External E-mail
`
`
`Dear counsel:
`
`Thank you for the update. The conference call may be deferred pending a further update from the
`parties by March 24th. The parties are reminded that delaying this conference call will not result in a
`change to the due dates set forth in the relevant scheduling orders.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`From: Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>
`Sent: Saturday, March 4, 2023 12:17 PM
`To: Trials <Trials@USPTO.GOV>; Ferguson, Brian E. <BEFerguson@winston.com>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`Petitioners and Patent Owners continue to work towards settlement. Because of this, the Parties
`request that the conference call be deferred and that they provide the Board with an update by
`March 24th.
`
`

`

`
`Regards,
`Jeffrey Miller
`
`
`_______________
`Jeffrey A. Miller
`Partner | Bio
`
`3000 El Camino Real | Suite 500
`Palo Alto, CA 94306-2112
`T: +1 650.319.4538 | F: +1 650.319.4938
`Jeffrey.Miller@arnoldporter.com
`www.arnoldporter.com | LinkedIn | Twitter
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, February 10, 2023 11:23 AM
`To: Ferguson, Brian E. <BEFerguson@winston.com>; Miller, Jeffrey
`<Jeffrey.Miller@arnoldporter.com>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>; Trials
`<Trials@USPTO.GOV>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`
` External E-mail
`
`
`Dear counsel:
`
`Thank you for your prompt responses. In future correspondence regarding conference calls and
`other matters, the panel expects the parties to meet and confer, and to present, in a single email,
`each party’s position on the issue at hand. That being said, in light of the current situation, as
`described in each email below, the panel agrees to postpone the conference call. The parties,
`however, should understand that any delay of this conference call will not result in a change to the
`due dates as set forth in the relevant scheduling orders. Additionally, the parties shall provide an
`update on settlement discussions via email to the Board by March 6, 2023. At that time, the panel
`will reassess the need for a conference call.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`

`

`
`From: Ferguson, Brian E. <BEFerguson@winston.com>
`Sent: Thursday, February 9, 2023 1:55 PM
`To: Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>; Trials <Trials@USPTO.GOV>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`
`Dear Board:
`
`As counsel for Patent Owners, we agree with Mr. Miller’s suggestion to postpone a call, in view of
`the pending settlement between the parties. With respect to the dates proposed by the Board, we
`are available on February 22, between 12:00-2:00 pm ET and 4:00 pm ET consistent with Mr. Miller’s
`availability. Unfortunately, we are not available on February 24.
`
`Respectfully submitted,
`
`Brian E. Ferguson
`Counsel for Patent Owners
`
`
`
`From: Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>
`Sent: Thursday, February 9, 2023 11:59 AM
`To: Trials <Trials@USPTO.GOV>; Ferguson, Brian E. <BEFerguson@winston.com>
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; Hopkins, Matt <MHopkins@winston.com>
`Subject: RE: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`Dear Board,
`
`The district court action relating to these proceedings has been stayed until March 5, 2023
`while the parties finalize settlement of that matter. Accordingly, it may be more efficient to
`delay the conference until after March 5, 2023, if it is still needed. However, if the Board
`would still like to discuss these matters, Petitioners’ counsel is available February 22, between
`12:00-2:00 pm ET and 4:00 pm ET, and also February 24, between 11:30-5:00 pm ET
`
`Best Regards,
`Jeffrey A. Miller
`Counsel for Petitioners
`
`
`

`

`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, February 8, 2023 1:34 PM
`To: Miller, Jeffrey <Jeffrey.Miller@arnoldporter.com>; beferguson@winston.com
`Cc: Park, Jin-Suk <jin.park@arnoldporter.com>; mhopkins@winston.com; Trials
`<Trials@USPTO.GOV>
`Subject: IPR2022-01327, -01328, -01329, -01330, -01331, -01332, -01333, -01334, -01335
`
`
` External E-mail
`
`
`Dear counsel,
`
`In light of the recent institution decisions in the above-referenced cases and consolidations, the
`panel is scheduling a conference call to discuss case management, including word counts for
`upcoming briefs. Please be prepared to discuss these topics and please provide several times during
`which the parties are available for a conference call on February 15th, 16th, or 21st-24th.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`
`
`This communication may contain information that is legally privileged, confidential or exempt from disclosure. If you are not the intended
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`___________________________________________
`For more information about Arnold & Porter, click here:
`http://www.arnoldporter.com
`
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`
`
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`recipient, please note that any dissemination, distribution, or copying of this communication is strictly prohibited. Anyone who receives
`this message in error should notify the sender immediately by telephone or by return e-mail and delete it from his or her computer.
`___________________________________________
`For more information about Arnold & Porter, click here:
`http://www.arnoldporter.com
`
`
`This communication may contain information that is legally privileged, confidential or exempt from disclosure. If you are not the intended
`recipient, please note that any dissemination, distribution, or copying of this communication is strictly prohibited. Anyone who receives
`this message in error should notify the sender immediately by telephone or by return e-mail and delete it from his or her computer.
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