Trials
`Sauer, Joseph M.; Trials
`Rob Brunelli; jvick@sheridanross.com; Pilot-NocoIPR-ServiceSR; Cochran, David B.; Johnson, Matthew W.;
`Karfes, Irene M.A.; Graves, Jack M.
`RE: IPR2023-00167: Motion to Enter Judgement for Petitioner Under Collateral Estoppel and 37 C.F.R. 42.73(d)
`(3)
`Tuesday, January 30, 2024 3:09:02 PM
`
`From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Counsel,
`
`In response to Petitioner’s request for authorization to file a motion for entry of judgment on the
`basis of collateral estoppel and 37 C.F.R. 42.73(d)(3), and Patent Owner’s non-opposition thereto,
`the Board authorizes Petitioner’s filing of such a motion, not to exceed seven pages, by February 8,
`2024. Patent Owner may file a response, not to exceed seven pages, no later than February 22,
`2024.
`
`Additionally, in view of Patent Owner’s decision not to file a Response to the Petition, the Board is
`inclined to cancel the hearing scheduled for March 19, 2024. We ask that the parties please respond
`by email before the close of business on January 31, 2024 to let us know if this course of action is
`acceptable. If either party needs more time, or would prefer to have a call with the Board to discuss
`this, please indicate that in your email.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Sauer, Joseph M. <jmsauer@JonesDay.com>
`Sent: Monday, January 29, 2024 1:48 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Rob Brunelli <rbrunelli@sheridanross.com>; jvick@sheridanross.com; Pilot-NocoIPR-ServiceSR
`<Pilot-NocoIPR-ServiceSR@sheridanross.com>; Cochran, David B. <dcochran@JonesDay.com>;
`Johnson, Matthew W. <mwjohnson@JonesDay.com>; Karfes, Irene M.A.
`<imkarfes@JonesDay.com>; Graves, Jack M. <jgraves@jonesday.com>
`Subject: IPR2023-00167: Motion to Enter Judgement for Petitioner Under Collateral Estoppel and 37
`C.F.R. 42.73(d)(3)
`
`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,
`
`Petitioner Noco requests leave to file a motion in the above IPR proceeding for entry of judgement
`in favor of Petitioner on the basis of collateral estoppel and 37 C.F.R. 42.73(d)(3). A Final Written
`Decision was recently issued in related IPR2022-01237 finding all challenged claims of U.S. Patent
`
`Exhibit 3001
`
`

`

`No. 11,124,077 (the “’077 Patent”) unpatentable. Since the claims of the ’077 patent are
`substantially similar (in fact nearly identical) to the claims of U.S. Patent No. 11,235,673 (the “’673
`Patent”) at issue in IPR2023-00167, and because Patent Owner waived it opportunity to appeal the
`FWD by failing to file a response, all arguments and evidence presented by Patent Owner in favor of
`patentability of any claim of the ‘673 Patent are now precluded under the principals of collateral
`estoppel and 37 C.F.R. 42.73(d)(3).
`
`Petitioner has conferred with counsel for Patent Owner, and Patent Owner’s counsel has indicated
`that they will not oppose the motion (see email trail below).
`
`Counsel for Petitioner is available for a phone call with the Board to discuss the proposed motion if it
`would be helpful.
`
`With best regards,
`
`Joseph M. Sauer
`Partner
`JONES DAY® - One Firm Worldwide℠
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`Office +1.216.586.7506
`Mobile +1.216.496.7849
`jmsauer@jonesday.com
`
`
`
`Joseph M. Sauer
`Partner
`JONES DAY® - One Firm Worldwide℠
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`Office +1.216.586.7506
`Mobile +1.216.496.7849
`jmsauer@jonesday.com
`
`From: Rob Brunelli <rbrunelli@sheridanross.com>
`Sent: Monday, January 29, 2024 1:32 PM
`To: Sauer, Joseph M. <jmsauer@JonesDay.com>
`Cc: Jason Vick <JVick@sheridanross.com>; Pilot-NocoIPR-ServiceSR <Pilot-NocoIPR-
`ServiceSR@sheridanross.com>; Cochran, David B. <dcochran@JonesDay.com>; Johnson, Matthew
`W. <mwjohnson@JonesDay.com>; Graves, Jack M. <jgraves@jonesday.com>
`Subject: Re: IPR2023-00167: Motion to Enter Judgement for Petitioner Under Collateral Estoppel
`and 37 C.F.R. 42.73(d)(3)
`
`Thank you for the email. Pilot will not oppose.
`
`
`Sent from my iPhone
`
`Thank you for the email. Pilot will not oppose. Sent from my iPhone On Jan 29, 2024, at 9: 21 AM, Sauer, Joseph M. <jmsauer@ jonesday. com> wrote:  CAUTION: EXTERNAL EMAIL Dear Counsel, Noco intends to request leave from the Board to file
`
`
`

`

`
`
`On Jan 29, 2024, at 9:21 AM, Sauer, Joseph M. <jmsauer@jonesday.com> wrote:
`
`CAUTION: EXTERNAL EMAIL
`
`Dear Counsel,
`
`Noco intends to request leave from the Board to file a motion in the above IPR matter
`for entry of judgement in favor of Petitioner on the basis of collateral estoppel and 37
`C.F.R. 42.73(d)(3). As you know, a Final Written Decision was recently issued in related
`IPR2022-01237 finding all challenged claims of U.S. Patent No. 11,124,077 (the “’077
`Patent”) unpatentable. Since the claims of the ’077 patent are substantially similar (in
`fact nearly identical) to the claims of U.S. Patent No. 11,235,673 (the “’673 Patent”) at
`issue in IPR2023-00167, and because Patent Owner waived it opportunity to appeal the
`FWD by failing to file a response, all arguments and evidence presented by Patent
`Owner in favor of patentability of any claim of the ‘673 Patent are now precluded
`under the principals of collateral estoppel and 36 C.F.R. 42.73(d)(3).
`
`Please let us know by COB today if Pilot will oppose this motion.
`
`With best regard,
`
`Joseph M. Sauer
`Partner
`JONES DAY® - One Firm Worldwide℠
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`Office +1.216.586.7506
`Mobile +1.216.496.7849
`jmsauer@jonesday.com
`
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