Trials
`Krause, Andrew; Trials
`~Walter, Derek; Personalis.Foresight@weil.com; ~Naini, Amir; #ForesightIPRs
`RE: IPR2023-00224, -00317, -00545, -00546 (Foresight Diagnostics Inc. v. Personalis Inc.)
`Monday, August 21, 2023 4:12:06 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`As indicated in the below email, the parties jointly request modification of due dates for
`IPR2023-00224 and -00317 to align with those of later-filed IPR2023-00545 and -00546,
`“provided that the Board . . . find a combined hearing to be beneficial.” As the parties
`recognize, the requested scheduling change entails a “good cause” extension of the one-
`year period for final determination of IPR2023 and -00317. See 35 U.S.C § 316(a)(11).
`Considering the Panel’s workload, the relationship between the involved patents, and the
`extent of the overlapping issues, the proposed modifications do not substantially contribute
`to judicial efficiency nor clearly satisfy the good cause requirement of §316(a)(11).
`Accordingly, we decline to implement the parties’ requested scheduling change.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Krause, Andrew <AKrause@irell.com>
`Sent: Monday, August 14, 2023 2:02 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: ~Walter, Derek <derek.walter@weil.com>; Personalis.Foresight@weil.com; ~Naini, Amir
`<amir@nainipc.com>; #ForesightIPRs <ForesightIPRs@irell.com>
`Subject: RE: IPR2023-00224, -00317, -00545, -00546 (Foresight Diagnostics Inc. v. Personalis Inc.)
`
`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:
`
`I have re-pasted the email below to update the formatting to HTML so that the table is displayed
`properly.
`
`Respectfully,
`Andrew Krause
`
`***
`
`Exhibit 3004
`
`

`

`
`Your Honors:
`
`We write to request guidance from the Board regarding the coordination of the case schedules in
`these related IPRs. The proceedings are currently scheduled on separate tracks, as tabulated below.
`
`
`IPR No.
`2023-00224
`2023-00317
`2023-00545
`2023-00546
`
`Patent No.
`11,384,394
`11,408,033
`11,299,783
`10,450,611
`
`Institution Date
`6/13/23
`6/13/23
`8/8/23
`8/8/23
`
`Current Hearing Date
`3/19/24
`3/19/24
`5/7/24
`5/7/24
`
`
`The parties have met and conferred, and agree that there would be efficiency in coordinating all four
`IPRs on the same schedule given that there are related issues in each set of IPRs, provided that the
`Board would also find a combined hearing to be beneficial. To that end, we respectfully request
`authorization to file a motion to modify Due Date 4 (Request for Oral Argument), Due Date 7 (Reply
`to opposition to motion to exclude), and Due Date 8 (Oral Hearing) in the -00224/-00317 IPRs to
`align those dates with Due Date 4, Due Date 7, and Due Date 8 in the -00545/-00546 proceedings.
`The parties would then work to enter a stipulation aligning the intervening due dates in the
`-00224/-00317 IPRs with the currently scheduled corresponding due dates in the -00545/-00546
`IPRs to coordinate the schedules. In light of the potential efficiencies for the parties and Board
`resulting from these modifications to the schedule of the -00224/-00317 IPRs, the parties agree that
`the Board would have good cause to extend the Final Written Decision deadline in those
`proceedings to 8/8/24 if such motion is granted.
`
`The parties are available for a conference call with the Board after noon ET on 8/15/23 or 8/16/23.
`
`Respectfully,
`Andrew Krause (Counsel for Petitioner), Derek Walter (Counsel for Patent Owner)
`
`From: Krause, Andrew <AKrause@irell.com>
`Sent: Monday, August 14, 2023 10:57 AM
`To: Trials <Trials@uspto.gov>
`Cc: ~Walter, Derek <derek.walter@weil.com>; Personalis.Foresight@weil.com; ~Naini, Amir
`<amir@nainipc.com>; #ForesightIPRs <ForesightIPRs@irell.com>
`Subject: IPR2023-00224, -00317, -00545, -00546 (Foresight Diagnostics Inc. v. Personalis Inc.)
`
`Your Honors:
`
`We write to request guidance from the Board regarding the coordination of the case schedules in
`these related IPRs. The proceedings are currently scheduled on separate tracks, as tabulated below.
`
`
`IPR No.
`2023-00224
`2023-00317
`
`Patent No.
`11,384,394
`11,408,033
`
`Institution Date
`6/13/23
`6/13/23
`
`Current Hearing Date
`3/19/24
`3/19/24
`
`

`

`2023-00545
`2023-00546
`
`11,299,783
`10,450,611
`
`8/8/23
`8/8/23
`
`5/7/24
`5/7/24
`
`
`The parties have met and conferred, and agree that there would be efficiency in coordinating all four
`IPRs on the same schedule given that there are related issues in each set of IPRs, provided that the
`Board would also find a combined hearing to be beneficial. To that end, we respectfully request
`authorization to file a motion to modify Due Date 4 (Request for Oral Argument), Due Date 7 (Reply
`to opposition to motion to exclude), and Due Date 8 (Oral Hearing) in the -00224/-00317 IPRs to
`align those dates with Due Date 4, Due Date 7, and Due Date 8 in the -00545/-00546 proceedings.
`The parties would then work to enter a stipulation aligning the intervening due dates in the
`-00224/-00317 IPRs with the currently scheduled corresponding due dates in the -00545/-00546
`IPRs to coordinate the schedules. In light of the potential efficiencies for the parties and Board
`resulting from these modifications to the schedule of the -00224/-00317 IPRs, the parties agree that
`the Board would have good cause to extend the Final Written Decision deadline in those
`proceedings to 8/8/24 if such motion is granted.
`
`The parties are available for a conference call with the Board after noon ET on 8/15/23 or 8/16/23.
`
`Respectfully,
`Andrew Krause (Counsel for Petitioner), Derek Walter (Counsel for Patent Owner)
`
`
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`
`