Trials <Trials@USPTO.GOV>
`Monday, June 26, 2023 1:36 PM
`Usman Khan; Amendt, Kevin; Trials
`IPR19688-0196IP1; IPR19688-0196IP2; IPR19688-0197IP1; IPR19688-0197IP2; Michael
`Stanwyck; Jeremy Monaldo; Andy Schwentker; Ben Christoff; Renaud, Michael; Meunier,
`William
`RE: (IPR2023-00228, IPR2023-00229, IPR2023-00319, IPR2023-00320) LGE v
`Constellation 700 and 509 Patent IPRs - Patent Owner Outreach to the Board for
`Authorization to Submit Supplemental Pre-institution Brief
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Dear Counsel,
`
`From the Board –
`
`Patent Owner is authorized to file, in the above referenced cases, any documents from the related district court
`litigation relevant to a Fintiv analysis. These documents should be filed as exhibits. Patent Owner may also file a 1 page
`Fintiv Paper, limited to identifying in bullet-points: the Fintiv factor and a citation to relevant evidence. Thus, the Fintiv
`Paper may not include any argument or discussion of the Fintiv factors, characterizations of the evidence, etc.
`
`All filings authorized by this email are due by Thursday, June 29, 2023.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Usman Khan <khan@fr.com>
`Sent: Friday, June 23, 2023 4:55 PM
`To: Amendt, Kevin <KCAmendt@mintz.com>; Trials <Trials@USPTO.GOV>
`Cc: IPR19688-0196IP1 <IPR19688-0196IP1@fr.com>; IPR19688-0196IP2 <IPR19688-0196IP2@fr.com>; IPR19688-
`0197IP1 <IPR19688-0197IP1@fr.com>; IPR19688-0197IP2 <IPR19688-0197IP2@fr.com>; Michael Stanwyck
`<stanwyck@fr.com>; Jeremy Monaldo <Monaldo@fr.com>; Andy Schwentker <schwentker@fr.com>; Ben Christoff
`<christoff@fr.com>; MTRenaud@mintz.com; WAMeunier@mintz.com
`Subject: RE: (IPR2023-00228, IPR2023-00229, IPR2023-00319, IPR2023-00320) LGE v Constellation 700 and 509 Patent
`IPRs - Patent Owner Outreach to the Board for Authorization to Submit Supplemental Pre-institution Brief
`
`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:
`
`Pursuant to Petitioner’s remarks in Patent Owner’s email request yesterday, Petitioner hereby provides its response to
`Patent Owner’s request for authorization to submit a supplemental pre-institution brief.
`1
`
`Constellation Exhibit 2018
`LG Electronics, Inc. v. Constellation Designs, LLC
`IPR2023-00319
`Page 1 of 4
`
`

`

`Petitioner opposes Patent Owner’s request for at least the following reasons.
`
`(1)
`
`Patent Owner’s request is untimely. Patent Owner has been aware of the change in the trial schedule
`since at least April 25 when the court issued its second amended docket control order. Between April
`25 and June 14 (the date when Patent Owner’s counsel reached out to Petitioner’s counsel), the parties
`reached out to the Board regarding Petitioner’s request for additional briefing and even conducted a
`conference call with the Board on June 1 to discuss the same. Patent Owner never raised this issue
`when approached by Petitioner or during the call with the Board. By waiting nearly two months and
`seeking briefing less than a month prior to the institution deadline, Patent Owner’s conduct has
`prejudiced Petitioner and leaves the parties and the Board inadequate time to consider Patent Owner’s
`request.
`
`Patent Owner attempts to justify its delay by pointing to a June 8 filing in which Petitioner continued to
`assert the same invalidity grounds that were previously included in Petitioner’s expert report submitted
`in March 2023. The June 8 filing did not introduce any changes in the district court proceedings that
`would support Patent Owner’s incorrect assertion that “Petitioner/Defendant LG recently informed
`Patent Owner for the first time (on June 8, 2023) that it intends to assert and rely on at trial prior art
`that falls within the scope of its stipulation despite the new earlier trial date.” In the district court
`proceedings, Patent Owner has yet to disclose its final election of asserted claims and Petitioner has
`until June 28 to identify its final invalidity theories to be presented at trial. Until June 28, the grounds
`and claims that will be at issue in the district court trial remain in flux.
`
`(2) Any request to disregard the Sotera stipulation and encourage the Board to discretionarily deny the
`petitions directly contradicts Director Vidal’s guidelines (see USPTO Memo dated June 21, 2022), which
`explicitly noted that the Board cannot discretionarily deny a petition when Petitioner submits a Sotera
`stipulation. Petitioner’s stipulation is the same as the stipulation in Sotera and Director Vidal’s guidance
`had no exceptions.
`
`If the Board would like to schedule a call to discuss this request, the parties are available at the following times:
`
`1. Monday, June 26 at 10AM-1PM ET
`2. Tuesday, June 27 at 10-11AM, 2-3PM, 430-5PM ET
`
`Sincerely,
`Usman A. Khan, Ph.D., Esq.
`
`Fish & Richardson P.C.
`1000 Maine Ave., SW
`Suite 1000
`Washington, DC 20024
`202.626.6383 direct :: khan@fr.com
`fr.com :: Bio :: LinkedIn
`
`***************************************************************************************************
`*************************
`This email message is for the sole use of the intended recipient(s) and may contain confidential
`and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the
`intended recipient, please contact the sender by reply email and destroy all copies of the original
`message.
`***************************************************************************************************
`*************************
`
`2
`
`Constellation Exhibit 2018
`LG Electronics, Inc. v. Constellation Designs, LLC
`IPR2023-00319
`Page 2 of 4
`
`

`

`From: Amendt, Kevin <KCAmendt@mintz.com>
`Sent: Thursday, June 22, 2023 4:24 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: IPR19688-0196IP1 <IPR19688-0196IP1@fr.com>; IPR19688-0196IP2 <IPR19688-0196IP2@fr.com>; IPR19688-
`0197IP1 <IPR19688-0197IP1@fr.com>; IPR19688-0197IP2 <IPR19688-0197IP2@fr.com>; Michael Stanwyck
`<stanwyck@fr.com>; Jeremy Monaldo <Monaldo@fr.com>; Andy Schwentker <schwentker@fr.com>; Ben Christoff
`<christoff@fr.com>; MTRenaud@mintz.com; WAMeunier@mintz.com; Amendt, Kevin <KCAmendt@mintz.com>
`Subject: (IPR2023-00228, IPR2023-00229, IPR2023-00319, IPR2023-00320) LGE v Constellation 700 and 509 Patent IPRs -
`Patent Owner Outreach to the Board for Authorization to Submit Supplemental Pre-institution Brief
`
`[This email originated outside of F&R.]
`
`Your Honors:
`
`Patent Owner requests authorization to submit a supplemental pre-institution brief in IPR2023-00228, IPR2023-00229,
`IPR2023-00319, and IPR2023-00320 to address Fintiv due to changed circumstances. Patent Owner first reached out to
`Petitioner June 14th about this request. After numerous correspondence and a meet and confer, Petitioner will provide a
`response tomorrow for the reasons explained by Petitioner below.
`
`The request for additional briefing in each IPR is to address Fintiv and is warranted because of changed circumstances.
`The scheduled trial date of the related district court litigation has moved to July 5, 2023, which is before the deadline for
`decisions on institution in these IPRs. The Petitioner’s prior Sotera-style stipulations not to pursue, in the District Court
`proceedings, the grounds asserted in these IPR petitions or any other ground that was or could have been reasonable
`raised by LG in an IPR are thus rendered meaningless by these changed circumstances because Petitioner/Defendant LG
`recently informed Patent Owner for the first time (on June 8, 2023) that it intends to assert and rely on at trial prior art
`that falls within the scope of its stipulation despite the new earlier trial date. (See LG Stipulations, IPR2023-00228,
`EX1012; IPR2023-00229, EX1021; IPR2023-00319, EX1012; IPR2023-00320, EX1021). Accordingly, prior to any
`institution decision in these IPRs, LG will have already presented in the earlier District Court trial the grounds it had
`stipulated it would not be pursuing in that trial, including art specifically relied upon in some of LG’s asserted IPR
`grounds.
`
`Since this change in schedule of the District Court trial that renders Petitioner’s Sotera-style stipulations meaningless
`occurred after Patent Owner submitted its Preliminary Responses (POPR), Patent Owner did not have the opportunity to
`address Fintiv in the POPRs and respectfully requests authorization to submit a 5 page brief in each of IPR2023-00228,
`IPR2023-00229, IPR2023-00319, and IPR2023-00320 to address Fintiv.
`
`Patent Owner’s counsel has conferred with Petitioner’s counsel who provide the remarks in the paragraphs below.
`
`Petitioner’s counsel received an email from Patent Owner’s counsel on June 22 including the contents above
`with an indication that Patent Owner’s counsel intends to send the Board an email less than three hours after
`sending an email to Petitioner’s counsel. The imposed deadline did not allow Petitioner to develop a full
`response to Patent Owner’s email particularly in light of a meet and confer conducted earlier the same day
`between the parties in which Petitioner raised concerns over Patent Owner’s incorrect representations to the
`Board and the untimeliness of Patent Owner’s request. Petitioner had provided an initial response as early as
`June 16 to Patent Owner’s initial email on June 14. Responsive to Petitioner’s email, Patent Owner modified its
`email draft to the Board to include what Petitioner believes is an incorrect characterization of the litigation
`proceedings. Petitioner then responded to Patent Owner’s modified email draft with a request for a meet and
`confer to discuss the incorrect characterization, and the meet and confer was finally conducted today. The
`same day (today) after the meet and confer, Patent Owner emailed Petitioner with a partial draft of this email
`and informing Petitioner that Patent Owner will email the Board by 4 pm EST (less than three hours
`3
`
`Constellation Exhibit 2018
`LG Electronics, Inc. v. Constellation Designs, LLC
`IPR2023-00319
`Page 3 of 4
`
`

`

`later). Consequently, and unless the Board objects, Petitioner will send a responsive email by tomorrow, June
`23, 2023 in which Petitioner provides its position in response to Patent Owner’s request for additional briefing.
`
`Sincerely,
`
`Kevin Amendt
`Member
`
`Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
`One Financial Center, Boston, MA 02111
`+1.617.348.4863
`KCAmendt@mintz.com | Mintz.com
`
`STATEMENT OF CONFIDENTIALITY:
`The information contained in this electronic message and any attachments
`to this message are intended for the exclusive use of the addressee(s)
`and may contain confidential or privileged information. If you are not
`the intended recipient, or the person responsible for delivering the
`email to the intended recipient, be advised you have received this
`message in error and that any use, dissemination, forwarding, printing,
`or copying is strictly prohibited. Please notify the Mintz, Levin, Cohn,
`Ferris, Glovsky and Popeo sender immediately, and destroy all copies
`of this message and any attachments.
`
`***************************************************************************************************
`*************************
`This email message is for the sole use of the intended recipient(s) and may contain confidential
`and privileged information. Any unauthorized use or disclosure is prohibited. If you are not the
`intended recipient, please contact the sender by reply email and destroy all copies of the original
`message.
`***************************************************************************************************
`*************************
`
`4
`
`Constellation Exhibit 2018
`LG Electronics, Inc. v. Constellation Designs, LLC
`IPR2023-00319
`Page 4 of 4
`
`