`Baird, John M.; Trials
`Togail_Counsel@b-clg.com; McPherson, Patrick D.; Candelori, Nicole; Brett Cooper; Robert Auchter; Roshan
`Mansinghani; Michelle Aspen
`RE: Unified Patents v. Togail (IPR2023-00338) - Request for a Petitioner Reply
`Friday, July 7, 2023 8:30:32 AM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`As per the conference on July 6, 2023, between the panel and attorneys for both parties, the parties
`agreed that this proceeding is the first IPR filed against the challenged patent. Based on the
`preceding, the parties further agreed that, at present, there is no serial petition issue under General
`Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB, Sept. 6, 2017)
`(precedential) (“General Plastics”). Accordingly, no additional briefing directed to General Plastics is
`necessary and none is authorized.
`
`Patent Owner Togail raised the issue as to whether Apple Inc. is a real-party-in-interest with
`Petitioner Unified Patents. See Prelim. Resp. 5 (citing Unified Patents, LLC v. Memoryweb LLC,
`IPR2021-01413, Paper 56 (PTAB March 8, 2023) (“Memoryweb”). As was discussed during the call,
`the panel is aware that the Memoryweb decision has been vacated by the Director. That the
`Memoryweb decision of PTAB has been vacated will also be made of record in any Institution
`Decision for this IPR. Petitioner gave no additional reason why it needs to file a preliminary reply.
`Accordingly, no preliminary reply is authorized.
`
`This email thread will be made of record as Exhibit 3001 in this proceeding.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Baird, John M. <JMBaird@duanemorris.com>
`Sent: Friday, June 30, 2023 2:56 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Togail_Counsel@b-clg.com; McPherson, Patrick D. <PDMcPherson@duanemorris.com>;
`Candelori, Nicole <NCandelori@duanemorris.com>; Brett Cooper <bcooper@bc-lawgroup.com>;
`Robert Auchter <robert@auchterlaw.com>; Roshan Mansinghani <roshan@unifiedpatents.com>;
`Michelle Aspen <michelle@unifiedpatents.com>
`Subject: Unified Patents v. Togail (IPR2023-00338) - Request for a Petitioner Reply
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Exhibit 3001
`
`
`
`
`Dear Honorable Members of the Board:
`
`Petitioner requests authorization to file a preliminary reply to respond to the first 11 pages of the
`Patent Owner Preliminary Response in which Patent Owner asks for a discretionary denial under a
`General Plastics analysis that could not have been anticipated, including:
`
` 1. Discretionary denial under General Plastics of the first IPR filed against the challenged patent.
`
` 2. Discretionary denial based on argument and reliance on a Board decision vacated by the director,
`and the applicability of SharkNinja.
`
`Petitioner requests authorization to file a reply not longer than 10 pages, with evidence if necessary,
`and within 10 business days of the Board's authorization.
`
`Patent Owner opposes Petitioner’s request. The parties are available for a conference with the
`Board at the following times, should the Board want to have such a call:
`
`
`Wednesday from 3 pm to 5 pm,
`Thursday from 10 am to 5 pm, or
`Friday from 10 am to 1:30 pm (all times Eastern).
`
`
`Very respectfully,
`
`John M. Baird
`Partner
`
`Duane Morris
`901 New York Ave. NW
`Suite 700 East
`Washington, DC 20001-4795
`P: +1 202 776 7819
`
`JMBaird@duanemorris.com
`www.duanemorris.com
`
`Lead counsel for Petitioner
`
`
`For more information about Duane Morris, please visit http://www.DuaneMorris.com
`
`Confidentiality Notice: This electronic mail transmission is privileged and confidential and is intended only for the review of the party to
`whom it is addressed. If you have received this transmission in error, please immediately return it to the sender. Unintended transmission
`shall not constitute waiver of the attorney-client or any other privilege.
`
`
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