Trials
`Andrew Patrick
`Karl Renner; Usman Khan; Kenneth Darby; Todd; gxc@jmbm.com; Trials
`RE: Request for Reply briefing in Apple Inc. (Petitioner) v. SpaceTime3D, Inc. (Patent Owner), Case Nos. IPR2023-00242, -00343, -00344
`Thursday, May 4, 2023 1:45:42 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`We grant Petitioner’s request for authorization to file a Reply in each of IPR2023-00242, IPR2023-00343, and IPR2023-00344 directed to Patent Owner’s arguments in its
`Patent Owner’s Preliminary Response (“POPR”) related to discretionary denial of institution under 35 U.S.C. § 325(d) and the claim term “replacing.” We also grant Patent
`Owner permission to file a Sur-reply responding to Petitioner’s Reply.
`
`Petitioner states that Patent Owner indicates “without further explanation that ‘Patent Owner would oppose such a request as there is no ‘good cause’ for the same.’”
`However, after reviewing the records in each of said IPRs, we find that clarification of the parties’ positions on the two matters - discretionary denial of institution under 35
`U.S.C. § 325(d) and the claim term “replacing” – would facilitate the Board’s determination on whether to institute. For that reason, sufficient good cause exists to grant
`Petitioner’s request.
`
`Accordingly:
`
`Petitioner is authorized to file a 10-page Reply in each of IPR2023-00242, IPR2023-00343, and IPR2023-00344 directed to Patent Owner’s arguments in its POPR related to
`discretionary denial of institution under 35 U.S.C. § 325(d) and the claim term “replacing” within 5 business days from the date of this communication.
`
`Patent Owner is authorized to file a 10-page Sur-reply in each of IPR2023-00242, IPR2023-00343, and IPR2023-00344 directed to Petitioner’s Reply within 5 business days
`from the date the Reply is filed.
`
`If there are any questions, please contact the Board.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Andrew Patrick <patrick@fr.com>
`Sent: Tuesday, May 2, 2023 8:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Karl Renner <renner@fr.com>; Usman Khan <khan@fr.com>; Kenneth Darby <kdarby@fr.com>; Todd <todd@fitziplaw.com>; gxc@jmbm.com
`Subject: Request for Reply briefing in Apple Inc. (Petitioner) v. SpaceTime3D, Inc. (Patent Owner), Case Nos. IPR2023-00242, -00343, -00344
`
`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,
`
`Petitioner respectfully requests authorization for briefing in the form of a 10-page Reply to Patent Owner’s Preliminary Response (“POPR”) in each of IPR2023-00242,
`IPR2023-00343, and IPR2023-00344. If Petitioner’s request is granted, Petitioner does not oppose Patent Owner’s submission of equivalent Sur-Replies, and Petitioner
`respectfully submits that no new evidence should accompany either the Replies or Sur-Replies.
`
`If this request is granted, the Replies would address POPR arguments urging discretionary denial of institution under 35 U.S.C. § 325(d), as well POPR arguments related to
`the “replacing” features recited by the challenged claims (e.g., as recited by the ’048 patent’s independent claim 1, “replacing the first and second objects within the 3D
`space with a window within a two-dimensional (2D) space”). Petitioner respectfully submits that good cause for further briefing on these issues exists, at least because
`briefing would clarify the record of each implicated proceeding and aid the Board in deliberations on issues that are potentially dispositive to institution. For example, while
`the petitions preemptively address aspects of Patent Owner’s arguments, further briefing is warranted by Patent Owner’s reliance on implicit constructions related to the
`“replacing” features, and by Patent Owner’s arguments for discretionary denial based on art and arguments not previously addressed by the USPTO in connection with the
`challenged patents. If requested by the Board, Petitioner will provide further explanation of good cause.
`
`In connection with this request, Petitioner proposes the briefing schedule outlined below:
`
`IPR Proceeding
`
`Preliminary Response
`Filed
`
`IPR2023-00242
`
`3/23/23
`
`IPR2023-00343
`
`4/10/23
`
`IPR2023-00344
`
`4/19/23
`
`Institution
`Deadline
`
`6/23/23
`
`7/10/23
`
`7/19/23
`
`Petitioner’s Reply Deadline
`
`Patent Owner’s Sur-Reply Deadline
`
`Within 5 business days of the Board’s
`authorization
`Within 5 business days of the Board’s
`authorization
`Within 5 business days of the Board’s
`authorization
`
`Within 5 business days of Petitioner’s Reply
`
`Within 5 business days of Petitioner’s Reply
`
`Within 5 business days of Petitioner’s Reply
`
`Petitioner and Patent Owner have conferred, and Patent Owner opposes this request. More specifically, counsel for Patent Owner indicated without further explanation
`that “Patent Owner would oppose such a request as there is no ‘good cause’ for the same.”
`
`Should the Board desire a call to discuss this request, the parties will confer and offer times of availability.
`
`Respectfully,
`
`Exhibit 3001
`
`

`

`
`Andrew Patrick
`Counsel for Petitioner
`
`
`
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