`From:
`Sent:
`To:
`Cc:
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Thursday, May 18, 2023 1:01 PM
`Specht, Kara; Trials
`johnw@wsltrial.com; Todd Landis; Michael Fagan; Mark McCarthy; Dynapass-IPR
`RE: IPR2023-00367
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`External email
`
`EXTERNAL Email:
`
`Counsel: The panel authorizes a one-page preliminary reply on the issues of jurisdiction and
`Patent Owner’s application of Xerox as requested by Petitioner. We also authorize Patent
`Owner to file a one-page preliminary sur-reply limited to responding to these
`issues. Petitioner’s preliminary reply is due within five business days of receipt of this email
`authorization and Patent Owner’s sur-reply is due within five business days of filing of
`Petitioner’s preliminary reply. Petitioner should file a copy of this email as an Exhibit in this
`proceeding.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703‐756‐1288
`
`From: Specht, Kara <Kara.Specht@finnegan.com>
`Sent: Wednesday, May 17, 2023 11:39 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: johnw@wsltrial.com; Todd Landis <tlandis@wsltrial.com>; Michael Fagan <mfagan@wsltrial.com>; Mark McCarthy
`<mmccarthy@wsltrial.com>; Dynapass‐IPR <Dynapass‐IPR@finnegan.com>
`Subject: IPR2023‐00367
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`Dear Board ‐
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`Page 1 of 2
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`BANK OF AMERICA ET AL. EXHIBIT 1034
`BANK OF AMERICA ET AL. v. DYNAPASS
`IPR2023-00367
`
`
`
`Petitioners in IPR2023‐00367 request a one‐page pre‐institution reply on the issues of jurisdiction and Patent Owner’s
`application of Xerox Corp., et al. v. Bytemark, Inc., No. IPR2022‐00624. Patent Owner does not oppose a one‐page reply
`on the issue of jurisdiction but does oppose additional briefing on Xerox.
`
`
`Although unopposed, good cause exists to address jurisdiction because of Patent Owner’s direct contradiction of Apple,
`Inc. v. Gesture Tech. Partners, LLC, IPR2021‐00922, Paper 10 (Nov. 29, 2021) (finding jurisdiction over an IPR filed on an
`expired patent) was unforeseeable. Petitioners request a reply to address the Board’s reasoning in Apple v. Gesture
`Tech.
`
`
`Patent Owner argues that under Xerox a declaration is entitled to little weight if it restates the same supporting
`evidence and reasoning as the petition. Paper 10 at 17‐18 (“declaration is entitled to little weight when it contains an
`exact restatement of the petition’s arguments without additional supporting evidence or reasoning“). This is an
`unforeseeable expansion of the actual holding from Xerox, which held that a declaration is entitled to little weight if it is
`conclusory and unsupported with evidence and explanation. Xerox Corp., et al. v. Bytemark, Inc., No. IPR2022‐00624,
`Paper 9 at 15 (August 24, 2022) (precedential) (“cited declaration testimony is conclusory and unsupported, adds little to
`the conclusory assertion for which it is offered to support, and is entitled to little weight”). Petitioners request a reply to
`address the proper holding from Xerox.
`
`If granted, Petitioners will not oppose a sur‐reply by Patent Owner of equal length, limited to responding to the
`arguments made in reply.
`
`
`Petitioners are available for a call with the Board at the Board’s convenience this week. Patent Owner indicated it is
`available for a call with the Board Thursday of this week.
`
`
`Best regards,
`
`
`Kara Specht
`Counsel for Petitioners
`
`
`Kara Specht
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`271 17th Street, NW, Suite 1400, Atlanta, GA 30363-6209
`404.653.6481 | fax 404.653.6444 | kara.specht@finnegan.com | bio | www.finnegan.com
`
`
`
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`Page 2 of 2
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