Etters, Brittany Nicole
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Monday, July 10, 2023 9:38 AM
`McCraw, Clayton
`Bonner, Amanda Streff; mchu@mwe.com; dcarsten@mwe.com; ibrooks@mwe.com;
`aburrowbridge@mwe.com; Pleune, Ben; Trials
`RE: Nespresso USA, Inc. v. K-fee System GmbH, IPR2023-00485, IPR2023-00502
`
`CAUTION: External Email - Only click on contents you know are safe.
`Counsel:
`
`From the Board –
`
`Petitioner is authorized to file a five-page reply in each proceeding no later than July 17, 2023. Patent Owner is
`authorized to file a five-page sur-reply in each proceeding no later than July 24, 2023. Petitioner shall limit its reply to
`those arguments and evidence that it contends are both new and could not have been foreseen, and Petitioner shall
`include in any reply a clear statement detailing specific reasons why any allegedly “new argument not in the record at
`the time of filing the Petitions” could not have been foreseen and addressed in the Petition. Petitioner also shall enter a
`copy of this email authorization as an exhibit to each reply. No other new evidence may accompany any brief authorized
`by this email. No conference call is necessary at this time.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: McCraw, Clayton <CMcCraw@mayerbrown.com>
`Sent: Thursday, July 6, 2023 5:18 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Bonner, Amanda Streff <ASBonner@mayerbrown.com>; mchu@mwe.com; dcarsten@mwe.com;
`ibrooks@mwe.com; aburrowbridge@mwe.com; Pleune, Ben <Ben.Pleune@alston.com>
`Subject: Nespresso USA, Inc. v. K-fee System GmbH, IPR2023-00485, IPR2023-00502
`
`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:
`
`Petitioner Nespresso USA, Inc. writes requesting leave under 37 C.F.R. §42.108(c) to file a reply to Patent Owner’s Preliminary
`Response (Paper 6) in each of the above-referenced IPRs. Petitioner specifically seeks leave to reply to:
`
`1. Patent Owner’s arguments concerning claim construction and related district court litigation, which Petitioner
`contends includes new argument not in the record at the time of filing the Petitions;
`
`2. Patent Owner’s arguments under §325(d), which Petitioner contends includes new argument not in the record at
`the time of filing the Petitions; and
`
`1
`
`IPR2023-00485
`Nespresso USA, Inc. Ex. 1065
`Page 1 of 2
`
`

`

`3. Patent Owner’s argument regarding priority, and declarations used to support priority, which Petitioner contends
`includes new argument not in the record at the time of filing the Petitions.
`
`Petitioner believes there is good cause for this request.
`
`The parties have conferred, and counsel for Patent Owner has indicated it opposes Petitioner’s requested reply briefs. If
`needed, counsel for both parties are available for a teleconference with the Board on Monday, July 10 between 2-4PM ET
`and Tuesday, July 11 between 11AM-12PM ET.
`
`Sincerely,
`
`B. Clayton McCraw
`Partner
`Mayer Brown LLP
`1221 Avenue of the Americas
`New York, NY 10020-1001 United States of America
`T +1 212 506 2649
`mayerbrown.com
`
`
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`2
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`IPR2023-00485
`Nespresso USA, Inc. Ex. 1065
`Page 2 of 2
`
`