`
`FW: Board Authorization re IPR2023-00621, IPR2023-00756, and IPR2023-00701
`
`From: Hyun Jin In <in@fr.com>
`Sent: Tuesday, August 8, 2023 10:58 PM
`To: Konah Duche <kduche@daignaultiyer.com>; jason.s.charkow@gmail.com; richard.juang@gmail.com; Chandran Iyer
`<cbiyer@daignaultiyer.com>
`Cc: DoDotsLit <DoDotsLit@daignaultiyer.com>; IPR39843‐0148IP1 <IPR39843‐0148IP1@fr.com>; IPR39843‐0150IP1
`<IPR39843‐0150IP1@fr.com>; PTAB Inbound <PTABInbound@fr.com>; AXF‐PTAB <AXF‐PTAB@fr.com>
`Subject: Board Authorization re IPR2023‐00621, IPR2023‐00756, and IPR2023‐00701
`
`Counsel,
`
`Petitioner plans to request Board authorization for a Preliminary Reply to DoDots’ recent POPRs in IPR2023‐00621 and
`IPR2023‐00756. Petitioner also plans to request authorization in IPR2023‐00621, IPR2023‐00756, and IPR2023‐00701 to
`file a corrected expert declaration. A draft email to the Board is provided below. Please advise whether DoDots
`opposes this request and revise the list of available conference call times with the Board in case needed.
`
`A response is kindly requested by COB on Wednesday, August 9.
`
`Regards,
`Hyun Jin In
`Counsel for Petitioner
`
`===============================================
`
`Your Honors,
`
`In IPR2023‐00621 and IPR2023‐00756, Petitioner requests leave to file a five‐page reply to the Patent Owner Preliminary
`Response (POPR) pursuant to 37 CFR 42.108(c). Petitioner seeks to respond to Patent Owner’s arguments regarding the
`claim construction standard noted in the expert declaration (Exhibit 1003), the alleged inconsistent means‐plus‐function
`treatment of claims in the co‐pending litigation, and Fintiv considerations. Good cause exists for the replies. For
`example, (i) Petitioner did not appreciate the typographical error in the expert declaration concerning 37 CFR
`§42.100(b), (ii) the parties submitted updated claim construction pleadings in the co‐pending litigation subsequent to
`the filing of these petitions, and (iii) good cause exists to allow Petitioner to address Fintiv in light of Patent Owner’s
`arguments in the POPR and the current state of the litigation, which is different than the state of the litigation at the
`time of petition filing.
`
`Additionally, in IPR2023‐00621, IPR2023‐00756, and IPR2023‐00701, with regard to the claim construction standard
`noted in the expert declaration, Petitioner requests authorization to submit a revised declaration with an updated
`construction standard to allow Petitioner to correct the clerical error in the declaration as per 37 CFR §42.104(c). The
`Petition advocated for the correct claim construction standard, and the claim constructions discussed in the expert
`declaration were consistent with the correct claim construction standard. Thus, for at least these reasons, good cause
`exists to allow Petitioner to correct the typographical error included in the expert declarations.
`
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`
`
`The parties have conferred. Patent Owner opposes/does not oppose Petitioner’s request. If the Board grants
`Petitioner’s request, Patent Owner requests authorization to file a sur‐reply of equal length. Petitioner does not oppose
`Patent Owner’s request for a sur‐reply.
`
`
`Conference Call Availability
`While the parties do not believe a conference call will be necessary, the parties are available if needed at the following
`times:
` TBD ‐ Wednesday, 8/XX: YYam‐YYpm ET
` TBD ‐ Thursday, 8/XX: YYam‐YYpm ET
`
`
`
`Regards,
`Hyun Jin In
`Counsel for Petitioner
`
`
`Hyun Jin (HJ) In, Ph.D. :: Principal :: Fish & Richardson P.C.
`1000 Maine Ave SW, Washington, D.C. 20024
`+1 202 626 7765 :: in@fr.com
`fr.com :: Bio :: LinkedIn
`
`
`
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