`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Wednesday, November 15, 2023 8:19 AM
`Hyun Jin In; Trials
`cbiyer@daignaultiyer.com; kduche@daignaultiyer.com; jason.s.charkow@gmail.com;
`richard.juang@gmail.com; DoDotsLit@daignaultiyer.com; IPR39843-0148IP1; IPR39843-0150IP1;
`IPR39843-0149IP1; PTAB Inbound; AXF-PTAB
`RE: Request for Authorization to Submit Supplemental Information in IPR2023-00621,
`IPR2023-00756, and IPR2023-00701
`
`[This email originated outside of F&R.]
`
`Counsel:
`
`The judge panels respond as follows:
`
`We authorize Petitioner to submit a motion to file supplemental information in each proceeding. We direct the parties’
`attention specifically to 37 C.F.R. 42.123 and to the relevant portions of the Consolidated Trial Practice Guide (“CTPG”)
`(available at https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf) including pages 47–48 and 75. The
`CTPG notes that “[n]ormally, the Board will permit such information to be filed.” CTPG 48. We note that in these
`proceedings we declined to authorize the submission of a revised declaration before institution (see, e.g., IPR2023‐
`00621, Ex. 1020) and that we stated in the Decisions on Institution that this issue might be further explored during the
`proceeding including through cross‐examination of the Petitioner’s declarant (see, e.g., IPR2023‐00621, Paper 9, 23).
`
`Petitioner should submit such a motion on or before November 21, 2023, filing this email as an exhibit and referencing it
`in the motion. Patent Owner should submit any opposition within five business days of the filing of Petitioner’s motion.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Hyun Jin In <in@fr.com>
`Sent: Monday, November 13, 2023 5:27 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: cbiyer@daignaultiyer.com; kduche@daignaultiyer.com; jason.s.charkow@gmail.com; richard.juang@gmail.com;
`DoDotsLit@daignaultiyer.com; IPR39843‐0148IP1 <IPR39843‐0148IP1@fr.com>; IPR39843‐0150IP1 <IPR39843‐
`0150IP1@fr.com>; IPR39843‐0149IP1 <IPR39843‐0149IP1@fr.com>; PTAB Inbound <PTABInbound@fr.com>; AXF‐PTAB
`<AXF‐PTAB@fr.com>
`Subject: Request for Authorization to Submit Supplemental Information in IPR2023‐00621, IPR2023‐00756, and
`IPR2023‐00701
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`1
`
`Exhibit 1026
`Samsung v. DoDots
`IPR2023-00701
`
`
`
`Your Honors,
`
`
`Pursuant to 37 CFR § 42.123, Petitioner hereby requests authorization from the Board to file a motion to submit
`supplemental information in each of IPR2023‐00621, IPR2023‐00756, and IPR2023‐00701.
`
`
`More specifically, Petitioner requests authorization to file a motion to submit a supplemental declaration of Dr. Douglas
`C. Schmidt as supplemental information in each of the above‐noted cases. This declaration provides clarification
`regarding the typographical error in his original declaration where he quoted an earlier version of 37 C.F.R. § 42.100(b)
`when discussing the claim construction standard. For at least that reason, the supplemental declaration is relevant to a
`claim for which trial has been instituted.
`
`
`Petitioner and Patent Owner have met and conferred regarding this request, and Patent Owner opposes the motions to
`submit supplemental information in each of IPR2023‐00621, IPR2023‐00756, and IPR2023‐00701. In opposing, Patent
`Owner has asked that the following remarks be included in this request:
`
`
`Patent Owner DoDots opposes Samsung’s request for at least the following two reasons. First, in its August 14,
`2023 Order, the Board expressly denied the exact same request that Petitioner seeks now – the submission of a
`revised declaration of Dr. Schmidt. The Board’s reasons for denying Samsung’s request in August 2023 continue
`to apply and warrant denial yet again. Second, the supplemental information that Petitioner seeks to submit
`should have and could have been submitted along with Samsung’s preliminary reply. This would have allowed (i)
`the Patent Owner to properly address it in its preliminary sur‐reply; and (ii) the Board to consider it when
`making its institution decision. Samsung’s belated attempt to add now new information to this proceeding is
`prejudicial to DoDots because DoDots has lost the opportunity to respond to this information in opposing
`institution. Likewise, the Board has lost the opportunity to consider this information in making its institution
`decision.
`
`
`
`
`Should the Board desire a call with the parties in connection with this request, the parties will confer and offer times of
`joint availability.
`
`
`Sincerely,
`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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