Trials
`Chandran Iyer; Paul Hart; Trials
`Richard Juang; Ron Daignault; kevin.rongish@eriseip.com; Adam Seitz; PTAB@eriseip.com; Konah Duche; Vivek
`Ramachandran; Christina Canino; Jason Charkow
`RE: IPR2023-00937, -00938, and -00939: Petitioner"s Request for a Preliminary Reply
`Wednesday, October 18, 2023 1:19:17 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`With respect to the parties’ emails of October 16, 2023, we authorize Petitioner in each of IPR2023-
`00937, IPR2023-00938, and IPR2023-00939 to file a three-page preliminary reply limited to
`addressing whether the Slivka application incorporates the appendices in each proceeding, which
`and should be filed within five business days of the Order to follow.
`
`We authorize Patent Owner in each of IPR2023-00937, IPR2023-00938, and IPR2023-00939 to file a
`responsive preliminary sur-reply of three pages in each proceeding, which should be filed within five
`business days of the filing of a preliminary reply in each proceeding.
`
`This email and those of the parties will be entered in the record as Exhibit 3001.
`
`An Order providing further details will follow shortly.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Chandran Iyer <cbiyer@daignaultiyer.com>
`Sent: Monday, October 16, 2023 12:12 PM
`To: Paul Hart <paul.hart@eriseip.com>; Trials <Trials@USPTO.GOV>
`Cc: Richard Juang <rjuang@daignaultiyer.com>; Ron Daignault <rdaignault@daignaultiyer.com>;
`kevin.rongish@eriseip.com; Adam Seitz <adam.seitz@eriseip.com>; PTAB@eriseip.com; Konah
`Duche <kduche@daignaultiyer.com>; Vivek Ramachandran <vramachandran@daignaultiyer.com>;
`Christina Canino <christina.canino@eriseip.com>; Jason Charkow <jcharkow@daignaultiyer.com>
`Subject: Re: IPR2023-00937, -00938, and -00939: Petitioner's Request for a Preliminary Reply
`
`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 falsely represents to this Board that it conferred with DoDots on the requested relief. The
`parties were in the middle of a meet and confer when petitioner unilaterally decided to send its
`
`Exhibit 3001
`
`

`

`email to the Board. DoDots’ counsel specifically noted that any email to the Board on this issue
`should be a joint email in order to give both parties a fair opportunity to frame the dispute precisely.
`Petitioner ignored DoDots’ request and sent its email without giving DoDots a chance to review,
`consent, or set forth its position.
`
`Apple’s petitions explain the reasons it believes the appendices are part of the Slivka prior art
`reference. DoDots’ POPRs explain why Apple is incorrect. In other words, both parties have already
`explained in their respective papers the reasons why the appendices are or are not part of the Slivka
`prior art reference. No additional papers on this issue are needed. For this reason, DoDots does not
`believe that a do-over in the form of a reply should be permitted. If, however, the Board is inclined
`to give Apple an opportunity to file a reply, DoDots requests an opportunity to file a sur-reply.
`
`Respectfully,
`
`
`
`
`Chandran B. Iyer
`Partner
`
`Daignault Iyer LLP
`202.330.1666
`cbiyer@daignaultiyer.com
`daignaultiyer.com
`
`
`From: Paul Hart <paul.hart@eriseip.com>
`Date: Monday, October 16, 2023 at 10:54 AM
`To: Trials <trials@uspto.gov>
`Cc: Richard Juang <rjuang@daignaultiyer.com>, Ron Daignault
`<rdaignault@daignaultiyer.com>, kevin.rongish@eriseip.com <kevin.rongish@eriseip.com>,
`Adam Seitz <adam.seitz@eriseip.com>, PTAB@eriseip.com <PTAB@eriseip.com>, Konah
`Duche <kduche@daignaultiyer.com>, Vivek Ramachandran
`<vramachandran@daignaultiyer.com>, Christina Canino <christina.canino@eriseip.com>,
`Chandran Iyer <cbiyer@daignaultiyer.com>
`Subject: IPR2023-00937, -00938, and -00939: Petitioner's Request for a Preliminary Reply
`
`To the Board,
`
` I
`
` write on behalf of Petitioner Apple Inc. regarding IPR2023-00937, -00938, and -00939. The
`proposed grounds in all three proceedings rely on the Slivka prior art reference and each petition
`cites material contained in appendices that were submitted with the Slivka patent application, but
`that were not printed with the Slivka patent. Patent Owner's (“PO”) Preliminary Responses (“POPR”)
`challenge Petitioner’s reliance on Slivka’s appendices.
`
`

`

`
`Petitioner seeks permission to file a preliminary reply (1) of no more than five pages that is (2)
`limited to PO’s arguments concerning Slivka’s appendices. Petitioner further asks that a deadline for
`the requested preliminary reply be set one week after the Board grants its request.
`
`Petitioner has conferred with PO, and PO objects.
`
`Both parties are available for a conference call during the following windows (all times ET):
`
`10/18 Wednesday: 10:30am-1pm, 3pm-5pm
`10/19 Thursday: 10:30am-12pm; 1pm-5pm
`
`Respectfully,
`
`717 17th St.
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 1400
`Denver, CO 80202
`(main) 913-777-5600
`(direct) 720-689-5441
`(fax) 913-777-5601
`paul.hart@eriseip.com
`www.eriseip.com
`
`
`
`
`
`
`
`
`
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