From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Kaiser, Jessica (Perkins Coie); Trials
`Jason Charkow; Chou, Anita (Perkins Coie); Ron Daignault; Chandran Iyer; Scott Samay; Stephanie Mandir;
`PerkinsServiceMediatek-ParkerVisionIPRs@perkinscoie.com; PV; kaiser-ptab@perkinscoie.com
`RE: IPR2024-00150: Authorization for Preliminary Reply
`Wednesday, March 13, 2024 8:48:31 AM
`
`Counsel,
`
`From the Board -
`
`
`1. Petitioner is free to provide Patent Owner with a Sotera stipulation and file it with the Board
`as a separate exhibit. If Petitioner serves and files a Sotera stipulation, the Board does not
`need further briefing on the Fintiv factors for discretionary denial. See Katherine K. Vidal,
`Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District
`Court Litigation (June 21, 2022); available at
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_ai
`a_parallel_district_court_litigation_memo_20220621_.pdf (“[T]he PTAB will not
`discretionarily deny institution of an IPR or PGR in view of parallel district court litigation
`where a petitioner stipulates not to pursue in a parallel district court proceeding the same
`grounds as in the petition or any grounds that could have reasonably been raised in the
`petition.”).
`
`2. If Petitioner is unwilling to provide a Sotera stipulation, Petitioner is authorized to file a five-
`page preliminary reply by March 20, narrowly tailored to address the Fintiv factors for
`discretionary denial. In response, Patent Owner is authorized to file a five-page preliminary
`sur-reply by March 27, addressing the same.
`
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Kaiser, Jessica (Perkins Coie) <JKaiser@perkinscoie.com>
`Sent: Tuesday, March 12, 2024 3:25 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jason Charkow <jcharkow@daignaultiyer.com>; Chou, Anita (Perkins Coie)
`<AChou@perkinscoie.com>; Ron Daignault <rdaignault@daignaultiyer.com>; Chandran Iyer
`<cbiyer@daignaultiyer.com>; Scott Samay <ssamay@daignaultiyer.com>; Stephanie Mandir
`<smandir@daignaultiyer.com>; PerkinsServiceMediatek-ParkerVisionIPRs@perkinscoie.com; PV
`<PVLit@daignaultiyer.com>; kaiser-ptab@perkinscoie.com
`Subject: IPR2024-00150: Authorization for 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.
`
`

`

`
`Dear Honorable Board,
`
`Petitioner requests authorization to file a preliminary reply in the above-
`referenced case, limited to the Fintiv issues raised in the preliminary response.
` Good cause exists for a preliminary reply because, for example, Petitioner
`could not have addressed in the Petition the district court scheduling order that
`was recently entered on February 21, 2024. Petitioner seeks 5 pages for its
`preliminary reply and to file it within one week of receiving authorization.
`Petitioner does not oppose Patent Owner being authorized to file a preliminary
`sur-reply of equal length to be filed within one week of the preliminary reply
`being filed and limited to the issues raised in the preliminary reply.
`
`Petitioner has conferred with Patent Owner, and Patent Owner opposes this
`request.
`
`If the Board wishes to have a conference call, the parties can confer and
`propose times of mutual availability.
`
`Best regards,
`
`Jessica Kaiser | Perkins Coie LLP
`PARTNER
`1900 Sixteenth Street
`Denver, Colorado 80202-5255
`D. +1.303.454.2907
`E. JKaiser@perkinscoie.com
`
`
`
`NOTICE: This communication may contain privileged or other confidential information. If you have received it in error, please advise the
`sender by reply email and immediately delete the message and any attachments without copying or disclosing the contents. Thank you.
`
`