Trials
`Tuesday, April 9, 2024 8:03 AM
`Pepe, Christopher; Trials
`Jim Glass; John McKee; Jason Williams; Quincy Lu; Desai, Anish; Percer, Adrian; Yu, Tom; Ansley,
`Sutton; Sieger, Matthew
`RE: IPR2024-00231 and IPR 2024-00267: Request for Authorization to File Reply to Patent Owner's
`Preliminary Response
`
`Ross, Avelyn
`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Counsel,
`
`From the Board –
`
`Petitioner is authorized to file a five page Preliminary Reply in each case to respond to Patent Owner’s arguments and
`evidence of objective evidence of nonobviousness. Petitioner is also authorized to file the evidence referenced in their
`request for leave. Patent Owner is also authorized to file a five page Sur reply in each case to respond to the arguments
`Petitioner raises in its Preliminary Reply. Petitioner’s Preliminary Reply must be filed no later than 4/16/24 and Patent
`Owner’s Sur reply must be filed no later than 4/23/24.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Pepe, Christopher <Christopher.Pepe@weil.com>
`Sent: Monday, April 8, 2024 3:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jim Glass <jimglass@quinnemanuel.com>; John McKee <johnmckee@quinnemanuel.com>; Jason Williams
`<jasonwilliams@quinnemanuel.com>; Quincy Lu <quincylu@quinnemanuel.com>; Desai, Anish
`<anish.desai@weil.com>; Percer, Adrian <adrian.percer@weil.com>; Yu, Tom <Tom.Yu@weil.com>; Ansley, Sutton
`<sutton.ansley@weil.com>; Sieger, Matthew <Matthew.Sieger@weil.com>
`Subject: IPR2024 00231 and IPR 2024 00267: Request for Authorization to File Reply to Patent Owner's Preliminary
`Response
`
`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,
`
`Petitioners NJOY LLC and NJOY Holdings Inc. respectfully request leave in IPR2024 00231 and IPR 2024 00267 to file a
`five page reply to Patent Owner’s Preliminary Response in each IPR. Specifically, Petitioners seek leave to file a reply to
`address Patent Owner’s secondary considerations arguments. Good cause exists to do so because Patent Owner’s
`arguments reference confidential information subject to an ITC protective order that Petitioner could not have
`addressed in the Petition. Petitioners also seek leave to file two full deposition transcripts that correspond to excerpts
`of deposition transcripts submitted with the Preliminary Response (See Ex. 2025 and Ex. 2026), as well as three exhibits
`to those deposition transcripts. The deposition transcripts and three exhibits will be designated “PROTECTIVE ORDER
`MATERIAL – ATTORNEYS’ EYES ONLY” pursuant to the proposed stipulated Protective Order (Ex. 2101), will be filed
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`

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`“Parties and Board Only” on P TACTS, and Petitioner will file a concurrent motion to seal under the pending proposed
`stipulated Protective Order.
`
`The parties have conferred. Patent Owner does not agree with Petitioner’s position that it could not have addressed
`secondary considerations in the Petition, but to avoid needless dispute, Patent Owner does not oppose Petitioner’s
`request provided that Patent Owner is permitted to submit a five page sur reply within one week of Petitioner
`submitting its Reply. Petitioner does not oppose Patent Owner’s request for a sur reply.
`
`To the extent the Board would like to hold a teleconference concerning Petitioners’ request, the parties will confer and
`provide their availability.
`
`Thank you,
`
`Chris Pepe
`Counsel for Petitioners
`
`Christopher Pepe
`
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, DC 20036
`christopher.pepe@weil.com
`+1 202 682 7153 Direct
`+1 202 857 0940 Fax
`
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`
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