Adam Fitzgerald
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Thursday, March 21, 2024 12:35 PM
`John Wittenzellner; Trials
`alexander.stein@morganlewis.com; Hsu-Hoffman, Ahren C.;
`austin.zuck@morganlewis.com; IPR Dynapass WSL
`RE: IPR2024-00283 | Request for Disclosure of Information Relevant to General Plastic
`Factors
`
`[EXTERNAL EMAIL]
`
`Counsel,
`
`The panel authorizes Patent Owner to file a Motion for Additional Discovery limited to the issue of whether Petitioner
`has ever been a direct or indirect member of Unified Patents. The Motion is limited to no more than 5 pages and is due
`by close of business on March 29th. Petitioner is authorized to file an Opposition to the Motion. The Opposition is also
`limited to 5 pages in length and is due by close of business on April 5th. Patent Owner must file a copy of this email as
`authorization for its Motion.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: John Wittenzellner <johnw@wsltrial.com>
`Sent: Wednesday, March 20, 2024 1:00 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: alexander.stein@morganlewis.com; Hsu-Hoffman, Ahren C. <ahren.hsu-hoffman@morganlewis.com>;
`austin.zuck@morganlewis.com; IPR Dynapass WSL <iprdynapasswsl@wsltrial.com>
`Subject: Re: IPR2024-00283 | Request for Disclosure of Information Relevant to General Plastic Factors
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`To the Board:
`
`
`Counsel for Patent Owner and Petitioner conducted a telephonic meet and confer on March 11 to discuss Patent
`Owner’s request that Petitioner identify whether it is or has ever been a direct or indirect member
`of Unified Patents. The parties have reached an impasse because Petitioner contends that it is not required to disclose
`that information and that the Board does not have authority to order Petitioner to provide that information to Patent
`Owner.
`
`
`Patent Owner contends that identification of whether Petitioner has ever been a direct or indirect member
`of Unified Patents (i.e., whether there is a relationship between Petitioner and Unified Patents) is highly relevant to at
`least the first factor of General Plastic because Unified Patents filed a petition for inter partes review of the same patent
`subject to this proceeding (IPR2023-00425), and Petitioner filed its Petition eight months afterthe Unified Petition, as
`well as two months after the Board issued its Institution Decision in the Unified IPR (IPR2023-00425). See Valve Corp. v.
`1
`
`Ex. 2001, p. 1
`Amazon.com, Inc. v. Dynapass IP Holdings LLC, IPR2024-00283
`
`

`

`Electronic Scripting Products, Inc., IPR2019-00062, -00063, -00084, Paper 11 at 2 (P.T.A.B. Apr. 2, 2019) (“However, our
`application of the General Plastic factors is not limited solely to instances when multiple petitions are filed by the same
`petitioner. Rather, when different petitioners challenge the same patent, we consider any relationship between those
`petitioners when weighing the General Plastic factors.”). Because the requested discovery regarding the relationship
`between Petitioner and Unified Patents pertains to the General Plastic analysis, pre-institution discovery is
`necessary. Contrary to Petitioner’s position, the Board has discretion to grant pre-institution discovery. See, e.g., Clear-
`Vu Lighting LLC v. University of Strathclyde, IPR2019-00588, -00747, Paper 13, pp. 12-13 (P.T.A.B. Apr. 19, 2019)
`(granting request for pre-institution additional discovery); see also 85 Fed. Reg. 79125 (Dec. 9, 2020) (“Moreover,
`consistent with existing practice, limited pre-institution discovery may be granted at the discretion of the Board.”).
`
`
`Patent Owner respectfully requests that the Board grant its request for pre-institution additional discovery on the
`narrow question of whether Petitioner is or has ever been a direct or indirect member of Unified Patents. Alternatively,
`Patent Owner respectfully requests authorization to file a motion for pre-institution additional discovery on the same
`question. Patent Owner is available for a conference call with the Board any day this week, at the Board’s convenience.
`
`Best regards,
`John
`
`
`John Wittenzellner
`Williams Simons & Landis PLLC
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`Direct: 512.543.1373
`
`
`
`
`
`
`
`From: John Wittenzellner <johnw@wsltrial.com>
`Date: Wednesday, March 6, 2024 at 12:29 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: alexander.stein@morganlewis.com <alexander.stein@morganlewis.com>, Hsu-Hoffman, Ahren C.
`<ahren.hsu-hoffman@morganlewis.com>, austin.zuck@morganlewis.com
`<austin.zuck@morganlewis.com>, IPR Dynapass WSL <iprdynapasswsl@wsltrial.com>
`Subject: Re: IPR2024-00283 | Request for Disclosure of Information Relevant to General Plastic Factors
`
`Good morning. Patent Owner and Petitioner had previously discussed Patent Owner’s request via email (that
`correspondence was attached to our original email to the Board). The parties are schedule to meet and confer by
`telephone on March 11. We will apprise the Board of the outcome of that meet and confer.
`
`
`Please let me know if any additional information would be helpful.
`
`
`Best regards,
`John Wittenzellner
`
`
`From: Trials <Trials@USPTO.GOV>
`Date: Thursday, February 22, 2024 at 2:35 PM
`To: John Wittenzellner <johnw@wsltrial.com>, Trials <Trials@USPTO.GOV>
`Cc: alexander.stein@morganlewis.com <alexander.stein@morganlewis.com>, Hsu-Hoffman, Ahren C.
`2
`
`Ex. 2001, p. 2
`Amazon.com, Inc. v. Dynapass IP Holdings LLC, IPR2024-00283
`
`

`

`<ahren.hsu-hoffman@morganlewis.com>, austin.zuck@morganlewis.com
`<austin.zuck@morganlewis.com>, IPR Dynapass WSL <iprdynapasswsl@wsltrial.com>
`Subject: RE: IPR2024-00283 | Request for Disclosure of Information Relevant to General Plastic Factors
`
`[EXTERNAL EMAIL]
`
`
`Counsel,
`
`
`From the Board –
`
`It is unclear what relief Patent Owner is requesting. Further, it is unclear if Petitioner is aware of Patent Owner’s
`request. Patent Owner and Petitioner should meet and confer, and if they cannot reach an agreement, request a
`conference call with the Panel. The Panel is unavailable until March 5th and has limited availability for the remainder of
`that week.
`
`
`Regards,
`
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`
`From: John Wittenzellner <johnw@wsltrial.com>
`Sent: Tuesday, February 20, 2024 4:23 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: alexander.stein@morganlewis.com; Hsu-Hoffman, Ahren C. <ahren.hsu-hoffman@morganlewis.com>;
`austin.zuck@morganlewis.com; IPR Dynapass WSL <iprdynapasswsl@wsltrial.com>
`Subject: IPR2024-00283 | Request for Disclosure of Information Relevant to General Plastic Factors
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`
`To the Board:
`
`I wrote on Behalf of Patent Owner in the above-referenced inter partes review proceeding. Patent Owner seeks
`information regarding whether Petitioner is or has ever been a direct or indirect member of Unified Patents. Unified
`Patents filed a petition for inter partes review, which is currently pending, of the same patent subject to this
`proceeding. Whether Petitioner is or has ever been a direct or indirect member of Unified Patents is highly relevant to
`at least the first factor of General Plastic. See Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, -00063, -
`00084, Paper 11 at 2 (P.T.A.B. Apr. 2, 2019) (“However, our application of the General Plastic factors is not limited solely
`to instances when multiple petitions are filed by the same petitioner. Rather, when different petitioners challenge the
`same patent, we consider any relationship between those petitioners when weighing the General Plastic factors.”).
`
`
`Patent Owner has been seeking this information since January 2. Unfortunately, however, Petitioner has refused to
`provide the requested information. In addition, Patent Owner has even refused to provide its availability for a call with
`the Board, despite multiple requests by Patent Owner over the past two weeks (correspondence attached).
`
`
`Patent Owner is available anytime Wednesday or Friday of this week, at the Board’s convenience.
`
`
`Best regards,
`John
`
`
`3
`
`Ex. 2001, p. 3
`Amazon.com, Inc. v. Dynapass IP Holdings LLC, IPR2024-00283
`
`

`

`John Wittenzellner
`Williams Simons & Landis PLLC
`1735 Market Street, Suite A #453
`Philadelphia, PA 19103
`Direct: 512.543.1373
`
`
`
`
`
`
`
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`CONFIDENTIALITY NOTICE: The information in this email may be confidential and/or privileged. This email is intended to
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`and any attachments or the information contained herein is prohibited. If you have received this email in error, please
`immediately notify the sender by return email and delete this email from your system. Thank You.
`
`4
`
`Ex. 2001, p. 4
`Amazon.com, Inc. v. Dynapass IP Holdings LLC, IPR2024-00283
`
`