Trials
`Frederic Meeker; Trials
`Paul T. Qualey; John Fleming; John R. Hutchins; Joshua Davenport; KFRIESEN@SHB.COM; JMUDD@SHB.COM;
`RDYKAL@SHB.COM; RRECKERS@SHB.COM; SHBTSCOMCASTIPR@SHB.COM
`RE: IPR2024-00321, IPR2024-00322, IPR2024-00323, IPR2024-00324, IPR2024-00325, IPR2024-00326 –
`Request for Authorization for Reply
`Friday, May 17, 2024 2:17:16 PM
`
`From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Counsel,
`
`From the Board –
`
`Petitioner is authorized to file a five page reply on the issues identified in the email below. The reply
`is due five business days from the date of this email. Patent Owner may respond with a five page
`sur-reply due five business days from the filing of Petitioner’s reply.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Frederic Meeker <fmeeker@bannerwitcoff.com>
`Sent: Tuesday, May 14, 2024 9:44 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Paul T. Qualey <PQualey@bannerwitcoff.com>; John Fleming <JFleming@bannerwitcoff.com>;
`John R. Hutchins <JHutchins@bannerwitcoff.com>; Joshua Davenport
`<JDavenport@bannerwitcoff.com>; KFRIESEN@SHB.COM; JMUDD@SHB.COM; RDYKAL@SHB.COM;
`RRECKERS@SHB.COM; SHBTSCOMCASTIPR@SHB.COM
`Subject: IPR2024-00321, IPR2024-00322, IPR2024-00323, IPR2024-00324, IPR2024-00325, IPR2024-
`00326 – Request for Authorization for Reply
`
`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,
`
`Petitioner in the above-identified IPRs, Comcast Cable Communications, LLC,
`seeks authorization to file a short, 5-page reply under 37 C.F.R. § 42.108(c) to
`each of the Patent Owner’s Preliminary Responses in IPR2024-00321,
`IPR2024-00322, IPR2024-00323, IPR2024-00324, IPR2024-00325, and
`IPR2024-00326.
`
`Specifically, Petitioner seeks to address Patent Owner’s arguments in all six
`
`Exhibit 3001
`
`

`

`proceedings concerning the Fintiv factors. Further, Petitioner seeks to address
`Patent Owner’s arguments in IPR2024-00322, IPR-00324, and IPR2024-00326,
`concerning the Becton, Dickinson factors.
`
`Petitioner believes good cause exists for the request, consistent with 37 C.F.R.
`§ 42.108(c). Examples of this good cause include:
`
`
`1. With regard to the Fintiv factors, Petitioner intends to address Judge
`Gilstrap’s practice regarding granting stays after institution;
`similarly, Petitioner intends to address factual and legal
`misrepresentations as to related proceedings, including clarity on
`what claims are asserted and challenged, and the likelihood of
`invalidity being resolved in pretrial.
`
`
`
`2. With regard to the Becton, Dickinson factors, Petitioner believes
`there is good cause to address Patent Owner’s arguments in
`IPR2024-00322, IPR2024-00324, and IPR2024-00326, concerning
`Danciu and Mahajan and representations about these references.
`Danciu was never cited in prosecution and does not qualify as “the
`same or substantially the same prior art or arguments [that]
`previously were presented to the Office” as required under 35 U.S.C.
`§325(d). Further, Danciu was not of record during prosecution in any
`of the patents in dispute, and Petitioner could not have reasonably
`anticipated Respondent would assert §325(d) in view of that
`reference. Petitioner further requests to address misrepresentations
`regarding Mahajan and its role in prosecution, including, for
`example, that Respondent’s argument and cited excerpt in IPR2024-
`00322 fail to show that the examiner’s view of Mahajan was
`maintained following Applicant’s May 9, 2019, Response in a Final
`Rejection dated June 12, 2019. See IPR2024-00322 POPR at 46-47;
`see also IPR2024-00322 Exs. 2001 and 2017.
`
`
`Additionally, Petitioner requests permission to file docket entries from
`Touchstream Techs., Inc. v. Google, LLC, 6-21-cv-00569 (W.D. Tex. Jun. 4,
`2021) cited by the Patent Owner as exhibits for the convenience of the Board.
`Petitioner also requests permission to file the full ’751 Patent prosecution
`history as an exhibit in IPR2024-00322, also for the convenience of the Board.
`
`Petitioner has conferred with Patent Owner on these requests and understands
`Patent Owner’s position to be as follows:
`
`

`

`
`
`Patent Owner does not oppose a Reply limited to the issue of § 325(d)
`arguments pertaining to Danciu (which Patent Owner asserts is only
`relevant to IPR2024-00322, -324, and -326), provided Patent Owner is
`permitted to file a Sur-reply of equal length. Further, with regard to filing
`(i) docket entries from the district court cited by Patent Owner and (ii)
`the complete ’751 prosecution history in IPR2024-00322, Patent Owner
`does not oppose the requests. Patent Owner disagrees, however, that
`anything in its POPRs misrepresents the facts or law pertaining to either
`the Fintiv factors or the Becton, Dickinson factors. Also, Patent Owner
`asserts that the issues presented under Fintiv and § 325(d) regarding
`Mahajan were reasonably anticipated by Petitioner when it prepared and
`filed its Petitions. Patent Owner therefore opposes any request for leave
`to file a Reply that encompasses those issues. To the extent the Board
`grants Petitioner leave to file a Reply, Patent Owner requests leave to file
`a Sur-reply of equal length.
`
`
`The parties are available for a conference call with the Board at the following
`times:
`
`
`1. Tuesday May 14, 12:00-1:30 pm EDT
`2. Wednesday May 15, 12-1:00 pm EDT
`3. Wednesday May 15, 2:30-3:30 pm EDT
`4. Friday May 17 11:00 am to 12:00 pm EDT.
`
`
`Respectfully,
`
`Fred Meeker
`
`
`FREDERIC MEEKER | ATTORNEY
`
`BANNER WITCOFF
`1100 13th Street NW, Suite 1200
`Washington, DC 20005
`
`TEL: 202.824.3116 | MAIN: 202.824.3000
`bannerwitcoff.com | fmeeker@bannerwitcoff.com
`
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