Trials
`O"Brien, David; Trials
`Richard Kamprath; George T. Fishback, Jr.; Ehmke, Andrew S.; Lyle, Kelly Gehrke; Shi, Hong
`RE: Authorization for Replies in IPRs IPR2024-00329, -00330, and -00331
`Tuesday, May 14, 2024 10:16:43 AM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`In response to the May 13, 2024, email from Petitioner’s counsel concerning IPR2024-00329,
`IPR2024-00330, and IPR2024-00330, in each proceeding the Board authorizes (1) Petitioner to file
`within five business days of this email a Preliminary Reply no longer than five pages that addresses
`the issues identified in the May 13 email and (2) Patent Owner to file within ten business days of this
`email a Preliminary Sur-reply no longer than five pages that responds to the Preliminary Reply.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: O'Brien, David <David.OBrien@haynesboone.com>
`Sent: Monday, May 13, 2024 4:58 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Richard Kamprath <rkamprath@McKoolSmith.com>; George T. Fishback, Jr.
`<gfishback@McKoolSmith.com>; Ehmke, Andrew S. <Andy.Ehmke@haynesboone.com>; Lyle, Kelly
`Gehrke <Kelly.Lyle@haynesboone.com>; Shi, Hong <Hong.Shi@haynesboone.com>
`Subject: Authorization for Replies in IPRs IPR2024-00329, -00330, and -00331
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Honorable Board,
`
`Apple respectfully requests authorization from the Board for replies to POPRs recently filed by
`Carbyne Biometrics in the above-identified proceedings. More specifically, Apple requests reply in
`opposition to Carbyne’s advocacy for:
`1. a finding of insufficient motivation to combine and/or no reasonable expectation of
`success, including Carbyne’s premise that the Board should give no probative weight to
`expert testimony notwithstanding its detailed analysis and underlying factual support and its
`premise that Stone is not analogous art.
`
`Apple’s basis for reply on issue (1) includes mischaracterization of law and fact in manner
`unforeseeable at the time of the petition because of Carbyne’s departure from established legal
`principles.
`
`Exhibit 3001
`
`

`

`The parties have met and conferred. Carbyne opposes. More specifically, Carbyne states that it
`“does not oppose an identical five-page reply on Fintiv grounds given that Patent
`Owner’s Fintiv argument is largely the same with respect to each petition. Patent Owner requests a
`five page surreply. Patent Owner opposes a reply on all other grounds.” For avoidance of doubt,
`Apple made a Sotera stipulation in each of the above-identified proceedings on 17-April-2024
`which, per the Director’s Memorandum, is dispositive. The Sotera stipulations have already been
`made of record in filings authorized by the Board. Accordingly, Apple has not requested reply on
`Fintiv issues.
`
`The parties are available for a conference call with the Board immediately after Memorial Day.
`Counsel for Carbyne is unavailable this week due to conflicts, while lead counsel for Apple will be
`out of the country for the entirety of the following week.
`
`
`David O'Brien
`Partner
`david.obrien@haynesboone.com
`
`Haynes and Boone, LLP
`98 San Jacinto Boulevard
`Suite 1500
`Austin, TX 78701
`
`(t) +1 512.867.8457
`
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