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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`MICROSOFT CORPORATION,
`HP INC., DELL INC., DELL TECHNOLOGIES INC.,
`ASUSTEK COMPUTER INC., ASUS GLOBAL PTE. LTD.,
`Petitioners,
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`v.
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`LITL LLC,
`Patent Owner.
`_____________
`
`Case No. IPR2024-00457
`Patent No. 9,880,715
`_____________
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`NOTICE OF STIPULATION
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`The parties submit this stipulation pursuant to the Board’s request that the
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`parties do so in the Board’s email dated June 25, 2024, which is attached as Exhibit
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`A.
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`The parties to this IPR2024-00457 are the same as in IPR2024-00456. In
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`IPR2024-00456, Patent Owner argued in its Patent Owner Preliminary Response
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`(“POPR”) that the petition is time barred because Petitioner Microsoft is in privity
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`with Lenovo. Paper No. 11 (Patent Owner’s Preliminary Response) at 4-21. At
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`Petitioners’ request, the Board authorized additional briefing on that issue, and that
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`briefing has been completed. See Paper No. 15 (Petitioners’ Preliminary Reply)
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`and Paper No. 18 (Patent Owner’s Preliminary Sur-Reply) (together, arguments
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`regarding the privity time bar issue in Paper Nos. 11, 15, and 18 in IPR2024-00456
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`are referred to herein as “Privity Briefing”).
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`In this IPR2024-00457, Patent Owner similarly argued in its POPR that the
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`petition is time barred because Petitioner Microsoft is in privity with Lenovo.
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`Paper No. 11 at 2-13. The parties stipulate with respect to the privity time bar issue
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`that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so
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`that any decision the Board reaches resolving the privity time bar issue in
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`IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457
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`in the same manner. To the extent the Board does not reach a decision on the
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`privity time bar issue in IPR2024-00456, the parties stipulate that the Board may
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`rely on the Privity Briefing in IPR2024-00456 in deciding the privity time bar issue
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`in this IPR2024-00457.
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`Respectfully submitted,
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`
`/Jessica Kaiser/
`Jessica Kaiser, Reg. No: 58,937
`PERKINS COIE LLP
`1900 Sixteenth Street, Suite 1400
`Denver, CO 80202-5255
`Tel: (303) 291-2300
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`Counsel for Petitioners
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`July 1, 2024
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`/Gerald B. Hrycyszyn/
`Gerald B. Hrycyszyn, Reg. No. 50,474
`WOLF, GREENFIELD & SACKS, P.C
`600 Atlantic Avenue
`Boston, MA 02210
`Tel: (617) 646-8000
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`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on July 1, 2024, I will cause a copy of the foregoing document,
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`including any exhibits filed therewith, to be served via electronic mail, as
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`previously consented to by Petitioner, upon the following:
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`kaiser-ptab@perkinscoie.com
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`Jessica Kaiser
`Christina McCullough McCullough-ptab@perkinscoie.com
`Kyle Canavera
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`Canavera-ptab@perkinscoie.com
`Tyler Knox
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`Knox-ptab@perkinscoie.com.
`Andrew Ohlert
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`AOhlert@perkinscoie.com
`James L. Day
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`jday@fbm.com
`Daniel Callaway
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`dcallaway@fbm.com
`James Heintz
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`Jim.Heintz@us.dlapiper.com
`Raymond K. Chan
`Raymond.Chan@procopio.com
`Microsoft-LiTL-IPR@perkinscoie.com
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`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`Date: June 12, 2024
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`EXHIBIT A
`EXHIBIT A
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`Trials
`Kaiser, Jessica (Perkins Coie); Trials
`Hrycyszyn, Gerald B.; Canavera, Kyle Ryan (Perkins Coie); kaiser-ptab@perkinscoie.com; mccullough-
`ptab@perkinscoie.com; Canavera-ptab@perkinscoie.com; knox-ptab@perkinscoie.com; Ohlert, Andrew (Perkins
`Coie); Microsoft-LiTL-IPR@perkinscoie.com; jday@fbm.com; dcallaway@fbm.com; jim.heintz@dlapiper.com;
`PTAB Rich Giunta; Albert, Michael; Rutt, Eric; Nieberg, Gregory S.; CMarando@perkinscoie.com
`RE: Microsoft v. LiTL, IPR2024-00457 - Request for Authorization for Preliminary Reply
`Tuesday, June 25, 2024 11:28:53 AM
`
`From:
`To:
`Cc:
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`Subject:
`Date:
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`Counsel:
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`The panel will accept the parties’ proposed stipulation that the outcome on the privity issue in
`IPR2024-00456 will also apply to this proceeding. Such a stipulation would allow efficiency of Board
`resources. Please file a stipulation in the record.
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`With regard to 325(d), the panel determines that additional briefing on the issue would be helpful.
`Petitioner may file a 10 page reply within ten days of this authorization addressing only the Section
`325(d) issues that the Patent Owner’s preliminary response raised. Patent Owner may file a 10 page
`sur-reply within ten days of Petitioner’s reply. Petitioner should include this authorizing e-mail as an
`exhibit to the reply brief.
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`Regards,
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`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Kaiser, Jessica (Perkins Coie) <JKaiser@perkinscoie.com>
`Sent: Monday, June 24, 2024 5:12 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Gerald Hrycyszyn <Gerald.Hrycyszyn@WolfGreenfield.com>; Canavera, Kyle Ryan (Perkins Coie)
`<KCanavera@perkinscoie.com>; kaiser-ptab@perkinscoie.com; mccullough-ptab@perkinscoie.com;
`Canavera-ptab@perkinscoie.com; knox-ptab@perkinscoie.com; Ohlert, Andrew (Perkins Coie)
`<AOhlert@perkinscoie.com>; Microsoft-LiTL-IPR@perkinscoie.com; jday@fbm.com;
`dcallaway@fbm.com; jim.heintz@dlapiper.com; RGiunta-PTAB@WolfGreenfield.com; Michael
`Albert <Michael.Albert@WolfGreenfield.com>; Eric Rutt <Eric.Rutt@WolfGreenfield.com>;
`Gregory.Nieberg@WolfGreenfield.com; CMarando@perkinscoie.com
`Subject: Microsoft v. LiTL, IPR2024-00457 - Request for Authorization for Preliminary Reply
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`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
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`Dear Honorable Board,
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`Petitioners respectfully request authorization to file a preliminary reply limited to the issues of
`privity (POPR, 2–13) (to the extent the Board prefers briefing over the parties’ proposed stipulation
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`on privity explained below) and discretionary denial under 35 USC § 325(d) (POPR, 17–31). Good
`cause exists for a preliminary reply because, for example, Petitioners could not have anticipated (1)
`the privity arguments Patent Owner would make, particularly when Microsoft explained in the
`Petition that Lenovo did not request indemnity for the patent at issue in this proceeding (Pet., 11),
`and (2) Patent Owner’s characterization of the prior art used in previous challenges to the ’715
`Patent by a different entity, particularly when Microsoft explained in the Petition that none of the
`same or substantially the same art or arguments were previously presented to the Office for
`consideration (Pet., 14-15).
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`To avoid including unnecessary argument in this email to the Board, Petitioners do not detail here
`the specific unanticipated privity and § 325(d) arguments or the merits of them, but Petitioners can
`discuss further on a conference call if the Board deems additional detail necessary to determine
`whether to authorize a preliminary reply.
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`Petitioners note that the Board authorized a 10-page preliminary reply in IPR2024-00456 to address
`a similar privity issue and a 10-page preliminary reply in IPR2024-00458 to address relevance of the
`’715 Patent proceedings. Both of those issues are implicated here (with the prior ’715 proceedings
`now discussed in the context of Section 325(d)).
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`As to privity, if the Board prefers, the parties have conferred and are willing to stipulate that the
`outcome on privity in IPR2024-00456 will also apply to this proceeding. Under this approach, no
`further briefing on privity would be necessary. Alternatively, if the Board prefers additional briefing
`on privity in this proceeding, Petitioners seek 10 pages to address privity in a preliminary reply and
`do not oppose Patent Owner being authorized the same number of pages as to this issue in a
`preliminary sur-reply. Patent Owner opposes Petitioners’ request for briefing on the privity issue
`because another round of briefing on the privity issue is unnecessary given that the facts and issues
`are the same as in the IPR2024-00456 proceeding where briefing on the privity issue is complete,
`and given that the parties have agreed to stipulate that the outcome on privity in IPR2024-00456 will
`apply to this proceeding. Patent Owner believes it would be a waste of resources for the parties and
`the Board to have another round of duplicative briefing, which would require the filing of sealed and
`public/redacted versions of Petitioners’ reply and Patent Owner’s surreply as well as motions to seal
`both briefs.
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`As to 325(d), Petitioners seek 10 pages to address Section 325(d) in this proceeding (the same
`number of pages the Board authorized in IPR2024-00458 to address the relevance of the prior ’715
`patent proceedings) and do not oppose Patent Owner being authorized the same number of pages
`as to this issue in a preliminary sur-reply. Patent Owner opposes Petitioners’ request as to Section
`325(d) because, according to Patent Owner, there is no good cause for Petitioners to belatedly seek
`to meet their burden of demonstrating that “substantially the same” art and arguments were not
`previously presented to the Office during the prior reexamination of the ’715 Patent. According to
`Patent Owner, Petitioners should have addressed this in the Petition, which never addresses the
`prior art and arguments presented to the Office during the reexamination.
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`In sum:
`If the Board agrees the privity issue will be governed by the result on that issue in the -456
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`matter without additional privity briefing in this proceeding, Petitioners seek 10 pages for
`their preliminary reply limited to Section 325(d) and to file it within two weeks of receiving
`authorization. Petitioners do not oppose Patent Owner being authorized to file a preliminary
`sur-reply of equal length to be filed within two weeks of the preliminary reply being filed and
`limited to the issue raised in the preliminary reply. Patent Owner opposes additional briefing
`for the reasons above.
`If the Board prefers privity briefing here (so the record in this proceeding stands alone),
`Petitioners seek 20 pages for their preliminary reply limited to privity and Section 325(d) and
`to file it within two weeks of receiving authorization. Petitioners do not oppose Patent Owner
`being authorized to file a preliminary sur-reply of equal length to be filed within two weeks of
`the preliminary reply being filed and limited to the issues raised in the preliminary reply.
`Patent Owner opposes additional briefing on Section 325(d) for the reasons above.
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`If the Board wishes to have a conference call, the parties can confer and propose times of mutual
`availability.
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`Best regards,
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`Jessica Kaiser | Perkins Coie LLP
`PARTNER
`1900 Sixteenth Street Suite 1400
`Denver, CO 80202-5255
`D. +1.303.454.2907
`E. JKaiser@perkinscoie.com
`
`
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`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.
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