Trials
`Jonathan Tuminaro; Trials
`David Hecht; Michael Specht; David Haars; Jennifer Chagnon; James Zak; PTAB Account
`RE: IPR2024-00529, -00530, and -00531 // Request for Leave to File Reply to POPRs
`Monday, July 1, 2024 11:53:27 AM
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`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`From the Board –
`
`In each of IPR2024-00529 and IPR2024-00530, Petitioner is authorized to file a 10-page reply and
`accompanying 10-page expert declaration by July 12, 2024. Patent Owner is authorized to file a 10-
`page sur-reply and accompanying 10-page expert declaration by July 26, 2024.
`
`Additionally, in each of IPR2024-00528 and IPR2024-00612, Petitioner is authorized to file a 10-page
`reply and accompanying 10-page expert declaration by July 12, 2024. Patent Owner is authorized to
`file a 10-page sur-reply and accompanying 10-page expert declaration by July 26, 2024.
`
`Petitioner is not authorized to file a reply in IPR2024-00531.
`
`Petitioner is authorized to file a Sotera stipulation in each of IPR2024-00528, IPR2024-00529,
`IPR2024-00530, IPR2024-00531, and IPR2024-00612.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Jonathan Tuminaro <JTUMINAR@sternekessler.com>
`Sent: Thursday, June 20, 2024 9:31 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: David Hecht <dhecht@hechtpartners.com>; Jonathan Tuminaro
`<JTUMINAR@sternekessler.com>; Michael Specht <MSPECHT@sternekessler.com>; David Haars
`<DHaars@sternekessler.com>; Jennifer Chagnon <JChagnon@sternekessler.com>; James Zak
`<jzak@hechtpartners.com>; PTAB Account <PTAB@sternekessler.com>
`Subject: IPR2024-00529, -00530, and -00531 // Request for Leave to File Reply to POPRs
`
`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:
`
`In accordance with 37 C.F.R. 42.108(c), Petitioner requests leave to file a reply to Patent Owner’s
`
`Exhibit 3001
`
`
`
`Preliminary Responses in the above-captioned IPRs. Petitioner requests a 10-page reply and
`accompanying 10-page expert declaration, due within 10 business days, if authorized. The reply
`would respond to the following issues, which were unforeseeable and/or raise new claim-
`construction issues:
`
`111 Patent Owner’s contentions in IPR2024-00529 (’454 patent) that the prior art does not teach
`the “situational network,” “event node server,” and “event node” claim elements based on
`new claim constructions. These contentions are based on documents filed in district court
`after the IPR petition was filed. See, e.g., IPR2024-00529, POPR, 12, 15 (relying on EX2001,
`which was filed in district court on April 26, 2024).
`111 Patent Owner’s contentions in IPR2024-00530 (’345 patent) that the prior art does not teach
`the “situational network,” “roll call query,” and “situational authority” claim elements based
`on new claim constructions. These contentions are based on documents filed in district court
`after the IPR petition was filed. See, e.g., IPR2024-00530, POPR, 19, 20, 22 (relying on EX2001,
`which was filed in district court on April 26, 2024).
`
`To address the Fintiv issues raised by Patent Owner, Petitioner provides a Sotera stipulation in
`IPR2024-00529, -00530, and -00531. Upon receiving authorization to submit a reply, Petitioner will
`confirm the Sotera stipulation in the reply.
`
`Patent Owner has indicated that it opposes Petitioner’s request. Should the Board desire a
`conference call, Petitioner is available at the following times:
`
`Thursday, June 20: 1:30 pm to 4:00 pm ET
`Friday, June 21: 10:00 am to noon ET or 1:30 pm to 4:00 pm ET
`
`The parties can also be available at another time convenient for the Board.
`
`Regards,
`Jonathan
`Counsel for Petitioner
`
`
` Jonathan Tuminaro, Ph.D.
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1101 K Street, NW, 10th Floor, Washington, DC 20005
`Email: jtuminar@sternekessler.com
`Direct: 202.772.8967
`Administrative Assistant: Earnesteen Ginn-White
`Main: 202.371.2600 Direct: 202.772.8574
`
`
`
`
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