Trials
`Heintz, James M.; Trials
`Pluta, Robert G.; Minutoli, Gianni; FW-CLIENT-Maxell-Samsung-Service
`RE: Request for Board Authorization to File Notice of Sotera Stipulations in IPR20204-00717, -00735, -00777,
`-00828 and -00867
`Tuesday, September 10, 2024 11:51:14 AM
`image001.png
`
`From:
`To:
`Cc:
`Subject:
`
`Date:
`Attachments:
`
`Counsel,
`
`From the Board –
`
`Petitioner is authorized to file a stipulation related to pursuing in a parallel proceeding the same
`grounds and or any grounds that could have reasonably been raised before the PTAB. However, the
`Petitioner is directed to the “INTERIM PROCEDURE FOR DISCRETIONARY DENIALS IN AIA
`POST-GRANT PROCEEDINGS WITH PARALLEL DISTRICT COURT LITIGATION” from
`Director Vidal dated June 21, 2022 (“Director’s Memo”) which can be found here:
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_paral
`lel_district_court_litigation_memo_20220621_.pdf
`
`The Board intends to carefully scrutinize the stipulation in view of the Director’s Memo and the
`related case law especially any limitations placed on the scope of the stipulation. The Board advises
`Petitioner that any stipulation that varies from the precise language “stipulates not to pursue in a
`parallel district court proceeding the same grounds as in the petition or any grounds that could have
`reasonably been raised in the petition” puts the Petition at risk of being discretionarily denied.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Heintz, James M. <Jim.Heintz@us.dlapiper.com>
`Sent: Monday, September 9, 2024 12:16 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Pluta, Robert G. <RPluta@mayerbrown.com>; Minutoli, Gianni
`<gianni.minutoli@us.dlapiper.com>; FW-CLIENT-Maxell-Samsung-Service <Maxell-Samsung-
`Service@mayerbrown.com>
`Subject: Request for Board Authorization to File Notice of Sotera Stipulations in IPR20204-00717,
`-00735, -00777, -00828 and -00867
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board:
`Petitioner requests a conference call with the Board to discuss (1) Petitioner’s request for authorization to file a
`
`Exhibit 3001
`
`

`

`Notice of Sotera Stipulation in each of the above-referenced IPRs, and 2) Patent Owner’s assertion that the
`stipulations for which Petitioner is seeking authorization to file, which are in the form “Petitioners agree that if
`IPR204-___ is instituted, Petitioners will not pursue for the instituted claims any ground that was raised or
`reasonably could have been raised in IPR2024-___ in the related district court proceeding” are not sufficient
`under Sotera due to the presence of language in bold, particularly as it relates to the multiple petitions filed
`against the same patent in IPR2024-00735 and -00777. Accordingly, Patent Owner has requested Petitioner to
`amend the language in each respective proceeding to read in the form “Petitioners agree that if IPR204-___ is
`instituted, Petitioners will not pursue any ground that was raised or reasonably could have been raised in
`IPR2024-___ in the related district court proceeding…”
`
`Counsel for Petitioner is available 9/9 (any time before 5 pm ET), 9/11 (from 2-5pm ET), and 9/12 (from 11-1pm
`ET and from 2-5pm ET). Counsel for Patent Owner is available 9/10 (anytime before 5pm ET), 9/11 (from 2-5pm
`ET), 9/12 (from 11-1pm ET and from 2-5pm ET).
`
`Sincerely,
`
` James M. Heintz
`
`Chair, Post Grant Review Practice
`
`T +1 703 773 4148
`F +1 703 773 5008
`M +1 202 997 7461
`jim.heintz@us.dlapiper.com
`
`DLA Piper LLP (US)
`dlapiper.com
`
`
`
`
`
`The information contained in this email may be confidential and/or legally privileged. It has been sent for the sole use
`of the intended recipient(s). If the reader of this message is not an intended recipient, you are hereby notified that any
`unauthorized review, use, disclosure, dissemination, distribution, or copying of this communication, or any of its
`contents, is strictly prohibited. If you have received this communication in error, please reply to the sender and destroy
`all copies of the message. To contact us directly, send to postmaster@dlapiper.com. Thank you.
`
`