Trials
`Deborah Sterling; David H. Holman; Tyler Liu; Gary J Speier; Peter M Kohlhepp; NLouwagie@carlsoncaspers.com
`Trials
`RE: IPR2024-00834 - Seeking Authorization to Terminate Proceeding
`Monday, February 3, 2025 12:02:45 PM
`image001.png
`image002.png
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`During the telephone conference on January 31, 2025, the parties indicated that
`they do not oppose entry of adverse judgment against Patent Owner in
`IPR2024-00834. Accordingly, and as the Board indicated during the call, the
`parties shall jointly submit a Motion to Terminate Proceeding and for Entry of
`Adverse Judgment, attaching as an exhibit the disclaimer of all claims at issue
`in IPR2024-00834.
`
`The parties shall submit the motion no later than 7 days after the date of this
`email.
`
`In addition, Petitioner filed, on January 30, 2025, a notice of intent to designate
`Mr. Kohlhepp as back-up counsel. In light of the joint motion that will be filed
`to terminate this proceeding, the Board asks Petitioner to indicate, within 2
`business days, whether Petitioner still seeks pro hac vice admission of Mr.
`Kohlhepp.
`
`Regards,
`
`Franchesca I. Alicea Villanueva
`Supervisory Paralegal
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Deborah Sterling <DSTERLING@sternekessler.com>
`Sent: Thursday, January 30, 2025 12:39 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: David H. Holman <DHOLMAN@sternekessler.com>; Tyler Liu <TLIU@sternekessler.com>; Gary J
`Speier <GSpeier@carlsoncaspers.com>; Peter M Kohlhepp <PKohlhepp@carlsoncaspers.com>;
`NLouwagie@carlsoncaspers.com
`Subject: IPR2024-00834 - Seeking Authorization to Terminate Proceeding
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`
`Ex. 3005
`IPR2024-00834
`
`

`

`responding, clicking on links, or opening attachments.
`
`Dear Board:
`
`Patent Owner disclaimed every claim in the proceeding on January 28, 2025 (see attached). As such,
`Patent Owner is seeking authorization to file a Motion to Terminate the Proceeding so that the
`Board can enter an Order of Adverse Judgment under 37. C.F.R. § 42.73.
`
`The parties have met and conferred and Petitioner has indicated that it disagrees with Patent
`Owner’s request and instead intends to seek authorization to file a Motion for Adverse Judgement.
`Patent Owner disagrees with Petitioner’s request since Patent Owner’s disclaimer is already
`construed as a request for Adverse Judgment.
`
`Because the parties appear to be aligned with the intended outcome, but are not aligned on the
`means by which to efficiently achieve that outcome, we welcome the Board’s insight on the path
`forward that best avoids filing unnecessary papers and/or unnecessary use of the Board’s time.
`
`If needed, the parties can be available for a conference call with the Board at the following times
`(EST):
`
`Friday, January 31, at 10 – 11 am or noon – 2 pm;
`Monday, February 3, at 3 – 5 pm; and
`Tuesday, February 4, at 10 – 11:30 am or 12:30 – 2 pm.
`
`Respectfully submitted,
`Deborah Sterling
`Counsel for Patent Owner
`
`
` Deborah Sterling, Ph.D. (she/her)
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1101 K St. NW, Washington, DC 20005
`Email: dsterling@sternekessler.com
`Direct: 202.772.8501
`
`
`
`
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`