Trials
`Deborah Sterling; Gary J Speier; Trials
`David H. Holman; Tyler Liu; Peter M Kohlhepp; Nate D Louwagie; PTAB Account; PTAB Account
`IPR2024-00834 (U.S. Patent No. 11,590,088) – Petitioner’s request to file Reply to Patent Owner’s Preliminary
`Response
`Thursday, September 12, 2024 2:24:00 PM
`image001.png
`
`From:
`To:
`Cc:
`Subject:
`
`Date:
`Attachments:
`
`Counsel,
`
`From the Board –
`
`Petitioner’s request for authorization to file a Reply to Patent Owner’s Preliminary Response is
`granted in part.
`
`Petitioner’s request for authorization to file a Reply addressing Patent Owner’s arguments regarding
`§ 314 and § 325(d) is granted. Having considered the parties’ respective positions as reflected in the
`email string below, and based on our present review of the Petition and Preliminary Response, we
`find good cause exists to allow limited additional briefing as to these topics. Patent Owner devotes
`more than 20 pages arguing for discretionary denial under § 314 and § 325(d) (Paper 6 at 6–31).
`Petitioner does touch on § 325(d) discretion issues briefly (Paper 1 at 71–73), but we conclude on
`this record that the panel may benefit from hearing further from Petitioner on these discretionary
`issues, explaining why trial should be instituted notwithstanding Patent Owner's extensive argument.
`
`Petitioner’s request for authorization to file a Reply addressing Patent Owner’s arguments in the
`Preliminary Response regarding “Sonti reference’s anticipatory disclosures” is denied. The panel is
`not convinced Petitioner established good cause to reply to these arguments at this time. Petitioner
`alleges that good cause exists “to address certain omissions and mischaracterizations of the record
`and misapplication of Board cases.” However, the panel is well situated to evaluate Patent Owner’s
`characterization of the record and application of Board cases.
`
`The Reply shall be limited to 5 pages and shall be filed no later than seven calendar days from the
`date of this e-mail. Patent Owner is authorized to file a 5-page Sur-Reply, limited to the same topics,
`no later than seven calendar days after the filing of the Reply.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Deborah Sterling <DSTERLING@sternekessler.com>
`Sent: Thursday, September 5, 2024 5:58 PM
`To: Gary J Speier <GSpeier@carlsoncaspers.com>; Trials <Trials@USPTO.GOV>
`Cc: David H. Holman <DHOLMAN@sternekessler.com>; Tyler Liu <TLIU@sternekessler.com>; Peter
`M Kohlhepp <PKohlhepp@carlsoncaspers.com>; Nate D Louwagie
`<NLouwagie@carlsoncaspers.com>; PTAB Account <PTAB@sternekessler.com>; PTAB Account
`<PTAB@sternekessler.com>
`Subject: RE: IPR2024-00834 (U.S. Patent No. 11,590,088)
`
`Exhibit 3001
`
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board,
`
`In response to Petitioner’s request below, Patent Owner provides the following context that was
`omitted from Petitioner’s email. Patent Owner did not simply oppose Petitioner’s request with no
`explanation. Rather, Patent Owner explained to Petitioner that Patent Owner opposes Petitioner’s
`request because the issues raised by Petitioner are not the types of issues that give rise to good
`cause for additional briefing in reply to the Patent Owner Preliminary Response.
`
`Should the Board believe a conference call with the parties is necessary, counsel for Patent Owner is
`available at the times provided below.
`
`Respectfully,
`Deborah Sterling
`
`Deborah Sterling, Ph.D. (she/her)
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: dsterling@sternekessler.com
`Direct: 202.772.8501
`
`From: Gary J Speier <GSpeier@carlsoncaspers.com>
`Sent: Thursday, September 5, 2024 4:06 PM
`To: Trials@USPTO.GOV
`Cc: Deborah Sterling <DSTERLING@sternekessler.com>; David H. Holman
`<DHOLMAN@sternekessler.com>; Tyler Liu <TLIU@sternekessler.com>; Peter M Kohlhepp
`<PKohlhepp@carlsoncaspers.com>; Nate D Louwagie <NLouwagie@carlsoncaspers.com>; PTAB
`Account <PTAB@sternekessler.com>; PTAB Account <PTAB@sternekessler.com>
`Subject: IPR2024-00834 (U.S. Patent No. 11,590,088)
`
`EXTERNAL EMAIL: Use caution before clicking links or attachments.
`
`Dear Board,
`
`Petitioner respectfully requests leave to file an eight-page reply to Patent Owner’s Preliminary
`Response in the above-referenced proceeding, to address Patent Owner’s arguments regarding
`Section 325(d), the Board’s discretion under Section 314, and the Sonti reference’s anticipatory
`disclosures. In particular, Petitioner seeks to address Patent Owner’s arguments that the Board
`should deny institution because the Sonti and Bissonnette references were cited on the face of the
`patent (though not discussed) and because Petitioner purportedly did not identify evidence that the
`Chen references disclosed administering tapinarof, as well as Patent Owner’s characterization of the
`Examiner’s reasons for allowance; the Patent Owner’s arguments that the identification of the
`challenges, the Petition’s word count, and citations to expert testimony allegedly did not comply
`
`
`
`with Patent Office rules; and the Patent Owner’s argument Sonti purportedly does not disclose a
`limited number of options for treatment. Good cause exists to file this reply to address certain
`omissions and mischaracterizations of the record and misapplication of Board cases, as well as
`because Patent Owner is arguing that Section 325(d) and Section 314 should be dispositive.
`
`Petitioner emailed counsel for Patent Owner regarding these requests on August 30, 2024, and the
`parties met and conferred again on September 4, 2004. On September 5, 2024, Patent Owner
`informed Petitioner that it opposes these requests. Patent Owner also stated that if the Board
`grants Petitioner’s request in whole or in part, Patent Owner will request authorization for a sur-
`reply of equal length. If Petitioner is authorized to file a preliminary reply, Petitioner does not
`oppose a Patent Owner preliminary sur-reply of equal length.
`
`Should the Board believe a call is necessary to discuss Petitioner’s requests, the parties are available
`on Monday (9/16) between 9am-1pm ET and 4pm-5pm ET, and Tuesday (9/17) between 2pm-5pm
`ET. These are the earliest dates of availability for the parties, as counsel for Patent Owner is not
`available the week of 9/9-9/13 due to planned international business travel, and counsel for
`Petitioner is not available on 9/6 due to planned international business travel.
`
`Best regards,
`Gary Speier
`
`Gary J Speier
`Carlson Caspers
`225 S. Sixth St., Suite 4200
`Minneapolis, MN 55402
`Direct: 612.436.9643
`Cell: 651.592.8488
`GSpeier@carlsoncaspers.com
`carlsoncaspers.com
`BIO | vCard | Disclaimers
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