Trials
`Gary J Speier; Trials
`dsterling-ptab@sternekessler.com; dholman-ptab@sternekessler.com; tliu-ptab@sternekessler.com; Peter M
`Kohlhepp; Nate D Louwagie
`RE: IPR2024-00834 (U.S. Patent No. 11,590,088)
`Tuesday, September 24, 2024 11:03:28 AM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`We previously authorized Petitioner to file, by September 19, 2024, a Reply to Patent Owner’s
`Preliminary Response. Petitioner timely filed its Reply on that date. Because we understand the
`Reply was not properly served on Patent Owner until September 20, 2024, however, we authorize,
`sua sponte, a one-day extension for Patent Owner to file its Sur-Reply.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Gary J Speier <GSpeier@carlsoncaspers.com>
`Sent: Friday, September 20, 2024 4:18 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: dsterling-ptab@sternekessler.com; dholman-ptab@sternekessler.com; tliu-
`ptab@sternekessler.com; Peter M Kohlhepp <PKohlhepp@carlsoncaspers.com>; Nate D Louwagie
`<NLouwagie@carlsoncaspers.com>
`Subject: IPR2024-00834 (U.S. Patent No. 11,590,088)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear PTAB:
`
`Petitioner writes to notify the Board that due to a miscommunication, a copy of Petitioner’s
`preliminary reply brief was not emailed to Patent Owner’s counsel after it was filed yesterday, and
`therefore the certificate of service attached to the reply brief (Paper 7) is not correct. Upon being
`notified of this by Patent Owner’s counsel today, Petitioner promptly served a copy of the reply
`brief. In view of this, Petitioner would not oppose a one-day extension of Patent Owner’s time to file
`its preliminary sur-reply.
`
`Regards,
`Gary Speier
`
`Gary J Speier
`
`Exhibit 3002
`
`
`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
`From: Gary J Speier <GSpeier@carlsoncaspers.com>
`Sent: Thursday, September 5, 2024 3:06 PM
`To: Trials@USPTO.GOV
`Cc: dsterling-ptab@sternekessler.com; dholman-ptab@sternekessler.com; tliu-
`ptab@sternekessler.com; Peter M Kohlhepp <PKohlhepp@carlsoncaspers.com>; Nate D Louwagie
`<NLouwagie@carlsoncaspers.com>
`Subject: IPR2024-00834 (U.S. Patent No. 11,590,088)
`
`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,
`
`
