From: Usman Khan <khan@fr.com>
`
`Sent: Tuesday, September 29, 2020 10:15 PM
`To: Trials <Trials@USPTO.GOV>
`Ce: Karl Renner <renner@fr.com>; Kim Leung <Leung@fr.com>; Cab@connorkudlaclee.com; dskeels@whitakerchalk.com;
`cbrooks@whitakerchalk.com; IPR39521-00911P1@fr.com; PGR39521-009?PS1@fr.com
`Subject: IPR2020-00999 & PGR2020-00066: Requestfor Leave to File Pre-Institution Reply
`
`Re IPR2020-00999 & PGR2020-00066
`
`Your Honors,
`
`Petitioner, Apple, respectfully requests leave to file a pre-institution reply to each of the POPRsfiled by Pinn in the above-noted
`proceedings. Followingis a list of the issues raised in the POPRs to which Applewill seek a brief, focused reply:
`
`(i)
`
`(ii)
`
`(iii)
`
`(iv)
`
`Apple’s Stipulation: Apple has good cause to request briefing to address Pinn’s assertion that Apple violated terms of
`its stipulation.
`Discretionary denial pursuant to 35 U.S.C. 314(a): Apple has good cause to request briefing to address Pinn’s
`representations relating to Fintiv factors, such as Pinn’s representation that grounds being assertedin litigation are
`the same as those being advancedin the petition, and Pinn’s characterization of Apple’s motives for challenging claim
`2 in the 491 IPR and claim 7 in the 066 PGR.
`
`Discretionary denial pursuant to 35 U.S.C. 325(d): Apple has good cause to request briefing to demonstrate whyprior
`art cited by Pinn from within the prosecution history fails to support discretionary denial under 325(d) when properly
`applying Advanced Bionics.
`Prior Art Disclosure of and Pinn’s Construction of “wireless pairing”: Apple has good cause to request briefing to
`demonstrate why Pinn’s arguments and characterization related to the prior art’s disclosure (e.g., Rabu) of pairing are
`not consistent with the Special Master Report and the disclosure in the priorart.
`
`Apple’s counsel has conferred with Pinn’s counsel, who opposes these requests. Apple’s counsel requestsa call at any of the
`following times:
`Thurs, Oct 1 at 3-4 PM EST
`Friday, Oct 2 at 12-2 PM ESTor 2-5 PM EST
`
`If these times do not work, please suggest other times that are convenientfor the Board. Pinn’s counsel was requested to
`provide their availability this week for a call with the Board. As of the time of this email, Apple’s counsel has not received
`information regarding the availability of Pinn’s counsel for a call with the Board.
`
`Please let us knowif the Board requires anything further.
`
`Sincerely,
`
`UsmanA. Khan, Ph.D., Esq.
`
`
`
`
`Fish & Richardson P.C.
`
`1000 Maine Ave., SW
`Suite 1000
`
`Washington, DC 20024
`202.626.6383 direct :: kKhan@fr.com
`fr.com :: Bio :: LinkedIn
`
`KREKEKEKRKEKKRERERKEREKREREREKKRERKREKKRERERKEKREREKKEKEKRERKEK EKER KEKEKRRERKERREKRER KER EKEKEKEKKEEKEEKEE
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`Ex. 3001
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