From: Usman Khan <khan fr.com>
`
`Sent: Tuesday, September 29, 2020 10:15 PM
`To: Trials <Trials@U5PTO.GOV>
`
`Cc: Karl Renner <renner@fr.com>; Kim Leung <Leung@fr.com>,' Cab@connorkudlaclee.com; dskeels@whitakerchalk.com;
`cbrooks@whitakerchalk.com; |PR39521—0091|P1@fr.com; PGR39521—0092P81@fr.com
`
`Subject: lPR2020—00999 81 PGR2020—00066: Request for Leave to File Pre—lnstitution Reply
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`Re IPR2020-00999 8: PGRZOZO-OODGG
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`Your Honors,
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`Petitioner, Apple, respectfully requests leave to file a pre—institution reply to each ofthe POPRs filed by Pinn in the above—noted
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`proceedings. Following is a list of the issues raised in the POPRs to which Apple will seek a brief, focused reply:
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`{i}
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`{ii}
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`Aggle’s Stipulation: Apple has good cause to request briefing to address Pinn’s assertion that Apple violated terms of
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`its stipulation.
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`Discretionary denial pursuant to 35 U.S.C. 314la1: Apple has good cause to request briefing to address Pinn’s
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`representations relating to antr'v factors, such as Pinn’s representation that grounds being asserted in litigation are
`the same as those being advanced in the petition, and Pinn’s characterization of Apple’s motives for challenging claim
`2 in the 491|PR and claim 7 in the 066 PGR.
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`(iii)
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`Discretionary denial pursuant to 35 U.S.C. 325ld1: Apple has good cause to request briefing to demonstrate why prior
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`art cited by Pinn from within the prosecution history fails to support discretionary denial under 325(d] when properly
`applying Advanced Bionics.
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`{iv}
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`Prior Art Disclosure of and Pinn’s Construction of "wireless pairing”: Apple has good cause to request briefing to
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`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 prior art.
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`Apple’s counsel has conferred with Pinn’s counsel, who opposes these requests. Apple’s counsel requests a call at any of the
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`following times:
`Thurs, Oct 1 at 3—4 PM EST
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`Friday, Oct 2 at 12—2 PM EST or 2—5 PM EST
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`If these times do not work, please suggest other times that are convenient for the Board. Pinn’s counsel was requested to
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`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.
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`Please let us know if the Board requires anything further.
`
`Sincerely,
`
`Usman A. Khan, Ph.D., Esq.
`
`
`
`
`Fish & Richardson P.C.
`
`1000 Maine Ave., SW
`Suite 1000
`
`Washington, DC 20024
`202.626.6383 direct :: khan@fr.oom
`
`fr.com :: fl :: Linkedln
`
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`EX. 3001
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`Ex. 3001
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`EX. 3001
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`Ex. 3001
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