`To:
`Cc:
`Subject:
`Date:
`
`Mills, Jad
`Trials
`Dorothy Whelan; Rosato, Michael; Hostetler, Michael; Robert Oakes
`RE: PGR2022-00025
`Wednesday, June 22, 2022 4:24:05 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`Petitioner declined including Patent Owner’s position in a joint email to the Board. Patent Owner’s
`position is summarized below:
`
`The requested relief lacks the requisite good cause. The Board has explained in numerous
`prior cases that alleged mischaracterizations of the references do not provide good cause for
`a pre-institution reply. This is now the fifth time Grigoriadis is before the Office (see, e.g.,
`POPR, p. 1). Petitioner already had a full opportunity to address 325(d) in the petition and
`did so without demonstrating material error.
`
`Respectfully,
`
`Jad Mills
`Reg. No. 63,344
`Counsel for Patent Owner
`
`Jad A. Mills
`Wilson Sonsini Goodrich & Rosati
`701 5th Ave. Suite 5100
`Seattle, WA 98104
`Direct: 206.883.2554
`Fax: 206.883.2699
`
`From: Robert Oakes <RMO@FR.com>
`Sent: Wednesday, June 22, 2022 11:13 AM
`To: Trials@USPTO.GOV
`Cc: Dorothy Whelan <whelan@fr.com>; Mills, Jad <jmills@wsgr.com>; Rosato, Michael
`<mrosato@wsgr.com>; Hostetler, Michael <mhostetler@wsgr.com>
`Subject: PGR2022-00025
`
`EXT - rmo@fr.com
`
`PGR2022-00025
`Ex. 3001
`
`
`
`
`
`Dear Board:
`
`Petitioner respectfully requests leave to file a 10 page reply to Patent Owner’s Preliminary Response
`in the above-captioned proceeding. Good cause exists because the purpose of the reply is to
`address Patent’s Owner’s arguments regarding denial under 35 U.S.C. §325(d), including
`mischaracterizations of the Grigoriadis and Auchus references regarding the test protocol described
`in Example 6 of Grigoriadis. Petitioner has conferred with Patent Owner, and Patent Owner opposes
`the request. The parties are available for a telephone conference to discuss the request.
`
`Respectfully,
`
`Robert Oakes
`Reg. No. 62,189
`Counsel for Petitioner
`
`Robert M. Oakes :: Principal :: Fish & Richardson P.C.
`222 Delaware Avenue 17th Floor, P.O. Box 1114, Wilmington, DE 19899
`302 778 8477 direct :: oakes@fr.com
`
`
`
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`recipient, please contact the sender immediately and permanently delete the original and any
`copies of this email and any attachments thereto.
`
`
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