Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 1 of 4
`Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 1 of 4
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`EXHIBIT 2
`EXHIBIT 2
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`Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 2 of 4
`Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 2 of 4
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`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
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`
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`ART UNIT:
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`3992
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`EXAMINER:
`
`David E. England
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`FIRST NAMED
`INVENTOR:
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`Clay Perreault
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`CONTROL NO.:
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`90/019,124
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`EENNDER
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`10.218.606
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`FILED:
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`10/17/2022
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`CONF. NO.:
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`2064
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`FOR:
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`PRODUCING ROUTING
`MESSAGES FOR VOICE OVER
`IP
`
`{"]
`
`CERTIFICATE OF MAILING
`UNDER 37 CER.
`S18
`DATE OF DEPOSIT: June 14, 2023
`Thereby certify that this paper or fee (along
`with any paper or fee referred to as being attached
`or enclosed) is being submitted on the date
`indicated abovevia:
`i EPS Web or Patent Center
`Cr]
`facsimile to
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`the United States Postal Service with
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`sufficient postage as first class mail
`addressed to: Mail Stop
`j
`Commissioner for Patents, P.O. Box 1450,
`Alexandria, VA 22313-1450.
`
`
`
`/Steve M. Perry/
`Steve M. Perry
`
`4278-001.PCT.US.CON11
`DOCKETNO.:
`
`
`THORPE NORTH & WESTERN, LLP
`Customer No. 20,551
`P.O. Box 1219
`Sandy, Utah 84091-1219
`
`PETITION FOR AN EXTENSION OF TIME
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`UNDER37 C.F.R. §1550(C)
`
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
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`Under 37 C.F.R. §1550(c), Patent Ownerrespectfully requests a one-month extensionoftime
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`to submit a response to the Office Action mailed April 24, 2023. Patent Owner’s remarks,
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`explaining the Patent Owner’s reasonsfor requiring an extension of time, are provided below.
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`The Petition fee under 1.17(g) is being submitted with this Petition.
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`

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`Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 3 of 4
`Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 3 of 4
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`Art Unit: 3992
`Examiner: David E. England
`Re-Exam Control No.: 90/019,124
`Docket No.: 4278-001.PCT.US.CON11
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`REMARKS
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`Patent Ownerrespectfully requests a one-month extension of time for its team to prepare
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`a responseto the Office action for at least the following reasons.
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`Patent Owner needs more time to consult with a technical expert to ensure that complex
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`technical issues are thoroughly addressed. Two experts known to VoIP-Pal and having some
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`familiarity with the ’606 Patent and/orits technology, have indicated to the Patent Ownerthat
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`they would be unavailable to provide consulting services, for example, due to their lack of
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`bandwidth to take on a new project for VoIP-Pal. Another expert with which the Patent Owner
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`has consulted in the past is able to provide some assistance with the technical issues but is not
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`available to provide testimony on behalf of the Patent Ownerin these proceedings. Patent Owner
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`has therefore reached out to yet another expert, who is confirmed to be available to assist and
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`provide testimony, however, the new expert requires more time to get familiarized with the *606
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`Patent, the cited art, the Office action, and the Requester’s expert declaration.
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`Patent Owneralso needs additional time for patent counsel to consider the Office action
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`and prepare a response in concert with the aforesaid technical expert. Patent Owneris also
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`engaged in related litigation in connection with the *606 Patent and has needed to devote time
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`and resourcesto that effort, including a claim construction hearing concerning the 606 Patent
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`that just concluded on June 12, 2023. Patent Owner would like patent counsel andlitigation
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`counsel to consult and confer regarding these reexamination proceedingsin light of the litigation.
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`As one complication, one of VoIP-Pal’s counsel, who previously assisted with the prosecution of
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`the patent application that gave rise to the *606 Patent, is currently unable to be involved in any
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`discussions regarding possible claim amendments with the re-examination team due to a
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`“prosecution bar”that arose from related VoIP-Pal litigation. Patent Ownerhas asked alternate
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`prosecution counsel to respond to the instant reexamination proceedings, however, additional
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`time is necessary for the alternate prosecution counsel to review the Office action and the cited
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`art and to considerthe possibility of claim amendments in consultation with the newly engaged
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`technical expert, who also needs additional time to review these issues, as discussed above.
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`Patent Owner has been reasonably diligent in its efforts to prepare a response: the Office
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`action was forwarded on or about April 27, 2023 to team members. In addition to investigating
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`potential expert as discussed above,a first team meeting was held on or about May 1, 2023, with
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`

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`Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 4 of 4
`Case 6:20-cv-00272-ADA Document 100-3 Filed 07/07/23 Page 4 of 4
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`Art Unit: 3992
`Examiner: David E. England
`Re-Exam Control No.: 90/019,124
`Docket No.: 4278-001.PCT.US.CON11
`
`one team memberbeing assigned the task of a preliminary review. A numberof subsequent team
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`meetings were scheduled to discuss the subject ’606 Patent re-examination, including on May 12,
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`May 22, June 6, and June 13, 2023. The meeting on June 13, 2023 included preliminary
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`discussions with a new technical expert. Further meetings are scheduled with the team and the
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`new technical expert in the near future to continue the analysis. VoIP-Pal will be prejudiced
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`unless an extension of time is granted to allow the above-mentioned coordination of resourcesin
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`order to prepare VoIP-Pal’s response to the Office action.
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`Thus, VoIP-Pal respectfully submits that it has provided multiple reasons for why a one-
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`month extension of time would be reasonable under 37 C.F.R. §1550(c) in the circumstances.
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`CONCLUSION
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`In light of the above, Patent Owner respectfully requests confirmation at the earliest
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`opportunity that an extension of time has been granted under 37 C.F.R. 1550(c).
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`Please do not hesitate to contact the undersigned should you have any questions to ensure
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`they can be addressed as expeditiously as possible.
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`The Commissioner is hereby authorized to charge any additional fee or to credit any
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`overpaymentin connection with this Amendment to Deposit Account No. 20-0100.
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`DATEDthis 14 day of June, 2023.
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`Respectfully submitted,
`
`/Steve M. Perry/
`
`Steve M. Perry
`Registration No. 45357
`
`THORPE NORTH & WESTERN, LLP
`Customer No. 20,551
`P.O. Box 1219
`Sandy, Utah 84091-1219
`Telephone: (801) 566-6633
`
`SP/dg
`
`