Poplin, Justin
`
`From:
`Sent:
`To:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Tuesday, February 14, 2017 1:37 PM
`Poplin, Justin; Interference Trial Section; Trials; adam.seitz@eriseip.com;
`kathleen.fitterling@eriseip.com; Quinn, Anna; Garrison, Cameron
`RE: IPR2016-01866 and 1870
`
`Counsel,
`
`The parties are authorized to file a Joint Motion to Terminate in each of these proceedings (IPR2016-01866 and -1870).
`The Joint Motion must update the Board concerning the status of any litigation or proceeding, including, but not limited
`to proceedings in the U.S. Patent and Trademark Office, involving the subject patents, and advise the Board whether any
`litigation or proceeding involving the subject patents is contemplated in the foreseeable future.
`
`The Joint Motion also must include a copy of any agreement and include a statement certifying that there are no
`collateral agreements or understandings made in connection with, or in contemplation of, the termination of the inter
`partes review. A party to a settlement may request that any written agreement be treated as business confidential
`information and be kept separate from the files of an involved patent. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). This
`request must be filed with the settlement.
`
`The Joint Motion and any accompanying request to treat an agreement/settlement as business confidential must be
`filed by February 24, 2017.
`
`
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`From: Poplin, Justin (LG) [mailto:JPoplin@LATHROPGAGE.COM]
`Sent: Monday, February 13, 2017 5:28 PM
`To: Interference Trial Section <InterferenceTrialSection@USPTO.GOV>; Trials <Trials@USPTO.GOV>;
`adam.seitz@eriseip.com; kathleen.fitterling@eriseip.com; Quinn, Anna (LG) <AQuinn@LATHROPGAGE.COM>; Garrison,
`Cameron (LG) <CGarrison@LATHROPGAGE.COM>
`Subject: RE: IPR2016-01866 and 1870
`
`The parties have settled co-pending litigation regarding U.S. Patent Nos. 8,590,757 and 9,022,260. And the parties have
`agreed to work together to terminate these IPR proceedings. As such, the parties request the Board’s permission to file
`a joint motion to terminate in each proceeding and a joint motion to file settlement agreement as business confidential
`information in each proceeding. If necessary, the parties can be available for a telephone call before 2:00 Eastern on
`2/16, or any time 2/20-2/22.
`
`
`Respectfully submitted,
`
`
`For Patent Owner:
`
`1
`
`Ergo Baby Ex. 2001
`IPR2016-01866
`BOBA, INC. v. THE ERGO BABY CARRIER, INC.
`
`

`

`A. Justin Poplin
`Lathrop & Gage LLP
`10851 Mastin Blvd., Ste. 1000
`Overland Park, KS 66210
`Phone: 913-451-5130
`www.LathropGage.com/JPoplin
`
`
`
`For Petitioner:
` Adam P. Seitz
` Kathleen Fitterling
` Erise IP, P.A.
` 6201 College Blvd., Suite 300
` Overland Park, KS 66207
` 913.777.5600
` www.eriseIP.com
`
`
`
`This e-mail (including any attachments) may contain material that (1) is confidential and for the sole use of the
`intended recipient, and (2) may be protected by the attorney-client privilege, attorney work product doctrine or
`other legal rules. Any review, reliance or distribution by others or forwarding without express permission is
`strictly prohibited. If you are not the intended recipient, please contact the sender and delete all copies.
`
`From: Kellogg, Andrew [mailto:Andrew.Kellogg@USPTO.GOV] On Behalf Of Interference Trial Section
`Sent: Thursday, February 09, 2017 10:29 AM
`To: adam.seitz@eriseip.com; kathleen.fitterling@eriseip.com; Poplin, Justin; Quinn, Anna
`Cc: Trials
`Subject: IPR2016-01866 and 1870
`
`Counsel,
`
`It has come to the Board’s attention that a Joint Notice of Settlement has been filed in a related district court proceeding
`involving the parties and U.S. Patent Nos. 8,590,757 and 9,022,260 (see attached). Given this development in the related
`proceeding, the parties are instructed to jointly email the Board, by 5pm ET February 15, 2017, of what, if any, effect the
`parties believe this development in the district court case will have on IPR2016-01866 and -1870.
`
`2
`
`
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`
`
`Ergo Baby Ex. 2001
`IPR2016-01866
`BOBA, INC. v. THE ERGO BABY CARRIER, INC.
`
`