`Sent:
`To:
`Cc:
`
`Subject:
`
`Jensen, Travis <tjensen@orrick.com>
`Tuesday, December 3, 2019 8:04 PM
`Trials; John Downing
`Jonathan K. Waldrop; Rodney R. Miller; Herman, K. Patrick; T61PTABDocket;
`P52PTABDocket
`RE: IPR2020-00019
`
`Patent Trial and Appeal Board,
`
`The district court issued its Markman order on Nov. 27, 2019 for U.S. Pat. 8,843,125 (the challenged patent in IPR2020-
`00019). The parties met and conferred on Nov. 25 and Dec. 3 regarding Apple’s request to file a 5-page paper (and
`accompanying exhibits) that address how Apple contends the prior art satisfies one claim construction issued by the
`district court that was not proposed by either party. Fintiv opposes Apple’s request. Apple requests a conference call
`with the Board to address this issue. The parties are available for a call with Board on Wednesday (Dec. 4), Thursday
`(Dec. 5), and Friday (Dec. 6) before 3pm ET. Thanks, Travis
`
`Travis M. Jensen
`Partner, IP Litigation
`
`Orrick
`Silicon Valley
`
`1
`
`Christine Rehak
`
`
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: John Downing <JDowning@kasowitz.com>
`Sent: Sunday, November 24, 2019 10:38 PM
`To: Jensen, Travis <tjensen@orrick.com>; Trials <Trials@USPTO.GOV>
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; Herman, K. Patrick
`<pherman@orrick.com>; T61PTABDocket <T61PTABDocket@orrick.com>; P52PTABDocket
`<P52PTABDocket@orrick.com>
`Subject: RE: IPR2020-00019
`
`Patent Trial and Appeal Board:
`
`Patent Owner in the below referenced action, Fintiv, is available for a call with the Board on Tuesday (12/3) before
`2:30pm EST, Wednesday (12/4), Thursday (12/5), and Friday (12/6).
`
`We are not available on the days referenced by Apple’s counsel below. Our team has reached out to Apple’s counsel to
`schedule a meet-and-confer to coordinate mutually agreeable times for a conference with the Board and learn about the
`scope of Apple’s proposed amendments.
`
`Thanks,
`
`John
`
`John Downing
`Kasowitz Benson Torres LLP
`333 Twin Dolphin Drive, Suite 200
`Redwood Shores, CA 94065
`Tel. (650) 453-5426
`Fax. (650) 362-9430
`JDowning@kasowitz.com
`
`This e-mail and any files transmitted with it are confidential and may be subject to the attorney-client privilege. Use or disclosure of this e-mail or any
`such files by anyone other than a designated addressee is unauthorized. If you are not an intended recipient, please notify the sender by e-mail and
`delete this e-mail without making a copy.
`From: Jensen, Travis [mailto:tjensen@orrick.com]
`Sent: Friday, November 22, 2019 1:53 PM
`To: Trials@uspto.gov
`Cc: Jonathan K. Waldrop <JWaldrop@kasowitz.com>; Rodney R. Miller <RMiller@kasowitz.com>; John Downing
`<JDowning@kasowitz.com>; Herman, K. Patrick <pherman@orrick.com>; T61PTABDocket
`<T61PTABDocket@orrick.com>; P52PTABDocket <P52PTABDocket@orrick.com>
`Subject: IPR2020-00019
`
`Patent Trial and Appeal Board,
`
`**EXTERNAL EMAIL**
`
`2
`
`IPR2020-00019
`Fintiv EX2005 Page 2
`
`
`
`Petitioner Apple Inc. wishes to notify the Board that the district court in Fintiv, Inc. v. Apple Inc., Case No. 6:18-CV-372-
`ADA (W.D. Tex.) issued oral claim constructions for the claim terms at issue in IPR2020-00019. Apple requests a
`conference call with the Board to seek leave to file the forthcoming Markman Order as well as a 5-page paper (and
`accompanying exhibits) that address how Apple contends the prior art satisfies one claim construction issued by the
`district court that was not proposed by either party.
`
`Apple is available Monday, Tuesday, and Wednesday of next week (Nov. 25-27) for a call. Despite Apple’s requests,
`Fintiv has not provided its availability for a call with the Board. Thanks, Travis
`
`Travis M. Jensen
`Partner, IP Litigation
`
`Orrick
`Silicon Valley
`
`3
`
`
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