From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Arner, Erika; Trials
`sean.burdick@unilocusa.com; RussT@SeedIP.com; Ryan Loveless; Jim Etheridge; Brian Koide; Jeff Huang;
`brett@etheridgelaw.com; Goldberg, Joshua; Stach, Jason
`RE: Requesting Electronic IPR Service Under 37 CFR 42.5(b) in view of COVID-19
`Wednesday, March 25, 2020 11:25:40 AM
`
`EXTERNAL Email:
`
`Counsel,
`
`Thank you for contacting the Board. At this time, Petitioner is authorized to file, with the petition, a
`motion to waive 37 C.F.R. §§ 42.6(e)(1), 42.105(b) and accept as sufficient, under 37 C.F.R. § 42.6(e)(4),
`electronic service on Patent Owner. After filing the motion, Petitioner is advised to immediately send an
`email to trials@uspto.gov and inform the Board that the motion is pending.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Arner, Erika <erika.arner@finnegan.com>
`Sent: Tuesday, March 24, 2020 4:05 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: sean.burdick@unilocusa.com; RussT@SeedIP.com; Ryan Loveless <ryan@etheridgelaw.com>;
`Jim Etheridge <jim@etheridgelaw.com>; Brian Koide <brian@etheridgelaw.com>; Jeff Huang
`<jhuang@etheridgelaw.com>; brett@etheridgelaw.com; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; Stach, Jason <Jason.Stach@finnegan.com>
`Subject: Requesting Electronic IPR Service Under 37 CFR 42.5(b) in view of COVID-19
`
`Your Honors,
`
`In light of the COVID-19 pandemic and government guidance to minimize social interaction and
`travel, Google requests authorization to provide service electronically, rather than physically, of IPR
`petitions it may file in the coming days against patents currently asserted by patent owner Uniloc
`against Google in district court actions, including U.S. patents 9,564,952 and 6,366,908. Following 37
`CFR 42.105(b), Google contacted Uniloc to request an agreement to electronic service in these
`circumstances, but Uniloc has refused. Google’s request and Uniloc’s refusal are attached. Like that
`correspondence, this request is addressed to counsel of record at the USPTO and Uniloc’s litigation
`counsel in these matters. Uniloc’s response demonstrates that electronic correspondence to these
`counsel results in receipt by the patent owner.
`
`For these reasons, Google asks that the Board exercise its discretion under 37 CFR 42.5(b) to
`suspend the physical service requirement in this situation and authorize electronic service of IPR
`
`Page 1 of 2
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`GOOGLE EXHIBIT 1045
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`

`

`petitions that Google may file on one or both of the listed patents in the coming days.
`
`Regards,
`Erika Arner
`Lead Counsel for Google
`
`Erika H. Arner
`Attorney at Law
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Drive, Reston, VA, 20190
`571.203.2754 | fax 202.408.4400 | erika.arner@finnegan.com| Bio
`Finnegan AIA Blog | www.finnegan.com | PTAB Book, 2d ed.
`
`
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
`proprietary, or otherwise exempt from disclosure under applicable law. If you believe you have received this message in error, please
`advise the sender by return e-mail and delete it from your mailbox. Thank you.
`
`Page 2 of 2
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