EXHIBIT 3001
`
`Trials
`Stein, Alexander B.; Trials
`Nate D Louwagie; apex617pgr; White, Jason C.; Gillen, Stephen; Metco-617Patent-PGR
`RE: PGR2020-00056: Apex Tool Group, LLC v. Milwaukee Electric Tool Corporation
`Friday, July 31, 2020 2:43:08 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`Counsel: The Board has considered Petitioner’s email request to file a Reply to Patent Owner’s
`Preliminary Response, as well as Patent Owner’s email opposing that request. The Board finds that
`additional briefing, strictly limited to the issue raised in Petitioner’s email (specifically, Patent Owner’s
`challenge to the prior art status of “the ‘conventional tape measure blade design’ identified as ‘Prior Art 2’
`in the patent’s specification”), may be helpful to the Board. Accordingly, Petitioner is authorized to file a
`five page Reply, strictly limited to responding to that issue, as raised in the Preliminary Response, within
`five business days of this email. Patent Owner is authorized to file a five page Sur-Reply, limited to
`addressing issues raised in the Reply, within five business days of the filing of the Reply. No new evidence
`may be filed with either brief. An Order memorializing this authorization shall issue in due course;
`however, the time for filing the Reply shall run from the date of this email. We caution the parties to
`refrain from presenting extensive legal arguments in email correspondence with the Board.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: Stein, Alexander B. <alexander.stein@morganlewis.com>
`Sent: Friday, July 31, 2020 9:57 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Nate D Louwagie <NLouwagie@carlsoncaspers.com>; apex617pgr
`<apex617pgr@carlsoncaspers.com>; White, Jason C. <jason.white@morganlewis.com>; Gillen,
`Stephen <stephen.gillen@morganlewis.com>; Metco-617Patent-PGR <Metco-617Patent-
`PGR@morganlewis.com>
`Subject: RE: PGR2020-00056: Apex Tool Group, LLC v. Milwaukee Electric Tool Corporation
`
`Dear Board,
`
`I represent Patent Owner in this proceeding and write to voice Patent Owner’s objection to the
`inclusion of unauthorized argument in Petitioner’s email below. To the extent the Board would like
`to hear Patent Owner’s responsive argument via email, I will provide that only if authorized to do so.
`Regardless, I will be prepared to explain why there is no good cause for Petitioner’s request on the
`conference call.
`
`Respectfully submitted,
`
`Alex Stein
`
`1
`
`

`

`EXHIBIT 3001
`
`Reg. No. 71,397
`
`Counsel for Patent Owner Milwaukee Electric Tool Corporation
`
`Alexander B. Stein
`Morgan, Lewis & Bockius LLP
`+1.650.843.7278 | 1400 Page Mill Road | Palo Alto, CA 94304
`Assistant S. Lata Olivier: +1.650.843.7898
`
`From: Nate D Louwagie <NLouwagie@carlsoncaspers.com>
`Sent: Thursday, July 30, 2020 6:17 PM
`To: trials@uspto.gov
`Cc: apex617pgr <apex617pgr@carlsoncaspers.com>; White, Jason C.
`<jason.white@morganlewis.com>; Gillen, Stephen <stephen.gillen@morganlewis.com>; Metco-
`617Patent-PGR <Metco-617Patent-PGR@morganlewis.com>; Stein, Alexander B.
`<alexander.stein@morganlewis.com>
`Subject: PGR2020-00056: Apex Tool Group, LLC v. Milwaukee Electric Tool Corporation
`
`[EXTERNAL EMAIL]
`Dear Board,
`
`I represent Petitioner in the above captioned action and write to respectfully request a conference
`call. Specifically, Petitioner requests a conference call to make a request to file a five-page reply to
`address the Patent Owner’s argument that the “conventional tape measure blade design” identified
`as “Prior Art 2” in the patent’s specification is not prior art. Paper 9 at 27-32. Petitioner submits
`good cause exists to file this reply because the Patent Owner’s preliminary response argues that
`Prior Art 2 is not prior art because it is Patent Owner’s own prototype, but the intrinsic record of the
`patent did not identify Prior Art 2 as the Patent Owner’s prototype design. Therefore, Petitioner
`submits it should have the opportunity to respond to Patent Owner’s argument.
`
`Petitioner conferred with Patent Owner. It opposes this request.
`
`The parties are both available during the following dates and times for a call with the Board (all in
`Eastern Time):
`
`Tuesday, August 4: 10 am-11:30am or after 1:30 pm
`Wednesday, August 5: 10 am-4:30 pm
`Thursday, August 6: 10 am-1 pm
`
`Respectfully submitted,
`
`Nate Louwagie
`
`Nate D Louwagie​
`Carlson Caspers
`
`2
`
`

`

`EXHIBIT 3001
`
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