UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`EURO-PRO OPERATING LLC
`Petitioner
`
`v.
`
`ACORNE ENTERPRISES, LLC
`Patent Owner
`
`______________
`
`Case IPR2014-00351
`Patent 6,515,262
`
`Case IPR2014-00352
`Patent 6,624,392
`______________
`
`DECLARATION OF MARK T. GARRETT IN SUPPORT OF
`PETITIONER’S MOTION FOR EARLIER FILING DATES
`
`Euro-Pro Exhibit 1030
`Euro-Pro v. Acorne
`
`53480650.1
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`- 1 -
`
`
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`EURO-PRO OPERATING LLC
`Petitioner
`
`v.
`
`ACORNE ENTERPRISES, LLC
`Patent Owner
`
`______________
`
`Case IPR2014-00351
`Patent 6,515,262
`
`Case IPR2014-00352
`Patent 6,624,392
`______________
`
`DECLARATION OF MARK T. GARRETT IN SUPPORT OF
`PETITIONER’S MOTION FOR EARLIER FILING DATES
`
`Euro-Pro Exhibit 1030
`Euro-Pro v. Acorne
`
`53480650.1
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`- 1 -
`
`
`
`I, Mark T. Garrett, declare:
`
`1.
`
`I am a citizen of the United States and am over 18 years of age. I
`
`have personal knowledge of the facts below. I am an attorney with the Austin,
`
`Texas Office of Fulbright & Jaworski LLP, and have been registered to practice
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`before the United States Patent and Trademark Office since September 1999.
`
`2.
`
`I
`
`have
`
`read
`
`the
`
`following
`
`section
`
`available
`
`at
`
`https://www.uspto.gov/ip/boards/bpai/prps.jsp (referred to hereinafter as “Section
`
`A8”):
`
`A8. How can I check whether I filed a document properly?
`After you upload a document in the proper format (i.e., PDF or MPEG for
`exhibits and PDF for all other documents) and click “Submit,” you will
`receive an acknowledgement on the screen in PRPS and a filing receipt via
`email if the document is filed properly. If you did not receive an
`acknowledgement on the screen or a filing receipt via email, the document
`most likely has not been uploaded properly and you should contact the Board
`at (571) 272-7822. You may also check whether the document is listed in the
`file contents of the proceeding.
`
`3.
`
`I had not read Section A8 prior to filing the petitions in either
`
`IPR2014-00182 or IPR2014-00186.
`
`4.
`
`There are three potential categories of documents to which Section A8
`
`may have relevance: an inter partes review (“IPR”) petition (“Category I
`
`Documents”); documents other than an IPR petition that are filed with the IPR
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`53480650.1
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`petition (such as the original exhibits) (“Category II Documents”); and documents
`
`filed after the IPR petition has been submitted (“Category III Documents”). All
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`my references in this declaration to documents and petitions that were uploaded,
`
`filed, and/or submitted are references to actions that I took after logging in (using
`
`my User ID and Password) to the Patent Trial and Appeal Board’s website:
`
`https://ptabtrials.uspto.gov/. (the “PRPS Website”).
`
`5.
`
`Based on my experience with the filings in IPR2014-00182 and
`
`IRP2014-00186 and the filings in IRP2014-00351 and IPR2014-00352, the first
`
`sentence in Section A8 (‘After you upload a document in the proper format (i.e.,
`
`PDF or MPEG for exhibits and PDF for all other documents) and click “Submit,”
`
`you will receive an acknowledgement on the screen in PRPS and a filing receipt
`
`via email if the document is filed properly.’) (emphasis added) applies to
`
`Category I Documents but not to Category II Documents. For example, when I
`
`uploaded each of the 27 exhibits associated with the IPR petition for IPR2014-
`
`00351 prior to submitting that IPR petition (which 27 exhibits are examples of
`
`Category II Documents), I did not click “submit” after I uploaded each exhibit
`
`because that was not an option. Instead, each of those 27 exhibits were filed by
`
`clicking an “Upload Document” button, followed by clicking a “Browse” button to
`
`identify the document (via a file path) to be uploaded, and—after identifying the
`
`document via a dropdown option and text fields—clicking an “Upload File”
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`button. After that, I clicked a “next” button, and repeated the aforementioned
`
`process to upload each of the next of those 27 exhibits in the same way.
`
`Furthermore, I did not “receive . . . a filing receipt via email” (as stated in the first
`
`sentence of Section A8), each time I uploaded one of those 27 exhibits. Instead,
`
`the only emails I received on January 14, 2014 associated with IPR2014-00351
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`were a “Payment Receipt” email (Exhibit 1030) and a “Petition Submission” email
`
`(Exhibit 1031). Exhibit 1031 does not reference any of those 27 exhibits. I recall
`
`seeing a screen acknowledgement after clicking the “Submit” button on January
`
`14, 2014 to file the petition for IPR2014-00351, which I recall as essentially
`
`occupying the entire screen, but I do not have a memory of seeing the same type of
`
`screen acknowledgment each time prior to that when I uploaded each of those 27
`
`exhibits.
`
`6.
`
`For IPR2014-00182, the only Category I Document is Exhibit 1019 of
`
`IPR2014-00351. I did not receive a filing receipt email of the type of Exhibit 1031
`
`of IPR2014-00351, nor do I recall seeing a screen acknowledgement of the type
`
`described in the last sentence of paragraph 5 of this declaration, after clicking a
`
`“submit” button as described in paragraph 5 of Exhibit 1018 of IPR2014-00351.
`
`7.
`
`There is a specific field designated as “Upload Power of Attorney”
`
`and an associated “Browse” button in the “Counsel Information” section of the
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`“Other Information” section of the petition filing process (this field being referred
`
`to hereinafter as the “Power of Attorney Field”).
`
`8.
`
`For IPR2014-00351 and IPR2014-00182, two differences between the
`
`way that I filed (a)(1) the petition for IPR2014-00351 (which includes a certificate
`
`of service for same at the last page), (a)(2) the 27 exhibits (filed on January 14,
`
`2014) for same, and the (a)(3) power of attorney for same (which includes a
`
`certificate of service for the power of attorney at the last page), and the way that I
`
`filed (b)(1) Exhibit 1019 (the petition for IPR2014-00182), (b)(2) the 17 exhibits to
`
`Exhibit 1019 (which are compiled as Exhibit 1028), (b)(3) Exhibit 1021 (the
`
`November 21, 2013 certificate of service for Exhibit 1019 and the 17 exhibits of
`
`Exhibit 1028), and (b)(4) Exhibit 1025 (the November 22, 2013 power of attorney
`
`and certificate of service for same), are:
`
`D1: I uploaded the (a)(3) power of attorney to the Power of Attorney Field
`before I submitted the (a)(1) petition (for IPR2014-00351), whereas I did not
`upload the (b)(4) Exhibit 1025 power of attorney (in any way) before I
`submitted the (b)(1) Exhibit 1019 petition; and
`
`D2: On November 22, 2013, I uploaded and submitted the (b)(4) Exhibit
`1025 power of attorney as a “Notice” using the “Upload Document” button
`at the top of the screen associated with IPR2014-00182 in “My Docket”—
`and not to the Power of Attorney Field—the day after I submitted the (b)(1)
`Exhibit 1019 petition.
`
`53480650.1
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`Before I uploaded the (b)(4) Exhibit 1025 power of attorney as described in D2
`
`above, I called (571) 272-7822 on November 22, 2013 twice (Exhibit 1032 is a call
`
`log for my phone extension (63031) prepared by a member of my firm’s IT staff
`
`(Matt Ridings, having the title of Administrator of DR/BC Planning), showing that
`
`I made outgoing calls to (571) 272-2822 on November 22, 2013 (irrelevant calls
`
`having been redacted)) and explained to the person (a woman) who answered that I
`
`had filed two IPR petitions the day before and needed to now file my powers of
`
`attorney for those petitions, and wanted to know what kind of a document to
`
`designate them as. She indicated I should file them as “Notices.” I did not think to
`
`ask her about uploading them to the Power of Attorney Field, and she did not
`
`suggest that I use the Power of Attorney Field.
`
`9.
`
`Based on my experience with the filings in IPR2014-00182 and
`
`IRP2014-00186 and the filings in IRP2014-00351 and IPR2014-00352, I believe
`
`the D1 difference described above in paragraph 8 is the reason that I did not
`
`receive a filing receipt email of the type of Exhibit 1031 of IPR2014-00351, nor
`
`was a screen acknowledgement of the type described in the last sentence of
`
`paragraph 5 of this declaration displayed to me, after I clicked a “submit” button as
`
`described in paragraph 5 of Exhibit 1018 of IPR2014-00351. In other words,
`
`based on my experience with the filings in IPR2014-00182 and IRP2014-00186
`
`and the filings in IRP2014-00351 and IPR2014-00352, I believe that a user of
`
`53480650.1
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`
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`PRPS must upload a document (such as a power of attorney) to the Power of
`
`Attorney Field before submitting an IPR petition in order for such a submission to
`
`generate a filing receipt email of the type of Exhibit 1031 of IPR2014-00351 and a
`
`screen acknowledgement of the type described in the last sentence of paragraph 5
`
`of this declaration.
`
`10. Another difference between the filings described above in paragraph 8
`
`was that I uploaded and submitted the (b)(3) Exhibit 1021 certificate of service
`
`after I submitted the (b)(1) Exhibit 1019 petition, whereas the (a)(1) petition (for
`
`IPR2014-00351) included a certificate of service at the last page. However, there
`
`is no specific field designated for uploading a certificate of service in the petition
`
`filing process—as there is for uploading a power of attorney—and the Exhibit
`
`1019 petition included a certificate of service at the last page (albeit it one that
`
`referenced only email service on Patent Owner’s litigation counsel, and not
`
`Express Mail service on Patent Owner at the correspondence address of record).
`
`Therefore, I do not believe this difference is relevant to me not receiving a filing
`
`receipt email of the type of Exhibit 1031 of IPR2014-00351, nor being able to view
`
`a screen acknowledgement of the type described in the last sentence of paragraph 5
`
`of this declaration, after I clicked a “submit” button as described in paragraph 5 of
`
`Exhibit 1018 of IPR2014-00351.
`
`53480650.1
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`
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`11.
`
`The only other difference between the filings described above in
`
`paragraph 8 was that I submitted my payment for the (b)(1) Exhibit 1019 petition
`
`on a different day (by one minute) than the day on which I submitted the (b)(1)
`
`Exhibit 1019 petition, whereas I submitted my payment for the (a)(1) petition (for
`
`IPR2014-00351) on the same day that I submitted the (a)(1) petition. However, the
`
`actual time between payment submission and petition submission was about the
`
`same for both IRP2014-00182 and IPR2014-00351 (around 10 to 20 minutes
`
`each), and payment submission and petition submission were all part of the same
`
`login session for both IRP2014-00182 and for IPR2014-00351. Therefore, I do not
`
`believe this difference is relevant to me not receiving a filing receipt email of the
`
`type of Exhibit 1031 of IPR2014-00351, nor being able to view a screen
`
`acknowledgement of the type described in the last sentence of paragraph 5 of this
`
`declaration, after I clicked a “submit” button as described in paragraph 5 of Exhibit
`
`1018 of IPR2014-00351.
`
`12.
`
`For IPR2014-00186, the only Category I Document is Exhibit 1021 of
`
`IPR2014-00352. I did not receive a filing receipt email of the type of Exhibit 1031
`
`of IPR2014-00351, nor do I recall seeing a screen acknowledgement of the type
`
`described in the last sentence of paragraph 5 of this declaration, after clicking a
`
`“submit” button as described in paragraph 4 of Exhibit 1029 of IPR2014-00352.
`
`53480650.1
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`13.
`
`For IPR2014-00352 and IPR2014-00186, the only two differences
`
`between the way that I filed (a)(1) the petition for IPR2014-00352 (which
`
`includes a certificate of service for same and its exhibits at the last page), (a)(2) the
`
`28 exhibits (filed on January 14, 2014) for same, and the (a)(3) power of attorney
`
`for same (which includes a certificate of service for the power of attorney at the
`
`last page), and the way that I filed (b)(1) Exhibit 1021 (the petition for IPR2014-
`
`00186, which included a November 21, 2013 certificate of service for the petition
`
`and its exhibits), (b)(2) the 19 exhibits to Exhibit 1021 (which are compiled as
`
`Exhibit 1022), and (b)(3) Exhibit 1026 (the November 22, 2013 power of attorney
`
`and certificate of service for same), are the same as differences D1 and D2
`
`described above. In other words, with respect to IPR2014-00352, I uploaded the
`
`(a)(3) power of attorney to the Power of Attorney Field before I submitted the
`
`(a)(1) petition (for IPR2014-00352), whereas, with respect to IPR2014-00186, I
`
`did not upload the (b)(3) Exhibit 1026 power of attorney (in any way) before I
`
`submitted the (b)(1) Exhibit 1021 (for IPR2014-00186); and I uploaded and
`
`submitted the (b)(3) Exhibit 1026 power of attorney as a “Notice” using the
`
`“Upload Document” button at the top of the screen associated with IPR2014-00186
`
`in “My Docket”—and not to the Power of Attorney Field—the day after I
`
`submitted the (b)(1) Exhibit 10219 petition. Based on my experience with the
`
`filings in IPR2014-00182 and IRP2014-00186 and the filings in IRP2014-00351
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`53480650.1
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`
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`and IPR2014-00352, I believe the first of these two differences is the reason that I
`
`did not receive a filing receipt email of the type of Exhibit 1031 of IPR2014-
`
`00351, nor was a screen acknowledgement of the type described in the last
`
`sentence of paragraph 5 of this declaration displayed to me, after I clicked a
`
`“submit” button as described in paragraph 4 of Exhibit 1029 of IPR2014-00352.
`
`14. Based on my experience with the filings in IPR2014-00182 and
`
`IRP2014-00186 and the filings in IRP2014-00351 and IPR2014-00352, I do not
`
`know whether the second sentence in Section A8 (‘If you did not receive an
`
`acknowledgement on the screen or a filing receipt via email, the document most
`
`likely has not been uploaded properly and you should contact the Board at (571)
`
`272-7822.’) (emphasis added) applies to Category II Documents. For example,
`
`while I did not receive a filing receipt via email each time I uploaded one of the 27
`
`exhibits associated with the IPR petition for IPR2014-00351 prior to submitting
`
`that IPR petition (as discussed above in paragraph 5), I do not recall whether some
`
`type of “an acknowledgement” appeared on the screen following each upload of
`
`each of those 27 exhibits.
`
`15.
`
`For IPR2014-00182, the only Category II Documents are the 17
`
`exhibits attached as Exhibit 1028 of IPR2014-00351. I did not receive a filing
`
`receipt via email each time I uploaded one of those 17 exhibits. I do not recall
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`53480650.1
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`
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`whether some type of “an acknowledgement” appeared on the screen following
`
`each upload of each of those 17 exhibits.
`
`16.
`
`For IPR2014-00186, the only Category II Documents are the 19
`
`exhibits attached as Exhibit 1022 of IPR2014-00352. I did not receive a filing
`
`receipt via email each time I uploaded one of those 19 exhibits. I do not recall
`
`whether some type of “an acknowledgement” appeared on the screen following
`
`each upload of each of those 19 exhibits.
`
`17. Based on my experience with the filings in IPR2014-00182 and
`
`IRP2014-00186 and the filings in IRP2014-00351 and IPR2014-00352, the third
`
`sentence in Section A8 (‘You may also check whether the document is listed in the
`
`file contents of the proceeding.’) applies to Category I Documents, Category II
`
`Documents, and Category III Documents. For example, through at least some time
`
`in December of 2013, I was able to see every document that I uploaded in
`
`IRP2014-00182 and in IPR2014-00186 in the “Papers” and “Exhibits” sub-tabs of
`
`the “Documents” tab associated with those respective proceedings (i.e., every
`
`document that I uploaded for each of IPR2014-00182 and IPR2014-00186 was
`
`listed in the file contents of that proceeding). For IPR2014-00182, those
`
`documents consisted of Exhibit 1019 (the petition for IPR2014-00182); the 17
`
`exhibits to Exhibit 1019, which are compiled as Exhibit 1028; Exhibit 1021 (the
`
`November 21, 2013 certificate of service for Exhibit 1019 and the 17 exhibits of
`
`53480650.1
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`
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`Exhibit 1028); and Exhibit 1025 (the November 22, 2013 power of attorney and
`
`certificate of service for same). For IPR2014-00186, those documents consisted of
`
`Exhibit 1021 (the petition for IPR2014-00186, which included a November 21,
`
`2013 certificate of service for the petition and its exhibits); the 19 exhibits to
`
`Exhibit 1021, which are compiled as Exhibit 1022; and Exhibit 1026 (the
`
`November 22, 2013 power of attorney and certificate of service for same). I am
`
`also able to see every document I have uploaded in both the -00351 and -00352
`
`proceedings.
`
`18.
`
`Paper No. 8 and Exhibit 1028 of IPR2014-00351 qualify as Category
`
`III Documents. After I uploaded and submitted them on February 6, 2014, I
`
`received the filing courtesy notice email of Exhibit 1033, and I recall seeing some
`
`type of an acknowledgement on the screen. Furthermore, I am able to see these
`
`documents in the “Papers” and “Exhibits” sub-tabs of the “Documents” tab
`
`associated with IPR2014-00351.
`
`19. With respect to IPR2014-00182, the Exhibit 1025 (of IPR2014-
`
`00351) power of attorney is a Category III Document. After I uploaded and
`
`submitted it as described in paragraph 9 of Exhibit 1018 (of IPR2014-00351) and
`
`more specifically in paragraph 8 of this declaration, I did not attempt to again
`
`submit the petition for IPR2014-00182. Furthermore, I did not receive a filing
`
`receipt email of the type of Exhibit 1031 of IPR2014-00351 or a filing courtesy
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`53480650.1
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`
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`notice email of the type of Exhibit 1033 of IPR2014-00351, nor was a screen
`
`acknowledgement of the type described in the last sentence of paragraph 5 of this
`
`declaration displayed to me (though I do not recall whether some type of “an
`
`acknowledgement” appeared on the screen), after I took the aforementioned
`
`actions. (However, and as explained above generally in paragraph 17, I was able
`
`to view the Exhibit 1025 power of attorney as a Notice in the “Papers” sub-tabs of
`
`the “Documents” tab associated with IPR2014-00182.) Based on my experience
`
`with the filings in IPR2014-00182 and IRP2014-00186 and the filings in IRP2014-
`
`00351 and IPR2014-00352, I believe the reason that I did not receive a filing
`
`receipt email of the type of Exhibit 1031 of IPR2014-00351 or a filing courtesy
`
`notice email of the type of Exhibit 1033 of IPR2014-00351, nor was a screen
`
`acknowledgement of the type described in the last sentence of paragraph 5 of this
`
`declaration displayed to me, after I took the aforementioned actions is that I had
`
`not previously uploaded the Exhibit 1025 power of attorney to the Power of
`
`Attorney Field prior to clicking a “submit” button as described in paragraph 5 of
`
`Exhibit 1018 of IPR2014-00351.
`
`20. With respect to IPR2014-00186, the Exhibit 1026 (of IPR2014-
`
`00352) power of attorney is a Category III Document. After I uploaded and
`
`submitted it as described in paragraph 7 of Exhibit 1029 (of IPR2014-00352) and
`
`more specifically in paragraph 13 of this declaration, I did not attempt to again
`
`53480650.1
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`
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`submit the petition for IPR2014-00186. Furthermore, I did not receive a filing
`
`receipt email of the type of Exhibit 1031 of IPR2014-00351 or a filing courtesy
`
`notice email of the type of Exhibit 1033 of IPR2014-00351, nor was a screen
`
`acknowledgement of the type described in the last sentence of paragraph 5 of this
`
`declaration displayed to me (though I do not recall whether some type of “an
`
`acknowledgement” appeared on the screen), after I took the aforementioned
`
`actions. (However, and as explained above generally in paragraph 17, I was able
`
`to view the Exhibit 1026 power of attorney as a Notice in the “Papers” sub-tabs of
`
`the “Documents” tab associated with IPR2014-00186.) Based on my experience
`
`with the filings in IPR2014-00182 and IRP2014-00186 and the filings in IRP2014-
`
`00351 and IPR2014-00352, I believe the reason that I did not receive a filing
`
`receipt email of the type of Exhibit 1031 of IPR2014-00351 or a filing courtesy
`
`notice email of the type of Exhibit 1033 of IPR2014-00351, nor was a screen
`
`acknowledgement of the type described in the last sentence of paragraph 5 of this
`
`declaration displayed to me, after I took the aforementioned actions is that I had
`
`not previously uploaded the Exhibit 1026 power of attorney to the Power of
`
`Attorney Field prior to clicking a “submit” button as described in paragraph 7 of
`
`Exhibit 1029 of IPR2014-00352.
`
`21. As of November 22, 2013, I believed I had successfully filed the
`
`petitions for both IPR2014-00182 and IPR2014-00186. My belief was based on
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`53480650.1
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`my having: taken the actions described in Exhibit 1019 of IRP2014-00351 and in
`
`Exhibit 1029 of IPR2014-00352; received the fee receipts of Exhibit 1022 of
`
`IPR2014-00351 and Exhibit 1023 of IPR2014-00352; and been told by the person
`
`at the Board to whom I spoke on November 22, 2013 (as described above in
`
`paragraph 8) that it was acceptable to upload the powers of attorney as Notices.
`
`22. My belief is reflected in the fact that, on behalf of Petitioner and
`
`Petitioner’s co-defendants in the Litigation, I represented to the United States
`
`District Court for the District of Nevada that both IPR petitions had been filed in a
`
`joint motion to stay the Litigation that the parties filed on November 22, 2013. See
`
`pages 2 and 3 of Exhibit 1034 (which comprises the motion and copies of Exhibit
`
`1019 of IPR2014-00351 (as Exhibit A to the joint motion) and Exhibit 1022 of
`
`IPR2014-00352 (as Exhibit B to the joint motion)).
`
`23. My belief is also reflected in the fact that, on November 22, 2013, in
`
`an email exchange between myself and Mr. Hamill leading up to the parties filing
`
`the joint motion of Exhibit 1034, I responded to Mr. Hamill’s question of “Do we
`
`need to provide anything from the PTO confirming [the IPR petitions] were filed?”
`
`with the answer, “No – takes the Board about one to two weeks to accord an
`
`official filing date.” See Ex. 1035.
`
`24. Subsequent to November 22, 2013, and prior to December 19, 2013, I
`
`logged into the PRPS Website several times, and checked each of the IPR
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`proceedings (i.e., IPR2014-00182 and IPR2014-00186) in “My Docket” for a
`
`notice from the Board according each respective IPR proceeding a filing date.
`
`During this time, I would also periodically check the IPR proceeding numbers
`
`before (e.g., IPR2014-00180) and after (e.g., IPR2014-00200) mine to get a sense
`
`of when the Board was issuing such notices. I recall having the impression,
`
`following my periodic checks, that it was taking the Board around 2-3 weeks from
`
`the time the IPR petitions were filed to issue such notices.
`
`25. A member of our IT staff, Pepe Hererra (having the title of Senior IT
`
`Support Analyst), attempted to help me determine if there is evidence associated
`
`with my computer usage that shows my visits to the PRPS Website, as described
`
`above in paragraph 24. His department used a program called IEHistoryView
`
`v1.70 (available from http://www.nirsoft.net/utils/iehv.html) to pull the Internet
`
`Explorer history of my laptop during the time period discussed above. The
`
`relevant portion of that history is attached as Exhibit 1036, and it shows that I
`
`visited a website with “ptabtrials” in the name or plugged “ptabtrials” into a
`
`Google search window (as reflected by the entries in the “URL” column), on at
`
`least the following days (indicated in the “Modified Date” column) between
`
`November 22, 2013 and December 24, 2013: December 3, 4, 5, 6, 9, 10, 11, 12, 16,
`
`17, 18, 21, 22, and 23. See all pages of Ex. 1036.
`
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`26. After two to three weeks from November 22, 2013, when I logged in
`
`to the PRPS Website, checked each of the IPR proceedings (i.e., IPR2014-00182
`
`and IPR2014-00186) in “My Docket” for a notice from the Board according each
`
`respective IPR proceeding a filing date, and did not see such a notice, I recall
`
`believing that the reason that the Board had not issued such a notice in either of my
`
`IPR proceedings was that whichever paralegal was assigned to my cases was likely
`
`struggling with the issue of whether to accord IPR2014-00182 and IPR2014-00186
`
`a filing date of November 21, 2013 (which is when they complied with all statutory
`
`requirements) or November 22, 2013 (which is when the powers of attorney had
`
`been filed). I recall believing this was likely a novel and difficult issue for
`
`whoever had to handle it.
`
`27. On December 19, 2013, I was sufficiently uncomfortable at not
`
`having received a notice according either IPR2014-00182 or IPR2014-00186 a
`
`filing date that I called (571) 272-2822 and spoke with Kimberly Jordan at the
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`Board. Exhibit 1037 is a call log prepared by a member of my firm’s IT staff
`
`(Jeffery Robinson, having the title of Administrator of Telecommunications),
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`showing that I made outgoing calls to (571) 272-2822 from my office phone
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`between December 16, 2013 and January 9, 2014 on: December 19, 2013;
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`December 23, 2013; January 6, 2014; January 7, 2014; January 8, 2014; and
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`January 9, 2014.
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`53480650.1
`
`- 17 -
`
`
`
`28. On December 19, 2013, I told Ms. Jordan that I would like to find out
`
`when I should expect to receive the notices according filing dates to IPR2014-
`
`00182 and IPR2014-00186, and provided her with the IPR numbers. She informed
`
`me that she would have to do some research because my IPR petitions were not
`
`visible to her. I believe that—at that time—I explained that I had filed the
`
`petitions and exhibits and paid the fees for each petition by November 21, 2013,
`
`but that I had filed the powers of attorney on the following day.
`
`29. On December 20, 2013, Ms. Jordan left me the following voicemail
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`message:
`
`Hi Mr. Garrett, this is Kimberly Jordon from the Patent Trial and Appeal
`Board calling you back. You had questions about a couple IPR cases –
`IPR2014-182 and -186. We’re showing that you do have them in the system
`but they haven’t been fully submitted. Your fees have cleared but the actual
`petitions have not been submitted yet. You need to go into your docket and
`when you click the petition or it says enter petition under my pending task,
`there’s a hyperlink there, please open up the case, then go to the review
`petition page on the left hand side, click on the submit button at the bottom
`(the review petition page should be on the left) and then when you get to that
`review petition page click on the submit button at the bottom of the page.
`Once they’re actually fully submitted then you should be able to go from the
`public side and be able to see that they’re available then. I’m only going to
`be here for may be another 45 minutes or so, but if you have questions later
`on today or on Monday or Tuesday, you can call back our helpline, our main
`helpline, which is 571.272.7822 and there will be a supervisor there to be
`
`53480650.1
`
`- 18 -
`
`
`
`able to help you answer your questions if you still can’t get them submitted.
`I just wanted to give you a call back and let you know. Thanks. Bye-bye.
`
`I did not take the actions Ms. Jordan described because I expected that doing so
`
`would have caused me to receive a (then) present filing date rather than a filing
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`date of no later than November 22, 2013, and I wanted more information from the
`
`Board about whether the Board stored any electronic records that showed that I
`
`had, in fact, clicked a “submit” button on November 21, 2013 for each IPR
`
`petition.
`
`30.
`
`I called back the Board twice from my office phone on December 23,
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`2013 (see Ex. 1037). I recall asking to speak to Ms. Jordan, who was not there. I
`
`recall asking the person to whom I was directed for more information about
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`whether the Board kept a record of my having clicked a “submit” button when I
`
`filed the two IPR petitions. I recall being told by the woman I spoke to that the
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`documents for both IPR petitions had since been removed from the PRPS Website
`
`because 30 days had elapsed since they were uploaded. I recall being told by the
`
`woman to whom I spoke that I might receive a call back from Frances Han that
`
`week, but I did not receive a call back from Ms. Han that week.
`
`31. On December 26, 2013, as my family and I were driving from Austin,
`
`Texas to Colorado for a holiday vacation, I called (571) 272-7822 from my cell
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`phone (Exhibit 1038 is an AT&T call log of my relevant cell phone usage, with
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`53480650.1
`
`- 19 -
`
`
`
`irrelevant calls having been redacted) and spoke with Kimberly Jordan again, and
`
`explained that I would like to know if the Board had any record of me clicking
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`“submit” for each IPR petition, albeit at perhaps the incorrect time from the
`
`Board’s point of view, because I recalled clicking “submit” in both IPRs. I also
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`asked if the documents could be restored to the website. She indicated she would
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`check and get back to me.
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`32. On December 30, 2013, Ms. Jordan left me the following voicemail
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`message:
`
`Hi Mr. Garrett this is Kimberly Jordan from the Patent Travel & Appeal
`Board returning your call regarding the submission of two IPR cases or
`potential IPR cases 182 and 186. I checked with our technical staff, support
`staff, and while they had a record of the fees being paid and the other papers
`during those thirty days, they don’t have evidence that the submit button was
`pushed or clicked on. So, therefore the cases did not end up being fully
`submitted or filed, I should say. I just wanted to let you know they did
`check and there was no, nothing to show that the submit button had actually
`been pushed. Which is why, then after thirty days the cases were essentially
`deleted from system, and deleted from your docket. I just wanted to let you
`know that, that they didn’t find anything on that part of it, so just want to let
`you know. If you have further questions you can give us a call back here at
`the Trial helpline at 571-272-7822, and if I’m not here there will be someone
`else that will be answering those calls. Thank you, bye-bye.
`
`53480650.1
`
`- 20 -
`
`
`
`I called Ms. Jordan back on December 30, 2013 from my cell phone (see page 2 of
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`Ex. 1038), and asked her for a list of circumstances under which the “submit”
`
`button could be clicked—but not recognized—when filing an IPR petition, and
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`whether the Board would have a record of such “submit” button clicks. Ms. Jordan
`
`indicated she did not know the answers but would try to find out, and that she
`
`would likely have Frances Han call me back to address my questions, because she
`
`(Ms. Jordan) was not familiar with those technical issues.
`
`33.
`
`I do not recall receiving a call from Ms. Han by January 6, 2014, so I
`
`called (571) 272-2822 on January 6, 2014 and left a message for her to call me (see
`
`page 1 of Ex. 1037). I called (571) 272-2822 again on January 7, 2014, twice on
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`January 8, 2014, and once on January 9, 2014. See Ex. 1037 at pages 1-2. Over
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`the course of my January 7 and January 8 calls to the Board, I spoke with Ms. Han
`
`and explained that I wanted to know: whether it was possible to click the “submit”
`
`button in attempting to file an IPR petition in a way that would not—for whatever
`
`reason—be recognized by the Board as valid; whether the Board recorded such
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`events; whether the Board could recall any record of the documents I had uploaded
`
`for IPR2014-00182 and IPR2014-00186; and whether the Board recorded key
`
`strokes or mouse clicks associated with the uploading and filing of documents for
`
`IPRs. During my second January 8, 2014 call to (571) 272-2822 (at 13:21:30 – see
`
`Ex. 1037 at page 2), I spoke with Ms. Han and learned from her that: (a) it was
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`53480650.1
`
`- 21 -
`
`
`
`possible to click the “submit” button when attempting to file an IPR petition and
`
`the IPR petition would not be filed; (b) the Board did not keep any electronic
`
`records of such unsuccessful “submit” button clicks; (c) the Board did not still
`
`have access to any of the documents I had uploaded in association with IPR2014-
`
`00182 or IPR2014-00186; (d) the Board did not record mouse clicks or key strokes
`
`associated with the uploading and filing of documents for IPRs; and (e) if I wanted
`
`to proceed, I would have to re-file the IPR petitions and contact the Board by email
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`to request permission to file a motion to be accorded an earlier filing date.
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`34. On January 9, 2014, I called (571) 272-2822 (see Ex. 1037 at page 2),
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`and left a message for Ms. Han to let me know whether I needed to involve the
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`Patent Owner in my email request to the Board to be accorded an earlier filing date
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`for the IPR petitions I planned to re-file. I did not receive a call back in response
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`to that message.
`
`35.
`
`I learned from David Ede, the Manager of Information Technology i
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