`IPR2017-00621 (Patent D723,781 S)
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`EXHIBIT 3001
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`From: Kurt Riester [mailto:KRiester@bannerwitcoff.com]
`Sent: Wednesday, February 7, 2018 1:09 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Christopher J. Renk <CRenk@bannerwitcoff.com>; Erik Maurer <EMaurer@bannerwitcoff.com>;
`Michael Harris <MHarris@bannerwitcoff.com>; Audra Eidem Heinze <AHeinze@bannerwitcoff.com>;
`Lu, Sam <SLu@irell.com>; Chu, Morgan <MChu@irell.com>; Fleming, Michael <MFleming@irell.com>;
`Gordnia, Talin <TGordnia@irell.com>; #SkechersNikeIPR <SkechersNikeIPR@irell.com>; BWLitdocket
`<BWLitdocket@bannerwitcoff.com>
`Subject: Skechers v. NIKE, IPR 2017‐620, ‐621
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`Dear Sir or Madam:
`
`We are counsel for NIKE in Skechers v. NIKE, IPR2017‐620 and IPR2017‐621 (relating to U.S. Patent Nos.
`D723,783 and D723,781).
`
`We write to request a conference call with the Board to request permission to file a paper identifying
`issues improperly raised for the first time in Petitioner’s Reply Brief and that should have been raised in
`its Petition as part of its prima facie case of alleged unpatentability. Specifically, a list identifying the
`issues that were improperly raised, along with citation to the corresponding page numbers of the Reply
`Brief and supporting evidence. See Dell Inc. v. Realtime Data LLC, IPR2016‐01002, 2017 WL 5030344, at
`*10–*13 (PTAB Oct. 31, 2017) (Paper 71) (discussing list approach with approval).
`
`We conferred with counsel for Skechers, copied on this email, regarding availability to participate in the
`call. Counsel for both parties are available on Thursday, February 15, between 12:00 PM and 2:00 PM
`Eastern, or after 3:00 PM Eastern, as well as Tuesday, February 20, between 12:00 PM and 5:00 PM
`Eastern. Please let us know if any of these times is convenient for the Board.
`
`We list below the materials that may be relevant to the call, along with citations to the allegedly
`improper argument and evidence that we provided to counsel for Skechers.
`
` Relevant Papers (applicable to both proceedings)
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`•
`•
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`Paper No. 51 – Petitioner’s Reply Brief
`Exhibit 1029 – Declaration of Robert Anders
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`Allegedly Improper Materials
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`Skechers’ argument that the “rounded channel” feature is indefinite
`o
`‘781 Reply at pp. 11–15; Anders Decl. at ¶¶ 34–44
`o
`‘783 Reply at pp. 11–17; Anders Decl. at ¶¶ 33–43
`Skechers’ argument that RCD0007 discloses the “rounded channel” feature
`o
`‘781 Reply at pp. 21–23; Anders Decl. at ¶¶ 59, 63–65
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`IPR2017-00620 (Patent D723,783 S)
`IPR2017-00621 (Patent D723,781 S)
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`o
`‘783 Reply at pp. 22–24; Anders Decl. at ¶¶ 56, 60–63
`Skechers’ argument that the combination of RCD0007 and RCD0012 discloses the “rounded
`channel” feature
`o
`‘781 Reply at pp. 33–37; Anders Decl. at ¶¶ 66, 92–94
`o
`‘783 Reply at pp. 34–38; Anders Decl. at ¶¶ 64, 92–94
`Skechers’ argument that the addition of RCD0018 to RCD0007 and RCD0012 renders the
`design obvious
`o
`‘781 Reply at pp. 29–30; Anders Decl. at ¶¶ 81–84
`o
`‘783 Reply at pp. 30–31; Anders Decl. at ¶¶ 81–84
`
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`Thank you.
`
`
`Kurt C. Riester | Attorney
`Banner & Witcoff, Ltd.
`10 South Wacker Drive, Suite 3000
`Chicago, IL 60606
`tel: 312.463.5440 | main: 312.463.5000 | fax: 312.463.5001
`www.bannerwitcoff.com | kriester@bannerwitcoff.com
`
`
`Intellectual Property Law
`Chicago | Washington, DC | Boston | Portland, OR
`
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