`
`Paper No.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OneD Material LLC
`Petitioner
`v.
`
`Nexeon Limited
`Patent Owner
`
`Patent No. 8,940,437
`Issue Date: January 27, 2015
`
`Title: METHOD OF FABRICATING STRUCTURED PARTICLES COMPOSED
`OF SILICON OR A SILICON-BASED MATERIAL AND THEIR USE IN
`LITHIUM RECHARGEABLE BATTERIES
`
`Inter Partes Review No. IPR2017-00961
`
`PETITIONER’S RESPONSE TO NOTICE OF FILING DATE
`ACCORDED TO PETITION
`
`
`
`U.S. Patent No. 8,940,437
`Response to Notice of Filing Date Accorded to Petition
`
`I.
`
`Introduction
`
`Petitioners hereby respond to the Notice of Filing Date Accorded to Petition
`
`and Time for Filing Patent Owner Preliminary Response. IPR2017-00961, Paper 7.
`
`In the Notice, the Board identified three defects with the filing:
`
`• The list of Exhibits on page iii of the Petition is missing
`Exhibits 1015, 1023, and 1032.
`
`• The exhibit labels of Exhibits 1042 and 1045 incorrectly
`identifies the exhibits as “Ex. 1053” and “Ex. 1044”,
`respectively.
`
`• Failure to include in the petition a certification stating the
`number of words in the petition and whether that amount
`is within the word limit. 37 C.F.R. § 42.24(a), (d).
`
`In Response, Petitioners are filing corrected Exhibits. Petitioners note that the
`
`Corrected Petition previously filed on February 21, 2017 (Paper 4) included the
`
`missing Exhibits from the list of Exhibits (specifically, Exhibits 1015, 1023, and
`
`1032 were added to the List of Exhibits in the Corrected Petition). Additionally,
`
`both the originally filed Petition (Paper 2) and the Corrected Petition (Paper 4)
`
`included the certification stating the number of words in the petition and whether
`
`that amount was within the word limit. See, Papers 2 and 4, the page between the
`
`Conclusion and the Certificate of Service.
`
`II.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`On February 21, 2017, Petitioner filed a petition for inter partes review in
`
`1
`
`
`
`U.S. Patent No. 8,940,437
`Response to Notice of Filing Date Accorded to Petition
`this case. IPR2017-00961, Paper 2. That same date, Petitioners filed a Motion to
`
`Correct a Clerical Error (Paper 3) and a Corrected Petition (Paper 4) to correct the
`
`missing exhibits in the table of exhibits.
`
`Additionally, both the originally filed Petition (Paper 2) and the Corrected
`
`Petition (Paper 4) included the certificate of compliance, indicating the word count
`
`to be less than 10,000 words and that the word count complied with the word limit
`
`set forth in 37 C.F.R. §42.24(a),(d).
`
`Petitioners submit herewith corrected versions of Exhibits 1015, 1023, and
`
`1032.
`
`The undersigned attorney welcomes a telephone call should the Board have
`
`any additional requests or questions.
`
`III. Conclusion
`
`For the foregoing reasons, Petitioners respectfully submit the Corrected
`
`Petition (Paper 4) and the corrected Exhibits submitted herewith resolve the defects
`
`identified in the Notice of Filing Date Accorded to Petition (Paper 7).
`
`Respectfully submitted,
`
`Dated: March 17, 2017
`
`By:
`
`/Jennifer Hayes/
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
`Tel. (213) 629-6179
`Fax (866) 781-9391
`
`2
`
`
`
`U.S. Patent No. 8,940,437
`Response to Notice of Filing Date Accorded to Petition
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing PETITIONER’S
`
`RESPONSE TO NOTICE OF FILING DATE ACCORDED TO PETITION along
`
`with Corrected Exhibits 1042 and 1045 were served on February 21, 2017 by
`
`placing a copy into FEDERAL EXPRESS directed to the attorneys of record for
`
`the patent at the following address:
`
`__________
`
`S. Richard Carden
`Registration No. 44588
`McDonnell Boehnen Hulbert & Berghoff LLP
`300 S. Wacker Drive, Suite 3200
`Chicago, IL 60606
`
`James V. Suggs
`Registration No. 50419
`McDonnell Boehnen Hulbert & Berghoff LLP
`300 S. Wacker Drive, Suite 3200
`Chicago, IL 60606
`
`Counsel for Patent Owner, Nexeon Ltd.
`
`A courtesy copy of the Response and Corrected Exhibits were served in their
`
`entirety on March 17, 2017 by e-mail on the following individuals:
`
`Richard Carden
`
`carden@mbhb.com
`
`James Suggs
`
`suggs@mbhb.com
`
`By: /Jennifer Hayes/
`Counsel for Petitioner
`
`3
`
`
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