`Sent: Friday, August 9, 2019 3:16 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: kreed@kilpatricktownsend.com; LSI601IPR@kilpatricktownsend.com; TMayle@kilpatricktownsend.com;
`dsipiora@kilpatricktownsend.com; Mark.Knedeisen@klgates.com; Patrick.McElhinny@klgates.com; RGiunta‐
`PTAB@WolfGreenfield.com; GHrycyszyn‐PTAB@WolfGreenfield.com; Edward Gates
`<Edward.Gates@WolfGreenfield.com>; Charles Steenburg <Charles.Steenburg@WolfGreenfield.com>
`Subject: IPR2017‐01068 (LSI v. Regents of the university of Minnesota ) ‐ Request for Conference Call
`
`Dear Board,
`
`Pursuant to the Board’s Standard Operating Procedure 9 at 16-17 (discussing the handling of a case where a
`petition for certiorari is filed), the University of Minnesota (“UMN”) requests a conference call with the Board
`to request a “stay of proceedings on remand” pending final resolution by the Supreme Court of UMN’s
`forthcoming appeal on the applicability of sovereign immunity to IPR. Petitioner does not oppose.
`
`Continued Stay of the Proceedings
`UMN’s unopposed proposal is that the Board order a similar suspension to the one the Board recently ordered in
`four IPRs involving the Board of Regents, The University of Texas System (order attached). Specifically, UMN
`requests that the Board:
`
`(1) order this proceedings be suspended until the earlier of the expiration of a deadline to file, or the final
`disposition of, a petition for writ of certiorari in the United States Supreme Court for Regents of the
`University of Minnesota v. LSI Corp., Case No. 2018-1599; and
`
`(2) if the Supreme Court denies the petition for cert or ultimately rules against UMN on the merits, the
`deadline for UMN to file any Preliminary Response in this proceedings be set for two months from
`the denial of the petition for cert or the Supreme Court’s decision on the merits.
`
`Other IPRs Pending Against UMN
`Patent owner is requesting a similar suspension in ten other pending UMN IPRs. See IPR2017-01186, -01197, -
`01200, -01213, -01214, -01219, (Ericsson v. Regents of the University of Minnesota) (unopposed); IPR-2017-
`01712, -01753, -02004, -02005 (Gilead v. Regents of the University of Minnesota) (opposed).
`
`1
`
`
`
`Ericsson does not oppose a continued suspension of the six IPRs Ericsson filed against UMN. Gilead does oppose
`a continued suspension of the four IPRs Gilead filed against UMN.
`
`Availability For A Conference Call
`The parties to the LSI IPR are conferring on their availability next week. The parties will follow-up with the
`Board to provide available dates and times for a telephone conference.
`
`Respectfully submitted,
`
`
`
`Gerald B. Hrycyszyn | Shareholder
`Gerald.Hrycyszyn@WolfGreenfield.com
`617.646.8313 | fax 617.646.8646
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue | Boston, MA 02210
`405 Lexington Avenue | New York, NY 10174
`http://www.wolfgreenfield.com |
`
`
`
`
`
`
`
`
`This e-mail message and any attachments may contain confidential or privileged information. If you are not the intended recipient, please notify me
`immediately by replying to this message. Please destroy all copies of this message and any attachments. Thank you.
`
`
`From: Hrycyszyn, Gerald B.
`Sent: Monday, July 29, 2019 2:52 PM
`To: trials@uspto.gov
`Cc: 'kreed@kilpatricktownsend.com' <kreed@kilpatricktownsend.com>; 'LSI601IPR@kilpatricktownsend.com'
`<LSI601IPR@kilpatricktownsend.com>; 'TMayle@kilpatricktownsend.com' <TMayle@kilpatricktownsend.com>;
`'dsipiora@kilpatricktownsend.com' <dsipiora@kilpatricktownsend.com>; 'Mark.Knedeisen@klgates.com'
`<Mark.Knedeisen@klgates.com>; 'Patrick.McElhinny@klgates.com' <Patrick.McElhinny@klgates.com>; PTAB Rich
`Giunta <RGiunta‐PTAB@WolfGreenfield.com>; PTAB Gerald Hrycyszyn <GHrycyszyn‐PTAB@WolfGreenfield.com>;
`Gates, Edward <Edward.Gates@WolfGreenfield.com>; Steenburg, Charles <Charles.Steenburg@WolfGreenfield.com>
`Subject: IPR2017‐01068 (LSI v. Regents of the university of Minnesota ) ‐ Apprising the Board of Developments in
`Related Appellate Proceedings
`
`Dear Board,
`
`The Federal Circuit issued its mandate in Regents of the Univ. of Minn. v. LSI Corporation case today. UMN intends to
`file a petition for certiorari with the Supreme Court.
`
`There are eleven IPRs pending involving the University of Minnesota (UMN) that are currently all stayed, including the
`one IPR referenced above. UMN has reached out to the petitioners in all eleven cases to meet and confer about
`whether petitioners agree with UMN that the stays of the IPRs should be maintained pending Supreme Court review of
`the Federal Circuit’s decision, as was recently ordered in four IPRs involving the Board of Regents, The University of
`Texas System (order attached).
`
`Subject to other guidance from the Board, UMN will inform the Board of the results of the meet and confer after it has
`taken place.
`
`Respectfully submitted,
`
`
`
`2
`
`
`
`Gerald B. Hrycyszyn | Shareholder
`Gerald.Hrycyszyn@WolfGreenfield.com
`617.646.8313 | fax 617.646.8646
`Wolf, Greenfield & Sacks, P.C.
`600 Atlantic Avenue | Boston, MA 02210
`405 Lexington Avenue | New York, NY 10174
`http://www.wolfgreenfield.com |
`
`
`
`
`
`
`
`
`This e-mail message and any attachments may contain confidential or privileged information. If you are not the intended recipient, please notify me
`immediately by replying to this message. Please destroy all copies of this message and any attachments. Thank you.
`
`
`
`3
`
`