From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Jodi McLane; Gaum, R. Eric
`John McInnes; Alissa Digman; White, Ryan O.; Krieger, Daniel J.
`RE: IPR2018-01311 - Request for Authorization
`Tuesday, August 13, 2019 4:37:12 PM
`
`Counsel,
`Patent Owner is hereby authorized to file a motion to strike. Any motion must be filed on or before
`August 16th. The motion is limited to seven substantive pages (not including table of contents and
`table of authorities).
`
`Petitioner must file any opposition on or before August 23rd. The opposition is also limited to seven
`substantive pages. No reply is authorized at this time.
`
`In light of the emails sent earlier today, we take this opportunity to remind counsel that, unless
`authorized previously, emails to the Board should not include “substantive communications” (e.g.,
`argument on an issue) and should not include attachments (e.g., a “draft” motion). See United
`States Patent and Trademark Office, Patent Trial and Appeal Board End to End – Technical Issues #2,
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/patent-
`trial-and-appeal-board-end. Instead, a party sending an email to the Board seeking authorization to
`file a motion “should copy the other party or parties to the proceeding, indicate generally the relief
`being requested or the subject matter of the conference call, state whether the opposing party or
`parties oppose the request, and include times when all parties are available.” Id. We urge counsel
`to adhere to these procedures in the future.
`
`Best regards,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Jodi McLane <Jodi@mcmcip.com>
`Sent: Tuesday, August 13, 2019 1:42 PM
`To: Gaum, R. Eric <egaum@taftlaw.com>; Trials <Trials@USPTO.GOV>
`Cc: John McInnes <John@mcmcip.com>; Alissa Digman <Alissa@mcmcip.com>; White, Ryan O.
`<RWhite@taftlaw.com>; Krieger, Daniel J. <DKrieger@taftlaw.com>
`Subject: IPR2018-01311 - Request for Authorization
`
`Re: Haag-Streit AG v. Eidolon Optical, LLC
` IPR2018-01311
`
`Dear Board:
`
`In response to Petitioner’s email, Patent Owner points to the fact that no prejudice was caused to
`either party as a result of when Patent Owner sought authorization to file its Motion to Strike. Nor
`
`1
`
`IPR2018-01311
`Ex. 3003
`
`

`

`has Petitioner has not alleged any prejudice.
`
`While we acknowledge that motions to strike should generally be requested within a week, this
`requirement is discretionary. Moreover, the deposition of Petitioner’s expert, highlighted the
`properness and need for the Motion to Strike. The request for authorization was sought a little over
`a week after the deposition of Petitioner’s expert and receipt of the transcript.
`
`Should the Board have any further questions, please let us know if a telephone conference would be
`helpful.
`
`Best Regards,
`
`
`Best Regards,
`Jodi
`
`
`Jodi-Ann McLane
`McInnes & McLane, LLP
`Counsel for Patent Owner Eidolon, Optical LLC
`128 Dorrance Street, Suite 220
`Providence, RI 02903
`401.223.5853 ext. 1001
`
`jodi@mcmcip.com
`
`
`
`Visit us at http://mcmcip.com
`
`THIS MESSAGE MAY CONTAIN ATTORNEY WORK PRODUCT
`
`This e-mail message is generated from the law firm of McInnes & McLane, LLP and contains information that is
`confidential and may be privileged as an attorney/client communication or as attorney work product.
`The information is intended to be disclosed solely to the addressee(s). No waiver of this privilege is intended by
`the inadvertent transmittal of such communication to any persons or company other than the intended recipient. If
`you are not the intended recipient, be aware that any disclosure, copying, distribution or use of the contents of this
`email information is prohibited. If you have received this email in error, please notify the sender by return email
`and delete it from your computer system.
`
`
`From: Gaum, R. Eric
`Sent: Tuesday, August 13, 2019 10:14 AM
`
`2
`
`IPR2018-01311
`Ex. 3003
`
`

`

`To: Trials@USPTO.GOV
`Cc: John McInnes ; Alissa Digman ; White, Ryan O. ; Krieger, Daniel J. ; Jodi McLane
`Subject: RE: DRAFT - IPR2018-01311 - Request for Authorization
`
`Re: Haag-Streit AG v. Eidolon Optical, LLC
` IPR2018-01311
`
`Dear Board:
`
`Petitioner, Haag-Streit AG, hereby confirms that it opposes Patent Owner’s request to file its
`proposed Motion to Strike.
`
`Petitioner also submits that Patent Owner’s request for authorization to file its Motion to Strike
`should be denied as untimely. “Generally, authorization to file a motion to strike should be
`requested within one week of the allegedly improper submission.” Trial Practice Guide Update
`(August 2018), at p. 18. Petitioner’s Reply, which is the subject of the Motion to Strike, was filed on
`July 11, 2019. Patent Owner’s request below is dated August 12, 2019, a month after the allegedly
`improper submission.
`
`Respectfully submitted,
`
`R. Eric Gaum
`Counsel for Petitioner Haag-Streit AG
`
`
`
`Taft /
`
`R. Eric Gaum / Partner
`Taft Stettinius & Hollister LLP
`200 Public Square, Suite 3500
`Cleveland, OH 44114-2302
`Tel: 216.241.2838 • Fax: 216.241.3707
`Direct: 216.706.3871 • Cell: 330.606.7986
`www.taftlaw.com / egaum@taftlaw.com
`
`Taft vCard
`
`Subscribe to our law updates
`
`
`
`This message may contain information that is attorney-client privileged, attorney work product or
`otherwise confidential. If you are not an intended recipient, use and disclosure of this message are
`prohibited. If you received this transmission in error, please notify the sender by reply e-mail and delete
`the message and any attachments.
`
`3
`
`IPR2018-01311
`Ex. 3003
`
`

`

`From: Jodi McLane <Jodi@mcmcip.com>
`Sent: Monday, August 12, 2019 4:07 PM
`To: Trials@USPTO.GOV
`Cc: John McInnes <John@mcmcip.com>; Alissa Digman <Alissa@mcmcip.com>; Gaum, R. Eric
`<egaum@taftlaw.com>; White, Ryan O. <RWhite@taftlaw.com>; Krieger, Daniel J.
`<DKrieger@taftlaw.com>
`Subject: FW: DRAFT - IPR2018-01311 - Request for Authorization
`
`Re:
`
` Haag Streit AG v. Eidolon Optical, LLC
` IPR2018-01311
`
`Dear Board:
`
`Patent Owner, Eidolon Optical, LLC, hereby requests authorization to file the attached Motion to
`Strike on what it believes are improper new issues and evidence raised by Petitioner, Haag-Streit AG,
`in its Reply (Paper 23 and relied upon evidence) in the above referenced IPR. Counsel for Petitioner
`has indicated that Petitioner opposes the request.
`
`Best Regards,
`
`Best Regards,
`Jodi
`
`Jodi-Ann McLane
`McInnes & McLane, LLP
`128 Dorrance Street, Suite 220
`Providence, RI 02903
`401.223.5853 ext. 1001
`
`jodi@mcmcip.com
`
`Visit us at http://mcmcip.com
`
`THIS MESSAGE MAY CONTAIN ATTORNEY WORK PRODUCT
`
`This e-mail message is generated from the law firm of McInnes & McLane, LLP and contains information that is
`confidential and may be privileged as an attorney/client communication or as attorney work product.
`
`4
`
`IPR2018-01311
`Ex. 3003
`
`

`

`The information is intended to be disclosed solely to the addressee(s). No waiver of this privilege is intended by
`the inadvertent transmittal of such communication to any persons or company other than the intended recipient. If
`you are not the intended recipient, be aware that any disclosure, copying, distribution or use of the contents of this
`email information is prohibited. If you have received this email in error, please notify the sender by return email
`and delete it from your computer system.
`
`Smokeball Reference: f2ceedff-8237-4fed-96bd-5baed63d224d/e3b7e83a-3768-42f1-8265-2595763780f1.
`
`5
`
`IPR2018-01311
`Ex. 3003
`
`