From:
`To:
`
`Subject:
`Date:
`
`Haag, Joseph
`Trials; Cavanaugh, David; Anderson, Thomas; dcochran@jonesday.com; mwjohnson@jonesday.com;
`jmsauer@jonesday.com; dmaiorana@jonesday.com; ragraham@jonesday.com; jrnightingale@jonesday.com
`RE: IPR2018-01334
`Friday, February 11, 2022 10:09:56 AM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board:
`
`The Parties have met and conferred regarding a proposed procedural schedule for the remand from
`the Federal Circuit for the above-identified IPR. The Parties jointly propose the following procedure
`for remand.
`
`Joint remand schedule proposal
`
`The Parties propose that the scope of the briefing on remand be limited to (1) the broadest
`reasonable interpretation of the claim term “hardware buffer,” (2) the applicability of the broadest
`reasonable interpretation of “hardware buffer” to the asserted prior art disclosures, and (3) whether
`the Board can resolve the prior art challenge to the patentability of claims 16 and 17 despite the
`potential indefiniteness of the means-plus-function terms, along with whether these means-plus-
`function terms of claims 16 and 17 are indefinite.
`
`The Parties propose the following schedule and page limits:
`
`
`
`Petitioner’s opening brief
`Patent Owner’s response
`brief
`Petitioner’s reply brief
`
`Patent Owner’s sur-reply
`brief
`
`Briefing Due Dates
`6 weeks after authorization
`6 weeks after Petitioner’s
`opening brief
`4 weeks after Patent Owner’s
`response brief
`4 weeks after Petitioner’s
`reply brief
`
`Page Limit
`20 pages
`20 pages
`
`8 pages
`
`8 pages
`
`
`Given the Federal Circuit’s opinion on the construction of “hardware buffer” and its applicability to
`the prior art, the Parties propose that (1) Petitioner may submit additional documentary and expert
`declaration evidence along its opening and reply briefs, (2) Patent Owner may submit additional
`documentary and expert declaration evidence along with its response brief, but not with its sur-reply
`brief, and (3) each party may depose any declarant who submits a declaration on behalf of the other
`party and must file the transcript as an exhibit with its next paper.
`
`The Parties will be available to discuss the remand procedure on the scheduled conference call on
`February 17.
`
`
`

`

`Respectfully submitted,
`
`Joseph Haag
`
`Joseph F. Haag | WilmerHale
`2600 El Camino Real
`Suite 400
`Palo Alto, CA 94306 USA
`+1 650 858 6032 (t)
`+1 650 858 6100 (f)
`joseph.haag@wilmerhale.com
`
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`For more information about WilmerHale, please visit us at http://www.wilmerhale.com.
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, February 10, 2022 1:48 PM
`To: Cavanaugh, David <David.Cavanaugh@wilmerhale.com>; Anderson, Thomas
`<Tom.Anderson@wilmerhale.com>; Haag, Joseph <Joseph.Haag@wilmerhale.com>;
`dcochran@jonesday.com; mwjohnson@jonesday.com; jmsauer@jonesday.com;
`dmaiorana@jonesday.com; ragraham@jonesday.com; jrnightingale@jonesday.com
`Subject: IPR2018-01334
`
`EXTERNAL SENDER
`
`
`Counsel,
`
`The Court of Appeals for the Federal Circuit has issued its decision on appeal in IPR2018-01334 and
`its mandate. The Board will hold a conference call with the parties at 3:30 PM ET on Thursday
`February 17, 2022, to discuss the remand. The Board will not provide a court reporter for the
`conference, but the parties are welcome to retain one if they would like a transcript to be entered
`into the record. On the call, the parties should be prepared to discuss procedures for the remand,
`including word or page limits for briefing and deadlines for briefing and, if necessary, discovery. The
`PTAB’s Standard Operating Procedure 9 sets a goal of issuing a decision on remand within six months
`of the Federal Circuit’s mandate, which issued on February 3, 2022. Thus, the parties should be
`mindful of this goal when considering proposed deadlines.
`
`
`866-793-7136
`
`
`
`Passcode 3245094#
`
`

`

`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`
`
`