`Sent: Monday, August 26, 2019 11:27 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: 2jrr@knobbe.com; 2dgm@knobbe.com; Ehmke, Andrew S. <Andy.Ehmke@haynesboone.com>; Maucotel, Jordan
`<Jordan.Maucotel@haynesboone.com>
`Subject: IPR2019‐01064; ‐01065 // Request for Preliminary Reply
`
`To the Honorable Board,
`
`Pursuant to 37 C.F.R. § 42.108(c), Petitioner Apple Inc. respectfully requests authorization to file a five‐page Reply to
`Patent Owner’s Preliminary Response in both IPR2019‐01064 and IPR2019‐01065. Petitioner seeks to address Patent
`Owner’s arguments and evidence that allegedly establish actual reduction to practice of a video camera that antedates
`the Presler reference (Ex. 1005). This is not an issue that Petitioner was aware of or could have addressed in the
`Petitions. The parties have conferred and Patent Owner does not oppose if given a Sur‐Reply of equal length.
`
`Petitioner also respectfully requests authorization to file a Motion for Pre‐Institution Discovery. Petitioner seeks the
`following:
`
`
`1) Depositions of Mr. Jannard, Mr. Nattress, and Mr. Land who have submitted declarations in each proceeding to
`support Patent Owner’s claim of actual reduction to practice of the “Boris” and “Natasha” cameras (see Exs.
`2001, 2011, and 2017);
`2) Documentation in Patent Owner’s possession dated prior to April 13, 2007 regarding the “Mysterium CMOS
`image sensor” used in either the “Boris” or the “Natasha” cameras (see POPR at 36);
`3) Any data files in Patent Owner’s possession generated by either the “Boris” or “Natasha” cameras prior to April
`13, 2007; and
`4) Access to the “Boris” and “Natasha” cameras for inspection by Petitioner’s expert.
`
`
`The parties have conferred and Patent Owner opposes Petitioner’s request for pre‐institution discovery. To the extent
`that the Board would like to conduct a call on these issues, the parties are available after 2pm ET on both Monday,
`August 26th and Tuesday, August 27th.
`
`Best regards,
`Michael S. Parsons
`Counsel for Petitioner Apple Inc.
`
`haynesboone
`Michael Parsons
`Partner
`michael.parsons@haynesboone.com
`
`Haynes and Boone, LLP
`2505 North Plano Road
`Suite 4000
`Richardson, TX 75082-4101
`
`(t) 972.739.8611
`(f) 972.692.9003
`
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