From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Ullagaddi, Monica
`Gerstenblith, Bart; Ahmed, Iftikhar; Trials
`FW: IPR2020-00614 - update about witness availability
`Wednesday, September 22, 2021 11:39:43 AM
`
`Hi Monica, here’s an additional e-mail.
`Thanks,
`Maria
`
`From: Parham Hendifar <hendifar@lowensteinweatherwax.com>
`Sent: Wednesday, September 22, 2021 11:24 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>; Nathan Lowenstein
`<lowenstein@lowensteinweatherwax.com>; LegalTM-DivX-IPR <LegalTM-DivX-
`IPR@sheppardmullin.com>; Chris Ponder <CPonder@sheppardmullin.com>; Jeffrey Liang
`<JLiang@sheppardmullin.com>; Harper Batts <HBatts@sheppardmullin.com>; DivX
`<DivX_IPRs@lowensteinweatherwax.com>
`Subject: Re: IPR2020-00614 - update about witness availability
`
`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,
`
`Patent Owner joins the request for a conference call with the Board on or before Friday
`September 24, 2021, including to respectfully discuss Patent Owner’s continued opposition to
`Petitioner’s unprecedented request to substitute its expert at this stage of the proceeding.
`
`Patent Owner further respectfully requests that the Board supplement its order of today
`(9/22) to confirm that Due Date 3, of Patent Owner’s Sur-Reply, is also suspended, as
`indicated during the conference call of September 10, 2021. See Ex. 1034 at 24:19-25:3
`(stating that the Board is “pushing pause” on “patent owner’s Sur-Reply”).
`
`Respectfully submitted,
`
`Parham Hendifar | Lowenstein & Weatherwax LLP
`1880 Century Park East., Suite 815, Los Angeles, CA 90067
`Office: 310.307.4500
`
`
`From: Harper Batts <HBatts@sheppardmullin.com>
`Date: Wednesday, September 22, 2021 at 8:05 AM
`To: 'Trials' <Trials@USPTO.GOV>
`Cc: Kenneth Weatherwax <weatherwax@lowensteinweatherwax.com>, Parham Hendifar
`
`

`

`<hendifar@lowensteinweatherwax.com>, Nathan Lowenstein
`<lowenstein@lowensteinweatherwax.com>, LegalTM-DivX-IPR <LegalTM-DivX-
`IPR@sheppardmullin.com>, Chris Ponder <CPonder@sheppardmullin.com>, Jeffrey Liang
`<JLiang@sheppardmullin.com>
`Subject: IPR2020-00614 - update about witness availability
`
`Dear Honorable Board,
`
`According to the Board’s instructions over the Sept. 10 conference call and the Board’s
`September 22, 2021 Order (Paper 44), Petitioners hereby provide the following update about
`witness availability:
`(1) Petitioners have followed-up with Dr. McDaniel and he will not be able to sit for a
`deposition in the near future due to the aggravation of his medical condition.
`(2) In light of Dr. McDaniel’s unavailability, Dr. James Storer is available to substitute in for
`Dr. McDaniel. Dr. Storer has reviewed and agrees with Dr. McDaniel’s opinions, and he
`will adopt the existing opinions in the Reply Declaration. Petitioners plan to provide a
`copy of Dr. Storer’s declaration to Patent Owner shortly, which will contain the same
`opinions originally set forth in the McDaniel’s declaration, but have Dr. Storer’s
`qualification substituted in for Dr. McDaniel’s. This approach is consistent with the
`caselaw we have seen regarding witness unavailability, including in Apple, Inc. v.
`Qualcomm Inc., PTAB-IPR2018-01279-33 as well as Moderna Therapeutics, Inc. v.
`Arbutus Biopharma Corporation, PTAB-IPR2019-00554-25.
`(3) Petitioners have offered to make Dr. Storer available for deposition next Thursday or
`Friday (September 30 or October 1) and proposed to Patent Owner a modified
`schedule of the remaining due dates.
`(4) Patent Owner believes that Petitioner’s cited cases are factually distinct, and, as
`discussed during the Board conference and the legal authority cited there, this
`substitution at this stage of the proceeding would be improper.
`
`The Parties request a conference call with the Board and are generally available on Friday,
`9/24 as well as between 10 am – 11 am and 12 pm – 1 pm EST tomorrow.
`
`Respectfully submitted,
`
`Harper Batts
`Lead Counsel for Petitioners
`Harper Batts
`SheppardMullin | Silicon Valley
`+1 650-815-2673 | ext. 12673
`
`
`
`
`
`

`

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