From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Polins, Greg; Trials
`#AdvancedBionics-PTAB; medelipr@haugpartners.com; Reitboeck, Georg; bmurphy@haugpartners.com;
`rcolletti@haugpartners.com
`RE: IPR2020-01016: Supplemental Authority
`Thursday, February 3, 2022 1:07:20 PM
`
`Counsel: Your e-mail has been received.
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`From: Polins, Greg <greg.polins@kirkland.com>
`Sent: Wednesday, February 2, 2022 4:58 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: #AdvancedBionics-PTAB <AdvancedBionics-PTAB@kirkland.com>; medelipr@haugpartners.com;
`Reitboeck, Georg <GReitboeck@haugpartners.com>; bmurphy@haugpartners.com;
`rcolletti@haugpartners.com
`Subject: IPR2020-01016: Supplemental Authority
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Trials,
`
` I
`
` write regarding IPR2020-01016. At issue in that proceeding is whether Applicant Admitted Prior Art
`(“AAPA”) can form the basis of a ground in an IPR. Petitioner previously argued that consolidation of
`this proceeding with another proceeding was appropriate because “the question of whether and in
`what way AAPA can be relied upon as prior art in an IPR proceeding” would be decided by the
`Federal Circuit in Qualcomm Inc. v. Apple Inc., Case No. 20-1558. See Paper 24. Yesterday, the
`Federal Circuit issued its decision in that case, which I attach here, and held “that the ‘patents or
`printed publications’ that form the ‘basis’ of a ground for inter partes review must themselves be
`prior art to the challenged patent. That conclusion excludes any descriptions of the prior art
`contained in the challenged patent.” Patent Owner does not believe any briefing on the impact of
`this decision is necessary given the prior briefing on whether, and to what extent, AAPA can form the
`basis of a ground in an IPR.
`
`Patent Owner provided this correspondence to Petitioner prior to sending it. Petitioner does not
`object to Patent Owner sending this correspondence, but does not join it.
`
`
`IPR2020-01016
`
`1
`
`Ex. 3004
`
`

`

`Regards,
`
`Greg Polins
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`KIRKLAND & ELLIS LLP
`300 North LaSalle, Chicago, IL 60654
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`
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`
`IPR2020-01016
`
`2
`
`Ex. 3004
`
`