Goryunov, Eugene
`Trials; ryersonj@gtlaw.com
`SchindlerB@gtlaw.com; BriggsH@gtlaw.com; echelon-iprs@gtlaw.com; David McCombs IPR; Eugene Goryunov
`IPR
`RE: IPR2020-01186, -00187, and -01541: Petitioner’s Updated Mandatory Notices
`Tuesday, October 20, 2020 5:27:55 PM
`image003.png
`image001.png
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Trials,
`
`Patent Owner is in receipt of Petitioner’s motions to maintain the filing date of its IPRs in each of the
`above-referenced matters. Patent Owner, at the present, is not aware of a basis to oppose the
`motions and, thus, hereby indicates that it does not plan to file oppositions to the motions.
`
`Kind regards.
`
`Eugene Goryunov
`(Counsel for Patent Owner)
`
`Eugene Goryunov | Partner
`eugene.goryunov@haynesboone.com | (t) +1 312.216.1630 (m) +1 847.778.3923
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, October 14, 2020 2:49 PM
`To: ryersonj@gtlaw.com; Trials <Trials@USPTO.GOV>
`Cc: SchindlerB@gtlaw.com; BriggsH@gtlaw.com; echelon-iprs@gtlaw.com; David McCombs IPR
`<david.mccombs.ipr@haynesboone.com>; Eugene Goryunov IPR
`<Eugene.Goryunov.ipr@haynesboone.com>
`Subject: RE: IPR2020-01186, -00187, and -01541: Petitioner’s Updated Mandatory Notices
`
`Counsel,
`
`We authorize Petitioner’s motion to identify additional real parties in interest and maintain the Petition’s
`filing date. Any opposition to the motion must be filed within seven (7) days of the motion. The motion
`and any opposition thereto must comply with the requirements of 37 C.F.R. § 42.24.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`From: ryersonj@gtlaw.com <ryersonj@gtlaw.com>
`
`Ex. 3001
`IPR2020-01186
`IPR2020-01187
`IPR2020-01541
`
`

`

`Sent: Tuesday, October 6, 2020 1:27 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: SchindlerB@gtlaw.com; BriggsH@gtlaw.com; echelon-iprs@gtlaw.com;
`david.mccombs.ipr@haynesboone.com; Eugene.Goryunov.ipr@haynesboone.com
`Subject: IPR2020-01186, -00187, and -01541: Petitioner’s Updated Mandatory Notices
`
`SENT ON BEHALF OF BARRY SCHINDLER, LEAD COUNSEL FOR PETITIONER:
`
`Dear Honorable Board:
`
`Last week, Petitioner filed updated mandatory notices identifying additional real parties-in-interest
`with respect to the above-captioned IPRs. Petitioner did so promptly after its counsel learned of the
`existence/relevance of the newly-identified entities during discovery in related litigation. The Board
`routinely exercises discretion to relate back Petitioner’s updated RPIs to the original filing date
`where there has been no attempt to circumvent estoppel rules, no evidence of bad faith and no
`prejudice or delay. E.g., Proppant Express Investments, LLC v. Oren Techs., LLC, IPR2017-01917,
`Paper 86 at 6 (Feb. 13, 2019) (precedential). Accordingly, Petitioner respectfully requests that the
`Board exercise its discretion to maintain the original filing date and case schedules for the above-
`captioned IPRs. In the alternative, Petitioner requests permission to file a motion seeking the same.
`
`Petitioner has conferred with Patent Owner’s counsel, who has advised that “At present we are not
`aware of a basis to oppose.”
`
`Sincerely,
`
`(on behalf of Barry Schindler)
`
`James Ryerson
`Of Counsel
`
`Greenberg Traurig, LLP
`500 Campus Drive, Suite 400 | Florham Park, NJ 07932-0677
`T +1 973.443.3246 | F +1 973.295.1346 | C +1 732.567.6288
`ryersonj@gtlaw.com | www.gtlaw.com | View GT Biography
`
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