From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Murphy, Brian P.; Trials
`Medelipr; #AdvancedBionics-PTAB; Sernel, Marc; Reitboeck, Georg
`RE: IPR2021-00044 - Patent Owner"s Preliminary Response
`Thursday, January 28, 2021 5:02:49 PM
`
`Counsel,
`
`Petitioner’s unopposed request for authorization to file a preliminary reply is granted. Petitioner’s
`preliminary reply is limited to addressing discretionary denial under 35 U.S.C. § 314(a) based on facts that
`occurred after the filing of the Petition in this proceeding. Any preliminary reply shall be five pages or
`less in substantive length and filed no later than February 3, 2021.
`
`Patent Owner’s preliminary sur-reply is limited to the issues raised in Petitioner’s preliminary reply. Any
`preliminary sur-reply shall be five pages or less in substantive length and filed no later than February 11,
`2021.
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571)272-7822
`
`
`
`From: Murphy, Brian P. <BMurphy@haugpartners.com>
`Sent: Monday, January 25, 2021 5:32 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Medelipr <Medelipr@haugpartners.com>; #AdvancedBionics-PTAB <AdvancedBionics-
`PTAB@kirkland.com>; Sernel, Marc <msernel@kirkland.com>; Reitboeck, Georg
`<GReitboeck@haugpartners.com>
`Subject: IPR2021-00044 - Patent Owner's Preliminary Response
`
`Dear Board,
`
`Petitioner respectfully requests authorization under 37 CFR § 42.108(c) to file a 5-page reply to
`Patent Owner’s Preliminary Response (Paper No. 7), and supporting exhibits, in order to address the
`issue of discretionary denial under 35 U.S.C. § 314(a) in light of various facts that occurred after the
`filing of the Petition, in particular the Board’s Decision Granting Institution of Inter Partes Review in
`IPR2020-01016 (dated December 8, 2020); various orders and communications between November
`2020 and January 2021 regarding the status of the parallel district court proceedings; and Patent
`Owner’s Final Infringement Contentions in the parallel district court proceedings (dated October 9,
`2020). Petitioner does not oppose a 5-page sur-reply to be filed by Patent Owner.
`
`Patent Owner has informed Petitioner that Patent Owner does not oppose Petitioner’s request,
`provided (1) Petitioner’s reply is limited to addressing discretionary denial under 35 U.S.C. § 314(a)
`based on facts that occurred after the filing of the Petition; and (2) Patent Owner has the
`
`IPR2021-00044
`
`1
`
`Ex. 3001
`
`

`

`opportunity to file a 5 page sur-reply.
`
`Respectfully submitted,
`
`Brian Murphy
`Partner
`
`Haug Partners LLP
`745 Fifth Avenue, 10th Floor
`New York, NY 10151
`+1 212.588.0800 Main
`+1 212.863.2040 Direct
`
`bmurphy@haugpartners.com
`www.haugpartners.com
`
`IPR2021-00044
`
`2
`
`Ex. 3001
`
`