From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials
`Tuesday, February 15, 2022 3:30 PM
`Palys, Joseph E.; Trials
`Modi, Naveen; Snap Pare IPR; PARC_Snap-lPRs; Alexandra F. Easley; James Quigley;
`Ashley N. Moore
`RE: IPR2021-00986/IPR2021-00987 - Motions to Amend
`
`Counsel: No authorization was granted during the February 10, 2022 conference call for time extensions to Due Dates 2
`and 3 for the motion to amend briefings, nor had any authorization been previously sought. The Board has taken the
`parties' request for authorization for these time extension under advisement and an order will issue.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`From: Palys, Joseph E. <josephpalys@paulhastings.com>
`Sent: Monday, February 14, 2022 12:12 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Modi, Naveen <naveenmodi@paulhastings.com>; Snap Pare IPR <PH-Snap-Parc-lPR@paulhastings.com>;
`PARC_Snap-lPRs <PARC_Snap-lPRs@McKoolSmith.com>; Alexandra F. Easley <aeasley@McKoolSmith.com>; James
`Quigley <jquigley@McKoolSmith.com>; Ashley N. Moore <amoore@McKoolSmith.com>
`Subject: RE: IPR2021-00986/IPR2021-00987 • Motions to Amend
`
`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,
`
`Further to Patent Owner's email below, the parties seek another clarification regarding the Board's orders in IPR2021-
`00986 and IPR2021-00987 (Papers 16 and 18, respectively) concerning Patent Owner's request to seek motions to
`amend.
`
`Specifically, during the February 10 conference call, Petitioner informed the Board that Petitioner agreed to the parties'
`stipulated schedule changes before Patent Owner indicated it intended to seek motions to amend. As such, Petitioner
`explained to the Board that the parties conferred and collectively sought the Board's permission to have the same
`stipulated changes to the schedule set forth in Paper 14 (changing due dates 1, 2, and 3) apply to the motions to amend
`papers. The parties were under the impression that the Board agreed to the parties' request. However, the Board's
`order suggests that only the stipulated change to due date 1 will apply to the motion to amend papers, whereas due
`dates 2 and 3 would remain as set forth in the Board's scheduling order (e.g., IPR2021-00986, Paper 12 at 11). (See
`IPR2021-00986, Paper 16 at 3.) To the extent that is the case, the parties thus hereby formally seek leave to have the
`parties' stipulated schedule changes to due dates 1, 2, and 3 set forth in Papers 14 and 16 of IPR2021-00986 and
`IPR2021-00987, respectively, to apply to due dates 2 and 3 for Petitioner's opposition to motion to amend and Patent
`1
`
`

`

`Owner's reply to opposition to amend (or Patent Owner's revised motion to amend). Otherwise, Petitioner's time
`period for opposing Patent Owner's motion to amend is shortened. According to Petitioner, this shortened response
`period prejudices Petitioner.
`
`For the Board's convenience, the already-stipulated schedule changes are summarized below.
`
`Applicable Events
`Due Date 1
`(PO Response)
`(PO Motion to Amend)
`Due Date 2
`(Petitioner's Reply)
`Due Date 3
`(PO's Sur-Reply to Reply)
`
`Scheduling Order Due Date
`February 16, 2022
`
`Parties' Stipulated Due Date (1/25/22)
`February 25, 2022
`
`May 11, 2022
`
`May 20, 2022
`
`June 22, 2022
`
`July 1, 2022
`
`The parties' additional proposed schedule changes are below.
`
`Applicable Events
`Due Date 2
`(Petitioner's Opposition to PO's
`Motion to Amend)
`Due Date 3
`(PO's Reply to Opposition to
`Motion to Amend (or PO's
`Revised Motion to Amend))
`
`Scheduling Order Due Date
`May 11, 2022
`
`Parties' New Stipulated Due Date
`May 20, 2022
`
`June 22, 2022
`
`July 1, 2022
`
`The parties can be available at the Board's convenience for a conference call if needed.
`
`Regards,
`
`Joseph Palys
`Counsel for Petitioner
`
`From: Ashley N. Moore <amoore@McKoolSmith.com>
`Sent: Monday, February 14, 2022 11:27 AM
`To: James Quigley <jquigley@McKoolSmith.com>; Trials <Trials@USPTO.GOV>
`Cc: Modi, Naveen <naveenmodi@paulhastings.com>; Palys, Joseph E.<josephpalys@paulhastings.com>; Snap Pare IPR
`<PH-Snap-Parc-lPR@paulhastings.com>; PARC_Snap-lPRs <PARC Snap-lPRs@McKoolSmith.com>; Alexandra F. Easley
`<aeasley@McKoolSmith.com>
`Subject: [EXTI RE: IPR2021-00986/IPR2021-00987 - Motions to Amend
`
`IPR2021-00986
`IPR2021-00987
`
`Your Honors,
`
`In reviewing today's Order Regarding Conduct of the Proceedings (Paper No. 16 in -00986 proceeding; Paper No. 18 in -
`00987 proceeding), we noticed that the Order states that "During the call, Patent Owner stated that it intended to file
`non-contingent motions to amend in each case." I apologize if I misspoke or misunderstood the question, but Patent
`Owner's motions to amend will be contingent motions to amend.
`
`2
`
`

`

`Respectfully,
`
`Ashley Moore
`Counsel for Patent Owner
`
`Ashley N. Moore I Principal
`McKool Smith I 214.978.6337 I amoore@mckoolsmith.com
`
`From: James Quigley <jquigley@McKoolSmith.com>
`Sent: Tuesday, February 1, 2022 2:05 PM
`To: Trials <Trials@USPTO.GOV>; Ashley N. Moore <amoore@McKoolSmith.com>
`Cc: naveenmodi@paulhastings.com; josephpalys@paulhastings.com; PH-Snap-Parc-lPR@paulhastings.com; PARC_Snap(cid:173)
`lPRs <PARC Snap-lPRs@McKoolSmith.com>; Alexandra F. Easley <aeasley@McKoolSmith.com>
`Subject: RE: IPR2021-00986/IPR2021-00987 - Motions to Amend
`
`IPR2021-00986
`IPR2021-00987
`
`Your Honors,
`
`The parties are not available on Friday, February 4. As requested, the parties have conferred about times that do work.
`Both parties are available on Thursday, February 10, at 11:00 AM Eastern & 2:00 PM Eastern.
`
`Respectfully,
`
`James Quigley
`Counsel for Patent Owner
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, January 31, 2022 10:28 AM
`To: Ashley N. Moore <amoore@McKoolSmith.com>; Trials <Trials@USPTO.GOV>
`Cc: naveenmodi@paulhastings.com; josephpalys@paulhastings.com; PH-Snap-Parc-lPR@paulhastings.com; PARC_Snap(cid:173)
`lPRs <PARC Snap-lPRs@McKoolSmith.com>; James Quigley <jguigley@McKoolSmith.com>; Alexandra F. Easley
`<aeasley@McKoolSmith.com>
`Subject: RE: IPR2021-00986/IPR2021-00987 - Motions to Amend
`
`Counsel: The Board will convene a conference call on Friday, February 4 at 1 PM to discuss the motion to amend. If a
`party cannot accommodate the time scheduled for this call, Patent Owner shall confer with Petitioner and provide two
`alternate times. See IPR2021-00986, Paper 12, 2.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`3
`
`

`

`From: Ashley N. Moore <amoore@McKoolSmith.com>
`Sent: Friday, January 28, 2022 1:16 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: naveenmodi@paulhastings.com: josephpalys@paulhastings.com; PH-Snap-Parc-lPR@paulhastings.com: PARC_Snap(cid:173)
`lPRs <PARC Snap-lPRs@McKoolSmith.com>; James Quigley <jquigley@McKoolSmith.com>; Alexandra F. Easley
`<aeasley@McKoolSmith.com>
`Subject: IPR2021-00986/IPR2021-00987 - Motions to Amend
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on
`links, or opening attachments.
`
`IPR2021-00986
`IPR2021-00987
`
`Your Honors,
`
`Patent Owner plans to file a motion to amend in each of the -986 and -987 proceedings. Pursuant to the Scheduling
`Order, Patent Owner is required to request a conference call with the Board before filing a motion to amend. Paper No.
`12 at 4 in -986; Paper No. 14 at 4 in -987. Patent Owner is available for a conference call at the Board's convenience.
`
`Respectfully,
`
`Ashley N. Moore I Principal
`McKool Smith I 214.978.6337 I amoore@mckoolsmith.com
`
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`
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`
`4
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