From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Trials
`Enrique Iturralde; Trials
`Vincent Rubino; Peter Lambrianakos; Jialin Zhong; BoxSEAZNL1811LP; PTAB; Colin.Heideman
`RE: IPR2021-01331: Unopposed Request for Supplemental Briefing
`Wednesday, December 1, 2021 9:18:44 AM
`image002.png
`
`Counsel: Petitioner’s unopposed request for supplemental briefing is granted. Petitioner’s
`supplemental brief, limited to the issue of discretionary denial under § 314(a) and, more specifically,
`to the impact of the recent Order staying the co-pending litigation on the Fintiv factors, is due
`December 3, 2021, and shall not exceed 4 pages. Patent Owner is also permitted to file a
`supplemental brief, up to 4 pages, limited to the issue of discretionary denial under § 314(a). Patent
`Owner’s brief is due 14 calendar days after the filing of Petitioner’s supplemental brief. Petitioner
`shall include, as an exhibit to its supplemental brief, the district court’s stay order.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`From: Enrique Iturralde <eiturralde@fabricantllp.com>
`Sent: Tuesday, November 30, 2021 4:30 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Vincent Rubino <vrubino@fabricantllp.com>; Peter Lambrianakos
`<plambrianakos@fabricantllp.com>; Jialin Zhong <zhong@zhong-law.com>; BoxSEAZNL1811LP
`<BoxSEAZNL1811LP@knobbe.com>; PTAB <PTAB@fabricantllp.com>; Colin.Heideman
`<Colin.Heideman@knobbe.com>
`Subject: Re: IPR2021-01331: Unopposed Request for Supplemental Briefing
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Honorable Board,
`
`Patent Owner agrees with Petitioner’s request with the following clarification: In corresponding with
`counsel for Amazon, Vocalife had stated that it “will not oppose Amazon's request for a 4-page
`supplemental paper so long as Amazon agrees that Vocalife will receive a 4-page supplemental
`paper to address any new facts, due 14 days after Amazon's supplemental paper." To the extent the
`Board grants the supplemental briefing, Patent Owner would like to reserve the right to address any
`new facts relevant to the 314(a) analysis.
`
`
`

`

`Respectfully,
`
`Enrique W. Iturralde
`Reg. No. 72,883
`
`Counsel for Patent Owner
`
`
`
`Enrique W. Iturralde
`Associate
`Fabricant LLP
`T: 212-257-5797
`F: 212-257-5796
`eiturralde@fabricantllp.com
`fabricantllp.com
`
`
`
`
`
`From: Colin.Heideman <Colin.Heideman@knobbe.com>
`Sent: Tuesday, November 30, 2021 4:12 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Enrique Iturralde <eiturralde@fabricantllp.com>; Vincent Rubino <vrubino@fabricantllp.com>;
`Peter Lambrianakos <plambrianakos@fabricantllp.com>; Jialin Zhong <zhong@zhong-law.com>;
`BoxSEAZNL1811LP <BoxSEAZNL1811LP@knobbe.com>
`Subject: IPR2021-01331: Unopposed Request for Supplemental Briefing
`
`RE: Amazon.com, Inc. v. Vocalife LLC
` IPR No. IPR2021-01331
`
`Dear PTAB Trials,
`
`Petitioner writes to seek leave to file a 4-page reply brief to Patent Owner’s Preliminary Response
`(“POPR”) pursuant to 37 CFR §42.108(c). Good cause exists because the POPR argues that
`institution should be denied under § 314(a) in view of the co-pending litigation, which was
`scheduled for trial in April, 2022. After PO filed the POPR, the district court stayed the litigation.
`Thus, the facts upon which the petition and the POPR relied are no longer accurate. Petitioner’s 4-
`page reply will be limited to the issue of discretionary denial under § 314(a) and, more specifically, to
`the impact of the recent Order staying the co-pending litigation on the Fintiv factors.
`
`The Parties have conferred and Patent Owner consents to Petitioner’s request, provided that Patent
`Owner is permitted to file a 4-page sur-reply to respond to the arguments raised in Petitioner’s
`reply. Neither the reply nor sur-reply will address the merits of the petition’s obviousness
`arguments.
`
`The Parties have also agreed on the following briefing schedule:
`
`

`

`Amazon shall file its reply by Friday, December 3rd.
`Vocalife shall file its sur-reply by Friday, December 17th.
`
`
`The Parties do not believe that a conference call is necessary. However, if the Board would like to
`have a call, the parties will provide their availability. Counsel for Patent Owner is cc’d on this email.
`
`Thank you,
`
`-Colin Heideman
`Counsel for Petitioner, Amazon.com, Inc.
`
`
`Colin Heideman
`Partner
`206-405-2016 Direct
`Knobbe Martens
`
`
`
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