From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Trials
`Tucker, Daniel; Trials; Enrique Iturralde
`Arner, Erika; Hines, Lisa; Jin, Mingji; Vincent Rubino; Peter Lambrianakos
`RE: IPR2022-00004, -00005 - Request to terminate in view of settlement
`Monday, November 14, 2022 3:58:09 PM
`image001.png
`
`Counsel:
`
`Per the parties’ request, the parties have until Friday November 19th to file the authorized motions
`for termination and related / supporting documents.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Tucker, Daniel <Daniel.Tucker@finnegan.com>
`Sent: Monday, November 14, 2022 3:22 PM
`To: Trials <Trials@USPTO.GOV>; Enrique Iturralde <eiturralde@fabricantllp.com>
`Cc: Arner, Erika <erika.arner@finnegan.com>; Hines, Lisa <Lisa.Hines@finnegan.com>; Jin, Mingji
`<Mingji.Jin@finnegan.com>; Vincent Rubino <vrubino@fabricantllp.com>; Peter Lambrianakos
`<plambrianakos@fabricantllp.com>
`Subject: RE: IPR2022-00004, -00005 - Request to terminate in view of settlement
`
`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,
`
`The parties appreciate the Board’s authorization to file the aforementioned motions. The parties are
`in the process of reviewing and finalizing the draft termination papers and exhibits for submission to
`the Board. To allow time to finalize these papers and exhibits, the parties respectfully request a brief
`extension (to this Friday, November 19) to file the authorized motions.
`
`Respectfully,
`
`Daniel Tucker
`Counsel for Petitioner
`
`Daniel C. Tucker | Bio
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800, Reston, VA 20190-6023
`571.203.2793 | fax: 202.408.4400 | daniel.tucker@finnegan.com
`
`
`

`

`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, November 7, 2022 4:18 PM
`To: Enrique Iturralde <eiturralde@fabricantllp.com>
`Cc: Tucker, Daniel <Daniel.Tucker@finnegan.com>; Arner, Erika <erika.arner@finnegan.com>; Hines,
`Lisa <Lisa.Hines@finnegan.com>; Jin, Mingji <Mingji.Jin@finnegan.com>; Vincent Rubino
`<vrubino@fabricantllp.com>; Peter Lambrianakos <plambrianakos@fabricantllp.com>; Trials
`<Trials@USPTO.GOV>
`Subject: RE: IPR2022-00004, -00005 - Request to terminate in view of settlement
`
`EXTERNAL Email:
`
`Counsel:
`
`The parties are authorized to file in each of the identified proceedings, within 5 business days, the
`following: (1) a motion to terminate the proceeding, as a Paper, (2) a true copy of the written
`settlement agreement and any collateral agreement (including any licensing agreement) made in
`connection with the termination, as an Exhibit, and (3) a request to treat the written settlement
`agreement as business confidential under 37 CFR 42.74(c), as part of or as a separate Paper from the
`motion to terminate. The settlement agreement should be filed “For Board and Parties Only.”
`
`In addition, the motion to terminate should include a statement that there are no other agreements,
`oral or written, between the parties made in connection with, or in contemplation of, the
`termination of the proceeding, assuming such statement is correct. If the parties cannot make such
`statement, the other agreement(s) also should be filed under 37 C.F.R. § 42.74. The motion to
`terminate should further explain why termination is appropriate and provide the status of any
`related district court cases or USPTO proceedings with respect to all parties.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Enrique Iturralde <eiturralde@fabricantllp.com>
`Sent: Monday, November 7, 2022 3:53 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: daniel.tucker@finnegan.com; erika.arner@finnegan.com; Hines, Lisa
`<Lisa.Hines@finnegan.com>; mingji.jin@finnegan.com; Vincent Rubino <vrubino@fabricantllp.com>;
`Peter Lambrianakos <plambrianakos@fabricantllp.com>
`Subject: IPR2022-00004, -00005 - Request to terminate in view of settlement
`
`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,
`
`

`

`
`The Parties have settled all pending disputes between the Parties, including IPR2022-00004,
`IPR2022-00005, and the related district court litigation. Accordingly, the Parties jointly seek
`authorization to file a motion to terminate the above-referenced proceedings and a joint request to
`treat the settlement agreement as business confidential information and kept separate pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Counsel for the Parties are generally available for a
`conference call if necessary.
`
`Respectfully,
`
`Enrique W. Iturralde
`Counsel for Patent Owner
`Reg. No. 72,883
`
`
`
`
`
`
`Enrique W. Iturralde
`Partner
`
`Fabricant LLP
`
`T: 212-257-5797
`F: 212-257-5796
`eiturralde@fabricantllp.com
`fabricantllp.com
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential,
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`
`