From:
`To:
`Cc:
`Subject:
`Date:
`
`Diner, Bryan
`Weinstein, Louis; Trials
`Hasford, Justin; O"Connell, Caitlin; Yang, Christina Ji-Hye; Pollard, Patrick
`RE: IPR2022-00142 and IPR2022-00146 Petitioner"s Request for Teleconference re: Replies on Fintiv and 325(d) issues
`Tuesday, March 15, 2022 6:17:33 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding,
`clicking on links, or opening attachments.
`
`To the Board:
`
`We write to address Petitioner’s request to file a pre-institution reply to Patent Owner’s Preliminary
`Responses in IPR2022-00142 and IRP2022-00146. Specifically, we write to further clarify Patent Owner’s
`position and its decision not to consent to Petitioner’s request.
`
`While Patent Owner does not believe that Petitioner is entitled to a pre-institution reply on either issue,
`Patent Owner nevertheless offered the following compromise during the parties’ meet-and-confer
`teleconference:
`
`Patent Owner would not oppose Petitioner’s request for a pre-institution reply with the following
`conditions:
`
`1) Petitioner’s reply would be limited to addressing the Fintiv factors and would not include a
`reply on issues under 35 U.S.C. § 325(d)
`
`2) With respect to the Fintiv issues, the Petitioner could address Factors 1-5 and the specific
`arguments raised by Patent Owner with respect to Factor 6. The limitation on the scope of
`the reply for Fintiv Factor 6 was intended to ensure that the Petitioner could not use this reply
`as a means for responding to Patent Owner’s arguments on the merits; and
`
`3) Patent Owner would be given an opportunity to file a sur-reply.
`
`Petitioner did not accept Patent Owner’s compromise proposal or offer any alternative proposal for Patent
`Owner to consider. Because the parties could not reach an agreement, Patent Owner informed Petitioner
`that it could not consent to Petitioner’s request. Patent Owner remains willing to consent to a pre-
`institution reply under the conditions outlined above.
`
`Should the Board wish to discuss this issue further, Patent Owner is available for a teleconference at the
`days and times noted in Petitioner’s email below.
`
`Respectfully submitted,
`Bryan Diner
`Reg. No. 32,409
`Counsel for Patent Owner Eye Therapies LLC
`
`From: Weinstein, Louis <lweinstein@windelsmarx.com>
`
`IPR2022-00142, -00146
`Ex. 3001
`
`

`

`Sent: Tuesday, March 15, 2022 5:19 PM
`To: 'Trials@uspto.gov' <Trials@uspto.gov>
`Cc: Diner, Bryan <bryan.diner@finnegan.com>; Hasford, Justin <Justin.Hasford@finnegan.com>; O'Connell,
`Caitlin <Caitlin.O'Connell@finnegan.com>; Yang, Christina Ji-Hye <Christina.Yang@finnegan.com>;
`Weinstein, Louis <lweinstein@windelsmarx.com>; Pollard, Patrick <ppollard@windelsmarx.com>
`Subject: IPR2022-00142 and IPR2022-00146 Petitioner's Request for Teleconference re: Replies on Fintiv
`and 325(d) issues
`
`EXTERNAL Email:
`
`To the Board:
`
`Petitioner respectfully asks for a teleconference in IPR2022-00142 and IPR2022-
`00146 to discuss Petitioner’s request to file a Reply to Patent Owner’s Preliminary
`Responses in IPR2022-00142 and IPR2022-00146. Petitioner’s Replies would
`address: a) Fintiv issues, including without limitation the Sotera type Stipulation filed
`by Petitioner March 10, 2022 in District Court; and b) Issues under 35 U.S.C. Sec.
`325(d).
`
`Petitioner and Patent Owner conducted a meet and confer on March 15, 2022.
`Patent Owner did not consent to Petitioner’s request to file Replies.
`
`Except for March 17, Petitioner is generally available for a teleconference.
`Petitioner and Patent Owner are both available for a teleconference at the following
`times:
`
`March 22 After 2:30 PM ET
`March 24 Before noon ET
`
`Respectfully submitted
`
`Louis H. Weinstein
`Reg. No. 45,205
`Counsel for Petitioner Slayback Pharma LLC
`in IPR2022-00142 and IPR2022-00146.
`
`Cc: Lead and backup counsel for Patent Owner:
`bryan.diner@finnegan.com
`justin.hasford@finnegan.com
`
`

`

`caitlin.o’connell@finnegan.com
`christina.yang@finnegan.com
`
`
`
`
`Louis H. Weinstein
`Windels Marx Lane & Mittendorf,
`LLP
`One Giralda Farms, Madison, NJ
`07940
`Direct Dial: 973.966.3236 |
`General Fax: 973.966.3250
`lweinstein@windelsmarx.com |
`www.windelsmarx.com
`
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`
`