From:
`To:
`Cc:
`Subject:
`
`Date:
`
`Trials
`Jeffrey Klayman; Trials
`Sharifahmadian, Ali R.; Mark Leonardo
`RE: Samsung v. Jawbone | IPR 2022-00213 | U.S. Patent No. 8,280,072 | Patent Owner Seeking Authorization to
`Submit Substitute Motion to Amend
`Monday, October 31, 2022 3:05:39 PM
`
`Counsel:
`
`Patent Owner’s request to file a Substitute Motion to Amend in place of the Motion to Amend
`filed September 20, 2022 is denied. The Board’s Order of October 19, 2022 only permits
`Patent Owner to file a one page notice electing the set of claims it wishes to pursue in its
`Motion to Amend. See Paper 17. The Order also prohibits any additional extensions of time
`with regards to the Motion to Amend. Id. Patent Owner has filed its one page notice and has
`elected to pursue non-contingent substitute claims 10-18. See Paper 18.
`
`As per the New Pilot Program Concerning Motion to Amend Practice, Patent Owner has
`elected to receive non-binding preliminary guidance from the Board concerning its Motion To
`Amend and the proposed amendments (i.e., claims 10-18). See Paper 16, 3. After receiving
`non-binding preliminary guidance from the Board, Patent Owner may file a revised Motion to
`Amend by Due Date 3, which the Board has extended to January 13, 2023. See Paper 11, 11;
`Paper 17, 4–5. Accordingly, Patent Owner will have an opportunity to place its Motion to
`Amend in better condition for consideration by the Board.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-7822
`
`From: Jeffrey Klayman <JKlayman@nutter.com>
`Sent: Friday, October 28, 2022 3:29 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Sharifahmadian, Ali R. <Ali.Sharifahmadian@arnoldporter.com>; Mark Leonardo
`<MLeonardo@nutter.com>
`Subject: Samsung v. Jawbone | IPR 2022-00213 | U.S. Patent No. 8,280,072 | Patent Owner Seeking
`Authorization to Submit Substitute Motion 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,
`
`Patent Owner hereby requests authorization from the Board to submit a Substitute Motion to
`Amend to replace the Motion to Amend filed September 20, 2022.
`
` A
`
` call was held on October 19, 2022 between the Board and the parties to discuss various issues
`raised by Petitioner. As a consequence of the call, the Board provided an opportunity for Patent
`
`

`

`Owner to submit a one-page document electing one of the two sets of substitute claims presented
`in the Motion to Amend. Patent Owner submitted its election on October 20, 2022 to elect
`substitute claims 10-18.
`
`Upon further consideration, Patent Owner recognizes that merely electing claims 10-18 does not
`address the concern, raised by Petitioner and summarized by the Board in its Order entered October
`19, 2022 (Paper 17), that each substitute claim must be traceable to the original claim it would
`replace. Therefore, Patent Owner hereby requests authorization from the Board to submit a
`Substitute Motion to Amend that would revise substitute dependent claims 12-17 to at least include
`their original wording and remove the dependent limitations relating to voice activity detection
`(VAD). Patent Owner would not change substitute independent claims 10, 11, and 18. In this way,
`each substitute dependent claim would be traceable to the original claim it replaces and there would
`be only one substitute claim per original claim. Such revisions should simplify the motion and should
`place the motion in better condition for consideration by the Petitioner and the Board.
`
`Patent Owner contacted Petitioner to seek their approval of this request. Petitioner responded and
`requested that we include the following in our email to the Board: Patent Owner will have an
`opportunity to further amend its claims after receiving the Board’s preliminary guidance. Thus,
`Patent Owner will have an opportunity to make the changes its proposes in due course.
`Nevertheless, Petitioner does not object to Patent Owner’s request provided that Petitioner is
`afforded an extension to serve its opposition to the motion to amend equivalent to the number of
`days between October 20 and the day that Patent Owner serves the further amended substitute
`claims.
`
`Patent Owner would file the Substitute Motion to Amend as soon as possible, as early as Monday,
`October 31, 2022 if authorized by the Board. By example, if the Substitute Motion to Amend is filed
`on Monday, October 31, 2022, Petitioner’s deadline for serving its opposition to the motion to
`amend would be extended 11 days from December 9, 2022 to December 20, 2022 per their
`request. The deadline for Patent Owner to file its reply to Petitioner’s opposition to the Motion to
`Amend or its revised Motion to Amend was extended one week from January 6, 2023 to January 13,
`2023 (Paper 17). Patent Owner is not requesting further extension of this deadline at this time and
`intends to file its reply to Petitioner’s opposition to the Motion to Amend or its revised Motion to
`Amend by the January 13, 2023 deadline.
`
`Respectfully,
`
`Jeffrey Klayman
`Counsel for Patent Owner
`
`
`Jeffrey Klayman​​
`Partner
`Nutter McClennen & Fish LLP
`155 Seaport Blvd / Boston, MA 02210
`Direct / 617-439-2318
`
`

`

`JKlayman@nutter.com
`
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