From:
`To:
`Cc:
`Subject:
`Date:
`
`Fisher, Michael
`Trials
`docketing@mbhb.com; "Lovsin, James"; Kulesza, Mateusz; wilson@mbhb.com; IOENGINE-Roku
`Roku, Inc. v. IOENGINE, LLC, Case Nos. IPR2022-01257 and IPR2022-01258
`Monday, March 13, 2023 5:20:31 PM
`
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`To the Board:
`
`Patent Owner requests leave to file opposition briefs in response to Petitioner’s Requests
`for Rehearing of Decision Denying Institution of Inter Partes Review in the above-
`referenced cases in order to address the following issues:
`
`Petitioner’s argument that the Board’s construction of “terminal” is contrary to that of
`the district court, in view of the parties’ agreement that a “terminal” is a “computing
`device” in the district court, Patent Owner’s reliance on that meaning in these
`proceedings, and the Board’s determination that the “ordinary and customary
`meaning of that term [terminal], as a person of ordinary skill in the art would have
`understood it after reading the ’819 patent” is a “computing device.” See, e.g.,
`IPR2022-01257, Paper 7 at 22, Paper 9 at 11; IPR2022-01258, Paper 7 at 14-15,
`Paper 9 at 11;
`
`Petitioner’s “nose of wax” argument, which assumes that all TVs are the same and
`fails to recognize that many modern TVs have processors and memory, run code and
`may be considered computing devices, while other TVs, such as those prevalent at
`the priority date, do not have computing capabilities and are not computing devices.
`See, e.g., IPR2022-01257, Paper 7 at 25-26; Ex. 2001, ¶¶ 62-63; IPR2022-01258,
`Paper 7 at 18; Ex. 2001, ¶¶ 62-63; and
`
`Petitioner’s reliance on infringement-based arguments in these IPR proceedings,
`including Petitioner’s argument that “terminal” is only an “environmental limitation,”
`which means that an infringer need not supply the terminal in order to infringe the
`apparatus and method claims. The claims nonetheless require the portable device to
`be “configured to” communicate with the terminal, and because Petitioner’s art does
`not disclose a “terminal” it does not disclose a portable device so “configured to”
`communicate with the terminal.
`
`The parties have met and conferred regarding Patent Owner’s request. Petitioner opposes
`it.
`
`Michael A. Fisher
`Counsel for Patent Owner
`
`Dechert LLP
`+1 215 994 2079 Direct
`
`IPR2022-01258
`Ex. 3002
`
`

`

`+1 917 406 5729 Mobile
`michael.fisher@dechert.com
`dechert.com
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