Trials
`Toft, Lukas; Trials; Zeilberger, Daniel; Modi, Naveen
`Dittmann, Eric W.; Yusem, Max; Ho, Krystina L.; bluebird-IPR-PH; Chen, Joe; French-Brown, Wanda D.; Suh, Howard S.
`RE: IPR2023-00070, -00074
`Thursday, February 16, 2023 12:55:11 PM
`image001.png
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`From the Board –
`
`Based on the circumstances involved, and in view of no opposition from Patent Owner, the due date for Petitioner’s Reply to Patent
`Owner’s Preliminary Response and Patent Owner’s Sur-reply is extended by one business day. Accordingly, Petitioner’s Reply filed
`today is timely, and Patent Owner’s Sur-reply will be due on or before February 27th.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`From: Toft, Lukas <ltoft@foxrothschild.com>
`Sent: Thursday, February 16, 2023 12:33 PM
`To: Trials <Trials@USPTO.GOV>; Zeilberger, Daniel <danielzeilberger@paulhastings.com>; Modi, Naveen
`<naveenmodi@paulhastings.com>
`Cc: Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max <maxyusem@paulhastings.com>; Ho, Krystina L.
`<krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-PH@paulhastings.com>; Chen, Joe <joechen@foxrothschild.com>;
`French-Brown, Wanda D. <WFrench-Brown@foxrothschild.com>; Suh, Howard S. <HSuh@foxrothschild.com>
`Subject: RE: IPR2023-00070, -00074
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening
`attachments.
`
`Patent Owner does not oppose the proposed extensions and will plan to file its Sur-reply by February 27th.
`
`Lukas Toft
`Fox Rothschild LLP
`(612) 607-7336
`
`From: Trials <Trials@USPTO.GOV>
`Sent: February 16, 2023 11:15 AM
`To: Zeilberger, Daniel <danielzeilberger@paulhastings.com>; Trials <Trials@USPTO.GOV>; Modi, Naveen
`<naveenmodi@paulhastings.com>; Toft, Lukas <ltoft@foxrothschild.com>
`Cc: Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max <maxyusem@paulhastings.com>; Ho, Krystina L.
`<krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-PH@paulhastings.com>; Chen, Joe <joechen@foxrothschild.com>;
`French-Brown, Wanda D. <WFrench-Brown@foxrothschild.com>
`Subject: [EXT] RE: IPR2023-00070, -00074
`
`Counsel,
`
`From the Board –
`
`Based on the circumstances involved, we are inclined to extend the due date for Petitioner’s Reply and Patent Owner’s Sur-reply by
`one business day. With that extension, Petitioner’s filing today would be viewed as timely, and Patent Owner’s Sur-reply would be
`due on February 27th. If Patent Owner opposes this extension, a conference call will be scheduled with the parties to resolve the
`matter. Therefore, Patent Owner is instructed to respond to this email today indicating whether it opposes the proposed extension.
`
`Exhibit 3002
`
`

`

`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`From: Zeilberger, Daniel <danielzeilberger@paulhastings.com>
`Sent: Thursday, February 16, 2023 9:12 AM
`To: Trials <Trials@USPTO.GOV>; Modi, Naveen <naveenmodi@paulhastings.com>; Toft, Lukas <ltoft@foxrothschild.com>
`Cc: Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max <maxyusem@paulhastings.com>; Ho, Krystina L.
`<krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-PH@paulhastings.com>; Chen, Joe <joechen@foxrothschild.com>;
`French-Brown, Wanda D. <WFrench-Brown@foxrothschild.com>
`Subject: RE: IPR2023-00070, -00074
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening
`attachments.
`
`Thank you for the instructions. With the assistance of the PTAB P-TACTS Admin team, we were able to successfully submit the replies
`into P-TACTS this morning. We note that the file names were updated to remove apostrophes, as instructed by the P-TACTS Admin
`team, but the underlying PDFs are otherwise identical to what was sent yesterday (February 15).
`
`As previously noted, we apologize for any inconvenience this may have caused, and are available for a call if the Board would like to
`discuss.
`
`Respectfully,
`Daniel Zeilberger
`Counsel for Petitioner
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, February 16, 2023 8:20 AM
`To: Modi, Naveen <naveenmodi@paulhastings.com>; Trials <Trials@USPTO.GOV>; Toft, Lukas <ltoft@foxrothschild.com>; Zeilberger,
`Daniel <danielzeilberger@paulhastings.com>
`Cc: Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max <maxyusem@paulhastings.com>; Ho, Krystina L.
`<krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-PH@paulhastings.com>; Chen, Joe <joechen@foxrothschild.com>;
`French-Brown, Wanda D. <WFrench-Brown@foxrothschild.com>
`Subject: [EXT] RE: IPR2023-00070, -00074
`
`
`--- External Email ---
`
`
`
`Counsel,
`
`Thank you for the email. Please contact the PTAB P-TACTS Admin team for P-TACTS technical assistance. Please let the Board know
`when you have filed.
`
`Email: PTABP-TACTSAdmin@uspto.gov
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`
`

`

`From: Modi, Naveen <naveenmodi@paulhastings.com>
`Sent: Wednesday, February 15, 2023 11:54 PM
`To: Trials <Trials@USPTO.GOV>; Toft, Lukas <ltoft@foxrothschild.com>; Zeilberger, Daniel <danielzeilberger@paulhastings.com>
`Cc: Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max <maxyusem@paulhastings.com>; Ho, Krystina L.
`<krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-PH@paulhastings.com>; Chen, Joe <joechen@foxrothschild.com>;
`French-Brown, Wanda D. <WFrench-Brown@foxrothschild.com>
`Subject: RE: IPR2023-00070, -00074
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening
`attachments.
`
`Your Honors,
`
`Petitioner has been trying to file the replies that were authorized in the email below, but is having trouble with the PTAB’s P-TACTS
`system. We are getting an error that says “Application Systems Error. Please contact PTAB Support Team.” As a result, we are
`attaching copies of the replies to this email and request that they be uploaded to the P-TACTS system.
`
`We have copied counsel for the other side on this email. This email will also constitute service of these papers on them.
`
`We apologize for any inconvenience this may cause and are available for a call should you want to have a call to discuss the issues we
`had with the filings.
`
`Respectfully,
`Naveen Modi
`Counsel for Petitioner
`
`Naveen Modi
`Global Co-Chair of IP & Partner
`Paul Hastings LLP
`(202) 551-1990
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Friday, February 10, 2023 3:21 PM
`To: Toft, Lukas <ltoft@foxrothschild.com>; Trials <Trials@USPTO.GOV>; Zeilberger, Daniel <danielzeilberger@paulhastings.com>
`Cc: Modi, Naveen <naveenmodi@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max
`<maxyusem@paulhastings.com>; Ho, Krystina L. <krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-
`PH@paulhastings.com>; Chen, Joe <joechen@foxrothschild.com>; French-Brown, Wanda D. <WFrench-Brown@foxrothschild.com>
`Subject: [EXT] RE: IPR2023-00070, -00074
`
`
`--- External Email ---
`
`
`
`Counsel, Patent Owner’s unopposed request for additional briefing is granted. Accordingly, in each of IPR2023-00070,
`IPR2023-00074, Patent Owner is authorized to file a Sur-Reply of no more than five pages that addresses only the issues
`addressed in Petitioner’s Reply to the Patent Owner Preliminary Response. No new exhibits shall accompany the Sur-Reply.
` The Sur-Reply shall be filed by February 24, 2023.
`
`Thank you,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`
`From: Toft, Lukas <ltoft@foxrothschild.com>
`Sent: Friday, February 10, 2023 10:57 AM
`
`

`

`To: Trials <Trials@USPTO.GOV>; Zeilberger, Daniel <danielzeilberger@paulhastings.com>
`Cc: Modi, Naveen <naveenmodi@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max
`<maxyusem@paulhastings.com>; Ho, Krystina L. <krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-
`PH@paulhastings.com>; Chen, Joe <joechen@foxrothschild.com>; French-Brown, Wanda D. <WFrench-Brown@foxrothschild.com>
`Subject: RE: IPR2023-00070, -00074
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening
`attachments.
`
`
`
`Your Honors,
`
`Patent Owner respectfully requests the ability to file a corresponding sur-reply, not to exceed five pages and without additional
`exhibits, to respond to any arguments raised in the replies, which Petitioner has indicated below that it does not oppose. Patent
`Owner would be prepared to file any sur-reply on or before February 24.
`
`Best Regards,
`Luke
`
`Lukas Toft
`Fox Rothschild LLP
`(612) 607-7336
`
`From: Trials <Trials@USPTO.GOV>
`Sent: February 10, 2023 7:07 AM
`To: Zeilberger, Daniel <danielzeilberger@paulhastings.com>
`Cc: Modi, Naveen <naveenmodi@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max
`<maxyusem@paulhastings.com>; Ho, Krystina L. <krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-
`PH@paulhastings.com>; Toft, Lukas <ltoft@foxrothschild.com>; Chen, Joe <joechen@foxrothschild.com>; French-Brown, Wanda D.
`<WFrench-Brown@foxrothschild.com>; Trials <Trials@USPTO.GOV>
`Subject: [EXT] RE: IPR2023-00070, -00074
`
`Counsel,
`
`From the Board –
`
`Petitioner’s request for additional briefing is granted. Under the circumstances, we find that additional briefing limited to the three
`issues itemized in Petitioner’s email would be useful. Accordingly, in each of IPR2023-00070, IPR2023-00074, Petitioner is authorized
`to file a Reply to Patent Owner’s Preliminary Response of no more than five pages that addresses only those issues. No new exhibits
`shall accompany the Reply. The Reply shall be filed by February 15, 2023. In view of this authorization, a conference call is not
`necessary.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`(571) 272-7822
`
`From: Zeilberger, Daniel <danielzeilberger@paulhastings.com>
`Sent: Thursday, February 9, 2023 1:06 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Modi, Naveen <naveenmodi@paulhastings.com>; Dittmann, Eric W. <ericdittmann@paulhastings.com>; Yusem, Max
`<maxyusem@paulhastings.com>; Ho, Krystina L. <krystinaho@paulhastings.com>; bluebird-IPR-PH <bluebird-IPR-
`PH@paulhastings.com>; Toft, Lukas <ltoft@foxrothschild.com>; Chen, Joe <joechen@foxrothschild.com>; French-Brown, Wanda D.
`<WFrench-Brown@foxrothschild.com>
`Subject: IPR2023-00070, -00074
`
`
`

`

`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or opening
`attachments.
`
`Your Honors,
`
`Petitioner writes regarding the Patent Owner Preliminary Responses (“POPRs”) filed in IPR2023-00070 and IPR2023-00074 on January
`25, 2023. Petitioner respectfully seeks authorization to file 5-page replies responding to the assertions made in the POPRs regarding
`the priority date of the challenged patents (i.e., U.S. Patent Nos. 7,541,179 and 8,058,061). Petitioner believes good cause exists for
`such replies because the POPRs make arguments that Petitioner could not have anticipated, including (1) misinterpreting the
`prosecution record and provisional applications; (2) distorting the substance of Petitioner’s argument, and (3) applying an incorrect
`legal standard. For the sake of clarity, Petitioner notes that it also disagrees with the other arguments advanced in the POPR.
`However, Petitioner believes the record is otherwise sufficiently developed for purposes of institution, and thus is not seeking a reply
`on any other issues. Petitioner would be prepared to file the replies within 2 business days, and would not oppose corresponding sur-
`replies responding to any arguments raised in the replies.
`
`Petitioner has conferred with counsel for San Rocco Therapeutics (“SRT”), who represents in the POPRs that it has authority to act as
`the Patent Owner on behalf of Sloan Kettering Institute for Cancer Research. SRT requested that its position be reflected in this email
`as follows: SRT disagrees with Petitioner’s characterizations above and believes that no good cause exists. SRT believes the Board can
`properly interpret the prosecution record, provisional applications, and the Parties’ arguments and can apply the proper legal
`standard. SRT also believes that arguments related to the priority date of the challenged patents were reasonably foreseeable and
`that any arguments thereto could and should have been addressed in the Petition. Petitioner also delayed making this ask for two
`weeks from the filing of the POPRs. Accordingly, SRT opposes this request.
`
`Should the Board wish to schedule a conference call to discuss this matter, the parties are available next week on Tuesday, February
`14, between 2 p.m. and 5 p.m. ET, and Thursday, February 16, between 10 a.m. and 12 p.m. ET.
`
`Respectfully,
`Daniel Zeilberger
`Counsel for Petitioner
`
`
`Daniel Zeilberger | Of Counsel, Litigation Department
`Paul Hastings LLP | 2050 M Street NW, Washington, DC 20036 | Direct: +1.202.551.1993 |
`Main: +1.202.551.1700 | Fax: +1.202.551.0493 | danielzeilberger@paulhastings.com |
`www.paulhastings.com
`
`
`
`
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