From:
`To:
`Cc:
`
`Subject:
`
`Date:
`
`Lisa.Nguyen@AllenOvery.com
`Trials; Grace.Wang@allenovery.com
`plambrianakos@fabricantllp.com; PTAB@fabricantllp.com; vrubino@fabricantllp.com;
`ffabricant@fabricantllp.com; eiturralde@fabricantllp.com; rcowell@fabricantllp.com; jostling@fabricantllp.com;
`David.Tennant@AllenOvery.com; Alan.Billharz@allenovery.com; Colby.Davis@AllenOvery.com;
`ggewirtz@lernerdavid.com; litigation@lernerdavid.com; rfaegenburg@lernerdavid.com;
`ocockings@lernerdavid.com; IMukerji@willkie.com; cmoulder@willkie.com; lg-jawbone-ipr_wfg@willkie.com
`RE: Consolidation in Proceedings IPR2023-00127, IPR2023-01166, IPR2023-01154; IPR2023-01084, IPR2023-
`01117, IPR2023-01112; IPR2023-01128, IPR2023-01177, IPR2023-01155
`Friday, February 2, 2024 11:52:18 AM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board:
`
`I am counsel representing Petitioner Meta Platforms, Inc. in IPR2023-01127, IPR2023-01084, and
`IPR2023-01128, challenging the validity of U.S. Patent Nos. 8,019,091; 8,321,213; and 8,326,611,
`respectively. Pursuant to the Board’s instructions during the January 24, 2024 conference regarding
`consolidation and coordination, Petitioner Meta has met and conferred with counsel for Patent
`Owner Jawbone Innovations, LLC, and counsel for Sony and LG, the petitioners in IPR2023-01166,
`IPR2023-01154, IPR2023-01117, IPR2023-01112, IPR2023-01177, IPR2023-01155, IPR2023-01222,
`and IPR2023-01248 to discuss a plan for consolidating the above-referenced proceedings under 35
`U.S.C. 315(d) and 37 C.F.R. 42.122(a).
`
`For ease of reference, the below table lists the relevant proceedings for each Petitioner discussed in
`this proposed plan, and an indication of which Petitioner will lead the consolidated proceeding
`under this plan.
`
`Challenged Patent Meta
`US8019091
`IPR2023-01127
`US8321213
`IPR2023-01084
`US8326611
`IPR2023-01128
`US8467543
`N/A
`
`Sony
`IPR2023-01166
`IPR2023-01117
`IPR2023-01177
`IPR2023-01222
`
`LG
`IPR2023-01154
`IPR2023-01112
`IPR2023-01155
`IPR2023-01248
`
`Lead
`Meta
`Meta
`Meta
`Sony
`
`The parties jointly propose the following consolidation and coordination plan:
`
`1. Counsel for Meta, Sony, and LG will form a joint petitioners’ group and will submit joint
`filings. For the IPR proceedings listed above, Meta or Sony will lead the joint petitioners’
`group, as indicated, with the other petitioners taking “understudy” roles. For each of
`paragraphs 2-4, the consolidated IPR proceeding maintains all grounds of unpatentability
`asserted in the petitions filed in the IPR proceedings for the lead and understudy
`petitioners.
`2. With respect to U.S. Patent No. 8,019,091, the Sony IPR proceeding (IPR2023-01166) and LG
`IPR proceeding (IPR2023-01154) will be consolidated into the Meta IPR proceeding
`(IPR2023-01127).
`3. With respect to U.S. Patent No. 8,321,213, the Sony IPR proceeding (IPR2023-01117) and LG
`IPR proceeding (IPR2023-01112) will be consolidated into the Meta IPR proceeding
`
`Exhibit 3002
`
`

`

`(IPR2023-01084). With respect to the invalidity challenges asserted for dependent claims 37
`and 38 that are present in the Sony and LG IPR proceedings but not present in the Meta IPR
`proceeding, Meta will be prepared to address the challenges to those claims.
`4. With respect to U.S. Patent No. 8,326,611, the Sony IPR proceeding (IPR2023-01177) and LG
`IPR proceeding (IPR2023-01155) will be consolidated into the Meta IPR proceeding
`(IPR2023-01128). With respect to the invalidity challenges asserted for dependent claims 3
`and 4 that are present in the Sony and LG IPR proceedings but not present in the Meta IPR
`proceeding, Meta will be prepared to address the challenges to those claims.
`5. With respect to U.S. Patent No. 8,467,543, the LG IPR proceeding (IPR2023-01248) will be
`consolidated into the Sony IPR proceeding (IPR2023-01222).
`
`
`The parties can be available for a teleconference with the Board, if necessary, to discuss this
`proposal.
`
`Regards,
`Lisa Nguyen
`Lead Counsel for Meta Platforms, Inc.
`
`
`Lisa K. Nguyen
`Allen & Overy LLP
`
`550 High Street | Palo Alto | CA | 94301 | USA
`Direct +1 650 388 1724 | Mob +1 650 391 5373 | lisa.nguyen@allenovery.com
`
`
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, January 22, 2024 12:38 PM
`To: Wang, Grace:LT (NY) <Grace.Wang@allenovery.com>; Trials <Trials@USPTO.GOV>
`Cc: plambrianakos@fabricantllp.com; PTAB@fabricantllp.com; vrubino@fabricantllp.com;
`ffabricant@fabricantllp.com; eiturralde@fabricantllp.com; rcowell@fabricantllp.com;
`jostling@fabricantllp.com; Nguyen, Lisa <Lisa.Nguyen@AllenOvery.com>; Tennant, David:LT (DC)
`<David.Tennant@AllenOvery.com>; Billharz, Alan:LT (DC) <Alan.Billharz@allenovery.com>; Davis,
`Colby:LT (DC) <Colby.Davis@AllenOvery.com>; ggewirtz@lernerdavid.com;
`litigation@lernerdavid.com; rfaegenburg@lernerdavid.com; ocockings@lernerdavid.com;
`IMukerji@willkie.com; cmoulder@willkie.com; lg-jawbone-ipr_wfg@willkie.com
`Subject: RE: Consolidation in Proceedings IPR2023-00127, IPR2023-01166, IPR2023-01154; IPR2023-
`01084, IPR2023-01117, IPR2023-01112; IPR2023-01128, IPR2023-01177, IPR2023-01155
`
`
`Caution: non-A&O email
`
`
`
`Counsel,
`
`The Board is scheduling a conference call for Wednesday, January 24 at 12pm ET.
`The dial-in number is: 866-815-1560 and the passcode is: 6610860#.
`
`

`

`
`The parties should be prepared to discuss consolidation and coordination of the following
`proceedings:
`
`
`(a) IPR2023-01127 (paper 11), IPR2023-01166 (paper 12), and IPR2023-01154 (paper 12)
`with respect to U.S. Patent No. 8,019,091;
`(b) IPR2023-01084 (paper 14), IPR2023-01117 (paper 12), and IPR2023-01112 (paper 11)
`with respect to U.S. Patent No. 8,321,213;
`(c) IPR2023-01128 (paper 14), IPR2023-01177 (paper 12), and IPR2023-01155 (paper 11)
`with respect to U.S. Patent No. 8,326,611; and
`(d) IPR2023-01222 and IPR2023-01248 with respect to U.S. Patent No. 8,467,543.
`
`
`Lead counsel for each party is expected to make an appearance, although back up counsel may
`provide the substantive discussion. Any counsel making an official appearance must be identified on
`a party’s Mandatory Notice or have a Pro Hac Vice motion on file.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Grace.Wang@allenovery.com <Grace.Wang@allenovery.com>
`Sent: Friday, January 19, 2024 7:28 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: plambrianakos@fabricantllp.com; PTAB@fabricantllp.com; vrubino@fabricantllp.com;
`ffabricant@fabricantllp.com; eiturralde@fabricantllp.com; rcowell@fabricantllp.com;
`jostling@fabricantllp.com; Lisa.Nguyen@AllenOvery.com; David.Tennant@AllenOvery.com;
`Alan.Billharz@allenovery.com; Colby.Davis@AllenOvery.com; ggewirtz@lernerdavid.com;
`litigation@lernerdavid.com; rfaegenburg@lernerdavid.com; ocockings@lernerdavid.com;
`IMukerji@willkie.com; cmoulder@willkie.com; lg-jawbone-ipr_wfg@willkie.com
`Subject: Consolidation in Proceedings IPR2023-00127, IPR2023-01166, IPR2023-01154; IPR2023-
`01084, IPR2023-01117, IPR2023-01112; IPR2023-01128, IPR2023-01177, IPR2023-01155
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Board,
`
`The parties in the above-captioned proceedings (Patent Owner Jawbone Innovations, LLC and
`Petitioners Meta Platforms, Inc., Sony Electronics Inc., and LG Electronics Inc.) have met and conferred
`about the consolidation and coordination of these proceedings, pursuant to the scheduling orders issued
`in:
`
`
`(a) IPR2023-01127 (paper 11), IPR2023-01166 (paper 12), and IPR2023-01154 (paper 12) with
`respect to U.S. Patent No. 8,019,091;
`
`

`

`(b) IPR2023-01084 (paper 14), IPR2023-01117 (paper 12), and IPR2023-01112 (paper 11) with
`respect to U.S. Patent No. 8,321,213; and
`(c) IPR2023-01128 (paper 14), IPR2023-01177 (paper 12), and IPR2023-01155 (paper 11) with
`respect to U.S. Patent No. 8,326,611.
`
`The parties are available for a conference call with the Board at the following times to discuss
`consolidation and coordination:
`
`
`January 24: noon ET
`January 25: noon ET
`
`
`Please advise if the Board is available at any of these times. If these times do not work for the Board,
`please propose alternate time availability.
`
`The parties do not propose any motions at this time.
`
`
`Regards,
`Grace Wang (Counsel for Petitioner Meta)
`
`
`Grace Wang, PhD JD | Partner
`Allen & Overy LLP
`1221 Avenue of the Americas | New York | NY 10020
`Direct +1 212 756 1143 | Mob +1 630 569 1528
`www.allenovery.com
`
`
`
`
`
`This email is confidential and may also be privileged. If you are not the intended recipient please delete it and notify
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`its contents to any other person.
`
`Allen & Overy LLP
`1221 Avenue of the Americas
`New York, New York 10020
`Tel: 212 610 6300
`Fax: 212 610 6399
`https://www.allenovery.com
`
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`OC306763 and SRA number 401323. It is authorized and regulated by the Solicitors Regulation Authority of
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`This email is confidential and may also be privileged. If you are not the intended recipient please delete it and notify
`us immediately by telephoning or e-mailing the sender. You should not copy it or use it for any purpose nor disclose
`its contents to any other person.
`Allen & Overy LLP
`550 High Street
`Palo Alto
`CA 94301
`Tel: +1 650 388 1650
`Fax: +1 650 388 1699
`http://www.allenovery.com
`
`Allen & Overy LLP is a limited liability partnership registered in England and Wales with registered number
`OC306763 and SRA number 401323. It is authorised and regulated by the Solicitors Regulation Authority of
`England and Wales. Allen & Overy LLP is a multi-jurisdictional legal practice with lawyers admitted to practice in
`a variety of jurisdictions. The term partner is used to refer to a member of Allen & Overy LLP or an employee or
`consultant with equivalent standing and qualifications. A list of the members of Allen & Overy LLP and of the non-
`members who are designated as partners is open to inspection at its registered office, One Bishops Square London
`E1 6AD and at the above address.
`For further information about how Allen & Overy LLP is regulated, please see our website at
`www.allenovery.com/en-gb/global/legal-notices
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`Our privacy policy is available at https://www.allenovery.com/en-gb/global/legal-notices/privacy-policy
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