Trials
`Mudd, Jason (SHB); Trials
`Schafer, Mark D. (SHB); Friesen, Kyle E. (SHB); Weidner, Evan J. (SHB); Argenti, Matthew; Rosato, Michael;
`Mills, Jad; Derryberry, Wes; Potter, Garrett; McKellips, Sa Nette (SHB)
`RE: IPR2023-01449: CSC ServiceWorks, Inc. v. PayRange, Inc. (U.S. Patent No. 11,481,772)
`Wednesday, February 7, 2024 12:00:35 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`Additional briefing would be helpful to the panel. Petitioner is authorized to filed a reply to the
`Preliminary Response, no more than 7 pages and no later than February 16, 2023. The reply is
`limited to addressing the RPI and General Plastics issue mentioned in Petitioner’s email. Patent
`Owner may filed a sur-reply, no more than 7 pages and no later than February 26, 2023. No
`conference call will be held.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Mudd, Jason (SHB) <jmudd@shb.com>
`Sent: Wednesday, February 7, 2024 11:00 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Schafer, Mark D. (SHB) <MSCHAFER@shb.com>; Friesen, Kyle E. (SHB) <KFRIESEN@shb.com>;
`Weidner, Evan J. (SHB) <eweidner@shb.com>; Argenti, Matthew <margenti@wsgr.com>; Rosato,
`Michael <mrosato@wsgr.com>; Mills, Jad <jmills@wsgr.com>; Derryberry, Wes
`<wderryberry@wsgr.com>; Potter, Garrett <gpotter@wsgr.com>; McKellips, Sa Nette (SHB)
`<SMCKELLIPS@shb.com>
`Subject: IPR2023-01449: CSC ServiceWorks, Inc. v. PayRange, Inc. (U.S. Patent No. 11,481,772)
`
`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 write on behalf of Petitioner, CSC ServiceWorks, Inc. in connection with the above-referenced IPR
`to respectfully request leave to file a reply brief to respond to the Patent Owner Preliminary
`Response (POPR), limited to the issues of whether the petition identified all real-parties-in interest
`(RPIs) and whether the Board should, in its discretion, deny institution under the General Plastic
`factors. Petitioner respectfully requests 7 pages for the reply brief and requests that Patent Owner
`be allowed to file a sur-reply brief that is also limited to 7 pages. Petitioner submits that good cause
`exists for this request because Patent Owner has made certain characterizations regarding newly-
`
`Exhibit 3001
`
`

`

`submitted exhibits that had not previously been of record in this proceeding and because new facts
`have arisen recently, including: i) the fact that a settlement was reached between Patent Owner,
`PayRange, and KioSoft, the party which PayRange has asserted is an unnamed RPI in this proceeding,
`and ii) the fact that the Board yesterday, at the request of KioSoft and PayRange, terminated
`PGR2023-00042, which had been pending against the same ‘772 patent at issue in this proceeding
`and which Patent Owner’s General Plastic argument had been premised on.
`
`Petitioner has conferred with Patent Owner regarding this request, and Patent Owner opposes this
`request. Patent Owner argues that Petitioner already had the opportunity to submit supplemental
`briefing regarding RPI in other IPRs pending between Petitioner and Patent Owner, and that Patent
`Owner cited to this briefing in its POPR in this proceeding. Patent Owner also argues that it already
`filed an updated mandatory notice in this proceeding yesterday that informed the Board of the
`settlement with KioSoft and the termination of PGR2023-00042.
`
`Petitioner responds that the RPI inquiry is a case-by-case inquiry dependent on the facts specific to
`each case, and, as such, the briefing and evidence in submitted in the other IPRs pending between
`the parties was not directed to the specific issue of whether any unnamed RPIs exist with respect to
`this particular IPR proceeding. There has also been no argument presented yet with regard to how
`the KioSoft-PayRange settlement and termination of PGR2023-00042 potentially impact the RPI
`inquiry or General Plastic inquiry at issue in this proceeding.
`
`Should the panel wish to conduct a conference call with the parties to discuss this request, the
`parties can provide their availabilities at the panel’s request.
`
`Best regards,
`
`Jason Mudd
`Lead Counsel for Petitioner
`
`Jason R. Mudd
`Senior Counsel
`Shook, Hardy & Bacon L.L.P.
`
`816-559-2437 | jmudd@shb.com
`
`
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`Thank you.
`
`