`To:
`Cc:
`
`Subject:
`Date:
`
`Woo, Philip
`James Zak; Trials
`David Hecht; Selina Kyle; khan@fr.com; Squire, Monté T.; Karl Renner; IPR42342-0136IP1@fr.com;
`devoto@fr.com; Woo, Philip
`RE: IPR2024-00232 and IPR2024-00775 - Request for Permission to File Adverse Judgement
`Monday, April 7, 2025 1:56:00 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Honorable Board,
`
`Petitioner Apple Inc. respectfully submits this email in response to Patent Owner’s email
`requesting permission to file requests for adverse judgment under 37 C.F.R. 42.73 in
`IPR2024-00232 and IPR2024-00775 and to lift the stay in EPR 90/015,052.
`
`Petitioner Apple agrees to Patent Owner's request for adverse judgment in IPR2024-
`00232 and does not oppose Patent Owner’s request to lift the stay in EPR 90/015,052.
` Should the Board grant adverse judgment in IPR2024-00232, Petitioner Apple
`respectfully requests that pursuant to 37 C.F.R. 42.73(c) the Board include in its
`judgment a recommendation to the Examiner in EPR 90/015,052 to consider whether the
`Patent Owner should be estopped under 37 C.F.R. 42.73(d)(3)(1) from “taking action
`inconsistent with the adverse judgment, including obtaining in any patent … [a] claim
`that is not patentably distinct from a finally refused or canceled claim.”
`
`Should the Board feel a conference call is necessary, the parties will provide a list of
`mutually agreeable times.
`
`Respectfully submitted,
`
`Philip Woo
`Reg. No. 39.880
`
`Counsel for Petitioner Apple Inc.
`
`Philip W. Woo
`Partner
`
`Duane Morris LLP
`260 Homer Avenue, Suite 202
`Palo Alto, CA 94301-2777
`P: +1 650 847 4145
`F: +1 650 644 0150
`C: +1 415 627 7531
`
`PWWoo@duanemorris.com
`www.duanemorris.com
`
`Ex. 3004
`IPR2024-00232
`
`
`
`
`From: James Zak <jzak@hechtpartners.com>
`Sent: Monday, April 7, 2025 7:02 AM
`To: Trials@uspto.gov
`Cc: David Hecht <dhecht@hechtpartners.com>; Selina Kyle <admin@hechtpartners.com>; Woo,
`Philip <PWWoo@duanemorris.com>; khan@fr.com; Squire, Monté T.
`<MTSquire@duanemorris.com>; Karl Renner <renner@fr.com>; IPR42342-0136IP1@fr.com;
`devoto@fr.com
`Subject: IPR2024-00232 and IPR2024-00775 - Request for Permission to File Adverse Judgement
`
`
`Honorable Board,
`
`Patent Owner Proxense respectfully requests authorization to file Requests for
`Adverse Judgment under 37 C.F.R. § 42.73 in IPR2024-00232 and IPR2024-00775,
`and to lift the stay in EPR 90/015,052.
`
`Proxense has met and conferred with Petitioners’ counsel over several days via
`email and has responded to all questions posed. However, Petitioners Apple and
`Microsoft have not yet stated their positions regarding the request.
`
`Should the Board believe a conference call would be beneficial, the parties will
`promptly provide a list of mutually agreeable times.
`
`Respectfully submitted,
`
`James A. Zak, Esq.
`Reg. No. 60190
`
`Counsel for Patent Owner
`
`Hecht Partners LLP
`
`125 Park Ave. 25th Floor
`New York, NY 10017
`E: jzak@hechtpartners.com
`P: (651) 357-8517
`
`For more information about Duane Morris, please visit http://www.DuaneMorris.com
`
`Confidentiality Notice: This electronic mail transmission is privileged and confidential and is intended only for the review of the party to
`
`
`
`whom it is addressed. If you have received this transmission in error, please immediately return it to the sender. Unintended transmission
`shall not constitute waiver of the attorney-client or any other privilege.
`
`
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