`Zhong, Annita; Weidenfeller, Scott; #PictivaIPR; Gao, Jie; Carson, Rebecca; Warrick, Philip; Silver, Blair;
`Sheasby, Jason; Garr, David; SDC-Pictiva-IPR
`Trials
`RE: IPR2024-01095: request for preliminary reply
`Wednesday, November 13, 2024 9:47:43 AM
`image001.png
`
`From:
`To:
`
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`The panel has determined that additional briefing may be helpful to the Board
`in reaching a just decision on institution. Petitioner is authorized to file a Reply,
`strictly limited to the issues raised below in Petitioner’s email. Any reply filed
`pursuant to this authorization is limited to five (5) pages in length and is due
`within five (5) business days. Patent Owner is authorized to file a Sur-reply
`limited to five (5) pages in length, within five (5) business days of the filing of
`any reply. No conference call is required. The Board will enter a copy of this
`email correspondence as Exhibit 3001.
`
`Regards,
`
`Franchesca I. Alicea Villanueva
`Supervisory Paralegal
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Zhong, Annita <HZhong@irell.com>
`Sent: Friday, November 8, 2024 4:25 PM
`To: Weidenfeller, Scott <SWeidenfeller@cov.com>; Trials <Trials@USPTO.GOV>
`Cc: #PictivaIPR <PictivaIPR@irell.com>; Gao, Jie <JGao@irell.com>; Carson, Rebecca
`<RCarson@irell.com>; Warrick, Philip <pwarrick@irell.com>; Silver, Blair <bsilver@irell.com>;
`Sheasby, Jason <JSheasby@irell.com>; Garr, David <dgarr@cov.com>; SDC-Pictiva-IPR <SDC-Pictiva-
`IPR@cov.com>
`Subject: RE: IPR2024-01095: request for preliminary reply
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Honorable Board,
`
`Pictiva is available at the Board’s convenience if a call is required. It also requests a sur-reply should
`the Board grants Petitioner’s request for a reply.
`
`Ex. 3001
`IPR2024-01095
`
`
`
`
`Respectfully,
`
`H. Annita Zhong
`
`H. Annita Zhong
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`Telephone: (310) 203-7183
`Fax: (310) 556-5385
`
`From: Weidenfeller, Scott <SWeidenfeller@cov.com>
`Sent: Friday, November 8, 2024 1:21 PM
`To: trials@uspto.gov
`Cc: #PictivaIPR <PictivaIPR@irell.com>; Zhong, Annita <HZhong@irell.com>; Gao, Jie
`<JGao@irell.com>; Carson, Rebecca <RCarson@irell.com>; Warrick, Philip <pwarrick@irell.com>;
`Silver, Blair <bsilver@irell.com>; Sheasby, Jason <JSheasby@irell.com>; Garr, David
`<dgarr@cov.com>; Weidenfeller, Scott <SWeidenfeller@cov.com>; SDC-Pictiva-IPR <SDC-Pictiva-
`IPR@cov.com>
`Subject: IPR2024-01095: request for preliminary reply
`
`Dear Honorable Board,
`
`Petitioner in the above-referenced IPR respectfully requests authorization to file a five-page
`preliminary reply, and a declaration on public availability of the Ma reference, in order to address
`Patent Owner’s arguments on discretionary denial under Fintiv and on the availability of the Ma
`reference as prior art.
`
`Patent Owner has advised: “We do not oppose a reply on the 314(a) issue, but based on your
`response to date, we do oppose your attempt to supplement the petitions and to circumvent the
`word limit to address Ma’s alleged online availability and an attempt to submit additional evidence.”
`
`Petitioner is available at the Board’s convenience if it desires a conference call. Patent Owner did not
`provide its availability for such a call.
`
`Respectfully submitted,
`Scott Weidenfeller
`Counsel for Petitioner
`
`Scott Weidenfeller
`
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001-4956
`T +1 202 662 5923 | sweidenfeller@cov.com
`www.cov.com
`
`
`
`
`
`PLEASE NOTE: This message, including any attachments, may include privileged, confidential and/or
`inside information. Any distribution or use of this communication by anyone other than the intended
`recipient(s) is strictly prohibited and may be unlawful. If you are not the intended recipient, please
`notify the sender by replying to this message and then delete it from your system. Thank you.
`
`
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