From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Trials
`Jeschke, Eric
`Melvin, Jason; Marschall, Richard; Trials
`FW: PGR2021-00078 and PGR2021-00097
`Tuesday, January 18, 2022 9:37:00 AM
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`Hi Eric, please let me know how to respond.
`Thanks,
`Maria
`
`From: Heard, Preston <Preston.Heard@wbd-us.com>
`Sent: Monday, January 17, 2022 5:00 PM
`To: King, Maria (PTAB) <Maria.King@USPTO.GOV>; jwyde@azalaw.com; sjugle@azalaw.com;
`manjom@azalaw.com; Moyles, Lisa <LMoyles@moylesip.com>; Herman, Barry
`<Barry.Herman@wbd-us.com>; Rockman, J <JRockman@moylesip.com>;
`erik.hawes@morganlewis.com; alexander.stein@morganlewis.com; sujohn.das@morganlewis.com
`Cc: Trials <Trials@USPTO.GOV>
`Subject: RE: PGR2021-00078 and PGR2021-00097
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Dear Ms. King,
`
`Thank you for reaching out regarding this issue. Patent Owner strongly opposes a stay of the ’871
`Reexamination and does not feel a stay would be appropriate under the present circumstances. In
`the April 2019 Notice referenced below, the PTO lists eight non-exhaustive factors that it may
`consider when determining whether to stay a parallel proceeding involving the same patent within
`the Office. Although you are correct to note the overlap in challenged claims between the ’871
`Reexamination and the two PGR petitions, the overlap in challenged claims is only one factor for
`consideration. As discussed below, many of the other factors weigh against a stay here, whereas
`ordering a stay would severely prejudice Patent Owner’s rights to an entire family of presumptively-
`valid patents, including a number of patents not at issue in the PGR and reexamination proceedings.
`
`Factor 2 asks “whether the same grounds of unpatentability or the same prior art are at issue in both
`proceedings.” Here, the three post-grant proceedings present entirely separate grounds asserting
`almost fully distinct prior art references. The ’871 Reexamination asserts three prior art references:
`U.S. Pat. No. 3,173,992 (Boop); U.S. Pub. No. 2016/0084048 (Harrigan); and U.S. Pat. No. 10,352,136
`(Goyeneche). Notably, two of these references were effectively filed after the ’697 Patent’s claimed
`priority date of July 18, 2013, and neither Boop nor Goyeneche appear at all in either of the PGRs.
`Although the ’097 PGR does assert a “Harrigan” reference, it relies on U.S. Provisional App. No.
`61/819,196 filed May 3, 2013, so this presents a different ground with a different (heavily disputed)
`provisional support issue.
`
`
`PGR2021-00078
`PGR2021-00097
`
`1
`
`Ex. 3007
`
`

`

`The reason for the different grounds and later-dated references asserted in the ’871 Reexamination
`is that the third-party Requester presented a new argument, not raised in either PGR proceeding,
`that the ’697 Patent is not entitled to its claimed priority date of July 18, 2013, but rather, that it is
`only entitled to claim priority back to February 8, 2017—which the CRU has since preliminarily
`accepted (incorrectly, and without the benefit of Patent Owner’s input on the issue). This priority
`determination implicates not only parallel district court and PTAB proceedings involving the ’697
`Patent, but even proceedings involving other patents in the same family. It is imperative that Patent
`Owner be allowed to respond—for the first time—to the false assertion that the ’697 Patent is not
`entitled to its claimed priority date. Thus, Factor 2 weighs heavily against a stay considering the lack
`of overlap in the respectively asserted prior art grounds and the new arguments raised in the ’871
`Reexamination. See Arctic Cat, Inc. v. Polaris Indus., Inc., Case IPR2015-01781, Paper 78 (PTAB Sept.
`25, 2018) (denying stay because of meaningful distinctions between issues raised in a reexamination
`and an IPR).
`
`Similarly, Factors 3 and 4 (“whether the concurrent parallel Office proceeding will duplicate efforts
`within the Office” and “whether the concurrent parallel Office proceeding could result in
`inconsistent results between proceedings”) weigh against a stay, where the lack of overlapping
`grounds effectively eliminates concerns relating to duplicate efforts and inconsistent results. And
`Factor 8 (“whether a decision in one proceeding would likely simplify issues in the concurrent
`parallel Office proceeding or render it moot”) also weighs against a stay because making a
`determination on the grounds asserted in the PGRs (for or against patentability) would still leave
`many issues for the CRU to decide in the ’871 Reexamination, not the least of which being the newly
`presented issue of priority.
`
`Accordingly, a stay of the ’871 Reexamination is not appropriate under the present circumstances.
`
`Respectfully submitted,
`Preston Heard
`Backup Counsel for Patent Owner
`
`Preston Heard
`Partner
`Womble Bond Dickinson (US) LLP
`
`d:
`m:
`e:
`
`404-888-7366
`202-280-8444
`Preston.Heard@wbd-us.com
`
`Atlantic Station
`271 17th Street, NW
`Suite 2400
`Atlanta, GA 30363-1017
`
`womblebonddickinson.com
`
`PGR2021-00078
`PGR2021-00097
`
`2
`
`Ex. 3007
`
`

`

`-=-=-=-=-=-=-=-
`
`This email is sent for and on behalf of Womble Bond Dickinson (US) LLP. Womble Bond Dickinson (US) LLP is a member of Womble
`Bond Dickinson (International) Limited, which consists of independent and autonomous law firms providing services in the US, the UK,
`and elsewhere around the world. Each Womble Bond Dickinson entity is a separate legal entity and is not responsible for the acts or
`omissions of, nor can bind or obligate, another Womble Bond Dickinson entity. Womble Bond Dickinson (International) Limited does not
`practice law. Please see www.womblebonddickinson.com/us/legal-notice for further details.
`
`From: King, Maria (PTAB) <Maria.King@USPTO.GOV>
`Sent: Monday, January 10, 2022 3:23 PM
`To: jwyde@azalaw.com; sjugle@azalaw.com; manjom@azalaw.com; Moyles, Lisa
`<LMoyles@moylesip.com>; Herman, Barry <Barry.Herman@wbd-us.com>; Rockman, J
`<JRockman@moylesip.com>; Heard, Preston <Preston.Heard@wbd-us.com>;
`erik.hawes@morganlewis.com; alexander.stein@morganlewis.com; sujohn.das@morganlewis.com
`Cc: Trials <Trials@USPTO.GOV>
`Subject: PGR2021-00078 and PGR2021-00097
`
`
`
`
`Counsel,
`As you are all aware, the PTAB has instituted post-grant review in PGR2021-00078 and
`PGR2021-00097, both of which involve U.S. Patent No. 10,844,697 B2. The ’078 PGR involves
`all 21 claims of the ’697 patent, whereas the ’097 PGR involves claims 1, 2, and 8–10. On
`November 1, 2021, the PTO granted a request for ex parte reexamination, also of claims 1, 2, and
`8–10 of the ’697 patent, in Reexam No. 90/014,871.
`
`In April 2019, the PTO issued a Notice Regarding Options for Amendments by Patent Owner
`Through Reissue or Reexamination During a Pending AIA Trial Proceeding, 84 Fed. Reg. 16654
`(Apr. 22, 2019). As stated in the Notice, “[i]f the Central Reexamination Unit (CRU) grants a
`reexamination request . . . , the Office may stay the reexamination pending a final written decision
`in an AIA trial proceeding addressing the same patent.” 84 Fed. Reg. at 16656.
`
`“The Director has authority to determine the approach with regard to a possible stay of a reissue
`or ex parte reexamination proceeding.” 84 Fed. Reg. at 16656 (citing 35 U.S.C. 315(d), 325(d)).
`And “[u]nder that authority, the Board ordinarily will stay a parallel Office proceeding where good
`cause exists. Good cause for staying a case may exist if, for example, an ongoing AIA proceeding,
`which is subject to statutory deadlines, is addressing the same or overlapping claims of a patent at
`issue in a parallel Office proceeding.” Id.
`
`With this process in mind, and in the particular situation here, the Board seeks a brief
`response from Patent Owner on whether it would oppose a stay in the ’871
`Reexamination. Any response should be sent as a response to this email by January 17,
`2022.
`
`Thank you,
`
`Maria King
`Deputy Chief Clerk for Trials
`Patent Trial and Appeal Board
`
`PGR2021-00078
`PGR2021-00097
`
`3
`
`Ex. 3007
`
`

`

`U.S. Patent and Trademark Office
`703-756-1288
`
`
`
`
`PGR2021-00078
`PGR2021-00097
`
`4
`
`Ex. 3007
`
`