From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Stein, Alexander B.; Trials
`Heard, Preston; Moyles, Lisa; Rockman, J; Ney, Angela; Herman, Barry; Friedman, Ana; Das, Sujohn; Hawes, C.
`Erik; Story, Melissa; 697 Patent-PGR-Service
`RE: PGR2021-00097 - Request for Conference Call
`Thursday, July 7, 2022 2:48:29 PM
`
`Counsel,
`
`No conference call is necessary.
`
`The briefing on Petitioner’s motion for discovery is due to be completed on July 20, 2022. See Ex.
`3010 at 1. The current due date for Petitioner’s reply brief is July 12, 2022, and the current due date
`for Patent Owner’s sur-reply brief is August 23, 2022. See Paper 47 at 1. Because the motion
`briefing will not be completed until after Petitioner’s reply must be filed, the extensions proposed by
`Petitioner below provide a reasonable amount of additional time for the parties to address the
`evidence at issue, should Petitioner’s motion be granted.
`
`Thus, Petitioner’s reply brief is now due on July 29, 2022, and Patent Owner’s sur-reply brief is due
`on September 8, 2022.
`
`(Please note that this email will be added to the record as a 3000-series exhibit.)
`
`Thank you,
`
`Megan Carlson
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-1650
`Megan.Carlson@uspto.gov
`
`From: Stein, Alexander B. <alexander.stein@morganlewis.com>
`Sent: Thursday, July 7, 2022 11:49 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: Heard, Preston <Preston.Heard@wbd-us.com>; Moyles, Lisa <LMoyles@moylesip.com>;
`Rockman, J <JRockman@moylesip.com>; Ney, Angela <Angela.Ney@wbd-us.com>; Herman, Barry
`<Barry.Herman@wbd-us.com>; Friedman, Ana <Ana.Friedman@wbd-us.com>; Das, Sujohn
`<sujohn.das@morganlewis.com>; Hawes, C. Erik <erik.hawes@morganlewis.com>; Story, Melissa
`<melissa.story@morganlewis.com>; 697 Patent-PGR-Service <697Patent-PGR-
`Service@morganlewis.com>
`Subject: RE: PGR2021-00097 - Request for Conference Call
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`PGR2021-00097
`
`1
`
`Ex. 3011
`
`

`

`
`The parties have been discussing a potential stipulation to extend due dates 2 and 3 to account for
`this additional motion practice. Unfortunately, those discussions have reached an impasse, so the
`Board’s guidance is respectfully requested. The parties’ respective positions as to this scheduling
`dispute are provided below.
`
`
`Petitioners have suggested equal extensions of 16 days to due dates 2 and 3 (moving those
`deadlines to July 29th and September 8th, respectively), so that this motion practice would be
`complete before the next merits brief is filed.
`
`
`
`Patent Owner’s position is that Petitioners’ request (both for additional discovery and a
`resulting extension of time) is untimely. The parties negotiated an agreed production of
`certain materials as part of discovery on May 5, 2022. Petitioners did not seek additional
`materials until seven weeks later, June 23rd, or seek the Board’s intervention until July 2nd,
`twelve days before its reply brief date. Under the circumstances, and for additional reasons
`Patent Owner could explain on a conference call, further extensions to the schedule are
`unwarranted.
`
`
`The parties are available today (7/7) between 1pm-2pm eastern time to discuss, or are available
`tomorrow (7/8) between 9am-10:30am or 12-1pm eastern time to discuss.
`
`Respectfully Submitted,
`
`Alex Stein, Reg. No. 71,397
`Counsel for Petitioners
`
`Alexander B. Stein
`Morgan, Lewis & Bockius LLP (Silicon Valley Office)
`(650) 843-7278 | Email My Assistant
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Wednesday, July 6, 2022 9:13 AM
`To: Stein, Alexander B. <alexander.stein@morganlewis.com>; Trials <Trials@USPTO.GOV>
`Cc: Heard, Preston <Preston.Heard@wbd-us.com>; Moyles, Lisa <LMoyles@moylesip.com>;
`Rockman, J <JRockman@moylesip.com>; Ney, Angela <Angela.Ney@wbd-us.com>; Herman, Barry
`<Barry.Herman@wbd-us.com>; Friedman, Ana <Ana.Friedman@wbd-us.com>; Das, Sujohn
`<sujohn.das@morganlewis.com>; Hawes, C. Erik <erik.hawes@morganlewis.com>; Story, Melissa
`<melissa.story@morganlewis.com>; 697 Patent-PGR-Service <697Patent-PGR-
`Service@morganlewis.com>
`Subject: RE: PGR2021-00097 - Request for Conference Call
`
`[EXTERNAL EMAIL]
`Counsel,
`
`No conference call is necessary.
`
`PGR2021-00097
`
`2
`
`Ex. 3011
`
`

`

`
`Petitioner is authorized to file the requested motion for discovery. The motion shall be filed no later
`than July 13, 2022, and shall otherwise comply with the Board’s rules. Patent Owner may file an
`opposition no later than July 20, 2022, which shall also comply with the Board’s rules.
`
`Petitioner is not authorized a reply at this time.
`
`Thank you,
`
`Megan Carlson
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-1650
`Megan.Carlson@uspto.gov
`
`From: Stein, Alexander B. <alexander.stein@morganlewis.com>
`Sent: Saturday, July 2, 2022 2:16 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Heard, Preston <Preston.Heard@wbd-us.com>; Moyles, Lisa <LMoyles@moylesip.com>;
`Rockman, J <JRockman@moylesip.com>; Ney, Angela <Angela.Ney@wbd-us.com>; Herman, Barry
`<Barry.Herman@wbd-us.com>; Friedman, Ana <Ana.Friedman@wbd-us.com>; Das, Sujohn
`<sujohn.das@morganlewis.com>; Hawes, C. Erik <erik.hawes@morganlewis.com>; Story, Melissa
`<melissa.story@morganlewis.com>; 697 Patent-PGR-Service <697Patent-PGR-
`Service@morganlewis.com>
`Subject: PGR2021-00097 - Request for Conference Call
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`Petitioners SWM and NexTier request a conference call with the panel in PGR2021-00097 to discuss
`a discovery dispute. In particular, the dispute relates to three sealed deposition transcripts that
`Patent Owner possesses from a related district court case, and those deposition transcripts include
`testimony from Patent Owner’s witnesses concerning aspects of the SafeJet System (the asserted
`product prior art at issue in this PGR). While the parties were able to resolve an initial dispute and
`Patent Owner did produce portions of the deposition transcripts, the unproduced portions of the
`deposition transcripts also appear likely to discuss the SafeJet System. Patent Owner has declined to
`produce the full deposition transcripts and associated exhibits.
`
`Accordingly, Petitioners respectfully request a conference call to discuss authorization to (i) file a
`motion to compel this routine discovery or, (ii) in the alternative, file a motion to obtain the three
`full deposition transcripts (and associated exhibits) as additional discovery.
`
`The parties are available on (i) July 5th from 9-11 AM or after 2 PM ET or (ii) July 6th from 9-11 AM or
`
`PGR2021-00097
`
`3
`
`Ex. 3011
`
`

`

`after 4 PM ET to discuss this request.
`
`Respectfully Submitted,
`
`Alex Stein, Reg. No. 71,397
`Counsel for Petitioners
`
`Alexander B. Stein
`Morgan, Lewis & Bockius LLP (Silicon Valley Office)
`(650) 843-7278 | Email My Assistant
`
`
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`
`PGR2021-00097
`
`4
`
`Ex. 3011
`
`