Trials
`Warren Thomas; Trials
`ABS Global PGR Team; Meara, Joe; Houston, Michael R.; Foley-ABS-PGR2022-00019@foley.com; Foley-ABS-
`PGR2022-00020@foley.com; Katie Shepherd
`RE: Disclaimers filed in PGR2022-00019 and -00020
`Monday, June 13, 2022 11:26:09 AM
`image005.png
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Counsel:
`
`The panel has determined that a call is not necessary at this time.
`
`Thank you,
`
`Megan Carlson
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-1650
`Megan.Carlson@uspto.gov
`
`From: Warren Thomas <wthomas@mcciplaw.com>
`Sent: Friday, June 10, 2022 11:20 AM
`To: Trials <Trials@USPTO.GOV>
`Cc: ABS Global PGR Team <ABSGlobalPGRTeam@mcciplaw.com>; Meara, Joe <JMeara@foley.com>;
`Houston, Michael R. <MHouston@foley.com>; Foley-ABS-PGR2022-00019@foley.com; Foley-ABS-
`PGR2022-00020@foley.com; Katie Shepherd <kshepherd@mcciplaw.com>
`Subject: RE: Disclaimers filed in PGR2022-00019 and -00020
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Patent Trial and Appeal Board, we write as counsel for Petitioners in the above PGR matters
`to follow up on the emails from each side last week (in the thread below), now that the parties have
`had a chance to confer.
`
`Petitioners seek a conference call with the Board to discuss (or, if necessary, obtain leave to file a
`motion for) the entry of adverse judgment in these matters under Rule 42.73(b) and Arthrex, Inc. v.
`Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018) (holding the Board is permitted to enter
`adverse judgment when a patent owner disclaims before institution decision).
`
`Petitioners asked Patent Owner if it would oppose our request to have adverse judgment entered or
`not. Counsel for Patent Owner responded, “We take no position.” Thus, Petitioners’ request for
`adverse judgment is not opposed.
`
`Accordingly, Petitioners ask for a conference call to explain the bases for its request. Petitioners note
`that that Patent Owner’s similar application identified as a “Related Matter” in the Petitions is still
`pending, so Petitioners seek to avoid and preclude any potential gamesmanship by Patent Owner
`
`IPR2022-00019, -00020
`Ex. 3004
`
`

`

`pursuing additional claims to similarly ineligible subject matter
`
`Petitioners are available for a conference call at the times identified below (all times Eastern).
`Counsel for Patent Owner declined to provide availability.
`Monday June 13, after 12PM
`Tuesday June 14, any time
`Wednesday June 15, any time except 12–3PM
`Thursday or Friday June 16–17, any time
`Wednesday June 22, after 1PM
`Thursday or Friday June 23–24, any time.
`
`
`Petitioners will arrange for a court reporter if a conference call is scheduled.
`
`Warren Thomas
`Principal
`wthomas@mcciplaw.com | mcciplaw.com
`
`999 Peachtree Street NE, Suite 1300 | Atlanta, GA 30309
`Office 404-645-7700
`Direct 678-771-7781
`Fax 404-645-7707
`NOTICE: This e-mail message and its attachments may contain legally privileged and confidential information
`intended solely for the intended recipient’s use. If you are not the intended recipient, you may not read, copy,
`distribute, or otherwise use this message, its attachments, or information therein. If you have received this
`message in error, please (1) notify the sender immediately by e-mail and (2) delete all copies of this message
`immediately. Thank you.
`
`From: Warren Thomas
`Sent: Thursday, June 2, 2022 5:03 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: ABS Global PGR Team <ABSGlobalPGRTeam@mcciplaw.com>; Meara, Joe <JMeara@foley.com>;
`Houston, Michael R. <MHouston@foley.com>; Foley-ABS-PGR2022-00019@foley.com; Foley-ABS-
`PGR2022-00020@foley.com
`Subject: RE: Disclaimers filed in PGR2022-00019 and -00020
`
`To the Patent Trial and Appeal Board:
`
`Petitioners respond to Patent Owner’s email below out of an abundance of caution, given the
`Board’s recent filing of the email and statutory disclaimers as exhibits in each of the above
`proceedings. Petitioners believe that Patent Owner’s actions should be construed as a request for
`adverse judgment and judgment entered against the Patent Owner in accordance with Rule 42.73(b)
`and Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018).
`
`Petitioners have not yet had the opportunity to confer with Patent Owner about this issue. Patent
`Owner did not attempt to confer with Petitioners before (or after) filing the statutory disclaimers or
`emailing the Board yesterday afternoon. Last night we requested a call with Patent Owner’s counsel
`to confer on whether Patent Owner agrees adverse judgment is appropriate, but we have not yet
`
`

`

`received any response.
`
`We therefore write to notify the Board of Petitioners’ position and preserve our ability to request
`relief before the Board takes any further action. To the extent the parties cannot come to an
`agreement once we have an opportunity to confer, Petitioners would intend to request a conference
`call with the Board.
`
`If the Board believes a conference call is appropriate at this time, Petitioners are available before
`noon Eastern on Monday June 6 and any time Tuesday June 7 through Friday June 10. Additional
`times can be provided upon request.
`
`Warren Thomas
`Principal
`wthomas@mcciplaw.com | mcciplaw.com
`
`999 Peachtree Street NE, Suite 1300 | Atlanta, GA 30309
`Office 404-645-7700
`Direct 678-771-7781
`Fax 404-645-7707
`NOTICE: This e-mail message and its attachments may contain legally privileged and confidential information
`intended solely for the intended recipient’s use. If you are not the intended recipient, you may not read, copy,
`distribute, or otherwise use this message, its attachments, or information therein. If you have received this
`message in error, please (1) notify the sender immediately by e-mail and (2) delete all copies of this message
`immediately. Thank you.
`
`From: Houston, Michael R. <MHouston@foley.com>
`Sent: Wednesday, June 1, 2022 1:39 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: ABS Global PGR Team <ABSGlobalPGRTeam@mcciplaw.com>; Meara, Joe <JMeara@foley.com>
`Subject: Disclaimers filed in PGR2022-00019 and -00020
`
`Caution: This email originated from outside your organization.
`Dear Board,
`We are counsel for Patent Owner in PGRs 2022-00019 and -00020. We are writing to inform the
`panel that the two patents at issue in these proceedings have been disclaimed by the Patent Owner.
`Copies of the disclaimers are attached for references. Patent owner assumes this will lead to
`termination of these proceedings, but is available for a teleconference with the Board if desired.
`Please advise if there are further steps that need to be taken by Patent Owner in regards to these
`proceedings.
`Counsel for Petitioner is copied on this email.
`Sincerely,
`Mike Houston
`Michael R. Houston
`Partner
`
`Foley & Lardner LLP
`321 North Clark Street, Suite 3000, Chicago, IL 60654-4762
`Phone 312.832.4378
`View My Bio | Visit Foley.com | mhouston@foley.com
`
`

`

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