Trials
`Abelev, Gary; Trials
`Paul Ackerman; Ironsource v Digital Turbine PGR; Ghiam, Armin; Marti Guidoux; Hollingsworth, Miesha; Jennifer
`Bush
`RE: IronSource LTD v. Digital Turbine, Inc. (Case No. PGR2022-00053)
`Thursday, September 14, 2023 2:25:31 PM
`image001.png
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`From the Board –
`
`Petitioner is authorized to file a motion to submit supplemental information under 37 C.F.R. 42.223.
`As required by the rule, the motion must show why the supplemental information reasonably could
`not have been obtained earlier and that consideration of the supplemental information would be in
`the interests-of-justice. Petitioner may file the supplemental information that is the subject of
`Petitioner’s motion, mentioned in Petitioner’s email to the Board, as new exhibits 1031, 1032, and
`1033. Petitioner’s motion is limited to eight pages and shall be due on September 21th. Patent
`Owner may file a response to Petitioner’s motion, also limited to eight pages, by September 28th.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Abelev, Gary <GaryAbelev@andrewskurth.com>
`Sent: Wednesday, September 13, 2023 4:01 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Paul Ackerman <Paul@acknowledgeip.com>; Ironsource v Digital Turbine PGR
`<IronsourcevDigitalTurbinePGR@fenwick.com>; Ghiam, Armin <AGhiam@huntonak.com>; Marti
`Guidoux <MGuidoux@fenwick.com>; Hollingsworth, Miesha
`<MieshaHollingsworth@andrewskurth.com>; Jennifer Bush <jbush@fenwick.com>
`Subject: IronSource LTD v. Digital Turbine, Inc. (Case No. PGR2022-00053)
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Board:
`
`IronSource requests a conference call authorizing Petitioner to file a motion pursuant to 37 C.F.R.
`42.20 and/or 42.223(b) granting leave to file new exhibits 1031, 1032, and 1033, and either (a)
`replace previously filed Exhibits 1024, 1025, and 1028 with Exh. 1031, 1032, and 1033, respectively,
`or (b) permit Petitioner to modify its opposition and supporting declaration of Dr. Almeroth (Exh.
`1029) to change citations to Exhibits 1024, 1025, and 1028 therein to Exh. 1031, 1032 and 1033,
`respectively.
`
`PGR2022-00053
`Ex. 3001
`
`

`

`
`On Friday, September 8, 2023, Patent Owner objected to Exhibits 1024, 1025, and 1028 based on
`the capture date reflected on those exhibits being after the priority date of the ‘256 Patent and on
`Tuesday, September 12, 2023, Petitioner promptly served copies of Exhibits 1031, 1032, and 1033
`on Patent Owner.
`
`Specifically, Exh. 1031 is a substantively identical version of the document reflected in Exh. 1024 but
`captured by the Wayback machine on October 1, 2017. Similarly, Exh. 1032 is a substantively
`identical version of Exh. 1025 captured by the Wayback Machine on October 1, 2017 and Exh. 1033
`is a substantively identical version of Exh. 1028 captured by the Wayback Machine on August 3, 2014
`(from the website https://stuff.mit.edu/afs/sipb/project/android/docs/training/id-
`auth/authenticate.html).
`
`Patent Owner opposes Petitioner’s request as not meeting the standard for supplemental
`information under 37 C.F.R. 42.223(b) since the content of proposed Exhibits 1031, 1032, and 1033
`reasonably could have been obtained earlier. Patent Owner believes the correct procedure is
`instead for Petitioner file the proposed exhibits under 37 C.F.R. 42.64(b)(2) on Due Date 6 in support
`of an opposition to a motion to exclude, if any.
`
`The parties are available for a conference call with the board on Thursday 12-1 or 3-4 pm ET, or
`Friday 12-3 pm ET.
`
`Best regards, Gary Abelev.
`
`
`Gary Abelev
`Partner
`GaryAbelev@HuntonAK.com
`phone 212.850.2881
`mobile 917.520.1045
`bio | vCard | LinkedIn
`
`Hunton Andrews Kurth LLP
`200 Park Avenue
`52nd Floor
`New York, New York 10166
`
`
`
`HuntonAK.com
`
`
`
`This communication is confidential. If you are not an intended recipient, please
`advise by return email immediately and then delete this message, including all
`copies and backups.
`
`
`