From:
`To:
`Cc:
`Subject:
`Date:
`
`Kenneth Darby
`Trials
`IPR50095-0170IP1; Eagle Robinson; Daniel Leventhal; Chad Wallis
`Request for Reply briefing in Apple Inc. (Petitioner) v. Smith Interface Technologies (Patent Owner), Case No. IPR2024-01090 (FR Ref.: 50095-0170IP1)
`Monday, December 2, 2024 10:51:51 AM
`
`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,
`
`Petitioner respectfully requests authorization for briefing in the form of a 3-page Reply to Patent Owner’s Preliminary Response (POPR) in
`IPR2024-01090. If Petitioner’s request is granted, Petitioner does not oppose Patent Owner’s submission of an equivalent Sur-Reply.
`Petitioner respectfully submits that no new evidence should accompany either the Reply or Sur-Reply.
`
`If granted, the Reply would address arguments in the POPR related to independent claims 1 and 42 regarding the claim terms “when” and
`“based on the detected usage where.” See, e.g., POPR at 8–11, 33–46. For example, the Reply would address the POPR’s statement on Page
`10 that “there is no apparent difference” between the claim term “when” and the separately-recited claim term “in response to.” The Reply
`would also address the POPR’s characterization of the prior art under the alleged interpretation that “when” and “in response to” are
`effectively equivalent.
`
`Petitioner respectfully submits that good cause for further briefing on these issues exists, at least because briefing would clarify the record
`and aid the Board in deliberations on issues that are potentially dispositive to institution. For example, although the Petition preemptively
`addresses aspects of the POPR’s arguments, Petitioner could not have reasonably anticipated Patent Owner’s assertion that the distinct
`claim terms “when” and “in response to” should be interpreted as having equivalent meanings. If requested by the Board, Petitioner will
`provide further explanation of good cause, but Petitioner limits the present narrative out of respect for the Board’s consistent request for
`emails to be limited to defining issues without argumentative content.
`
`In connection with this request, Petitioner proposes the briefing schedule outlined below:
`
`Preliminary Response
`Filed
`10/23/24
`
`Institution
`Deadline
`1/23/25
`
`Petitioner’s Reply Deadline
`Within 5 business days of the Board’s
`authorization
`
`Patent Owner’s Sur-Reply Deadline
`Within 5 business days of Petitioner’s
`Reply
`
`Petitioner and Patent Owner have met and conferred (regarding Petitioner’s request and the content of this message). Patent Owner
`opposes Petitioner’s request because the POPR simply responds to issues explicitly addressed in the Petition (e.g., Pet., 52).
`
`Should the Board desire a call to discuss this request, the parties are available this week on December 5 (8 am to 12 pm EST) and
`December 6 (3-5 pm EST). The parties can provide additional availability upon request.
`
`Respectfully,
`
`Kenneth Darby :: Principal :: Fish & Richardson P.C.
`512 226 8126
`
`Counsel for Petitioner
`
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`
`Ex. 3001
`IPR2024-01090
`
`