From:
`To:
`Cc:
`Subject:
`Date:
`
`Jennifer Huang
`Trials
`IPR50095-0171IP1; eagle.robinson@nortonrosefulbright.com; daniel.leventhal@nortonrosefulbright.com; chad.wallis@nortonrosefulbright.com
`Request for Reply briefing in Apple Inc. (Petitioner) v. Smith Interface Technologies (Patent Owner), Case No. IPR2024-01091
`Monday, December 9, 2024 5:07:20 PM
`
`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
`IPR2024-01091. 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 this request is granted, the Reply would address arguments in the POPR related to independent claims 1, 32, 34, and 64 regarding the
`claim term “[a]/[the] magnitude of [a]/[the] duration of the gesture.” See, e.g., POPR at 5–7. For example, the Reply would address the
`POPR’s statement that “the plain and ordinary meaning of ‘magnitude of [a] / [the] duration of the gesture’ is the magnitude of a period of
`time beginning at the start of the gesture through the point in time at which the evaluation takes place.” POPR at 5 (emphasis in original).
`The Reply would also address the POPR’s statement that “the plain and ordinary meaning of ‘the duration of the gesture” requires using the
`same starting point for each of the three recitations of” [a] / [the] “duration.” POPR at 6–7 (emphasis in the original).
`
`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, Petitioner could not have reasonably
`anticipated Patent Owner’s assertion that the claim requires a common gesture for “[a] / [the] gesture” but only requires a common starting
`point, and not a common ending point, for “[a] / [the] magnitude of [a] / [the] duration.” If requested by the Board, Petitioner will provide
`further explanation of good cause but limits the present narrative out of respect for the Board’s consistent request for emails to be limited
`to defining issues and thus omit argumentative content.
`
`In connection with this request, Petitioner proposes the briefing schedule outlined below:
`
`Preliminary Response
`Filed
`10/18/24
`
`Institution
`Deadline
`1/18/25
`
`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 notes that any delay in its request for briefing was a result of the number and scope of patents in dispute between the parties and
`effort on the part of Petitioner to minimize the total number of pre-institution requests in view of the number of petitions, which required,
`in some cases, waiting for the filing of later POPRs.
`
`Petitioner and Patent Owner have met and conferred. Patent Owner opposes this request. The POPR, filed October 18, responds directly
`to Petitioner’s grounds based on the plain language of the claims.
`
`Should the Board desire a call to discuss this request, the parties are available on Tuesday (12/10) from 10 am – 1 pm or 2-4 pm EST,
`Wednesday (12/11) from 10-11 am or 2-3:30 pm EST, or Thursday (12/12) from 9-11 am or 3:30-6 pm EST.
`
`Respectfully,
`Jenny
`
`Jenny Huang :: Managing Principal :: Fish & Richardson P.C.
`612 766 2094 direct :: jjh@fr.com
`fr.com :: Bio :: LinkedIn
`
`****************************************************************************************************************************
`This email message is for the sole use of the intended recipient(s) and may contain confidential and privileged information. Any
`unauthorized use or disclosure is prohibited. If you are not the intended recipient, please contact the sender by reply email
`and destroy all copies of the original message.
`****************************************************************************************************************************
`
`IPR2024-01091
`Ex. 3001
`
`