`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE, INC.
`Petitioner
`v.
`SMARTFLASH LLC
`Patent Owner
`____________
`Case CBM2015-00016
`Patent 8,033,458
`____________
`
`
`
`PATENT OWNER’S MANDATORY NOTICE INFORMATION
`
`UNDER 37 CFR 42.8
`
`
`
`
`
`
`
`
`
`Pursuant to Rule 42.8, Patent Owner hereby submits its mandatory notice
`
`information. This information is being filed and served within 21 days of service
`
`of the Petition.
`
`
`I. NOTICE OF REAL PARTY-IN-INTEREST
`
`
`
`The real party-in-interest is Smartflash LLC, 100 E. Ferguson, First Place,
`
`Suite 406, Tyler, Texas 75702. A Power of Attorney from the real party-in-interest
`
`has previously been filed in the patent.
`
`
`
`II. STATUS OF RELATED PROCEEDINGS
`
`
`
`Patents claiming priority back to a common series of applications (U.S.
`
`Application No. 10/111,716, its PCT application and the GB priority application)
`
`are currently the subject of four instituted CBM reviews (CBM2014-00102,
`
`CBM2014-00106, CBM2014-00108 and CBM2014-00112) filed by Apple Inc.,
`
`and four additional petitions (including the one in this case) have been filed by
`
`Apple in CBM2015-00015 to CBM2015-00018, but not instituted. In addition, ten
`
`other petitions were filed by Samsung Electronics America, Inc., Samsung
`
`Electronics Co., Ltd., and Samsung Telecommunications America, LLC on
`
`September 26, 2014 in CBM2014-00190, -00192, -00193, -00194, -00196, -00197,
`
`
`
`2
`
`
`
`-00198, -00199, -00200 and -00204), but preliminary responses have not yet been
`
`filed by Patent Owner.
`
`In addition, those patents are involved in patent litigation in: Case No. 6:13-
`
`cv-447, Smartflash LLC and SmartFlash Tehnologies Limited v. Apple Inc., Robot
`
`Entertainment, Inc., Kingsisle Entertainment, Inc., and Game Circus LLC, Case
`
`No.6:13-cv-448, Smartflash LLC and SmartFlash Tehnologies Limited v. Samsung
`
`Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
`
`Telecommunications America, LLC, HTC Corporation, HTC America, Inc.,
`
`Exedea, Inc., and Game Circus LLC, and Case No. 6:14-cv-435, Smartflash LLC
`
`and SmartFlash Tehnologies Limited v. Google, Inc., Gearbox Software LLC, and
`
`Bonus XP, Inc., all pending in the U.S. District Court for the Eastern District of
`
`Texas (E.D. Tex.).
`
`
`
`III. Notification of Lead and Backup Counsel
`
`Lead counsel:
`Michael R. Casey
`Davidson Berquist Jackson & Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone/Fax: (703) 894-6406/(703) 894-6430
`Email: mcasey@dbjg.com
`Registration No. 40,294
`
`
`
`3
`
`
`
`Backup counsel:
`J. Scott Davidson
`Davidson Berquist Jackson & Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone/Fax: (703) 894-6401/(703) 894-6430
`Email: jsd@dbjg.com
`Registration No. 33,489
`
`
`IV. SERVICE INFORMATION
`Michael R. Casey
`Davidson Berquist Jackson & Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone/Fax: (703) 894-6406/(703) 894-6430
`mcasey@dbjg.com; docket@dbjg.com
`
`
`
`
`
`4
`
`
`
`
`
`
`
`V.
`
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`The Patent Owner reserves the right to file a preliminary response at a later
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`
`
`
`time.
`
`
`Dated: November 18, 2014
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S MANDATORY
`
`NOTICE INFORMATION UNDER 37 CFR 42.8 was served today, by agreement
`
`of the parties, by emailing copies to lead counsel and back-up counsel at their
`
`Ching-Lee Fukuda
`ching-lee.fukuda@ropesgray.com
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`email addresses of record as follows:
`
`J. Steven Baughman
`steven.baughman@ropesgray.com
`
`
`
`Dated: November 18, 2014
`
`
`
`
`
`6
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