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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CHI MEI INNOLUX CORPORATION
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`Petitioner
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`V.
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`PATENT OF YOSHIHARU HIRAKATA
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`Patent Owner
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`CASE IPR2013-00028
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`PATENT 6,404,480
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`MANDATORY NOTICES BY PATENT OWNER UNDER 37 CFR § 42.8
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`Pursuant
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`to 37 CFR § 42.8(a)(2), Patent Owner Semiconductor Energy
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`Laboratory Co., Ltd., submits the following mandatory notices:
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`(1) Real Party-in-Interest
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`The real party-in—interest
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`for
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`the Patent Owner
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`is Semiconductor Energy
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`Laboratory Co., Ltd., a Japanese Corporation with its principal place of business located
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`at 398, Hase, Atsugi—shi, Kanagawa—ken, 243—0036 Japan. The Board'appears to have
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`incorrectly identified Yoshiharu Hirakata as the Patent Owner in the caption of the
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`NOTICE OF FILING DATE ACCORDED TO PETITION and NOTICE FOR SETTING
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`THE TIME PERIOD FOR FILING PATENT OWNER PRELIMINARY RESPONSE and at
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`page 3 of the Notice. Mr. Hirakata was an inventor named in the patent but not the
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`Patent Owner. However, Semiconductor Energy Laboratory Co., Ltd.,
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`is the Patent
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`- 2 —
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`lPR2013-00028
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`Attorney Docket No. 0756-9957
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`Owner and real rparty—in-interest, by Yvirtue of an assignment recorded with the Patent
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`and Trademark Office at reel 009256, frame 0091. See, MPEP § 306.
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`Also, on November 1, 2012, a representative for the Patent Owner contacted
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`Amy Kattula, as directed at page 3 of that Notice,
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`to ascertain the procedure for
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`correcting the Board’s misidentification of the Patent Owner. As advised by Ms. Kattula,
`the misidentification of the Patent Owner is to be addressed herein. Accordingly, the
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`Patent Owner requests correction of the caption and that future mailings properly reflect
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`Semiconductor Energy Laboratory Co., Ltd., as the Patent Owner.
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`(2) Related Matters
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`US. Patent No. 6,404,480 was asserted against Petitioner Chi Mei lnnolux in a
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`civil action styled Semiconductor Energy Laboratory Co., Ltd. v. Chimei lnnolux Corp.,
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`et al., Case No. SACV 12—0021—JST (CD. Cal).
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`The ‘480 patent was also asserted against Petitioner in a civil action styled
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`Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei Optoelectronics Corp., et al.,
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`Case No. C-04-04675-MHPV(N.D. Cal).
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`The ‘480 patent has also previously been asserted in a civil action styled
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`Semiconductor Energy Laboratory Co., Ltd. v. Acer Incorporated, et al., Case No. C—02—
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`02800-WHA (N.D Cal).
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`The ‘480 patent was subject to ex parte reexamination no. 90/007,985, requested
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`by the Petitioner, which resulted in issuance of a Reexamination Certificate on
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`December 30, 2008, confirming the validity of all patent claims.
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`- 3 —
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`IPR2013-00028
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`Attorney Docket No. 0756-9957
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`In addition, the following US. patents and applications claim benefit of the priority
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`of the ‘480 patent’s filing date: US. Patent Nos. 7,443,478; 7,561,242; 7,616,273;
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`7,697,102; and 7,760,316; and Application Serial Nos. 12/257,514 and 12/257,521.
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`(3) Lead and Back-up Counsel
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`
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`Reg. No. 38,285
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`Reg. No. 64,378
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`Eric J. Robinson
`Sean C. Flood
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`
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` Robinson Intellectual Property Law Office, P.C.
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`3975 Fair Ridge Drive
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`Suite 20 North
` sflood@riplo.com
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`571 -434—6789 (voice)
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`
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`703-766-2394 (facsimile)
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`Robinson Intellectual Property Law Office, P.C.
`3975 Fair Ridge Drive
`Suite 20 North
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`Fairfax, VA 22030
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`Fairfax, VA 22030
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`erobinson@riplo.com
`571-434-6789 (voice)
`703-766-2394 (facsimile)
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`(4) Service
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`Please address all correspondence in this matter to lead and backup counsel at
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`the address provided above.
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`Respectfully submitted,
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`Eric J. Robinson
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`Reg. No. 38,285
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`Robinson Intellectual Property Law Office, P.C.
`3975 Fair Ridge Drive
`Suite 20 North
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`Fairfax, Virginia 22033
`(571) 434—6789
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`
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`CERTIFICATE OF SERVICE
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`I certify that
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`the foregoing MANDATORY NOTICES OF PATENT OWNER
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`UNDER 37 CFR § 42.8 was served on the Petitioner by Federal Express Standard
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`Overnight at the following addresses on November 8, 2012.
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`Scott A. McKeown
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`Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
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`Alexandria, VA 22314
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`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614-2592
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`