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ATTORNEY REFERENCE NO.: 8954-89860-02
`FILED VIA PRPS ON: November 21, 2012
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`FILED VIA THE PATENT REVIEW PROCESSING SYSTEM
`
`In re Inter Partes Review of:
`U.S. Patent No. 6,516,236 B1
`
`Issued: February 4, 2003
`
`Applicants: David W. Brown and Jay
`
`
`S. Clark
`
`Application No. 10/021,669
`
`Filed: December 10, 2001
`
`Title: Motion Control Systems
`
`Currently in Litigation Styled:
`ROY-G-BIV Corporation v. ABB Inc.
`et al., 6:11-cv-00622-LED – ED Tex.
`(Tyler)
`
`
`
`Trial Number: To be assigned
`
`
`
`
`
`
`
`
`Certificate of PRPS Transmission
`I hereby certify that this
`correspondence is being transmitted
`via the U.S. Patent and Trademark
`Office’s Patent Review Processing
`System (PRPS) to the USPTO
`on November 21, 2012.
`
`
`/Richard D. Mc Leod/
`Registration No. 46,921
`Portland, Oregon
`
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`Filed via PRPS
`Patent Trial and Appeal Board
`
`
`
`1.
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`
`
`2.
`
`PETITION FOR INTER PARTES REVIEW TRANSMITTAL FORM
`
` This is a petition for Inter Partes review pursuant to 35 U.S.C. §§ 311 et
`seq. of patent number 6,516,236 B1 issued February 4, 2003. The
`petitioner is ABB Inc.
`
` Designation of Petitioner’s lead and back up counsel:
`Richard D. Mc Leod (Lead Counsel, PTO Reg. No. 46,921)
`rick.mcleod@klarquist.com
`John D. Vandenberg (Backup Counsel, PTO Reg. No. 31,312)
`
`Page 1 of 4
`
`

`

`ATTORNEY REFERENCE NO.: 8954-89860-02
`FILED VIA PRPS ON: November 21, 2012
`
`john.vandenberg@klarquist.com
`Klarquist Sparkman, LLP
`121 SW Salmon Street, Suite 1600
`Portland, OR 97204
`Email: rick.mcleod@klarquist.com
`Tel.: (503) 595-5300
`Fax: (503) 595-5301
`
` The Director is hereby authorized to charge the Inter Partes Review fee
`of $27,200, any additional fees that may be required, or credit over-
`payment, to Deposit Account No. 02-4550. 37 C.F.R. §§ 42.15, 42.103.
`
` Inter Partes Review of claims 1-10 is requested.
`
` A copy of every patent or printed publication relied upon is submitted
`herewith as Exhibits 1001-1023.
`
` The attached detailed petition includes at least the following notices:
`a. Real party-in-interest identifying each real party-in-interest for the
`party. 37 C.F.R. § 42.8(b)(1).
`b. Related matters identifying any other judicial or administrative
`matter that would affect, or be affected by, a decision in the
`proceeding. 37 C.F.R. § 42.8(b)(2).
`c. Lead and back-up counsel identifying counsel representing
`Petitioner. 37 C.F.R. § 42.8(b)(3).
`d. Service information identifying (if applicable):
`(i) An electronic mail address;
`(ii) A postal mailing address;
`(iii) A hand-delivery address, if different than the mailing address;
`(iv) A telephone number; and
`(v) A facsimile number. 37 C.F.R. § 42.8(b)(4).
`
`
` Pursuant to 37 C.F.R. §§ 42.6(e), 42.105(a), it is certified that a copy of
`this Petition has been served in its entirety on the patent owner of record
`at the official correspondence address in the records of the U.S. Patent
`and Trademark Office:
`
`The name and address of the party served and the date of service are:
`
`November 21, 2012:
`
`
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`3.
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`5.
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`6.
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`7.
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`8.
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`Page 2 of 4
`
`

`

`ATTORNEY REFERENCE NO.: 8954-89860-02
`FILED VIA PRPS ON: November 21, 2012
`
`MICHAEL SCHACHT
`SCHACHT LAW OFFICE, INC.
`ROY-G-BIV CORPORATION
`SUITE 202, 2801 MERIDIAN ST.
`BELLINGHAM WA 98225
`
` Correspondence address: Direct all communication regarding this
`Petition to:
`
`
`
`
`10.
`
`Richard D. Mc Leod
`Klarquist Sparkman, LLP
`121 SW Salmon Street, Suite 1600
`Portland, OR 97204
`Email: rick.mcleod@klarquist.com
`Tel.: (503) 595-5300
`Fax: (503) 595-5301
`
`
`
`Respectfully submitted,
`
`KLARQUIST SPARKMAN, LLP
`
`
`
`By /Richard D. Mc Leod/
` Richard D. Mc Leod
` Registration No. 46,921
`
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`
`
`Page 3 of 4
`
`

`

`ATTORNEY REFERENCE NO.: 8954-89860-02
`FILED VIA PRPS ON: November 21, 2012
`
`Certificate of Service in Compliance With 37 C.F.R. § 42.6(e)(4)
`
`The undersigned certifies that a complete copy of this Transmittal
`
`authorizing payment of the fee for filing a Petition for Inter Partes Review be
`
`charged to Klarquist Sparkman’s deposit account no. 02-4550, was served on the
`
`official correspondence address for the ’236 Patent shown in PAIR:
`
`MICHAEL SCHACHT
`SCHACHT LAW OFFICE, INC.
`ROY-G-BIV CORPORATION
`SUITE 202, 2801 MERIDIAN ST.
`BELLINGHAM WA 98225
`
`
`via EXPRESS MAIL, on November 21, 2012.
`
`
`By
`
`
`
`
`
`
`
`
`
`/Richard D. Mc Leod/
`Richard D. Mc Leod
`Registration No. 46,921
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Telephone: (503) 595-5300
`Facsimile: (503) 595-5301
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 1
`
`

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