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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INNOLUX CORPORATION
`
`Petitioner
`
`V.
`
`PATENT OF SEMICONDUCTOR ENERGY LABORATORY CO., LTD.
`Patent Owner
`
`CASE IPR2013—00064
`
`PATENT 7,923,311
`
`MANDATORY NOTICES BY PATENT OWNER UNDER 37 CFR § 42.8
`
`Pursuant
`
`to 37 CFR § 42.8(a)(3), Patent Owner Semiconductor Energy
`
`Laboratory Co., Ltd., updates the following mandatory notices. Specifically, additional
`
`backup counsel Stanley A. Schlitter and Douglas R. Peterson, who represent the Patent
`
`Owner in related civil matter Semiconductor Energy Laboratory Co., Ltd. v. Chimei
`
`Innolux Corp., have been appointed by the Patent Owner to provide representation in
`
`this inter partes review proceeding and to support the Patent Owner in the discovery
`
`and trial phases thereof.
`
`It respectfully is submitted that the Patent Trial and Appeal
`
`Board has allowed multiple back-up counsel in at least one other inter partes reviewr
`
`proceeding,
`
`including related matters lPR2013-00028 and lPR2013-00038. See also
`
`Nissan v. Collins,
`
`lPR2012-00035, Order After Conference Call (Paper 13) dated
`
`November 9, 2012.
`
`

`

`— 2 —
`
`|PR2013—00064
`
`Attorney Docket No. 0756—9974
`
`(1) Real Party-in-Interest
`
`The real party—in—interest
`
`for
`
`the Patent Owner
`
`is Semiconductor Energy
`
`Laboratory Co., Ltd., a Japanese Corporation with its principal place of business located
`
`at 398, Hase, Atsugi—shi, Kanagawa—ken, 243—0036 Japan.
`
`(2) Related Matters
`
`US. Patent No. 7,923,311 was asserted against Petitioner Chi Mei lnnolux in a
`
`civil action styled Semiconductor Energy Laboratory Co., Ltd. v. Chimei lnnolux Corp.,
`
`et al., Case No. SACV 12—0021-JST (CD. Cal).
`
`Inter Partes Review No.
`
`lPR2013—00065 was filed by Petitioner with respect to
`
`the involved patent.
`
`(3) Lead and Back-up Counsel
`
`
`
`
`
`
` 8.5. , _.
`
`Enc J. Robinson
`Sean C. Flood
`
`Reg. No. 38,285
`
`
`
`
`
`
`erobinson@riplo.com
`sflood@riplo.com
`
`571 434—6789 (voice)
`571-434—6789 (voice)
`
`
`
`703—766-2394 (facsimile)
`703-766-2394 (facsimile)
`
`
`
`
`
`B
`on
` pic
`Stanley A. Schlitter
`Douglas R. Peterson
`
`
`
`
`Reg. No. 28,799
`Reg. No. 53,458
`
`
` Steptoe & Johnson LLP
`
`Robinson Intellectual Property Law Office, PC.
`3975 Fair Ridge Drive
`Suite 20 North
`
`Robinson Intellectual Property Law Office, PC.
`3975 Fair Ridge Drive
`Suite 20 North
`
`Reg. No. 64,378
`
`Fairfax, VA 22030 .
`
`Fairfax, VA 22030
`
`
`Steptoe & Johnson LLP
`
`

`

`— 3 —
`
`lPR2013-00064
`
`Attorney Docket No. 0756—9974
`
`
`
`115 South LaSalle Street
`Suite 3100
`
`Chicago, IL 60603
`
`2121 Avenue of the Stars
`Suite 2800
`
`Los Angeles, CA 90067
`
`sschlitt@steptoe.com
`dpeterson@steptoe.com
`
`312—577—1 250 (voice)
`310—734-3269 (voice)
`
`(4) Service
`
`Please address all correspondence in this matter to lead and backup counsel at
`
`the address provided above.
`
`Respectfully submitted,
`
`Eric J. Robinson
`
`Reg. No. 38,285
`
`Robinson Intellectual Property Law Office, RC.
`3975 Fair Ridge Drive
`Suite 20 North
`
`Fairfax, Virginia 22033
`(571) 434-6789
`
`

`

`CERTIFICATE OF SERVICE
`
`I certify that the foregoing MANDATORY NOTICES OF PATENT OWNER
`
`UNDER 37 CFR § 42.8 was served on the Petitioner by Federal Express Standard
`
`Overnight at the following addresses on May 7, 2013.
`
`Scott A. McKeown
`
`Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`
`Alexandria, VA 22314
`
`GregoryS. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614-2592
`
`24% I
`
`

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