`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CMI CORP.
`
`Petitioner
`
`V.
`
`PATENT OF HIRAKATA YOSHIHARU and
`
`SHUNPEI YAMAZAKI
`
`Patent Owner
`
`CASE IPR2013—OOO66
`
`PATENT 7,876,413
`
`
`
`MANDATORY NOTICES BY PATENT OWNER UNDER 37 CFR§ 42.8
`
`Pursuant to 37 CFR § 42.8(a)(2), Patent Owner Semiconductor Energy Laboratory Co.,
`
`Ltd., submits the following mandatory notices:
`
`(1) Real Pargz—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. The Board appears to have incorrectly identified Yoshiharu
`
`Hirakata (identified in caption as “Hirakata Yoshiharu”) and Shunpei Yamazaki as the Patent
`
`
`
`- 2 -
`
`lPR2013—00066
`
`Attorney Docket No. 0553—0115.05-|PR
`
`Owner in the caption of the NOTICE OF INCOMPLETE PETITION mailed November 30,
`
`2012. Mr. Hirakata and Dr. Yamazaki were inventors named in the patent but not the Patent
`
`Owner. However, Semiconductor Energy Laboratory Co., Ltd, is the Patent Owner and real
`
`party—in-interest, by virtue of an assignment recorded with the Patent and Trademark Office at
`
`reel 009581, frame 0943. See, MPEP § 306.
`
`Accordingly, the Patent Owner requests correction of the caption and that future mailings
`
`properly reflect Semiconductor Energy Laboratory Co., Ltd, as the Patent Owner.
`
`(2) Related Matters
`
`US. Patent No. 7,876,413 was asserted against Petitioner Chi Mei Innolux in a civil
`
`action styled Semiconductor Energy Laboratory (30., Ltd. v. Chimei Innolux Corp, et al., Case
`
`No. SACV 12-0021-JST (CD. Cal).
`
`The following US. patent and application claim benefit of the priority of the ‘413
`
`patent’s filing date: US. Patent No. 8,068,204 and Application Serial No. 13/304,660.
`
`In addition, InterPartes Review No. IPR2013-00068 was filed by Petitioner with respect
`
`to US. Patent No. 8,068,204.
`
`(3) Lead and Back-up Counsel
`
`LeadCounsel
`Mark J. Murphy
`Reg. No. 34,225
`
`
`
`
`., ~ :
`BackupCounsel
`Edward D. Manzo
`Reg. No. 28,139
`
`
`
`
`
`
`Husch Blackwell LLP
`
`Husch Blackwell LLP
`
`120 South Riverside Plaza, suite 2200
`Chicago, Illinois 60606
`
`120 South Riverside Plaza, suite 2200
`Chicago, Illinois 60606
`
`mark.murphy@huschb1aclmell.corn
`(312) 526—1533 (voice)
`(312) 655—1501 (facsimile)
`
`edward.manzo@huschb1aclwvell.com
`(312) 526-1535 (voice)
`(312) 655-1501 (facsimile)
`
`
`
`— 3 -
`
`|PR2013400066
`
`Attorney Docket No. 0553-0115.05~|PR
`
`(4) Service
`
`Please address all correspondence in this matter to lead and backup counsel at the address
`
`provided above.
`
`Respectfully submitted,
`
`%
`
`/
`
`Mark J. Murphy
`Reg. No. 34,225
`
`Husch Blackwell LLP
`
`120 South Riverside Plaza
`Chicago, Illinois 60606
`(312) 526-1533
`
`Customer No. 24628
`
`
`
`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 December 18, 2012.
`
`Scott A. McKeown
`
`Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
`1940 Duke Street
`
`Alexandria, VA 22314
`
`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614-2592
`
`
`
`
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