Paper ____
`Filed on behalf of: The Board of Trustees of the
`
`
`
`Leland Stanford Junior University
` Date: July 17, 2013
`
`By: R. Danny Huntington, Lead Counsel
`
`Sharon E. Crane, Ph.D., Backup Counsel
`
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`
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`Washington, DC 20005
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`Telephone: 202-783-6040
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`Facsimile: 202-783-6031
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`E-mail: dhuntington@rfem.com
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` scrane@rfem.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SEQUENOM, INC.
`Petitioner,
`
`v.
`
`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIVERSITY
`Patent Owner.
`_______________
`
`Case IPR2013-00390
`Patent 8,195,415
`_______________
`
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`Filed on behalf of: The Board of Trustees of the
`
`
`
`Leland Stanford Junior University
` Date: July 17, 2013
`
`By: R. Danny Huntington, Lead Counsel
`
`Sharon E. Crane, Ph.D., Backup Counsel
`
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th St., N.W., Suite 800
`
`
`Washington, DC 20005
`
`Telephone: 202-783-6040
`
`Facsimile: 202-783-6031
`
`E-mail: dhuntington@rfem.com
`
`
` scrane@rfem.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SEQUENOM, INC.
`Petitioner,
`
`v.
`
`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIVERSITY
`Patent Owner.
`_______________
`
`Case IPR2013-00390
`Patent 8,195,415
`_______________
`
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`
`Case IPR2013-00390
`Patent 8,195,415
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner, The Board of Trustees of the
`
`Leland Stanford Junior University (“Stanford”), submits the following Mandatory
`
`Notices in response to the Petition for Inter Partes Review of U.S. Patent No.
`
`8,195,415.
`
`1. Real Party-In-Interest
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner Stanford identifies
`
`the real parties-in-interest as follows.
`
`The Assignee for U.S. Patent No. 8,195,145 is:
`
`The Board of Trustees of the Leland Stanford Junior University
`1705 El Camino Real
`Palo Alto, California 94306-1106.
`
`In addition, the following companies are licensees of U.S. Patent No.
`
`8,195,415:
`
`Fluidigm Corporation
`7000 Shoreline Court, Suite 100
`South San Francisco, California 94080; and
`
`Verinata Health, Inc.
`800 Saginaw Drive
`Redwood City, California 94063.
`
`
`
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`2
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`
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`Case IPR2013-00390
`Patent 8,195,415
`Verinata Health, Inc. is a wholly owned subsidiary of Illumina, Inc.:
`
`Illumina, Inc.
`5200 Illumina Way
`San Diego, California 92122.
`
`The U.S. Government also has certain rights as reflected in the confirmatory
`
`license recorded at Reel/Frame 024129/0136 to:
`
`National Institutes of Health
`U.S. Department of Health and Human Services
`Division of Extramural Inventions and Technology Resources
`6705 Rockledge Drive, Suite 310, MSC 7980
`Bethesda, Maryland 20892-7980.
`
`2. Related Matters
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner Stanford identifies
`
`the following related proceedings:
`
`U.S. Patent No. 8,195,415 is at issue in Interference No. 105,922, currently
`
`pending before the Patent Trial and Appeal Board.
`
`
`
`
`
`U.S. Patent No. 8,195,415 issued on June 5, 2012, from U.S. Patent
`
`Application No. 12/696,509, filed on January 29, 2010, and claims benefit to: U.S.
`
`Patent Application No. 12/560,708, filed on September 16, 2009, which is
`
`pending; and U.S. Provisional Patent Application No. 61/098,758, filed on
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`September 20, 2008, and now expired.
`
`
`
`
`
`International Application No. PCT/US09/57136, filed on September 16,
`
`2009, which was published as WO/2010/033578, on March 25, 2010; U.S. Patent
`
`
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`3
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`
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`Case IPR2013-00390
`Patent 8,195,415
`Application No. 12/560,708, filed on September 16, 2009, which is pending; U.S.
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`Patent Application No. 13/102,717, filed on May 6, 2011, which is pending; and
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`U.S. Patent Application No. 13/218,317, filed on August 25, 2011, which is
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`pending, also claim the benefit of priority from U.S. Provisional Patent Application
`
`No. 61/098,758.
`
`
`
`
`
`U.S. Patent Application No. 13/102,717, filed on May 6, 2011, and U.S.
`
`Patent Application No. 13/452,083, filed on April 20, 2012, and issued as U.S.
`
`Patent No. 8,296,076, also claim, or may claim, the benefit to/priority from U.S.
`
`Patent Application No. 12/696,509.
`
`3. Lead and Back-Up Counsel
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner Stanford identifies
`
`R. Danny Huntington as lead counsel and Sharon E. Crane as back-up counsel:
`
`R. Danny Huntington, Lead Counsel
`USPTO Reg. No. 27,903
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`E-mail: dhuntington@rfem.com
`
`Sharon E. Crane, Ph.D., Back-up Counsel
`USPTO Reg. No. 36,113
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
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`4
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`Case IPR2013-00390
`Patent 8,195,415
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`E-mail: scrane@rfem.com
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`4. Service Information
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`In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner Stanford identifies
`
`the following service information:
`
`
`
`
`
`
`Date: July 17, 2013
`
`
`
`
`
`
`
`R. Danny Huntington
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Service E-mails: dhuntington@rfem.com
` scrane@rfem.com
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`
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`Respectfully submitted,
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`
`
`
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`
`
`
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`By:
`
`
`
`
`
`/s/ R. Danny Huntington
`R. Danny Huntington, Reg. No. 27,903
`Sharon E. Crane, Ph.D., Reg. No. 36,113
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`
`
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`
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`Counsel for Patent Holder
`The Board of Trustees of the Leland
`Stanford Junior University
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`5
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`Case IPR2013-00390
`Patent 8,195,415
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 17th day of July, 2013, a true and correct copy of
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`
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`
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`the foregoing PATENT OWNER’S MANDATORY NOTICES was served by
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`electronic mail and First-Class U.S. Mail, upon the following lead and backup
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`counsel of record for Petitioner Sequenom, Inc.:
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`
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`Steven P. O’Connor – Lead Counsel
`Michele C. Bosch – Backup Counsel
`Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.
`901 New York Avenue, N.W.
`Washington, DC 20001-4413
`Ph: 202-408-4000
`Fx: 202-408-4400
`Service E-mails:
`steven.oconnor@finnegan.com
`Michele.bosch@finnegan.com
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`/s/ Erik van Leeuwen
`Erik van Leeuwen
`Litigation Operations Coordinator
`Rothwell, Figg, Ernst & Manbeck, P.C.
`
`
`
`
`
`
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