`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`
`ZOLL LIFECOR CORPORATION
`
`Petitioner
`
`v.
`
`PHILIPS ELECTRONICS NORTH AMERICA CORPORATION
`
`Patent Owner
`
`_________________
`
`Case IPR2013-00609
`Patent 5,836,978
`_________________
`
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`Philips Electronics North America Corp. (“Patent Owner”) provides the
`
`following mandatory notices pursuant to 37 C.F.R. § 42.8.
`
`I.
`
`Real Party-in-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`Philips Electronics North America Corp. and Koninklijke Philips N.V. are
`
`the real parties-in-interest in this proceeding.
`
`II. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Patent Owner has asserted eight patents, including U.S. Patent No.
`
`5,836,978 (“the ’978 patent”), in Koninklijke Philips N.V. & Philips Electronics
`
`North America Corp. v. ZOLL Lifecor Corp., Civil No. 12-1369 (W.D. Pa.)
`
`(“the Pennsylvania suit”). Each of the eight patents asserted in the Pennsylvania
`
`suit is in the same patent family, stemming from a common parent application,
`
`namely, U.S. Patent Application No. 08/103,837.
`
`ZOLL Lifecor Corp. (“Petitioner”) has also filed Inter Partes Review
`
`petitions for the remaining seven patents asserted in the Pennsylvania suit:
`
`Patent No.
` 5,593,427 (“the ’427 patent”)
`5,749,904 (“the ’904 patent”)
`5,803,927 (“the ’927 patent”)
`5,735,879 (“the ’879 patent”)
`6,047,212 (“the ’212 patent”)
`5,749,905 (“the ’905 patent”)
`5,607,454 (“the ’454 patent”)
`
`
`
`IPR No.
`IPR2013-00606
`IPR2013-00607
`IPR2013-00612
`IPR2013-00613
`IPR2013-00615
`IPR2013-00616
`IPR2013-00618
`
`1
`
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`Patent Owner has also asserted the ’978, ’927, ’879, ’212, ’905, and ’454
`
`patents, which are currently asserted in the Pennsylvania suit, against ZOLL
`
`Medical Corp. in Koninklijke Philips N.V. & Philips Electronics North America
`
`Corp. v. ZOLL Medical Corp., Civil No. 10-11041 (D. Mass.) (“the Massachusetts
`
`suit”). Petitioner ZOLL Lifecor Corp. is a wholly owned subsidiary of ZOLL
`
`Medical Corp. Trial in the Massachusetts suit is currently scheduled to begin on
`
`December 2, 2013.
`
`III. Lead and Back-up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Patent Owner identifies the following lead and back-up counsel:
`
`Lead Counsel
`J. Michael Jakes
`Reg. No. 32,824
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202.408.4045
`Facsimile: 202.408.4400
`E-mail: mike.jakes@finnegan.com
`
`Back-up Counsel
`Denise W. DeFranco
`Reg. No. 36,401
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, L.L.P.
`Two Seaport Lane, 6th Floor
`Boston, MA 02210-2001
`Telephone: 617.646.1670
`Facsimile: 617.646.1600
`E-mail: denise.defranco@finnegan.com
`
`
`
`IV. Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Patent Owner consents to electronic service. Please address all
`
`correspondence and service to lead and back-up counsel as listed above, and to
`
`PTABdocket@finnegan.com and Philips-Zoll@finnegan.com.
`
`2
`
`
`
`
`
`
`
`
`By:
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`Respectfully submitted,
`
`/J. Michael Jakes/
`J. Michael Jakes
`Reg. No. 32,824
`Counsel for Patent Owner,
`Philips Electronics North America Corp.
`
`
`
`Dated: October 15, 2013
`
`
`
`3
`
`
`
`Case IPR2013-00609
`Patent 5,836,978
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 15th day of October,
`
`2013, a copy of
`
`PATENT OWNER’S MANDATORY NOTICES
`
`was served by electronic mail on Petitioner’s counsel, John C. Phillips (lead
`
`counsel) and Dorothy P. Whelan (back-up counsel), at the following addresses:
`
`Phillips@fr.com; Whelan@fr.com; and IPR38855-0004IP1@fr.com. The parties
`
`have agreed to electronic service.
`
`Dated: October 15, 2013
`
`
`
`
`By:
`
`/J. Michael Jakes/
`J. Michael Jakes
`Reg. No. 32,824
`Counsel for Patent Owner,
`Philips Electronics North America Corp.
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
