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`Filed on behalf of Senorx, Inc.
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`By:
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`
`
`
`
`
`
`Michael J. Fink (mfink@gbpatent.com)
`Arnold Turk (aturk@gbpatent.com)
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FOCAL THERAPEUTICS, INC.
`Petitioner
`
`v.
`
`SENORX, INC.
`Patent Owner
`____________
`
`Case IPR2014-00116
`Patent 8,288,745
`____________
`
`
`PATENT OWNER SENORX, INC.’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R § 42.8(a)(2)
`
`
`
`{R44865 01893531.DOC}1
`
`
`
`
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`Pursuant to 37 C.F.R. §42.8(a)(2), Patent Owner, Senorx, Inc., hereby submits the
`
`following Mandatory Notices. These Notices are being timely filed within 21 days of
`
`November 1, 2013, the date Petitioner served the Petition for Inter Partes Review for the
`
`above-captioned case on Patent Owner.
`
`I.
`
`REAL PARTY IN INTEREST – 37 C.F.R. §42.8(b)(1)
`
`The real party in interest for Patent Owner is:
`
`Senorx, Inc.
`3 Morgan
`Irvine, California 92618
`
`Senorx, Inc. is wholly owned by C.R. Bard Inc., which has an address of 703 Central
`
`Avenue, Murray Hill, New Jersey, 07974.
`
`II.
`
`RELATED MATTERS — 37 C.F.R. §42.8(b)(2)
`
`Patent Owner identifies the following related patents and applications within the chain of
`
`priority:
`
`(a) U.S. Patent No. 8,288,745 (“the 745 patent”) claims priority from the following
`
`applications:
`
`• The ‘745 patent is a continuation-in-part of U.S. Patent Application No.
`
`11/108,785, now U.S. Patent No. 7,637,948;
`
`• U.S. Patent No. 7,637,948 is a continuation-in-part of U.S. Patent Application
`
`No. 10/627,718, now U.S. Patent No. 6,881,226;
`
`• U.S. Patent No. 6,881,226 is a divisional1 of U.S. Patent Application No.
`
`09/828,806, now U.S. Patent No. 6,638,308;
`
`• U.S. Patent No. 6,638,308 is a continuation-in-part2 of U.S. Patent Application
`
`No. 09/169,351, now U.S. Patent No. 6,214,045; and
`
`
`1
`Shown as a continuation on the face of the ‘745 patent, but originally indicated as a
`divisional application.
`
`
`
`{R44865 01893531.DOC}2
`
`
`
`
`
`• The applications claim priority from U.S. Provisional Patent Application Nos.
`
`60/091,306; 60/077,639; and 60/061,588.
`
`(b) The following applications claim priority from the ‘745 patent:
`
`• U.S. Application No. 14/021,271 is a continuation of Application No.
`
`13/567,303, now Patent No. 8,541,764; which is a continuation of U.S.
`
`Application No. 12/110,748, which issued as the ‘745 patent.
`
`•
`
`International Application No. PCT/US09/02551, published as WO
`
`2009/134340 A1 directly claims priority to the ‘745 patent. National stages
`
`include:
`
`o EP 2271404 A0
`
`o CA 2722747 A1
`
`o JP 2011-518640 A
`
`o CN 102119046 A
`
`o AU 2009241851 A1
`
`o KR 10-2011-0009175 A
`
`III. LEAD AND BACK-UP COUNSEL – 37 C.F.R. §42.8(b)(3)
`
` Lead Counsel:
`
`
`Michael Fink, Esq.
`Registration No. 31,827
`Email: mfink@gbpatent.com
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`
`
`
`
`
`
`
`
`
`
`
`2
`Shown as a divisional on the face of the ‘745 patent, but originally indicated as a
`continuation-in-part application.
`
`
`
`{R44865 01893531.DOC}3
`
`
`
`
`
`Backup Counsel:
`
`Arnold Turk
`Registration No. 33,094
`Email: aturk@gbpatent.com
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`Tel: 703-716-1191
`Fax: 703-716-1180
`
`
`
`IV.
`
`SERVICE INFORMATION – 37 C.F.R. §42.8(b)(4)
`
`Pursuant to 37 C.F.R. §42.8(b)(4), Patent Owner provides the following service
`
`information:
`
`Electronic mail service:
`
`Michael Fink: mfink@gbpatent.com
`Lead Counsel:
`Backup Counsel: Arnold Turk: aturk@gbpatent.com
`
`
`
`Postal Mail, Courier, or Hand Delivery for both Lead and Backup Counsel
`
`Michael Fink
`Arnold Turk
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`
`
`Telephone Number and Fax for both Lead and Backup Counsel
`
`Tel: 703-716-1191
`Fax: 703-716-1180
`
`
`
`
`Please address all correspondence to both the lead and backup counsel shown above.
`
`The Patent Owner consents to electronic service to the electronic email address shown above.
`
`
`
`V.
`
`POWER OF ATTORNEY
`
`A power-of-attorney from Senorx, Inc. to Greenblum & Bernstein, P.L.C. (Customer
`
`Number 109545) is being filed concurrently with these Mandatory Notices.
`
`
`
`{R44865 01893531.DOC}4
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`
`
`
`
`VI.
`
`FEES
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees owed by
`
`Senorx, Inc. and associated with the Inter Partes Review No. IPR2014-00116 of U.S. Patent
`
`No. 8,288,745 to Deposit Account No. 19-0089.
`
`
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`
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`Dated: November 21, 2013
`
`Respectfully Submitted by:
`GREENBLUM & BERNSTEIN, P.L.C.
`
`/Arnold Turk/
`_______________________
`Arnold Turk
`Reg. No. 33,094
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`(703) 716-1191
`
`Attorneys for Patent Owner,
`Senorx, Inc.
`
`
`
`{R44865 01893531.DOC}5
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`
`
`Case IPR2014-00116
`Patent 8,288,745
`
`
`
`
`Attorney Docket No. R44865
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`
`
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`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that a true copy of the foregoing:
`
`SENORX, INC.’S MANDATORY NOTICES PURSUANT TO 37 C.F.R § 42.8(a)(2)
`
`was served upon the following party by Federal Express, on this 21st day of November, 2013:
`
`Matthew Kreeger
`MORRISON & FOERSTER LLP
`425 Market St.
`San Francisco, California 94105-2482
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`/Arnold Turk/
`_______________________
`Arnold Turk
`Reg. No. 33,094
`GREENBLUM & BERNSTEIN, P.L.C.
`1950 Roland Clarke Place
`Reston, Virginia 20191
`(703) 716-1191
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`{R44865 01893142.DOC}
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`
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