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Paper 5
`Filed on behalf of: BONUTTI SKELETAL INNOVATIONS LLC
`Date: December 12, 2013
`
`By: Cary Kappel, Lead Counsel
`
`William Gehris, Backup Counsel
`
`Davidson, Davidson & Kappel, LLC
`
`485 Seventh Avenue
`
` New York, NY 10018
`
`Telephone (212) 736-1257
`
`
`
`(212) 736-2015
`
`Facsimile (212) 736-2427
`
`E-mail:
`ckappel@ddkpatent.com
`
`
`
`wgehris@ddkpatent.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZIMMER HOLDNGS,
`INC. and ZIMMER, INC.
`Petitioner,
`
`v.
`


`BONUTTI SKELETAL INNOVATIONS LLC
`
`Patent Owner
`


`



`
`Case: IPR2014-00191
`
`Patent 7,837,736
`_______________
`
`PATENT OWNER’S MANDATORY NOTICES
`


`





`



`



`





`
`

`

`Case: IPR2014-00191
`Patent 7,837,736
`Pursuant to 37 C.F.R. § 42.8, Patent Owner, BONUTTI SKELETAL
`

`
`INNOVATIONS LLC, submits the following Mandatory Notices in response to
`
`the Petition for Inter Partes Review of U.S. Patent No. 7,837,736 (hereinafter the
`
`“’736 patent”).
`
`1. Real Party-In-Interest
`
`In accordance with 37 C.F.R. § 42.8(b) (1), Patent Owner identifies the real
`
`party-in-interest as the assignee Bonutti Skeletal Innovations LLC. Bonutti
`
`Skeletal Innovations LLC is a subsidiary of Advanced Skeletal Innovations LLC,
`
`which is a subsidiary of Acacia Research Group LLC, which in turn is a subsidiary
`
`of Acacia Research Corporation.
`
`2. Related Matters
`
`In accordance with 37 C.F.R. § 42.8(b) (2), Patent Owner identifies the
`
`following related proceedings which may affect or be affected by a decision in this
`
`proceeding: Bonutti Skeletal Innovations, LLC v. Zimmer Holdings, Inc et al.,
`
`Case No.12-cv-01107 (D. Del.), which concerns the ’736 patent which is the
`
`subject of this proceeding.
`
`The Patent Owner also identifies the following applications and patents that
`
`claim the benefit of the priority of the filing date of the ’736 patent, or that the
`
`’736 patent claims priority from: U.S. Patent Nos. 7,635,390, 7,104,996,
`
`6,770,078, 6,702,821, 6,503,277, 6,635,073, 6,503,267, 6,423,063, 6,575,982,
`

`
`2
`
`

`

`6,620,181, and 6,468,289.
`
`3. Lead and Back-Up Counsel
`

`
`Case: IPR2014-00191
`Patent 7,837,736
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner identifies
`
`Cary Kappel as lead counsel and William Gehris as back-up counsel:
`
`Cary Kappel
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`New York, NY 10018
`Tel: (212) 736-1257
`Fax: (212) 736-2427
`Email: ckappel@ddkpatent.com
`Registration No.: 36,561
`
`William Gehris
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`New York, NY 10018
`Tel: (212) 736-2015
`Fax: (212) 736-2427
`Email: wgehris@ddkpatent.com
`Registration No.: 38,156
`
`
`
`3
`

`

`
`

`
`

`

`4. Service Information
`

`
`Case: IPR2014-00191
`Patent 7,837,736
`
`In accordance with 37 C.F.R. § 42.8(b) (4), Patent Owner identifies the
`
`following service information:
`
`Cary Kappel
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`New York, NY 10018
`Tel: (212) 736-1257
`Fax: (212) 736-2427
`Email: ckappel@ddkpatent.com
` wgehris@ddkpatent.com
`
`
`December 12, 2013
`
`By:
`
`Respectfully submitted,
`
`
`
` /Cary Kappel/
`Cary Kappel, Reg. 36,561
`William Gehris, Reg. 38,156
`Davidson, Davidson & Kappel, LLC
`485 Seventh Avenue
`New York, NY 10018
`
`Counsel for Patent Owner
`BONUTTI SKELETAL INNOVATIONS
`LLC
`
`4
`


`



`
`
`


`

`
`

`


`
`Case: IPR2014-00191
`Patent 7,837,736
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 12th day of December, 2013, a true and correct
`
`copy of the foregoing PATENT OWNER’S MANDATORY NOTICES was served
`
`by electronic mail and U.S. Post Office Express Mail, upon the following counsel of
`
`record for Petitioners ZIMMER HOLDINGS, INC. and ZIMMER, INC.:
`
`
`
`
`
`
`
`Walter C. Linder
`Faeger Baker Daniels, LLP
`2200 Wells Fargo Center
`90 S. Seventh Street
`Minneapolis, MN 55402
`Walter.linder@FaegreBD.com
`
`
`Daniel Lechleiter
`Faeger Baker Daniels, LLP
`300 N. Meridian St.
`Suite 2700
`Indianapolis, IN 46204-1750
`Daniel.Lechleiter@FaegreBD.com
`
` /Cary Kappel/
`Cary Kappel
`
`
`


`


`


`
`
`
`
`
`
`

`
`

`
`

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