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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SDI Technologies, Inc.
`Petitioner
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`v.
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`Bose Corporation
`Patent Owner
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`Case IPR2014-00343
`Patent 8,401,682
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`PATENT OWNER BOSE CORPORATION’S
`MANDATORY NOTICES
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`Case IPR2014-00343
`Attorney Docket No: 25556-0007IP2
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R. § 42.8, the patent owner, Bose Corporation, (“Patent
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`Owner”), hereby submits the following Mandatory Notices in response to the
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`Petition for Inter Partes Review of U.S. Patent No. 8,401,682.
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`1.
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`Real Party-In-Interest under 37 CFR § 42.8(b)(1)
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`Bose Corporation is the Patent Owner and the Real Party-In-Interest in this
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`proceeding.
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`2.
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`Related Matters under 37 CFR § 42.8(b)(2)
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`The following judicial or administrative matters may affect or be affected by
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`a decision in this proceeding:
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`U.S. Patent No. 8,401,682, at issue in this inter partes proceeding, is the
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`subject of a litigation proceeding in Bose Corporation v. SDI Technologies, Inc.
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`(D. Mass. Case No. 13-cv-10277-WGY), filed on February 13, 2013, pending.
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`U.S. Patent No. 7,277,765, a parent of U.S. Patent No. 8,401,682, was
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`asserted in Bose Corporation v. SDI Technologies, Inc., et al. (D. Mass. Case No.
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`09-cv-11439), which resulted in a grant of summary judgment of non-
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`infringement, which is pending on appeal.
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`U.S. Patent No. 7,277,765 is also the subject of Inter Partes Reexamination
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`No. 95/001,260, in which all claims stand rejected. The Board reaffirmed the
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`Case IPR2014-00343
`Attorney Docket No: 25556-0007IP2
`Examiner's rejections and also added a new ground of rejection. The patent owner
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`reopened prosecution, the Examiner entered the new ground of rejection in
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`addition to the others, and the appeal is before the Board. U.S. Patent No.
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`7,277,765 was the subject of Inter Partes Reexamination No. 95/001,332, which
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`request was denied.
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`U.S. Patent No. 8,401,682 is subject of an instituted Request for Inter Partes
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`Review filed June 12, 2013, as Case No. IPR2013-00350.
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`U.S. Patent No. 8,364,295, which is a continuation of U.S. Patent No.
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`7,277,765, is subject of an instituted Request for Inter Partes Review filed July 25,
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`2013, as Case No. IPR2013-00465, as well as a recently filed Request for Inter
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`Partes Review filed January 13, 2014, and assigned Case No. IPR2014-00346.
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`3.
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`Lead and Back-Up Counsel, under 37 CFR § 42.8(b)(3)
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`The Patent Owner designates the following lead and back-up counsel:
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`LEAD COUNSEL
`Dorothy P. Whelan, Reg. No. 33,814
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel:
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`(612) 337-2509
`Email:
`Whelan@fr.com
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`IPR2556-0006IP2@fr.com
`Fax:
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`(612) 288-9696
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`BACK-UP COUNSEL
`W. Karl Renner, Reg. No. 41,265
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (202) 783-5070
`Email:
`axf@fr.com
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`IPR2556-0006IP2@fr.com
`Fax:
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`(612) 288-9696
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`Mark J. Hebert, Reg. No. 31,766
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`3
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`Case IPR2014-00343
`Attorney Docket No: 25556-0007IP2
`(612) 547-5070
`Hebert@fr.com
`IPR2556-0006IP2@fr.com
`(612) 288-9696
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`Tel:
`Email:
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`Fax:
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`Service Information under 37 CFR § 42.8(b)(4)(i) et seq.
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`Please address all correspondence and service to counsel as listed above.
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`4.
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`Patent Owner consents to service by email at IPR25556-0007IP2@fr.com.
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`Date: January 31, 2014
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
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` /Dorothy P. Whelan/
`Dorothy P. Whelan
`Reg. No. 33,814
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`4
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`Case IPR2014-00343
`Attorney Docket No: 25556-0007IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that on
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`January 31, 2014, a complete and entire copy of this Patent Owner Bose
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`Corporation’s Mandatory Notices and Power of Attorney were provided via email,
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`to the Petitioner by serving the correspondence email address of record as follows:
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`Matthew B. Lowrie
`Aaron W. Moore
`Foley & Lardner LLP
`111 Huntington Avenue
`Boston, MA 02199
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`mlowrie-PTAB@foley.com
`amoore-PTAB@folwey.com
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`Email:
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`/Jessica K. Detko/
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`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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`5
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