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UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Fidelity National Information Services, Inc., Petitioner
`
`v.
`
`DATATREASURY CORPORATION, Patent Owner
`
`Case No. IPR2014-00489
`
`Patent No. 5,910,988
`
`
`
`
`
`Attention: Patent Trial and Appeal Board
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`PATENT OWNER’S MANDATORY NOTICES UNDER 37 CFR §42.8(b)
`
`
`
`Honorable Commissioner:
`
`
`
`In accordance with 37 CFR §42.8(b), Patent Owner, DATATREASURY
`
`CORPORATION, timely submits the following Mandatory Notices within 21 days of
`
`service of the Petition in the subject Proceeding, i.e., by March 27, 2014.
`
`(1) Real Party in Interest: DATATREASURY CORPORATION
`
`(2) Related Matters: Patent Owner is unaware of any matters that would affect, or
`
`be affected by, a Decision in the present Proceeding except the following pending
`
`

`

`IPR2014-00489
`
`USPTO ex parte Reexamination Proceeding and PTAB Proceedings, and the
`
`following litigation matter:
`
`
`
`ex parte Reexamination Proceeding Control No. 90/012,537;
`
`Fidelity National Information Services, Inc. v. DataTreasury Corporation,
`
`Petition for Post-Grant Review filed October 25, 2013 based on USP 6,032,137
`and assigned Proceeding No. CBM2014-00020;
`
`Fidelity National Information Services, Inc. v. DataTreasury Corporation,
`
`Petition for Post-Grant Review filed October 25, 2013 based on USP 5,910,988
`and assigned Proceeding No. CBM2014-00021;
`
`Jack Henry and Associates, Inc. v. DataTreasury Corporation, Petition for
`
`Post-Grant Review filed January 7, 2014 based on USP 6,032,137 and assigned
`Proceeding No. CBM2014-00056;
`
`Jack Henry and Associates, Inc. v. DataTreasury Corporation, Petition for
`
`Post-Grant Review filed October 25, 2013 based on USP 5,910,988 and assigned
`Proceeding No. CBM2014-00057;
`
`Fiserv, Inc. v. DataTreasury Corporation, Petition for Post-Grant Review
`
`filed March 12, 2014 based on USP 5,910,988 and assigned Proceeding No.
`CBM2014-00087;
`
`Fiserv, Inc. v. DataTreasury Corporation, Petition for Post-Grant Review
`
`filed March 12, 2014 based on USP 6,032,137 and assigned Proceeding No.
`CBM2014-00088;
`
`Fidelity National Information Services, Inc. v. DataTreasury Corporation,
`
`Petition for inter partes Review filed March 6, 2014 based on USP 6,032,137 and
`assigned Proceeding No. IPR2014-00490;
`
`Fidelity National Information Services, Inc. v. DataTreasury Corporation,
`
`Petition for inter partes Review filed March 6, 2014 of USP 5,910,988 and
`assigned Proceeding No. IPR2014-00491; and
`
`the following Proceedings in the Eastern District Court of Texas, Marshall
`
`Division consolidated in DataTreasury Corp. v. Fiserv, Inc., 2:13-cv-00431:
`2
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`

`

`IPR2014-00489
`
`DataTreasury Corporation v. Jack Henry & Associates, Inc. et al., Docket
`
`No. 2-13-cv-00433, Eastern District Court of Texas, Marshall Division; and
`
`DataTreasury Corporation v. Fidelity National Information Services, Inc. et
`
`al., Docket No. 2-13-cv-00432, Eastern District Court of Texas, Marshall Division.
`
`
`
`Patent Owner also notes that the following closed Reexamination, and
`
`litigation matters which have been previously disposed of, are given by Petitioner
`
`Fidelity National in its Mandatory Notices:
`
`USPTO ex parte Reexamination Proceeding Control No. 90/007,830,
`
`Reexamination Certificate issued December 25, 2007, all original claims 1-43
`confirmed, and all new claims 44-67 held patentable;
`
`DataTreasury Corporation v. Austin Bancorp, Inc. et al., Docket No.
`
`6-11-cv-00470, Eastern District of Texas;
`
`DataTreasury Corporation v. U S Bank National Association, Docket No.
`
`2-11-cv-00346, Eastern District of Texas, severed;
`
`DataTreasury Corporation v. U.S. Bancorp et al., Docket No.
`
`5-11-cv-00108, Eastern District of Texas, Texarkana Division;
`
`DataTreasury Corporation v. Capital One Financial Corporation et al.,
`
`Docket No. 6-11-cv-00092, Eastern District of Texas, Tyler Division, final
`judgment, all claims, counter-claims and third party claims dismissed;
`
`DataTreasury Corporation v. Washington Mutual, Inc. et al., Docket No.
`
`2-08-cv-00356, Eastern District of Texas, Texarkana Division (related cases in the
`same court: DataTreasury Corporation v. Wells Fargo & Co. et al.,
`2-05-cv-00291; DataTreasury Corporation v. Bank of America Corporation et al.,
`2-05-cv-00292; DataTreasury Corporation v. Wachovia Corporation et al.,
`2-05-cv-00293; DataTreasury Corporation v. Citigroup, Inc. et al., 2-05-cv-00294;
`DataTreasury Corporation v. Remitco/IPS et al., 5-05-cv-00173; DataTreasury
`Corporation v. Wells Fargo & Company et al., Docket No. 2-06-cv-00072, Eastern
`District of Texas, Marshall Division: Appeal voluntarily dismissed by defendants;
`08-cv-187);
`
`
`3
`
`

`

`IPR2014-00489
`
`DataTreasury Corporation v. Citizens Bank of Rhode Island et al., Docket
`
`No. 2-08-cv-00187, Eastern District of Texas;
`
`DataTreasury Corporation v. City National Corporation et al., Docket No.
`
`2-06-cv-00165, Eastern District of Texas, Marshall Division;
`
`DataTreasury Corporation v. Small Value Payments Company, Docket No.
`
`2-04-cv-00085, Eastern District of Texas, Marshall Division, consolidated with
`DataTreasury Corporation v. Wells Fargo & Company et al., Docket No.
`2-06-cv-00072, Eastern District of Texas, Marshall Division, and administratively
`closed;
`
`DataTreasury Corp v. Magtek Inc., Docket No. 2-03-cv-00459, Eastern
`
`District of Texas, Marshall Division, terminated;
`
`DataTreasury Corp v. Bank One Corporation, Docket No. 3-03-cv-00059,
`
`Eastern District of Texas, Marshall Division;
`
`DataTreasury Corp v. J.P. Morgan Chase Co, et al., Docket No.
`
`5-02-cv-00124, Eastern District of Texas, Texarkana Division;
`
`DataTreasury Corp v. Ingenico S.A., et al., Docket No. 5-02-cv-00095,
`
`Eastern District of Texas, Texarkana Division;
`
`CitiGroup, Inc. et al. v. DataTreasury Corporation, Docket No.
`
`1-05-cv-07780;
`
`Viewpointe Archive Services, L.L.C. v. DataTreasury Corporation; Docket
`
`No. 3-05-cv-01355; and
`
`
`
`
`
`Doukas et al. v. Ballard et al., Docket No. 2:2011cv03275, Eastern District
`
`of New York.
`
`(3) Lead Counsel: Abraham Hershkovitz, Reg. No. 45,294
`
`
`
`Hershkovitz & Associates, PLLC
`
`
`
`E-Mail AHershkovitz@Hershkovitz.net
`
`Patent Owner also is aware of a litigation matter titled:
`
`DataTreasury Corporation v. NCR Corporation, Docket No. 2-05-cv-00073.
`
`4
`
`

`

`IPR2014-00489
`
`Back-Up Counsel: Eugene C. Rzucidlo, Reg. No. 31,900
`
`
`
`Hershkovitz & Associates, PLLC
`
`
`
`E-Mail GRzucidlo@Hershkovitz.net
`
`In accordance with 37 CFR §42.10(b), no additional Power of attorney is required
`
`for filing in the present Proceeding since Lead Counsel and Back-Up Counsel are
`
`already counsel of record in the underlying patent in the present Proceeding.
`
`(4) Service Information:
`
`
`
`
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`
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`
`
`
`Postal Mailing and Hand Delivery Address:
`Hershkovitz & Associates, PLLC
`2845 Duke Street
`Alexandria, VA 22314
`
`Telephone 703-370-4800
`Fasimile 703-370-4809
`Electronic Mail Patent@Hershkovitz.net
`
`Patent Owner respectfully requests that service commence in this case via
`
`electronic mail. It is presumed from the electronic mail address given in the
`
`Service Information of the Mandatory Notices by Petitioner for electronic mail
`
`service that Petitioner agrees to service by electronic mail in accordance with 37
`
`CFR §42.6(b), and Patent Owner courteously requests approval by Petitioner of
`
`service via electronic mail for the convenience of both parties.
`
`
`
`
`
`No fee is required for entry and approval of these Notices.
`
`A Certificate of Service appears as the last page attached to these Notices.
`
`5
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`

`

`IPR2014-00489
`
`
`
`The Board is invited to direct any questions to the undersigned Lead
`
`Counsel or Back-Up Counsel at the telephone and e-mail addresses identified
`
`herein.
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`Respectfully submitted,
`DataTreasury Corporation
`
`/Abe Hershkovitz/
`
`Abraham Hershkovitz
`Registration No. 45,294
`
`
`
`Eugene C. Rzucidlo
`Registration No. 31,900
`
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`Submissions Under Certificate of Service:
`Patent Owner’s Mandatory Notices
`Certificate of Service
`
`Date: March 27, 2014
`
`HERSHKOVITZ & ASSOCIATES, PLLC
`Telephone 703-370-4800
`Customer No. 000040401
`
`
`IPR043262-FN1.A01; AH/pjj
`
`6
`
`

`

`IPR2014-00489
`
`CERTIFICATE OF SERVICE
`
`
`
`
`It is hereby certified that the attached PATENT OWNER’S MANDATORY
`NOTICES UNDER 37 CFR §42.8(b), as well as this Certificate of Service, are
`being served on March 27, 2014 by electronic mail on Petitioner at Petitioner’s
`service e-mail address as identified in the USPTO records:
`
`Erika H. Arner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Dr., Reston, VA 20190-5675
`E-Mail FIS-Ballard@finnegan.com
`Telephone 571-203-2700
`Facsimile 202-408-4000
`
`
`
`/Abe Hershkovitz/
`
`Abraham Hershkovitz
`Reg. No. 45,294
`
`
`
`7
`
`

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