UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SAFEWAY, INC. AND THE KROGER CO.,
`Petitioners,
`
`v.
`
`KROY IP HOLDINGS, LLC,
`Patent Owner.
`____________________
`
`Case: IPR2014-00685
`Patent: U.S. 7,054,830
`Filed: October 5, 1999
`Issued: May 30, 2006
`Title: SYSTEM AND METHOD FOR
`INCENTIVE PROGRAMS AND AWARD FULFILLMENT
`
`Attorney Docket No. 20188-132666
`Customer No. 22242
`____________________
`
`Filed electronically via the Patent Review Processing System (PRPS) on
`May 14, 2014
`
`Before the Honorable Michael Fitzpatrick, Administrative Patent Judge
`_________________________________________________________________
`
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(2)
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`1
`
`

`

`Mandatory Notices dated May 14, 2014
`Trial No. IPR2014-00685
`
`Dear Sir:
`
`U.S. Patent No. 7,054,830
`Atty. Docket No. 20188-132666
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), the undersigned states the following:
`
`I.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real party-in-interest is Kroy IP Holdings, LLC (“Patent Owner”), the owner and
`
`assignee of U.S. Patent No. 7,054,830 (“the ‘830 patent”).
`
`II.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ‘830 patent is currently at issue in the following patent infringement lawsuits in the
`
`Eastern District of Texas: Kroy IP Holdings, LLC v. Safeway, Inc., No. 2:12-cv-00800; Kroy
`
`IP Holdings, LLC v. The Kroger Co., No. 2:13-cv-00141; Kroy IP Holdings, LLC v. AutoZone,
`
`Inc., No. 2:13-cv-00888; Kroy IP Holdings, LLC v. BJ’s Restaurants, Inc., No. 2:13-cv-
`
`00889; Kroy IP Holdings, LLC v. Genghis Grill Franchise Concepts LP, No. 2:13-cv-00890;
`
`Kroy IP Holdings, LLC v. Panera Bread Company, No. 2:13-cv-00891; Kroy IP Holdings,
`
`LLC v. TGI Friday’s, Inc., No. 2:13-cv-00892; Kroy IP Holdings, LLC v. Hallmark Cards,
`
`Inc., No. 2:13-cv-00933; Kroy IP Holdings, LLC v. The Men’s Wearhouse, Inc., No. 2:13-cv-
`
`00934; Kroy IP Holdings, LLC v. Mrs. Fields Famous Brands, LLC d/b/a TCBY, No. 2:13-cv-
`
`00935; and Kroy IP Holdings, LLC v. Starbucks Corporation, No. 2:13-cv-00936.
`
`III.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Patent Owner identifies lead and back-up counsel as follows:
`
`A.
`
`Lead Counsel
`
`Mark W. Hetzler
`PTO Registration No. 38,183
`FITCH EVEN TABIN & FLANNERY LLP
`
`2
`
`

`

`U.S. Patent No. 7,054,830
`Atty. Docket No. 20188-132666
`
`Mandatory Notices dated May 14, 2014
`Trial No. IPR2014-00685
`
`
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Phone: 312.577.7000
`Facsimile: 312.577.7007
`Email: mwhetz@fitcheven.com
`
`B.
`
`Back-Up Counsel
`
`Nicholas T. Peters
`PTO Registration No. 53,456
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Phone: 312.577.7000
`Facsimile: 312.577.7007
`Email: ntpete@fitcheven.com
`
`IV.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service of all documents may be made to the lead counsel and back-up counsel at the
`
`postal address listed above, with courtesy copies emailed to the email addresses also listed
`
`above.
`
`V.
`
`Conclusion
`
`The Commissioner is hereby authorized to charge any fees which may be required in this
`
`Inter Partes Request for Review to Deposit Account No. 06-1135.
`
`
`
`Dated: May 14, 2014
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY LLP
`
`By: /Mark W. Hetzler/
`Mark W. Hetzler
`Registration No. 38,183
`mwhetz@fitcheven.com
`
`3
`
`

`

`Mandatory Notices dated May 14, 2014
`Trial No. IPR2014-00685
`
`
`CERTIFICATE OF SERVICE
`
`U.S. Patent No. 7,054,830
`Atty. Docket No. 20188-132666
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true and correct
`
`copy of the foregoing MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(2) was served
`
`this 14th day of May, 2014, by EXPRESS MAIL® upon the following:
`
`Marc S. Kaufmann
`Gerard M. Donovan
`REED SMITH, LLP
`1301 K Street, NW
`East Tower – Suite 1100
`Washington, DC 20005
`
`A courtesy copy of the same was also emailed to IPR-KroyIP@ReedSmith.com, as requested by
`
`the petitioner.
`
`
`
`Dated: May 14, 2014
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
` /Mark W. Hetzler/
`Mark W. Hetzler
`Registration No. 38,183
`mwhetz@fitcheven.com
`
`
`
`
`
`4
`
`

`

`PTO/SB/QB (07-09)
`Approved for use through 07/31/2012. OMB 0651-0031
`US. Patent and Trademark Office; 0.8. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`Applicant/Patent Owner: KROY IP HOLDINGS LLC
`
`STATEMENT UNDER 37 CFR 3.73“)!
`
`Application No./Patent No.2 7.054530
`Titled:
`
`
`Filed/issue Date: May 30. 2006
`
`Kroy lP Holdings, LLC
`(Name of Assignee)
`
`states that it is:
`
`. a
`
`Limited Liability Corporation
`(Type of Assignee, eg, corporation, partnership, university, government agency, etc.
`
`the assignee of the entire right, title, and interest in;
`
`2. D an assignee of less than the entire right, title, and interest in
`(The extent (by percentage) of its ownership interest is
`
`%); or
`
`
`
`3. D the assignee of an undivided interest in the entirety of (a complete assignment from one of the joint inventors was made)
`
`the patent application/patent identified above, by virtue of either:
`
`A. D An assignment from the inventor(s) of the patent application/patent identified above. The assignment was recorded in
`the United States Patent and Trademark Office at Reel
`, Frame
`, orfor which a
`copy therefore is attached.
`
`OR
`
`B.
`
`A chain of title from the inventor(s), of the patent application/patent identified above, to the current assignee as follows:
`
`1. From: Andrey 9- UkhOV
`
`To: York Eggleston
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`,
`
`Frame
`
`,
`
`or for which a copy thereof is attached.
`
`To: Kroy lP Holdings, LLC
`2. From: York Eggleston
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel 02098
`
`,
`
`Frame 0260
`
`,
`
`or for which a copy thereof is attached.
`
`3. From:
`
`To:
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`,
`
`Frame
`
`,
`
`or for which a copy thereof is attached.
`
`[:J
`
`Additional documents in the chain of title are listed on a supplemental sheet( ).
`
`As required by 37 CFR 3.73(b)(1)(i), the documentary evidence of the chain of title from the original ownerto the assignee was,
`or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11.
`
`[NOTE: A separate copy (i.e., a true copy of the original assignment document(s)) must be submitted to Assignment Division in
`accordance with 37 CFR Part 3, to record the assignment in the records of the USPTO. fl MPEP 302.08]
`
`The undersigned (whose title is supplied below) is authorized to act on behalf of the assignee.
`
`
`May 14, 2014
`/Mark W. Hetzler/
`Signature
`Date
`
`Mark W. Hetzler
`
`Title
`Printed or Typed Name
`This collection of information is required by 37 CFR 3.73(b). The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application: Confidentiality is governed by 35 USC. 122 and 37 CFR 1.11 and 1.14, This collection is estimated to take 12 minutes to complete, including
`gathering, preparing, and submitting the completed application form to the USPTO, Time will vary depending upon the individual case. Any comments on the amount of time
`you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, US Patent and Trademark Office, US.
`Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS SEND TO: Commissioner
`for Patents, P.0. Box 1450, Alexandria, VA 22313—1450.
`
`Registration No. 38,183
`
`If you need assistance in completing the form, call 1 ~800—PTO-9199 and select option 2.
`
`

`

`PTO/Salts (8-96
`Approved tor use through 9/30/98. OMB 0651-002
`Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act or 1995. no persons are required to respond to a cotlection 0! information unless it displays a valid OMB control number.
`, Docket Number (Optional)
`
`
`
`
`
`ASSIGNMENT OF APPLICATION
`
`
`
`“hereafter
`Whereas, I, Amine)! Do Ukkov or washina'iofl, DC
`referred to as applicant, have invented certain new and useful improvements inM
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`E for which an application fora United States Patent was tiled on
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`D forwhich an application tor a United States Patent was executed on
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`"assignee" whose post office address is
`is de~
`sirous of acquiring the entire right, title and interest in the same;
`
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`
`, and
`
`
`
`dollar’s'cs 4- . 00 ), the receipt whereof is ac-
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`Now, therefore. in consideration of the sum of
`knowledged, and other good and valuable consideration, l, the applicant, by these presents do sell, assign
`and transfer unto said assignee the full and exclusive right to the said invention in the United States and the
`entire right, title and interest in and to any and all Patents which may be granted thereforin the United States,
`i hereby authorize and request the Commissioner of Patents and Trademarks to issue said United States
`Patent to said assignee, of the entire right, title, and interest in and to the same. for his sole use and behoot;
`and for the use and behoof of his legal representatives, to the full end of the term tor which said Patent may
`be granted, as fully and entirely as the same would have been held by me had this assignment and sale not
`been made.
`
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`and acknowledged the foregoing instrument to be his free act and deed this
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`(Signature)
`
`Seal
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`Highly Confidential-
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`
`