`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`MEDTRONIC, INC. and MEDTRONIC VASCULAR, INC.
`Petitioners
`
`v.
`
`MARITAL DEDUCTION TRUST
`Patent Owner
`
`__________
`
`
`Case IPR2014-00695
`Patent 5,593,417
`
`__________
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2014-00695
`Patent No. 5,593,417
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`Mandatory Notices.
`
`
`
`
`
`1.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Endotach LLC is the exclusive licensee of all substantial interests in U.S.
`
`Patent No. 5,593,417 (“the ’417 patent”). For purposes of full disclosure,
`
`Endotach LLC is a wholly owned subsidiary of Acacia Research Group LLC,
`
`which is a subsidiary of Acacia Research Corp., a publicly traded company.
`
`
`
`The Marital Deduction Trust, created under the Valentine J. Rhodes
`
`Revocable Trust, is the owner of the ’417 Patent.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial and administrative matters, in which the ’417 patent
`
`is at issue, may affect or be affected by a decision in this proceeding:
`
`(a)
`
`Inter Partes Review No. IPR2014-00100, filed by the same
`
`Petitioners as the present Petition on October 31, 2013, instituted by the Board on
`
`March 25, 2014, and presently pending before the Board;
`
`(b) Endotach LLC v. Cook Medical Incorporated, Civil Action No. 1:13-
`
`cv-1135, pending in the Southern District of Indiana, Indianapolis Division;
`
`(c) Endotach LLC v. Medtronic, Inc. and Medtronic Vascular, Inc., Civil
`
`Action No. 5:13-cv-3292, pending in the Northern District of California, San Jose
`
`2
`
`
`
`Case No. IPR2014-00695
`Patent No. 5,593,417
`
`Division, and presently stayed pending resolution of Inter Partes Review No.
`
`
`
`
`
`
`IPR2014-00100; and
`
`(d) Endotach LLC v. W.L. Gore & Associates, Inc., Civil Action No.
`
`3:12-cv-00308, filed in the Northern District of Florida, Pensacola Division, now
`
`resolved.
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Patent Owner provides the
`
`following designation of counsel:
`
`Lead Counsel:
`
`Matthew Phillips (Reg. No. 43,403)
`Renaissance IP Law Group LLP
`9600 S.W. Oak St. Suite 560
`Portland, OR 97223
`Phone: (503) 419-6425
`Fax: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`
`
`Back-up Counsel:
`
`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`Jonathan T. Suder
`(pro hac vice to be filed)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`jts@fsclaw.com
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), Power of Attorneys for lead and back-up
`
`counsel are filed concurrently, as is a Motion for Pro Hac Vice Admission of back-
`
`up counsel Jonathan T. Suder pursuant to 37 C.F.R. § 42.10(c).
`
`3
`
`
`
`Case No. IPR2014-00695
`Patent No. 5,593,417
`
`
`
`4.
`
`
`
`
`
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`
`
`Service of any documents via hand-delivery may be made at the postal
`
`mailing address for the respective lead or back-up counsel designated above with
`
`courtesy copies to each of their respective email addresses.
`
`5.
`
`Payment of Fees under 37 C.F.R. § 42.103
`
`The undersigned authorizes the U.S. Patent and Trademark Office to charge
`
`any applicable fees associated with this proceeding to Deposit Account No. 50-
`
`5836.
`
`Date: 2014 May 16
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`Matthew C. Phillips
`Reg. No. 43,403
`
`Lead Counsel for Patent Owner
`
`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`Telephone: 503-964-1129
`Facsimile: 503-517-9919
`matthew.phillips@renaissanceiplaw.com
`
`
`
`4
`
`Brett M. Pinkus,
`Reg. No. 59,980
`
`Jonathan T. Suder
`(pro hac vice pending)
`
`Backup Counsel for Patent Owner
`
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`jts@fsclaw.com
`
`
`
`Case No. IPR2014-00695
`Patent No. 5,593,417
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on May 16, 2014, copies of the foregoing PATENT
`
`OWNER’S INITIAL MANDATORY NOTICES and all documents filed with it
`
`were served via electronic mail, as agreed to by counsel, upon the following
`
`counsel for the Petitioner:
`
`Jack Barufka: jack.barufka@pillsburylaw.com
`
`Ngai Zhang: ngai.zhang@pillsburylaw.com,
`
`with a courtesy copy to docket_ip@pillsburylaw.com.
`
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
