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Filed on behalf of Netlist, Inc.
`By: Thomas J. Wimbiscus
`McAndrews, Held & Malloy, Ltd.
`500 W. Madison St., 34th Floor
`Chicago, IL 60661
`Tel: 312-775-8000
`Fax: 312-775-8100
`E-mail:
`twimbiscus@mcandrews-ip.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SANDISK CORPORATION
`Petitioner
`
`v.
`
`NETLIST, INC.
`Patent Owner
`_____________
`
`Case IPR2014-00994
`Patent No. 8,301,833
`_____________
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`

`

`Patent Owner’s Mandatory Notices
`IPR2014-00994
`U.S. Patent No. 8,301,833
`
`
`Pursuant to 37 C.F.R. § 42.8, the undersigned on behalf of and acting in a
`
`representative capacity for patent owner Netlist, Inc. (“Patent Owner” and real
`
`party in interest), hereby submits the following mandatory notices in connection
`
`with SanDisk Corporation (“SANDISK”) Petition for inter partes review of United
`
`States Patent No. 8,301,833 Case No. IPR2014-00994.
`
`PATENT OWNER POWER OF ATTORNEY
`
`A Power of Attorney appointing the undersigned and the undersigned’s firm
`
`is being filed concurrently with these Notices.
`
`REAL PARTY-IN-INTEREST
`
`The real party in interest is Netlist, Inc.
`
`RELATED MATTERS
`
`Patent Owner identifies the following judicial or administrative matters that
`
`would affect or be affected by a decision in the proceedings:
`
`1.
`
`Netlist, Inc. v. Smart Modular Technologies, Inc., Case No. 3:13-cv-
`
`05889-YGR (N.D. Cal., filed December 19, 2013);
`
`2.
`
` Prosecution of Application Serial No. 13/559,476 filed on July 26,
`
`2012, which claims benefit to and is a continuation in part of the patent currently at
`
`issue.
`
`2
`
`

`

`Patent Owner’s Mandatory Notices
`IPR2014-00994
`U.S. Patent No. 8,301,833
`
`
`3.
`
`Prosecution of Application Serial No. 13/625,563 filed on September
`
`24, 2012, which claims benefit to and is a continuation in part of the patent
`
`currently at issue.
`
`4.
`
`Prosecution of Application Serial No. 14/173,219 filed on February 5,
`
`2014, which is currently pending, and which claims priority to the patent currently
`
`at issue.
`
`5.
`
`Prosecution of Application Serial No. 14/173,242 filed on February 5,
`
`2014, which is currently pending, and which claims priority to the patent currently
`
`at issue.
`
`6.
`
`SanDisk Corporation v. Netlist, Inc., IPR2014-00982.
`
`Patent Owner does not concede that the identified applications or IPR
`
`proceeding would necessarily affect, or necessarily be affected by, a decision in the
`
`present inter partes review of U.S. Patent No. 8,301,833.
`
`LEAD AND BACK-UP COUNSEL AND
`SERVICE INFORMATION FOR PATENT OWNER
`
`Please direct all correspondence regarding this proceeding to the lead
`
`counsel at the address listed below. Patent Owner also consents to service by e-
`
`mail to Netlist-IPR@mcandrews-ip.com. Pursuant to 37 C.F.R. § 42.8(b)(3) patent
`
`owner designates the following counsel:
`
`
`
`3
`
`

`

`Backup Counsel:
`
`Gregory C. Schodde
`Registration No. 36,668
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: gschodde@mcandrews-ip.com
`
`Backup Counsel:
`
`Ronald H. Spuhler
`Registration No. 52,245
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: rspuhler@mcandrews-ip.com
`
`
`
`Patent Owner’s Mandatory Notices
`IPR2014-00994
`U.S. Patent No. 8,301,833
`
`Lead Counsel:
`
`Thomas J. Wimbiscus
`Registration No. 36,059
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: twimbiscus@mcandrews-ip.com
`
`Backup Counsel:
`
`Scott P. McBride
`Registration No. 42,853
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`Facsimile:
`(312) 775-8100
`Email: smcbride@mcandrews-ip.com
`
`Backup Counsel:
`
`Wayne H. Bradley
`Registration No. 39,916
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, IL 60661
`Telephone: (312) 775-8000
`
`Facsimile:
`(312) 775-8100
`Email: wbradley@mcandrews-ip.com
`
`
`
`
`4
`
`

`

`Patent Owner’s Mandatory Notices
`IPR2014-00994
`U.S. Patent No. 8,301,833
`
`
`Dated: July 11, 2014
`
`
`
`
`
`
`Respectfully submitted,
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`Registration No. 36,059
`McAndrews, Held & Malloy, Ltd.
`500 West Madison Street, 34th Floor
`Chicago, Illinois 60661
`Office: (312) 775-8000
`Fax: (312) 775-8100
`Email: twimbiscus@mcandrews-ip.com
`
`Lead Counsel for Patent Owner
`
`5
`
`

`

`Patent Owner’s Mandatory Notices
`IPR2014-00994
`U.S. Patent No. 8,301,833
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing Patent
`
`Owner’s Mandatory Notices Under 37 C.F.R. 42.8 was served on July 11, 2014,
`
`via email to counsel for Petitioners at the following:
`
`David B. Cochran
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`dcochran@jonesday.com
`
`Joseph M. Sauer
`JONES DAY
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`jmsauer@jonesday.com
`
`Joshua R. Nightingale
`JONES DAY
`One Mellon Center
`500 Grant Street
`Pittsburgh, PA 15219
`jrnightingale@jonesday.com
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`
`
`6
`
`
`Date: July 11, 2014
`
`

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