UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`SAMSUNG ELECTRONICS CO., LTD; SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC; HTC CORP.; and HTC
`AMERICA, INC.
`Petitioners
`v.
`
`AFFINITY LABS OF TEXAS, LLC
`Patent Owner
`______________
`
`Case IPR2014-01181
`Patent 8,532,641
`______________
`
`
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`PATENT OWNER’S MANDATORY DISCLOSURES
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`85041927.1
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`SAMSUNG ELECTRONICS CO., LTD; SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC; HTC CORP.; and HTC
`AMERICA, INC.
`Petitioners
`v.
`
`AFFINITY LABS OF TEXAS, LLC
`Patent Owner
`______________
`
`Case IPR2014-01181
`Patent 8,532,641
`______________
`
`
`
`PATENT OWNER’S MANDATORY DISCLOSURES
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`85041927.1
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`
`
`Real Party in Interest: Affinity Labs of Texas, LLC is the real party-in-
`interest as it is the owner of the ’007 Patent.
`
`Related Matters: The Patent Owner identifies the following judicial and/or
`administrative matters that may affect, or may be affected by, a decision in the
`Inter Partes Review:
`
`U.S. Patent No. 8,359,007 (the ‘007 Patent) is being asserted in Affinity
`Labs of Texas, LLC v. Samsung Electronics Co., Ltd., et al., 1:12-cv-557 (E.D.
`Tex., filed Nov. 20, 2012), along with related U.S. Patent Nos. 7,187,947 (the “947
`Patent); 7,324,833 (the ‘833 Patent); 7,634,228 (the ‘228 Patent); and 7,953,390
`(the ‘390 Patent).
`
`The ‘390 Patent is also at issue in Inter Partes Review IPR2014-00209 and
`IPR2012-00212.
`
`The ’007 Patent is also at issue in Inter Partes Review IPR2014-00407 and
`IPR2014-00408.
`
`The ’641 Patent is also at issue in Inter Partes Review IPR2014-01182 and
`IPR2014-01184.
`
`Related U.S. Patent No. 7,778,595 (the ‘595 Patent) was asserted in Affinity
`Labs of Texas, LLC v. Volkswagen Group of America Inc., et al., Case No. 1:11-
`cv-00036-RC (E.D. Tex.), which has now settled.
`
`Related U.S. Patent No. 7,324,833 (the ‘833 Patent) is the subject of
`Reexamination Control Nos. 90/010,333, 95/001,223, and 95/001,264, all of which
`are currently on appeal. The ‘833 Patent was asserted in Affinity Labs of Texas,
`LLC v. BMW North America, LLC, et al., Case No. 08-cv-00164-RC (BMW
`case); Affinity Labs of Texas, LLC v. Alpine Electronics of America, Inc. et al.,
`Case No. 08-cv-00171-RC (Alpine case); and Affinity Labs of Texas, LLC v.
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`85041927.1
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`DICE Electronics, LLC, et al., Case No. 08-cv-00163-RC (DICE case).
`Settlements were reached in all cases.
`
`The ‘833 Patent was also asserted in Affinity Labs of Texas, LLC v. General
`Motors Company et al., Case No. 12-cv-00582 (E.D. Tex.) and Affinity Labs of
`Texas, LLC v. Ford Motor Company, Case No. 12-cv-00580 (E.D. Tex.). These
`cases are pending.
`
`Related U.S. Patent Nos. 8,554,191; 8,588,680; and 8,532,641 were also
`asserted in:
`
`Affinity Labs of Texas, LLC v. Blackberry Ltd. et al., Case No. 13-cv-0362
`(W.D. Tex.); Affinity Labs of Texas, LLC v. Ford Motor Company., Case No. 13-
`cv-0363 (W.D. Tex.); Affinity Labs of Texas, LLC v. Samsung Electronics Co.,
`Ltd, et al., Case No. 13-cv-0364 (W.D. Tex.); Affinity Labs of Texas, LLC v.
`Toyota Motor North America, Inc. et al., Case No. 13-cv-0365 (W.D. Tex.);
`Affinity Labs of Texas, LLC v. Volvo Cars of North America, LLC et al., Case
`No. 13-cv- 0366 (W.D. Tex.); Affinity Labs of Texas, LLC v. Honda North
`America, Inc. et al., Case No. 13-cv-0367 (W.D. Tex.); Affinity Labs of Texas,
`LLC v. Jaguar Land Rover North America, LLC et al., Case No. 13-cv-0368 (W.D.
`Tex.); Affinity Labs of Texas, LLC v. Nissan North America, Inc. et al., Case No.
`13-cv-0369 (W.D. Tex.); and Affinity Labs of Texas, LLC v. General Motors
`LLC., Case No. 13-cv-0370 (W.D. Tex.). These cases are pending.
`
`U.S. Patent No. 7,953,390
`
`U.S. Patent No. 7,324,833
`
`U.S. Patent No. 7,187,947
`
`U.S. Patent No. 7,440,772
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`U.S. Patent No. 7,486,926
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`85041927.1
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`U.S. Patent No. 7,634,228
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`U.S. Patent No. 7,778,595
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`U.S. Patent No. 7,970,379
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`U.S. Patent No. 8,521,140
`
`U.S. Patent No. 8,554,191
`
`U.S. Patent No. 8,532,641
`
`U.S. Patent No. 8,588,680
`
`U.S. Patent Application No. 14/096,339
`
`U.S. Patent Application No. 14/259,446
`
`U.S. Patent Application No. 14/259,437
`
`U.S. Patent Application No. 14/168,201
`
`U.S. Patent Application No. 14/261,958
`
`Lead and Backup Counsel: Pursuant to 37 C.F.R. §§ 42.8(b)(3) and
`42.01(a), Affinity Labs of Texas, LLC designates the following: Lead Counsel is
`Ryan M. Schultz (Reg. No. 65,134); Backup Counsel is Thomas R. DeSimone
`(Reg. No. 60,755).
`
`Service Information: Service information is as follows: Robins, Kaplan,
`Miller, & Ciresi LLP, 2800 LaSalle Plaza, 800 LaSalle Ave, Minneapolis, MN
`55402; Tel. (612) 349-8500; Fax (612) 339-4181. Affinity Labs of Texas, LLC
`consents to service by electronic mail at RMSchultz@rkmc.com and
`TRDesimone@rkmc.com.
`
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`85041927.1
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`Affinity Labs of Texas, LLC believes this submission fulfills the
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`requirements of 37 C.F.R. § 42.8. If additional information is required, please
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`contact the undersigned counsel at the address shown below.
`
`The Commissioner is hereby authorized to charge any fees or costs
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`associated with this submission and to credit any excess payments to Deposit
`
`Account No. 506095.
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`Dated: August 27, 2014.
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`Respectfully Submitted,
`/Ryan M. Schultz/
`Registration No. 65,134
`Robins, Kaplan, Miller & Ciresi
`L.L.P.
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
`
`85041927.1
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`
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on this August 27, 2014, a copy of this Mandatory Notice
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`has been served in its entirety by electronic mail to the petitioners:
`
`Respectfully submitted,
`
`/Ryan M. Schultz/
`Registration No. 65,134
`Attorney for Patent Owner
`
`For Samsung petitioners:
`Steven.baughman@ropesgray.com
`Gabrielle.higgins@ropesgray.com
`SamsungIPRService@ropesgray.com
`
`For HTC petitioners:
`TPatterson@pattersonsheridan.com
`jselinger@pattersonsheridan.com
`TKurth@pattersonsheridan.com
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`Dated: August 27, 2014
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`85041927.1
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