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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
`_____________
`
`SMART MODULAR TECHNOLOGIES, INC.
`Petitioner
`
`v.
`
`NETLIST, INC.
`Patent Owner
`_____________
`
`Case IPR2014-01370
`Patent No. 8,301,833
`_____________
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`

`

`Patent Owner’s Mandatory Notices
`IPR2014-01370
`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 SMART Modular Technologies, Inc. (“SMART Modular”) Petition for inter
`
`partes review of United States Patent No. 8,301,833 Case No. IPR2014-01370.
`
`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
`IPR2014-01370
`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.
`
`7.
`
`8.
`
`SanDisk Corporation v. Netlist, Inc., IPR2014-00982;
`
`SanDisk Corporation v. Netlist, Inc., IPR2014-00994; and
`
`SMART Modular Technologies, Inc. v. Netlist, Inc., IPR2014-01371.
`
`Patent Owner does not concede that the identified applications or IPR
`
`proceedings 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-
`
`3
`
`

`

`Patent Owner’s Mandatory Notices
`IPR2014-01370
`U.S. Patent No. 8,301,833
`
`mail to Netlist-IPR@mcandrews-ip.com. Pursuant to 37 C.F.R. § 42.8(b)(3) patent
`
`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
`
`
`
`owner designates the following counsel:
`
`
`
`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
`IPR2014-01370
`U.S. Patent No. 8,301,833
`
`
`
`
`Dated: September 12 , 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
`IPR2014-01370
`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 September 12,
`
`2014, via email to counsel for Petitioners at the following:
`
`Michael F. Heafey
`King & Spalding LLP
`601 South California Avenue
`Palo Alto, California 94304
`mheafey@kslaw.com.com
`Sanjiva K. Reddy
`King & Spalding LLP
`1185 Avenue of the Americas
`New York, New York 10036
`sreddy@kslaw.com
`patentmailnyc@kslaw.com
`
`
`Date: September 12, 2014
`
`/Thomas J. Wimbiscus/
`Thomas J. Wimbiscus
`
`
`6
`
`

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