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September 17, 2014
`
`Filed:
`
`
`Filed on behalf of:
`
`Patent Owner Intellectual Ventures II LLC
`By: Brenton R. Babcock
`
`Ted M. Cannon
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`
`
`Irvine, CA 92614
`
`Tel.: (949) 760-0404 Fax: (949) 760-9502
`
`Email: BoxPGL18@knobbe.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`INTERNATIONAL BUSINESS MACHINES
`Petitioners,
`v.
`INTELLECTUAL VENTURES II LLC
`Patent Owner.
`
`
`
`
`Case IPR2014-01410
`U.S. Patent 5,745,574
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER SUBMISSION OF
`MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)
`
`
`
`

`

`IPR2014-01410
`IBM v. Intellectual Ventures
`
`
`Pursuant to 37 C.F.R. § 42.8(a), Patent Owner Intellectual Ventures II LLC
`
`submits herewith the following required mandatory notice information.
`
`I.
`
`Real Party in interest Pursuant to 37 C.F.R. § 42.8(b)(1)
`
`Intellectual Ventures II LLC is the real party-in-interest for Patent Owner.
`
`II. Related Matters Pursuant to 37 C.F.R. § 42.8(b)(2)
`
`Intellectual Ventures II LLC has asserted the ’574 Patent in the following
`
`cases: (1) Intellectual Ventures II LLC v. Huntington Bancshares Incorporated et
`
`al., Case No. 2:13-cv-00785-GLF in the United States District Court for the
`
`Southern District of Ohio; (2) Intellectual Ventures II LLC v. U.S. Bancorp et al.,
`
`Case No. 0:13-cv-02071-ADM in the United States District Court for the District
`
`of Minnesota; (3) Intellectual Ventures II LLC v. SunTrust Banks, Inc. et al., Case
`
`No. 1:13-cv-02454-WSD in the United States District Court for the Northern
`
`District of Georgia; (4) Intellectual Ventures II LLC v. Commerce Bancshares, Inc.
`
`et al., Case No. 2:13-cv-04160-NKL in the United States District Court for the
`
`Western District of Missouri; (5) Intellectual Ventures II LLC v. BBVA Compass
`
`Bancshares, Inc. et al., Case No. 2:13-cv-01106-AKK in the United States District
`
`Court for the Northern District of Alabama; (6) Intellectual Ventures II LLC v. JP
`
`Morgan Chase & Co. et al., Case No. 1:13-cv-03777-AKH in the United States
`
`District Court for the Southern District of New York; (7) Intellectual Ventures II
`
`LLC v. First National Bank of Omaha, Case No. 8:13-cv-00167-LSC in the United
`
`1
`
`

`

`IPR2014-01410
`IBM v. Intellectual Ventures
`
`States District Court for the District of Nebraska; (8) Intellectual Ventures I LLC et
`
`al. v. PNC Financial Services Group., Inc. et al., Case No. 2:14-cv-00832-AJS in
`
`the United States District Court for the Western District of Pennsylvania; and (9)
`
`Intellectual Ventures I LLC et. al. v. Citigroup, Inc. et. al., Case No. 1:14-cv-
`
`04638-AKH in the United States District Court for the Southern District of New
`
`York.
`
`The following IPR and CBM petitions have been filed against the ’574
`
`Patent: IPR2014-00660, IPR2014-00724, IPR2014-01410, and CBM2014-00160.
`
`III. Lead and Back-Up Counsel Pursuant to 37 C.F.R. § 42.8(b)(3)
`
`Patent Owner hereby designates its lead and backup counsel as follows:
`
`Lead counsel:
`
`Brenton R. Babcock, Reg. No. 39,592
`2brb@knobbe.com
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`
`Back-up counsel:
`
`Ted M. Cannon, Reg. No. 55,036
`2tmc@knobbe.com
`Knobbe, Martens, Olson & Bear, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel: (949) 760-0404
`Fax: (949) 760-9502
`
`2
`
`

`

`IPR2014-01410
`IBM v. Intellectual Ventures
`
`
`Donald J. Coulman (Reg. No. 50,406)
`dcoulman@intven.com
`Postal and Hand-Delivery Address:
`Intellectual Ventures
`3150 139th Avenue SE
`Bellevue, WA 98005
`Telephone: (425) 677-2973
`Facsimile: (425) 467-2350
`
`IV. Service Information Pursuant to 37 C.F.R. § 42.8(b)(4)
`
`Please address all correspondence to the lead counsel at the address shown
`
`above.
`
`Patent Owner also consents
`
`to electronic service by email
`
`to:
`
`BoxPGL18@knobbe.com.
`
`
`
`
`
`
`Dated: September 17, 2014
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`By /Ted M. Cannon/
`Brenton R. Babcock, Reg. No. 39,592
`Ted M. Cannon, Reg. No. 55,036
`Email: BoxPGL18@knobbe.com
`Attorneys for Patent Owner
`Intellectual Ventures II LLC
`
`
`
`3
`
`

`

`IPR2014-01410
`IBM v. Intellectual Ventures
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of PATENT OWNER
`
`
`
`SUBMISSION OF MANDATORY NOTICE INFORMATION PURSUANT
`
`TO 37 C.F.R. § 42.8(a) is being served on September 17, 2014, via electronic mail
`
`pursuant to 37 C.F.R. § 42.6(e) and with the consent of Petitioners’ counsel, to
`
`counsel for Petitioners at the addresses below:
`
`
`
`IBM_IPR_SERVICE@kirkland.com
`
`Kenneth R. Adamo
`kenneth.adamo@kirkland.com
`Eugene Goryunov
`eugene.goryunov@kirkland.com
`
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Tel.: (312) 862-2000
`Fax: (312) 862-2200
`
`
`
` /Ted M. Cannon/
`Brenton R. Babcock, Reg. No. 39,592
`Ted M. Cannon, Reg. No. 55,036
`Attorneys for Patent Owner
`Intellectual Ventures II LLC
`
`
`
`4
`
`
`
`Dated: September 17, 2014
`
`
`
`
`18578600
`
`
`

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