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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MASTERIMAGE 3D, INC.
`and
`MASTERIMAGE 3D ASIA, LLC
`Petitioners
`
`v.
`
`REALD INC.
`Patent Owner
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,220,934
`
`
`IPR Case No.: IPR2015-00040
`
`PATENT OWNER MANDATORY NOTICES
`
`
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`

`

`
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`Pursuant to 37 C.F.R. § 42.8, the patent owner, RealD Inc., hereby files its
`
`Mandatory Notices.
`
`(1) Real party-in-interest.
`
`The patent owner and real party-in-interest is RealD Inc.
`
`(2) Related matters.
`
`The patent owner notifies the Board of the following judicial and
`
`administrative matters that may affect, or be affected by, a decision in this
`
`proceeding:
`
`(a) Other Inter Partes review proceeding involving U.S. Patent No.
`
`8,220,934
`
`• None.
`
`
`
`(b) Litigations involving U.S. Patent No. 8,220,934
`
`• RealD Inc. v. MasterImage 3D Inc. et al, Case No. 2:14-cv-
`
`02304, Complaint filed in the United States Court for the
`
`Central District of California on March 26, 2014.
`
`• RealD Inc. v. Volfoni et al, Case No. 2:14-cv-2303, Complaint
`
`filed in the United States Court for the Central District of
`
`California on March 26, 2014. RealD Inc. agreed to dismiss the
`
`action without prejudice, given various representations and
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`warranties made by Volfoni.
`
`Patent Owner Mandatory Notices for IPR2015-00040
`
`

`

`
`
`(d) Every application and patent claiming, or which may claim, the
`
`benefit of the priority of the filing date of U.S. Patent No. 8,220,934
`
`(U.S. Pat. App. No. 13/047,763)
`
`• U.S. Pat. No. 8,833,943 (U.S. Pat. App. No. 13/550,182) is a
`
`continuation of and claims priority to U.S. Pat. App. No.
`
`13/047,763 (U.S. Pat. No. 8,220,934).
`
`• U.S. Pat. App. No. 14/485,256 is a continuation of and claims
`
`priority to U.S. Pat. App. No. 13/550,182 (U.S. Pat. No.
`
`8,833,943), which is a continuation of and claims priority to
`
`U.S. Pat. App. No. 13/047,763 (U.S. Pat. No. 8,220,934).
`
`• U.S. Pat. App. No. 13/047,763 (U.S. Pat. No. 8,220,934) claims
`
`priority
`
`to U.S. Prov. Pat. App. Nos. 60/950,652,
`
`60/911,043, and
`
`60/827,657.
`
` PCT/US07/79958
`
`(WO
`
`2008/042798) also claims priority to these provisional patent
`
`applications and is nationalized in Europe (2067066), Korea
`
`(10-2009-0094224), and Japan (2010-506199).
`
`(e) Other USPTO proceeding involving patents relating to U.S. Patent
`
`No. 8,220,934
`
`• MasterImage 3D, Inc. et al v. RealD Inc., IPR No. IPR2015-
`
`00038, Petition filed with the United States Patent Trial and
`
`Patent Owner Mandatory Notices for IPR2015-00040
`
`

`

`
`
`Appeal Board on October 7, 2014. U.S. Patent No. 8,220,934
`
`is a continuation of U.S. Patent No. 7,905,602, the patent-at-
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`issue in IPR2015-00038.
`
`(3) Lead and back-up counsel.
`
`The patent owner identifies the following lead and back-up counsel:
`
`Lead counsel
`Brian C. McCormack, Reg. No. 36,601
`Baker & McKenzie LLP
`2001 Ross Avenue
`Suite 2300
`Dallas, TX 75201
`Tel. No. 214-978-3007
`Fax No. 214-978-3099
`E-mail:
`Brian.McCormack@bakermckenzie.com
`
`
`(4) Service information.
`
`Back-up counsel
`John G. Flaim, Reg. No. 37,323
`Baker & McKenzie LLP
`2001 Ross Avenue
`Suite 2300
`Dallas, TX 75201
`Tel. No. 214-978-3097
`Fax No. 214-978-3099
`E-mail:
`John.Flaim@bakermckenzie.com
`
`The patent owner can be served via lead and back-up counsel at the
`
`following address, e-mail addresses, and phone numbers:
`
`Lead counsel
`Brian C. McCormack
`Baker & McKenzie LLP
`2001 Ross Avenue
`Suite 2300
`Dallas, TX 75201
`Tel. No. 214-978-3007
`Fax No. 214-978-3099
`E-mail:
`Brian.McCormack@bakermckenzie.com
`
`
`Back-up counsel
`John G. Flaim
`Baker & McKenzie LLP
`2001 Ross Avenue
`Suite 2300
`Dallas, TX 75201
`Tel. No. 214-978-3097
`Fax No. 214-978-3099
`E-mail:
`John.Flaim@bakermckenzie.com
`
`Patent Owner Mandatory Notices for IPR2015-00040
`
`

`

`
`
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`
`
`Date: October 28, 2014
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`Respectfully submitted,
`
`/Brian C. McCormack, 36,601/
`Brian C. McCormack, Reg. No. 36,601
`Baker & McKenzie LLP
`2001 Ross Avenue, Suite 2300
`Dallas, TX 75201
`Telephone: (214) 978-3007
`Facsimile: (214) 978-3099
`
`Counsel for RealD Inc.
`
`
`
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`
`
`
`Patent Owner Mandatory Notices for IPR2015-00040
`
`

`

`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 28, 2014, I caused a true and correct copy of
`
`the Patent Owner Mandatory Notices to be served via Federal Express on:
`
`James Glenn
`NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
`1000 Louisiana Street, Fifty-Third Floor
`Houston, TX 77002
`
`
`
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`Date: October 28, 2014
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`/Brian C. McCormack, 36,601/
`Brian C. McCormack, Reg. No. 36,601
`Baker & McKenzie LLP
`2001 Ross Avenue, Suite 2300
`Dallas, TX 75201
`Telephone: (214) 978-3007
`Facsimile: (214) 978-3099
`
`Patent Owner Mandatory Notices for IPR2015-00040
`
`

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