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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HARMONIX MUSIC SYSTEMS, INC. and KONAMI
`
`DIGITAL ENTERTAINMENT INC.,
`Petitioners
`v.
`
`PRINCETON DIGITAL IMAGE
`CORPORATION
` Patent Owner
`
`Case IPR2015-00271
`U.S. Patent 5,513,129
`
`MANDATORY NOTICE BY PATENT OWNER UNDER 37 CFR § 42.8
`
`Pursuant to 37 CFR § 42.8(a)(2), Patent Owner Princeton Digital Image
`
`Corporation, hereby submits the following:
`
`(1) Real Party-in-Interest
`
`The real party-in-interest for the Patent Owner is Princeton Digital Image
`
`Corporation.
`
`
`
`(2) Related Matters
`
`United States Patent 5,513,129 (“the ‘129 patent”) is or was involved in the
`
`following three matters:
`
`Princeton Digital Image Corporation v. Harmonix Music Systems, Inc. et al.,
`
`
`
`Case No. 1:12-cv-01461 (D. Del.), filed on November 13, 2012;
`
`Princeton Digital Image Corporation v. Ubisoft Entertainment SA, Case No.
`
`1:13-00335 (D. Del.), filed on February 27, 2013; and
`
`Princeton Digital Image Corporation v. Activision Publishing Inc., Case No.
`
`2:12-cv-01134 (C.D. Cal.) (dismissed).
`
`On November 16, 2012, Harmonix and Electronic Arts Inc. were each served
`
`with a complaint for infringement of the ’129 Patent captioned Princeton Digital
`
`Image Corporation v. Harmonix et al., Case No. 1:12-cv-01461 (D. Del.).
`
`On December 10, 2012, Konami was added as a party to Princeton Digital
`
`Image Corporation v. Harmonix et al., Case No. 1:12-cv-01461 (D. Del.).
`
`On April 16, 2013, Ubisoft was served with a complaint for infringement of the
`
`’129 Patent captioned Princeton Digital Image Corporation v. Ubisoft Entertainment
`
`SA, Case No. 1:13-cv-00335 (D. Del.).
`
`In addition, Harmonix filed an IPR petition against Princeton Digital Image
`
`Corporation (i.e., IPR2014-00155).
`
` Defendant Ubisoft filed a second IPR on April 14, 2013 against Princeton
`
`Digital’s ‘129 patent (i.e., IPR2014-00635).
`
`Defendants Harmonix and Konami filed a third IPR along with a motion for
`
`joinder to the second IPR on November 17, 2014 against Princeton Digital’s ‘129
`
`patent.
`
`
`
`
`
`
`
`
`
`(3) Lead and Back-up Counsel
`
`Lead Counsel
`
`Back-up Counsel
`
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com;
`
`Robert R. Axenfeld
`Registration No. 37,276
`O'Kelly Ernst & Bielli, LLC
`901 N. Market Street
`Suite 1000
`Wilmington, DE 19801
`Tel: (215) 600-1347
`Email: raxenfeld@oeblegal.com
`
`
`
`(4)
`
`
`
`
`
`
`
`
`Service
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), Patent Owner hereby states
`
`that the service information is that identified above for Patent Owner’s lead
`
`and back-up counsel. Patent Owner hereby consents to electronic service.
`
`Please direct all correspondence to gonsalves@gonsalveslawfirm.com, and
`
`raxenfeld@oeblegal.com.
`
`
`
`Respectfully submitted,
`
`/s/ Dr. Gregory J. Gonsalves
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`
`
`
`
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`
`
`
`CERTIFICATE OF SERVICE
`I certify that the foregoing MANDATORY NOTICE OF PATENT
`
`OWNER UNDER 37 CFR § 42.8 and the POWER OF ATTORNEY were
`
`served on the Petitioner by email to the following email addresses on December 3,
`
`2014.
`
`
`
`
`
`
`
`
`Linda J. Thayer, Reg. No. 45,681
`Rachel Emsley, Reg. No. 63,558
`Two Seaport Blvd., 6th Floor
`Boston, MA 02210-2001
`Telephone: 617.646.1600
`Facsimile: 202.408.4400
`linda.thayer@finnegan.com
`rachel.emsley@finnegan.com
`Attorneys for Petitioners
`
`
`
`
`/s/ Dr. Gregory J. Gonsalves
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`
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