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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`APPLE INC.
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS INC.
`Patent Owner.
`____________________
`
`Case: IPR2015-00353
`Patent 7,774,280
`
`
`
`
`
`____________________
`
`CONTENTGUARD HOLDINGS INC.’S AMENDED
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`

`

`Case IPR2015-00353 for
`U.S. Patent No. 7,774,280
`
`Patent Owner, ContentGuard Holdings Inc., hereby files its Amended
`
` 
`
`
`
`Mandatory Notices for the above-captioned proceeding.
`
`I.
`
`Real Parties-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real parties-in-interest are ContentGuard Holdings Inc. and Pendrell
`
`Corporation.
`
`II. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Patent Owner notes the following matters that may affect or be affected by a
`
`decision in this proceeding:
`
`A.
`
`Proceedings Before the USPTO Involving Related Patents
`
`Patent No.
`7,774,280
`7,774,280
`7,774,280
`7,774,280
`8,001,053
`8,001,053
`8,001,053
`8,001,053
`8,001,053
`
`Case No.
`CBM2015-00040
`IPR2015-00351
`IPR2015-00352
`IPR2015-00354
`CBM2015-00043
`IPR2015-00355
`IPR2015-00356
`IPR2015-00357
`IPR2015-00358
`
`Petitioner
`Google Inc.
`Apple Inc.
`Apple Inc.
`Apple Inc.
`Google Inc.
`Apple Inc.
`Apple Inc.
`Apple Inc.
`Apple Inc.
`
`
`
`1
`
`

`

`Case IPR2015-00353 for
`U.S. Patent No. 7,774,280
`
`
`B.
`
`Litigations Involving the Involved Patent
`
`The ‘280 patent is at issue in:
`
` ContentGuard Holdings Inc. v. Amazon.com, Inc., et al., No. 13-cv-01112
`(Dec. 18, 2013 E.D. Tex.);
` Google Inc. v. Content Guard Holdings, Inc., No. 14-cv-0498 (Jan. 31, 2014
`N.D. Cal.); and
` ContentGuard Holdings Inc. v. Google Inc., et al., No. 14-cv-0061 (Feb. 5,
`2014 E.D. Tex.).
`
`C. Related Administrative Matters
`
`Pending U.S. patent application 13/296,599 is a continuation of U.S. Patent
`
`
`
`
`
`
`
`
`No. 8,078,542, which is a continuation of the involved patent.
`
`III. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Patent Owner identifies lead and back-up counsel as follows:
`
`A.
`
`Lead Counsel
`
`Timothy P. Maloney
`PTO Registration No. 38,233
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Phone: 312.577.7000
`Facsimile: 312.577.7007
`Email: tpmalo@fitcheven.com
`
`2
`
`

`

`
`
`B.
`
`Back-Up Counsel
`
`Case IPR2015-00353 for
`U.S. Patent No. 7,774,280
`
`
`Nicholas T. Peters
`PTO Registration No. 53,456
`FITCH EVEN TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`Phone: 312.577.7000
`Facsimile: 312.577.7007
`Email: ntpete@fitcheven.com
`
`Robert A. Cote
`PTO Registration No. 34,570
`McKOOL SMITH, P.C.
`One Bryant Park, 47th Floor
`New York, New York 10036
`Phone: 212-402-9400
`Facsimile: 212-402-9444
`Email rcote@mckoolsmith.com
`
`3
`
`

`

`
`IV. Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Case IPR2015-00353 for
`U.S. Patent No. 7,774,280
`
`
`Please address all correspondence to the lead and back-up counsel as shown
`
`above. Patent Owner consents to electronic service by e-mail at the email
`
`Respectfully submitted,
`
`FITCH EVEN TABIN & FLANNERY LLP
`
`
`
`By: /Timothy P. Maloney/
`Timothy P. Maloney
`Registration No. 38,233
`tpmalo@fitcheven.com
`
`
`
`
`
`addresses provided above.
`
`
`
`Dated: February 16, 2015
`
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`4
`
`

`

` 
`
`Case IPR2015-00353 for
`U.S. Patent No. 7,774,280
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing “ContentGuard Holdings
`
`Inc.’s Amended Mandatory Notices Pursuant to C.F.R. § 42.8(a)(2)” and
`
`accompanying Power of Attorney were served electronically via e-mail on
`
`February 16, 2015, in their entireties on the following counsel of record for
`
`Jeffrey P. Kushan
`jkushan@sidley.com
`Michael Franzinger
`mfranzinger@sidley.com
`iprnotices@sidley.com
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, DC 20005
`
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY LLP
`
`
`
`
`
`By: /Timothy P. Maloney/
`Timothy P. Maloney
`Registration No. 38,233
`tpmalo@fitcheven.com
`
` Lead Counsel for Patent Owner
`
`
`
`Petitioners:
`
`
`
`Dated: February 16, 2015
`
`
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`

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