`Case IPR2015-00398
`U.S. Patent No. 6,066,584
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`CERAMTEC GMBH
`Petitioner
`
`
`
`v.
`
`
`
`CERAMEDIC LLC
`Patent Owner
`
`__________________
`
`
`
`Case IPR2015-00398
`
`U.S. Patent No. 6,066,584
`TITLE: SINTERED AL2O3 MATERIAL, PROCESS FOR ITS PRODUCTION
`AND USE OF THE MATERIAL
`Issue Date: May 23, 2000
`
`__________________
`
`
`
`MANDATORY NOTICES FOR PATENT OWNER CERAMEDIC LLC
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Mandatory Notices For Patent Owner CeraMedic LLC
`Case IPR2015-00398
`U.S. Patent No. 6,066,584
`MANDATORY NOTICES FOR PATENT OWNER CERAMEDIC LLC
`
`Patent Owner CeraMedic LLC hereby files its mandatory notices pursuant to
`
`
`
`37 C.F.R. § 42.8. These notices are being timely filed within 21 days of service of
`
`the Petition, which service occurred on December 12, 2014.
`
`I.
`
`
`
`REAL PARTY-IN-INTEREST (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest for the Patent Owner is CeraMedic LLC.
`
`II. RELATED MATTERS (37 C.F.R. § 42.8(b)(2))
`
`
`
`The following district court litigations may affect, or be affected by, a
`
`decision in this proceeding: CeraMedic LLC v. Biomet, Inc., Civil Action No.
`
`3:14-cv-01689 (N.D. Ind.); CeraMedic LLC v. Zimmer Holdings, Inc., Civil Action
`
`No. 3:14-cv-01688 (N.D. Ind.); CeraMedic LLC v. Smith & Nephew, Inc., Civil
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`Action No. 2:14-cv-02564 (W.D. Tenn.); CeraMedic LLC v. DePuy Orthopaedics,
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`Inc., Civil Action No. 3:14-cv-01771 (N.D. Ind.); and CeraMedic LLC v.
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`CeramTec GmbH, Civil Action No. 3:14-cv-01969 (N.D. Ind.).
`
`
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`The following inter partes review may affect, or be affected by, a decision in
`
`this proceeding: CeramTec GmbH v. CeraMedic, LLC, Case IPR2015-00424.
`
`III. DESIGNATION OF LEAD AND BACK-UP COUNSEL (37 C.F.R.
`§ 42.8(b)(3))
`
`
`
`Patent Owner hereby designates the following lead counsel and back-up
`
`counsel:
`
`
`
`1
`
`
`
`Mandatory Notices For Patent Owner CeraMedic LLC
`Case IPR2015-00398
`U.S. Patent No. 6,066,584
`1. Kevin K. McNish – Reg. No. 65,047 (Lead Counsel)
`Direct Dial: 212-808-2954
`
`2. John M. Desmarais – Reg. No. 39,655 (Back-up Counsel)
`
`3. Andrew G. Heinz – Reg. No. 59,996 (Back-up Counsel)
`
`Address: DESMARAIS LLP
`
`
`230 Park Avenue
`
`
`New York, NY 10169
`
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`212-351-3400 (telephone)
`
`
`212-351-3401 (facsimile)
`
`
`kmcnish@desmaraisllp.com
`
`
`jdesmarais@desmaraisllp.com
`
`
`aheinz@desmaraisllp.com
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`Patent Owner also intends to move for the pro hac vice admission of Laurie
`
`
`
`
`
`
`
`
`
`
`
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`Stempler (lstempler@desmaraisllp.com), trial counsel for Patent Owner in the
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`related district court litigations, as back-up counsel under 37 C.F.R. § 42.10(c).
`
`Patent Owner will follow the procedure for moving for pro hac vice admission set
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`forth in Motorola Mobility LLC v. Arnouse, Case IPR2013-00010, Paper No. 6.
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`IV. SERVICE INFORMATION (37 C.F.R. § 42.8(b)(3))
`
`
`
`Please direct all correspondence regarding this proceeding to Lead Counsel
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`at the address listed above. Patent Owner also consents to electronic service by
`
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`to
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`kmcnish@desmaraisllp.com,
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`jdesmarais@desmaraisllp.com,
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`aheinz@desmaraisllp.com, and lstempler@desmaraisllp.com.
`
`2
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`
`
`Mandatory Notices For Patent Owner CeraMedic LLC
`Case IPR2015-00398
`U.S. Patent No. 6,066,584
`V.
`PATENT OWNER PRELIMINARY RESPONSE
`
`
`
`Patent Owner reserves the right to file a preliminary response at a later date
`
`pursuant to 37 C.F.R. § 42.107.
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`
`
`Dated: January 2, 2015
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`
`
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`
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`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`3
`
`
`
`Mandatory Notices For Patent Owner CeraMedic LLC
`Case IPR2015-00398
`U.S. Patent No. 6,066,584
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on January 2,
`
`2015, a complete copy of the foregoing was served on counsel of record for the
`
`Petitioner by filing this document through the Patent Review Processing System
`
`and by sending this document via electronic mail to the following addresses:
`
`Gina N. Shishima – gina.shishima@nortonrosefulbright.com
`Thomas Owens – tom.owens@nortonrosefulbright.com
`Mark T. Garrett – mark.garrett@nortonrosefulbright.com
`
`FULBRIGHT & JAWORSKI L.L.P.
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78791
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`
`
`
`
`
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`
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`Dated: January 2, 2015
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`4
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