`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`US ENDODONTICS, LLC,
`Petitioner
`
`v.
`
`GOLD STANDARD INSTRUMENTS, LLC,
`Patent Owner
`____________________
`
`Case No. IPR2015-00632
`U.S. Patent No. 8,727,773 B2
`____________________
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`(37 C.F.R. § 42.8)
`
`
`
`
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`
`
`
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`
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`Pursuant to the Board’s order dated June 15, 2015 (Paper No. 26), Petitioner
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`US Endodontics, LLC (“Petitioner”) hereby submits these updated mandatory no-
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`tices relating to its Petition for Inter Partes Review pursuant to 37 C.F.R. § 42.8.
`
`Petitioner identifies Edge Endo, LLC and Guidance Endodontics, LLC, both
`
`owned by Charles Goodis, as additional real parties-in-interest. Petitioner also
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`identifies additional patent applications filed by the Patent Owner, of which Peti-
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`tioner has recently become aware, as related matters. The updated mandatory no-
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`tices are below.
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`A. Real Parties-in-Interest
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`Petitioner US Endodontics, LLC; Petitioner’s two owners, Charles Goodis
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`(“Dr. Goodis”) and Bobby Bennett; and Edge Endo, LLC and Guidance Endodon-
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`tics, LLC, both owned by Dr. Goodis, are the real parties-in-interest.
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`B. Related Matters
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`The ’773 patent is currently being asserted against Petitioner by licensee
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`Dentsply International, Inc. (“Dentsply”) and its wholly owned subsidiary Tulsa
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`Dental Products LLC (d/b/a Tulsa Dental Specialties) in pending litigation filed on
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`June 24, 2014 in the U.S. District Court for the Eastern District of Tennessee, No.
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`14-CIV-196 (JRG). Patent Owner has also filed four patent applications that claim
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`priority to U.S. Patent No. 8,727,773 and so may be affected by a decision in this
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`proceeding: 14/522,013 (filed October 23, 2014 and disclosed in Patent Owner’s
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`
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`- 1 -
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`mandatory notices); and 14/722,309, 14/722,390, and 14/722, 840 (all filed May
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`27, 2015). Petitioner is not aware of any other pending administrative matter that
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`would affect, or be affected by, a decision in this proceeding.
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`C. Counsel and Service Information
`
`Lead Counsel:
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`Jeffrey S. Ginsberg (Reg. No. 36,148)
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`Back-up Counsel: Matthew G. Berkowitz (Reg. No. 57,215)
`
`
`
`
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`
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`Eric T. Schreiber (Reg. No. 58,771)
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`Electronic Service: jginsberg@kenyon.com; mberkowitz@kenyon.com; and
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`eschreiber@kenyon.com
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`Post and Delivery: Kenyon & Kenyon LLP, One Broadway, New York, NY 10004
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`Telephone: 212-425-7200
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`Facsimile: 212-425-5288
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`
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`Dated: June 16, 2015
`
`
`
`/Jeffrey S. Ginsberg/
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Matthew G. Berkowitz (Reg. No. 57,215)
`Eric T. Schreiber (Reg. No. 58,771)
`Back-up counsel for Petitioner US Endodontics,
`LLC
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
`
`
`
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`- 2 -
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`
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 16, 2015,
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`the foregoing Petitioner’s Updated Mandatory Notices was served via electronic mail
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`upon the following counsel of record for the Patent Owner:
`
`Joseph A. Hynds
`R. Elizabeth Brenner-Leifer
`Steven Lieberman
`Jason M. Nolan
`Derek F. Dahlgren
`jhynds@rothwellfigg.com
`ebrenner@rothwellfigg.com
`slieberman@rothwellfigg.com
`jnolan@rothwellfigg.com
`ddahlgren@rothwellfigg.com
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`
`/Matthew G. Berkowitz/
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004-1007
`Tel.: (212) 425-7200
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