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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)
`
`
`8192789v.1
`
`- 1 -
`
`

`
`
`
`Petitioner US Endodontics, LLC ("Petitioner") hereby submits these updated
`
`mandatory notices relating to this Inter Partes Review, pursuant to 37 C.F.R. § 42.8, to reflect
`
`lead counsel Jeffrey S. Ginsberg’s change of address and affiliation and to remove Matthew G.
`
`Berkowitz and Eric T. Schreiber as back-up counsel. The updated mandatory notices are set
`
`forth below.
`
`A. Real Parties-in-Interest
`
`Petitioner US Endodontics, LLC; Petitioner's two owners, Charles Goodis ("Dr.
`
`Goodis") and Bobby Bennett; and Edge Endo, LLC and Guidance Endodontics, LLC, both
`
`owned by Dr. Goodis, are the real parties-in-interest.
`
`B. Related Matters
`
`U.S. Patent No. 8,727,773 ("the '773 patent") is currently being asserted against
`
`Petitioner by licensee Dentsply International, Inc. and its wholly owned subsidiary Tulsa Dental
`
`Products LLC (d/b/a Tulsa Dental Specialties) in pending litigation filed on June 24, 2014 in the
`
`U.S. District Court for the Eastern District of Tennessee, No. 14-CIV-196 (JRG). Patent Owner
`
`Gold Standard Instruments, LLC ("Patent Owner") has also filed four patent applications that
`
`claim priority to the '773 patent and so may be affected by a decision in this proceeding:
`
`14/522,013 (filed October 23, 2014); and 14/722,309, 14/722,390, and 14/722, 840 (all filed May
`
`27, 2015). The '773 patent is also the subject of another petition for inter partes review filed by
`
`Petitioner, IPR2015-01476, which challenges claims 1, 4, 5, 8-10, and 12. That petition is
`
`pending.
`
`
`8192789v.1
`
`- 1 -
`
`

`
`
`
`U.S. Patent No. 8,876,991, which claims priority to the '773 patent, is the subject
`
`of a petition for post-grant review filed by Petitioner, PGR2015-00019, which challenges claims
`
`12-16 of that patent. That petition is pending.
`
`Petitioner is not aware of any other pending administrative matter that would
`
`affect, or be affected by, a decision in this proceeding.
`
`C. Counsel and Service Information
`
`Lead Counsel:
`
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`
`Electronic Service:
`
`jginsberg@pbwt.com
`
`Post and Delivery:
`
`Jeffrey S. Ginsberg
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`
`Telephone: (212) 336-2630
`
`Dated: September 16, 2015
`
`
`
`
`
`
`
`
`
`
`
`Facsimile: (212) 336-1270
`
`
`
`
`
`
`
`/Jeffrey S. Ginsberg/
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Lead counsel for Petitioner US Endodontics, LLC
`
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Telephone: (212) 336-2630
`Facsimile: (212) 336-1270
`E-mail: jginsberg@pbwt.com
`
`
`8192789v.1
`
`- 2 -
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on September 16,
`
`2015, the foregoing Petitioner's Updated Mandatory Notices was served via electronic mail 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.corn
`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
`
`
`
`/Jeffrey S. Ginsberg/
`Jeffrey S. Ginsberg (Reg. No. 36,148)
`Patterson Belknap Webb & Tyler LLP
`1133 Avenue of the Americas
`New York, NY 10036-6710
`Tel.: (212) 336-2630
`Fax: (212) 336-1270
`E-mail: jginsberg@pbwt.com
`
`
`8192789v.1

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