`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`KAPSCH TRAFFICCOM IVHS INC.,
`KAPSCH TRAFFICCOM IVHS HOLDING CORP.,
`KAPSCH TRAFFICCOM IVHS TECHNOLOGIES HOLDING CORP.,
`KAPSCH TRAFFICCOM U.S. CORP., AND
`KAPSCH TRAFFICCOM HOLDING CORP.
`
`Petitioners
`v.
`NEOLOGY, INC.
`Patent Owner
`____________________
`U.S. Patent No. 8,587,436
`IPR Case No.: IPR2015-00815
`_____________________
`
`MANDATORY NOTICE BY
`PATENT OWNER UNDER 37 C.F.R. § 42.8
`
`
`DOCS 116546-000018/2173867.1
`
`
`
`Neology, Inc’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 8,587,436
`
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`Pursuant to 37 C.F.R. § 42.8, the patent owner, Neology, Inc. (“Neology”),
`hereby submits the following Mandatory Notices in response to the Petition for
`Inter Partes Review of U.S. Patent No. 8,587,436 (“the ‘436 patent”).
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`The real parties-in-interest are Neology, Inc. and SMARTRAC N.V.
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`Neology is aware of the following related matters:
` Neology, Inc. v. Kapsch TrafficCom IVHS Inc., et al., D. Del. Case No.
`1:13-cv-02052-LPS, in which Neology has asserted the ‘436 patent, as
`well as U.S. Patent No. 8,237,568 and U.S. Patent No. 8,325,044, both of
`which issued from the parent application of the ‘436 patent.
` U.S. Application No. 10/615,026, filed July 9, 2003 (issued as U.S.
`Patent No. 7,081,819);
` U.S. Application No. 11/279,912, filed April 17, 2006 (issued as U.S.
`Patent No. 7,671,746);
` U.S. Application No. 12/688,666, filed January 15, 2010 (issued as U.S.
`Patent No. 8,004,410);
` U.S. Application No. 13/175,768, filed July 1, 2011 (issued as U.S.
`Patent No. 8,237,568 (the “’568 patent”)); and
` U.S. Application No. 13/464,894, filed May 4, 2012 (issued as U.S.
`Patent No. 8,325,044 (the “’044 patent”)).
`In addition, the petitioners with respect to the present request for inter partes
`review of the ‘436 patent filed petitions for inter partes review regarding the ‘568
`
`DOCS 116546-000018/2173867.1
`
`
`
`Neology, Inc’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 8,587,436
`
`
`patent (IPR2015-00818) and the ‘044 patent (IPR2015-00819) at the same time
`they filed the petition for this proceeding.
`Neology does not concede that any of these patents, or inter partes review
`proceedings would affect, or be affected by, a decision in the present inter partes
`review of the ‘436 patent.
`C. Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`The Patent Owner designates the following lead and back-up counsel:
`
`
`Lead Counsel
`Noel C. Gillespie, Reg. No. 47,596
`noel.gillespie@procopio.com
`Procopio, Cory, Hargreaves
` & Savitch LLP
`525 B Street, Suite 2200
`San Diego, CA 92101-4469
`Telephone: (619) 238-1900
`Facsimile: (619) 235-0398
`
`
`
`Back-up Counsel
`Victor M. Felix, Reg. No. 53,906
`victor.felix@procopio.com
`Procopio, Cory, Hargreaves
` & Savitch LLP
`525 B Street, Suite 2200
`San Diego, CA 92101-4469
`Telephone: (619) 238-1900
`Facsimile: (619) 235-0398
`
`Robert H. Sloss, (will seek admission
`pro hac vice)
`robert.sloss@procopio.com
`Procopio, Cory, Hargreaves
` & Savitch LLP
`1020 Marsh Road
`Menlo Park, CA 94025
`Telephone: (650) 645-9000
`Facsimile: (650) 687-8324
`
`An appropriate Power of Attorney is filed concurrently herewith.
`D.
`Service Information - 37 C.F.R. § 42.8(b)(4)
`Please direct all correspondence regarding this proceeding to the
`
`DOCS 116546-000018/2173867.1
`
`
`
`
`lead counsel at the address listed above. Patent Owner also consents to electronic
`service by email to IPR.neology@procopio.com.
`
`Date: March 23, 2015
`
`
`
`Neology, Inc’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 8,587,436
`
`Respectfully submitted,
`
`
` /Noel C. Gillespie/
`Noel C. Gillespie, Reg. No.
`Victor M. Felix, Reg. No. 53,906
`
`
`
`
`
`
`Procopio, Cory, Hargreaves
` & Savitch LLP
`525 B Street, Suite 2200
`San Diego, CA 92101-4469
`Telephone: (619) 238-1900
`Facsimile: (619) 235-0398
`
`Attorneys for Patent Owner
`Neology, Inc.
`
`
`
`
`DOCS 116546-000018/2173867.1
`
`
`
`
`
`Neology, Inc’s Mandatory Notices
`Inter Partes Review of U.S. Patent No. 8,587,436
`
`CERTIFICATE OF SERVICE
`(37 C.F.R. §§ 42.6(e) and 42.105(a))
`
`The undersigned hereby certifies that the above-captioned
`
`MANDATORY NOTICE BY PATENT OWNER UNDER 37 C.F.R. § 42.8
`
`was served in its entirety on March 23, 2015, by filing this document through the
`
`Patent Review Processing System as well as delivering a copy via electronic mail
`
`upon the following at Kapsch_IPR_Service@kirkland.com:
`
`Gregg F. LoCascio
`Nathan S. Mammen
`KIRKLAND & ELLIS LLP
`655 Fifteenth St., N.W.
`Washington, DC 20005
`
`Respectfully submitted,
`
`
`
` /Noel C. Gillespie/
`Noel C. Gillespie, Reg. No. 47,596
`Victor M. Felix, Reg. No. 53,906
`
`
`
`
`Date: March 23, 2015
`
`
`Procopio, Cory, Hargreaves
` & Savitch LLP
`525 B Street, Suite 2200
`San Diego, CA 92101-4469
`Telephone: (619) 238-1900
`Facsimile: (619) 235-0398
`
`
`DOCS 116546-000018/2173867.1
`
`
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