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`IPR 2015-00820
`U.S. Patent No. 8,532,641
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`SAMSUNG ELECTRONICS CO., LTD, and SAMSUNG ELECTRONICS
`AMERICA, INC.,
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`PETITIONERS
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`V.
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`AFFINITY LABS OF TEXAS, LLC
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`PATENT OWNER
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`______________
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`CASE IPR2015-00820
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`PATENT 8,532,641
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`PATENT OWNER’S MANDATORY DISCLOSURES
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Real Party in Interest: Affinity Labs of Texas, LLC is the real party-in-interest
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`IPR 2015-00820
`U.S. Patent No. 8,532,641
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`as it is the owner of the ’641 Patent.
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`Related Matters: The Patent Owner identifies the following judicial and/or
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`administrative matters that may affect, or may be affected by, a decision in the Inter
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`Partes Review:
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`The ‘641 Patent and related U.S. Patent Nos. 8,554,191 and 8,588,680 were
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`asserted in:
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`Affinity Labs of Texas, LLC v. Blackberry Ltd. et al., Case No. 13-cv-0362 (W.D. Tex.);
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`Affinity Labs of Texas, LLC v. Ford Motor Company., Case No. 13-cv-0363 (W.D. Tex.);
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`Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd, et al., Case No. 13-cv-0364
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`(W.D. Tex.); Affinity Labs of Texas, LLC v. Toyota Motor North America, Inc. et al., Case
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`No. 13-cv-0365 (W.D. Tex.); Affinity Labs of Texas, LLC v. Volvo Cars of North America,
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`LLC et al., Case No. 13-cv- 0366 (W.D. Tex.); Affinity Labs of Texas, LLC v. Honda
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`North America, Inc. et al., Case No. 13-cv-0367 (W.D. Tex.); Affinity Labs of Texas, LLC
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`v. Jaguar Land Rover North America, LLC et al., Case No. 13-cv-0368 (W.D. Tex.);
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`Affinity Labs of Texas, LLC v. Nissan North America, Inc. et al., Case No. 13-cv-0369
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`(W.D. Tex.); and Affinity Labs of Texas, LLC v. General Motors LLC., Case No. 13-cv-
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`0370 (W.D. Tex.). These cases are pending.
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`U.S. Patent No. 8,359,007 (the ‘007 Patent) is being asserted in Affinity Labs of
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`Texas, LLC v. Samsung Electronics Co., Ltd., et al., 1:12-cv-557 (E.D. Tex., filed Nov. 20,
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`2012), along with related U.S. Patent Nos. 7,187,947 (the “947 Patent); 7,324,833 (the
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`IPR 2015-00820
`U.S. Patent No. 8,532,641
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`‘833 Patent); 7,634,228 (the ‘228 Patent); and 7,953,390 (the ‘390 Patent).
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`The ‘390 Patent is also at issue in Inter Partes Review IPR2014-00209 and
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`IPR2012-00212.
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`The ’007 Patent is also at issue in Inter Partes Review IPR2014-00407 and
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`IPR2014-00408.
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`The ’641 Patent is also at issue in Inter Partes Review IPR2014-01181,
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`IPR2014-01182, IPR2014-01184 and IPR2015-00821.
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`Related U.S. Patent No. 7,778,595 (the ‘595 Patent) was asserted in Affinity Labs
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`of Texas, LLC v. Volkswagen Group of America Inc., et al., Case No. 1:11-cv-00036-RC
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`(E.D. Tex.), which has now settled.
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`Related U.S. Patent No. 7,324,833 (the ‘833 Patent) is the subject of
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`Reexamination Control Nos. 90/010,333, 95/001,223, and 95/001,264, all of which
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`are currently on appeal. The ‘833 Patent was asserted in Affinity Labs of Texas, LLC v.
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`BMW North America, LLC, et al., Case No. 08-cv-00164-RC (BMW case); Affinity Labs
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`of Texas, LLC v. Alpine Electronics of America, Inc. et al., Case No. 08-cv-00171-RC
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`(Alpine case); and Affinity Labs of Texas, LLC v. DICE Electronics, LLC, et al., Case No.
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`08-cv-00163-RC (DICE case). Settlements were reached in all cases.
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`The ‘833 Patent was also asserted in Affinity Labs of Texas, LLC v. General Motors
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`
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`Company et al., Case No. 12-cv-00582 (E.D. Tex.) and Affinity Labs of Texas, LLC v.
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`IPR 2015-00820
`U.S. Patent No. 8,532,641
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`Ford Motor Company, Case No. 12-cv-00580 (E.D. Tex.). These cases are pending.
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`U.S. Patent No. 7,953,390
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`U.S. Patent No. 7,324,833
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`U.S. Patent No. 7,187,947
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`U.S. Patent No. 7,440,772
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`U.S. Patent No. 7,486,926
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`U.S. Patent No. 7,634,228
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`U.S. Patent No. 7,778,595
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`U.S. Patent No. 7,970,379
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`U.S. Patent No. 8,521,140
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`U.S. Patent No. 8,554,191
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`U.S. Patent No. 8,532,641
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`U.S. Patent No. 8,588,680
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`U.S. Patent Application No. 14/096,339
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`U.S. Patent Application No. 14/259,446
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`U.S. Patent Application No. 14/259,437
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`IPR 2015-00820
`U.S. Patent No. 8,532,641
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`U.S. Patent Application No. 14/168,201
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`U.S. Patent Application No. 14/261,958
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`Lead and Backup Counsel: Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.01(a),
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`Affinity Labs of Texas, LLC designates the following: Lead Counsel is Ryan M.
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`Schultz (Reg. No. 65,134); Backup Counsel is Thomas R. DeSimone (Reg. No.
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`60,755) and Emily Niles (Reg. No. 73,421).
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`Service Information: Service information is as follows: Robins Kaplan, LLP,
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`2800 LaSalle Plaza, 800 LaSalle Ave, Minneapolis, MN 55402; Tel. (612) 349-8500;
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`Fax (612) 339-4181. Affinity Labs of Texas, LLC consents to service by electronic
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`mail at RSchultz@robinskaplan.com, TDesimone@robinskaplan.com, and
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`ENiles@robinskaplan.com.
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`Affinity Labs of Texas, LLC believes this submission fulfills the requirements
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`of 37 C.F.R. § 42.8. If additional information is required, please contact the
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`undersigned counsel at the address shown below.
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`The Commissioner is hereby authorized to charge any fees or costs associated
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`with this submission and to credit any excess payments to Deposit Account No.
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`506095.
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`Dated: March 20, 2015.
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`IPR 2015-00820
`U.S. Patent No. 8,532,641
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`Respectfully Submitted,
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`/Ryan M. Schultz/
`Registration No. 65,134
`Robins, Kaplan, Miller & Ciresi L.L.P.
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
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`
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`IPR 2015-00820
`U.S. Patent No. 8,532,641
`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on this 20th day of March, 2015, a copy of this PATENT
`OWNER’S MANDATORY DISCLOSURES has been served in its entirety by
`Federal Express on the Petitioners:
`
`
`J. Steven Baughman
`Ropes & Gray LLP
`One Metro Center
`700 12th St., Suite 900
`Washington, D.C. 20005
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`Gabrielle Higgins
`Ropes & Gray LLP
`1900 University Avenue
`6th Floor
`East Palo Alto, CA 94303
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`Dated: March 20, 2015
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`Respectfully submitted,
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`/Thomas R. DeSimone/
`Registration No. 60,755
`Robins Kaplan LLP
`One Atlantic Center
`1201 West Peachtree Street
`Suite 2200
`Atlanta, GA 30309
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