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Paper No. _____
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`NATIONAL OILWELL VARCO, L.P.,
`Petitioner
`
`v.
`
`PARALLEL SEPARATION INNOVATIONS LLC
`Patent Owner
`
`Case No. IPR 2015-01138
`Patent No. 5,593,582
`
`
`
`
`
`MANDATORY NOTICE PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
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`
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`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, Parallel Separation
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`Innovations LLC, hereby files its Mandatory Notices in Response to the Petition for
`
`Inter Partes Review on U.S. Patent No. 5,593,582.
`
`I.
`
`37 C.F.R. § 42.8(b)(1) – Real Party in Interest
`
`The real party in interest is Parallel Separation Innovations LLC, the owner
`
`by assignment of the subject U.S. Patent No. 5,593,582 (“the ‘582 Patent”). Parallel
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`Separation Innovations LLC is wholly owned subsidiary of Acacia Research Group
`
`1
`
`

`
`Case IPR 2015-01138
`U.S. Patent No. 5,593,582
`
`LLC, which in turn is a subsidiary of Acacia Research Corp., a publicly traded
`
`company.
`
`II.
`
`37 C.F.R. § 42.8(b)(2) – Related Matters
`
`Parallel Separation Innovations LLC has asserted the ‘582 patent in the
`
`following district court litigations:
`
`• Parallel Separation Innovations LLC v. Schlumberger N.V. (Schlumberger
`Limited), et al., Case No. 2:14-cv-00549-JRG (E.D. Tex.) (settled by
`confidential agreement on March 13, 2015; case dismissed on
`March 31, 2015);
`
`• Parallel Separation Innovations LLC v. Axiom Process, LLC et al., Case No.
`5:14-cv-00552-JRG (E.D. Tex.) (settled by confidential agreement on
`November 20, 2014; case dismissed on December 3, 2014); and
`
`• Parallel Separations Innovations, Inc. v. National Oilwell Varco, L.P., et. al.
`Cause No. 2:14-cv-556 (E.D. Tex.) (transferred to S.D. Tex. on April 9, 2015),
`now Case No. 4:15-cv-920 (S.D. Tex.).
`
`2
`
`
`
`

`
`Case IPR 2015-01138
`U.S. Patent No. 5,593,582
`
`
`37 C.F.R. § 42.8(b)(3) – Lead and Back Up Counsel
`
`III.
`
`Lead Counsel:
`Henry Pogorzelski, Reg. No. 55543
`COLLINS, EDMONDS, POGORZELSKI, SCHLATHER & TOWER, PLLC
`1616 S. Voss Road, Suite 125
`Houston, TX 77057
`Tel: 281-501-3388
`Fax: 832-415-2535
`Email: hpogorzelski@cepiplaw.com
`
`
`Backup Counsel:
`Andrew Tower, Reg. No. 37742
`COLLINS, EDMONDS, POGORZELSKI, SCHLATHER & TOWER, PLLC
`1616 S. Voss Road, Suite 125
`Houston, TX 77057
`Tel: 832-623-6240
`Fax: 832-415-2535
`Email: atower@cepiplaw.com
`
`
`
`IV.
`
`
`37 C.F.R. § 42.8(b)(4) – Service Information
`Please address all correspondence to the lead and backup counsel as shown
`
`above. Patent Owner consents to electronic service by email at either of the email
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`addresses shown above.
`
`3
`
`

`
`Case IPR 2015-01138
`U.S. Patent No. 5,593,582
`
`
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`
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`Dated: May 26, 2015
`
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`Respectfully submitted,
`
`COLLINS, EDMONDS, POGORZELSKI,
`SCHLATHER & TOWER, PLLC
`
`
`/Henry Pogorzelski/
`Henry Pogorzelski, Reg. No. 55543
`
`1616 S. Voss Road, Suite 125
`Houston, TX 77057
`Tel: 281-501-3388
`Fax: 832-415-2535
`Email: hpogorzelski@cepiplaw.com
`
`Attorneys for Patent Owner
`Parallel Separation Innovations LLC
`
`4
`
`

`
`Case IPR 2015-01138
`U.S. Patent No. 5,593,582
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that the foregoing MANDATORY NOTICE
`
`PURUSANT TO 37 C.F.R. § 42.8(a)(2) were served electronically via e-mail on
`
`May 26, 2015, in its entirety on the following:
`
`
`
`
`
`Dated: May 26, 2015
`
`
`
`
`
`
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`
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`
`
`Robert M. Bowick, Jr. at:
`rbowick@raleybowick.com
`Bradford T. Laney at:
`blaney@raleybowick.com
`
`
`Respectfully submitted,
`
`COLLINS, EDMONDS, POGORZELSKI,
`SCHLATHER & TOWER, PLLC
`
`
`/s/ Henry Pogorzelski
`Henry Pogorzelski, Reg. No. 55543
`
`1616 S. Voss Road, Suite 125
`Houston, TX 77057
`Tel: 281-501-3388
`Fax: 832-415-2535
`Email: hpogorzelski@cepiplaw.com
`
`Attorneys for Patent Owner
`Parallel Separation Innovations LLC
`
`5

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