`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`HYDRITE CHEMICAL CO.
`Petitioner,
`
`v.
`
`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner
`______________
`
`IPR2015-01592
`Patent 8,962,059
`______________
`
`
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`IPR2015-01592
`
`Mandatory notices pursuant to 37 C.F.R. § 42.8
`
`Pursuant to 37 C.F.R. § 42.8, the Patent Owner, Solenis Technologies, L.P.,
`
`hereby provides the following notice:
`
`A. Real Party In Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest is Solenis Technologies, L.P., the owner of U.S.
`
`Patent No. 8,962,059 (“the 059 patent”).
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following district court litigation involving the 059 patent is pending:
`
`Hydrite Chemical Co. v. Solenis Technologies, L.P. et al., 2-15-cv-00856, filed
`
`July 14, 2015, in the Eastern District of Wisconsin.
`
`Application No. 14/627,618, filed February 20, 2015, and Application No.
`
`14/628,662, filed February 23, 2015, claim the benefit of Application No.
`
`13/117,301 (now the 059 patent).
`
`The 059 patent was the subject of an interfering patents action filed by
`
`Superior Oil Company, Inc. against Solenis Technologies L.P. (Case No. 1:15-cv-
`
`00183-GMS, District of Delaware), involving the 059 patent and U.S. Patent No.
`
`8,841,469 (“the 469 patent”). That action was dismissed with prejudice on June
`
`11, 2015. The 059 patent and the 469 patent are now commonly owned by Solenis
`
`Technologies, L.P.
`
`
`
`- 2 -
`
`
`
`IPR2015-01592
`
`
`Hydrite Chemical Company filed a petition for inter partes review against
`
`the 469 patent (Case IPR2015-01586) as well as a concurrent declaratory judgment
`
`action in the Eastern District of Wisconsin, 2-15-cv-00856, on July 14, 2015.
`
`C. Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel
`Joseph Lucci
`(Reg. No. 33,307)
`Baker & Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`Phone: 215-568-3100
`Fax: 215-568-3439)
`Email: jlucci@bakerlaw.com
`
`
`Back-Up Counsel
`David N. Farsiou
`(Reg. No. 44,104)
`Baker & Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`Phone: 215-568-3100
`Fax: 215-568-3439
`Email: dfarsiou@bakerlaw.com
`
`
`
`D. Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service on Patent Owner may be made by mail (EXPRESS MAIL® or
`
`equivalent) pursuant to 37 C.F.R. §42.6 (e) to the respective addresses of lead and
`
`back-up counsel. Service via email to IPR2015-01592@bakerlaw.com is
`
`acceptable.
`
`
`
`
`
`
`
`- 3 -
`
`
`
`IPR2015-01592
`
`
`
`
`Dated: August 3, 2015
`
`Respectfully submitted,
`
`
`
`
`
`/Joseph Lucci/
`
`Joseph Lucci, Esquire
`Reg. No. 33,307
`Baker & Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`
`Attorney for Patent Owner
`
`
`
`- 4 -
`
`
`
`CERTIFICATE OF SERVICE
`I, David N. Farsiou, hereby certify that on this 3rd day of August, 2015, the
`foregoing MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 were
`served electronically via email on the following:
`
`Richard Roche (Reg. No. 38,599)
`Joel Austin (Reg. No. 59,712)
`Christopher Fahy
`QUARLES & BRADY LLP
`411 East Wisconsin Avenue
`Suite 2350
`Milwaukee, Wisconsin 53202
`richard.roche@quarles.com
`joel.austin@quarles.com
`christopher.fahy@quarles.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/David N. Farsiou/
`
`David N. Farsiou (Reg. No. 44,104)
`Baker & Hostetler LLP
`Cira Centre, 12th Floor
`2929 Arch Street
`Philadelphia, PA 19104
`
`Attorney for Patent Owner
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