`
`16196.112.4
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`HNI CORPORATION and ALLSTEEL INC.
`Petitioners,
`
`v.
`
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.
`Patent Owner.
`
`___________
`
`Case No. IPR2015-01690
`Patent No. 8,024,901
`Issue Date: September 27, 2011
`
`Title: INTEGRATED RECONFIGURABLE WALL SYSTEM
`
`PATENT OWNER’S MANDATORY NOTICE
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`Inter Partes Review of U.S. Patent No. 8,024,901
`
`16196.112.4
`
`PATENT OWNER’S MANDATORY NOTICE INFORMATION
`
`Patent Owner respectfully submits the following mandatory notice
`
`information under 37 C.F.R. § 42.8(a)(2) for Petition for Inter Partes Review of
`
`U.S. Patent No. 8,024,901 (the “’901 patent”).
`
`I.
`
`Real Party in Interest under 37 C.F.R. § 42.8(b)(1)
`
`Patent Owner DIRTT Environmental Solutions Ltd. (“DIRTT”) is the real
`
`party in interest in this Petition for Inter Partes Review. DIRTT owns all right,
`
`title and interest to the ’901 patent via assignment, recorded August 31, 2006, Reel
`
`018197, Frame 0667.
`
`II.
`
`Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`The following matters may affect or be affected by a decision in this
`
`proceeding:
`
`Concurrently with this Petition, Allsteel filed another petition for inter
`
`partes review of the ’901 patent, which has been assigned Case No. IPR2015-
`
`01691.
`
`DIRTT filed claims against Allsteel for infringement of the claims of the
`
`’901 patent in United States District Court for the District of Utah, Case No. 2:15-
`
`cv-00123-PMW. The parties subsequently agreed to dismiss the action in the
`
`District of Utah in favor of pursing the claims pertaining to the ’901 patent in a
`
`1
`
`
`
`Inter Partes Review of U.S. Patent No. 8,024,901
`
`16196.112.4
`
`related action currently pending in the Northern District of Illinois, Case No. 1:15-
`
`cv-4874.
`
`The ’901 patent is also currently the subject of three pending reissue
`
`applications: (1) 14/681,874 filed on September 20, 2013; (2) 14/305,819 filed on
`
`June 16, 2014; and (3) 14/681,874 filed on April 8, 2015. While none of the
`
`pending reissue applications has received a notice of allowance, the examiner in
`
`Reissue Application No. 14/681,874 has indicated that the application contains
`
`allowable subject matter in an Office Action mailed July 16, 2015. The art raised
`
`in this Petition has been identified in Information Disclosure Statements filed in
`
`each of pending reissue applications.
`
`III. Lead and Back-up Counsel and Service Information under 37 C.F.R.
`§ 42.8(b)(3)-(4)
`
`DIRTT designates the following counsel and consents to electronic service
`
`at the email addresses provided below.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Chad E. Nydegger (Reg. No. 61,020)
`(cnydegger@wnlaw.com)
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`T: 801-533-9800
`F: 801-328-1707
`
`Michael J. Frodsham (Reg. No. 48,699)
`(mfrodsham@wnlaw.com)
`David R. Todd (Reg. No. 41,348)
`(dtodd@wnlaw.com)
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`T: 801-533-9800
`
`2
`
`
`
`Inter Partes Review of U.S. Patent No. 8,024,901
`
`16196.112.4
`
`F: 801-328-1707
`
`Robert L. Florence (Reg. No. 54,933)
`(rflorence@wnlaw.com)
`WORKMAN NYDEGGER
`1075 Peachtree Street NE, Suite 3650
`Atlanta, GA 30309
`T: 801-533-9800
`F: 801-328-1707
`
`CONCLUSION
`
`DIRTT respectfully submits that the foregoing satisfies its requirements with
`
`respect to the Mandatory Notice of Information under 37 C.F.R. § 42.8(a)(2). If
`
`the Board requires additional information, DIRTT respectfully requests that the
`
`Board communicate directly with DIRTT’s lead or back-up counsel.
`
`Date: August 28, 2015
`
`Respectfully submitted.
`
`By
`
`/Chad E. Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
`Michael J. Frodsham, Reg. No. 48,699
`David R. Todd, Reg. No. 41,348
`WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`Telephone: 801-533-9800
`Facsimile: 801-328-1707
`
`3
`
`
`
`Inter Partes Review of U.S. Patent No. 8,024,901
`
`16196.112.4
`
`Robert L. Florence, Reg. No. 54,933
`WORKMAN NYDEGGER
`1075 Peachtree Street NE, Suite 3650
`Atlanta, GA 30309
`T: 801-533-9800
`F: 801-328-1707
`
`Attorneys for Patent Owner
`DIRTT Environmental Solutions Ltd.
`
`4
`
`
`
`Inter Partes Review of U.S. Patent No. 8,024,901
`
`16196.112.4
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 28th day of August
`
`2015,
`
`the foregoing Patent Owner’s Mandatory Notice Under 37 C.F.R.
`
`§ 42.8(a)(2), was served via email, on the following counsel of record for the
`
`patent owner:
`
`Victor P. Jonas
`Nicholas M. Anderson
`FAEGRE BAKER DANIELS
`2200 Wells Fargo Center
`90 S. Seventh St.
`Minneapolis, MN 55402
`victor.jonas@faegrebd.com
`nick.anderson@faegrebd.com
`
`Trevor Carter
`FAEGRE BAKER DANIELS
`300 N. Meridian Street, Suite 2700
`Indianapolis, IN 46204
`trevor.carter@faegrebd.com
`
`/Chad E. Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
`
`1
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