`
`16196.112.5
`
`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. IPR2015-01691
`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
`
`16196.112.5
`
`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-
`
`01690.
`
`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
`
`16196.112.5
`
`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
`
`16196.112.5
`
`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
`
`16196.112.5
`
`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
`
`16196.112.5
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
