`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`INTERNATIONAL BUSINESS MACHINES CORPORATION,
`Petitioner,
`
`v.
`
`PARALLEL NETWORKS LICENSING, LLC,
`Patent Owner
`
`___________________
`
`Case IPR2015-01729
`Patent 5,894,554
`___________________
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Parallel Networks Licensing, LLC
`
`(“Patent Owner”) provides the following disclosures as set forth in 37 C.F.R. §
`
`42.8(b)(1)-(4):
`
`I.
`
`
`
`37 C.F.R. § 42.8(b)(1) Disclosure
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Patent Owner identifies Parallel
`
`Networks Licensing, LLC as the real party-in-interest.
`
`II.
`
`
`
`37 C.F.R. § 42.8(b)(2) Disclosure
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the following
`
`related matters:
`
`• Patent Owner has asserted the ’554 Patent against International
`
`Business Machines Corporation in a lawsuit styled Parallel Networks
`
`Licensing, LLC v. International Business Machines Corp., Case No.
`
`13-2072-SLR-SRF, pending in the United States District Court for the
`
`District of Delaware.
`
`• Patent Owner has asserted the ’554 Patent against Petitioner in a
`
`lawsuit styled Parallel Networks Licensing, LLC v. Microsoft Corp.,
`
`Case No. 13-2073-SRF-SLR, pending in the United States District
`
`Court for the District of Delaware.
`
`• A Request for Inter Partes Review of the ’554 Patent was also filed on
`
`August 14, 2015 and is currently pending before the Board as
`1
`
`
`
`
`
`IPR2015-01731, International Business Machines Corporation v.
`
`Parallel Networks Licensing, LLC.
`
`• A Request for Inter Partes Review of the ’554 Patent was also filed
`
`on December 23, 2014 and is currently pending before the Board as
`
`IPR2015-00483, Microsoft Corporation v. Parallel Networks
`
`Licensing, LLC.
`
`III. 37 C.F.R. § 42.8(b)(3) Disclosure
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(3), Patent Owner identifies lead and back-up
`
`counsel as follows:
`
`
`
`Lead Counsel
`Christopher Bovenkamp
`Reg. No. 44,551
`cbovenkamp@mckoolsmith.com
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1500
`Dallas, Texas 75201
`Tel.: (214) 978-4940
`Fax: (214) 978-4044
`
`
`
`Back-up Counsel
`Pierre Hubert
`Reg. No. 45,826
`phubert@mckoolsmith.com
`McKOOL SMITH, P.C.
`300 W. 6th Street, Suite 1700
`Austin, TX 78701
`Tel.: 512-692-8700
`Fax: 512-692-8744
`
`
`2
`
`
`
`
`
`IV. 37 C.F.R. § 42.8(b)(4) Disclosure
`
`
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), Patent Owner requests that all non-
`
`electronic correspondence be directed to lead counsel and back-up counsel at the
`
`above addresses. Patent Owner consents to electronic service.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`Patent Owner
`
`
`
`
`
`By: /s/ Christopher Bovenkamp
`Christopher Bovenkamp
`Reg. No. 44,551
`cbovenkamp@mckoolsmith.com
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1500
`Dallas, Texas 75201
`Tel.: (214) 978-4940
`Fax: (214) 978-4044
`
`Pierre Hubert
`Reg. No. 45,826
`phubert@mckoolsmith.com
`McKOOL SMITH, P.C.
`300 W. 6th Street, Suite 1700
`Austin, TX 78701
`Tel.: 512-692-8700
`Fax: 512-692-8744
`
`
`
`3
`
`
`Dated: September 4, 2015
`
`
`
`
`
`
`
`
`
`Certification of Service Under 37 C.F.R. § 42.6(e)
`
`
`
`A copy of the forgoing PATENT OWNER’S MANDATORY NOTICES
`
`UNDER 37 C.F.R. § 42.8(a)(2) has been served on Petitioner via Electronic Mail
`
`at the following correspondence address:
`
`Andrew G. Heinz
`aheinz@desmaraisllp.com
`Kevin K. McNish
`kmcnish@desmaraisllp.com
`Desmarais LLP
`230 Park Avenue
`New York, New York, 10169
`
`
`By: /s/ Christopher Bovenkamp
`Christopher Bovenkamp
`Reg. No. 44,551
`cbovenkamp@mckoolsmith.com
`MCKOOL SMITH, P.C.
`300 Crescent Court, Suite 1500
`Dallas, Texas 75201
`Tel.: (214) 978-4940
`Fax: (214) 978-4044
`
`
`
`Dated: September 4, 2015
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