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`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
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`MCAFEE, INC.
`
`Petitioner
`
`v.
`
`CAP CO., LTD.,
`
`Patent Owner
`
`__________
`
`
`
`Case IPR2015-01876
`
`Patent 8,544,078
`
`__________
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8, the Patent Owner submits the following
`
`Mandatory Notices in response to the Petition for Inter Partes Review filed
`
`September 4, 2015.
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`
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`
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`1.
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`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
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`CAP Co., Ltd. is the sole owner of U.S. Patent No. 8,544,078 (the ʼ078
`
`Patent) and the only real party-in-interest.
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`
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`2.
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`Related Matters (37 C.F.R. § 42.8(b)(2))
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`The following judicial and administrative matters, in which the ’078 Patent
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`is or may be at issue, may affect or be affected by a decision in this proceeding:
`
`(a) CAP Co., Ltd. v. McAfee, Inc., No. 3:14-cv-05068-JD (N.D. Cal. filed
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`Nov. 17, 2014) is a case in which the Patent Owner has accused the Petition of
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`infringing the ʼ078 Patent.
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`(b) CAP Co., Ltd. v. Symantec Corp., No. 3:14-cv-05071-JD (N.D. Cal. filed
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`Nov. 17, 2014) is a case in which the Patent Owner has asserted the ʼ078 Patent.
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`(c) CAP Co., Ltd. v. Microsoft Corp., No. 2:14-cv-01899 (W.D. Wash. filed
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`July 3, 2014) is a case in which the Patent Owner has asserted the ʼ078 Patent.
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` (d) IPR2015-01856 (petition filed Sept. 2, 2015, served Sept. 3, 2015) is an
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`inter partes review also initiated by the Petitioner against the same ʼ078 Patent.
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`(e) IPR2015-01855 and IPR2015-01877 are inter partes reviews, also
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`initiated by the Petitioner, against the Patent Owner’s U.S. Patent No. RE42,196.
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`IPR2015-01876
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`Owner Initial Mandatory Notices
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`Page 2 of 5
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`
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`The ʼ078 Patent is unrelated to the ʼ196 Patent, but both patents are asserted in the
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`three litigations identified above.
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`(f) U.S. Patent Appl. No. 13/924,504 is a pending continuation of the ʼ078
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`Patent.
`
`3.
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`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), the Patent Owner provides
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`the following designation of counsel:
`
`
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`Lead Counsel
`
`Matthew C. Phillips
`Reg. No. 43,403
`Renaissance IP Law Group LLP
`7327 SW Barnes Road #521
`Portland, Oregon 97225
`Telephone: (503) 964-1129
`Facsimile: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`
`Backup Counsel
`
`Kevin B. Laurence
`Reg. No. 38,219
`Renaissance IP Law Group LLP
`1940 Duke Street, 2nd Floor
`Alexandria, Virginia 22314
`Telephone: (703) 448-8787
`Facsimile: (503) 517-9919
`kevin.laurence@renaissanceiplaw.com
`
`Derek Meeker
`Reg. No. 53,313
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`IPR2015-01876
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`Owner Initial Mandatory Notices
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`Page 3 of 5
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`
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`Renaissance IP Law Group LLP
`9600 SW Oak Street, Suite 560
`Portland, Oregon 97223
`Telephone: (360) 606-8922
`Facsimile: (503) 517-9919
`derek.meeker@renaissanceiplaw.com
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`The above-listed counsel already have power of attorney in the ʼ078 Patent.
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`
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`
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`4.
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`Service of documents in this case may be made to the e-mail addresses for
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`the respective lead or back-up counsel designated above. If physical delivery is
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`necessary, it may be made at the postal mailing address designated above with
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`concurrent notifications to each counsel’s email address.
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`5.
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`Payment of Fees under 37 C.F.R. § 42.103
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`The undersigned authorizes the U.S. Patent and Trademark Office to charge
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`any applicable fees associated with this proceeding to Deposit Account No. 50-
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`Respectfully submitted,
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`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Lead Counsel for Patent Owner
`
`
`
`5836.
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`Date: 2015 Sept. 24
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`
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`
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`IPR2015-01876
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`Owner Initial Mandatory Notices
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`Page 4 of 5
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`CERTIFICATE OF SERVICE
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`I certify that on September 24, 2015, the foregoing PATENT OWNER’S
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`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8, including all attached
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`papers filed therewith, has been served on the Petitioners’ counsel of record via
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`email, as agreed to by counsel, at the following email addresses:
`
`James F. Valentine: Intel-CAP-IPR@perkinscoie.com
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`Ryan McBrayer: Intel-CAP-IPR@perkinscoie.com
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`Qudus B. Olaniran: Intel-CAP-IPR@perkinscoie.com
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`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2015-01876
`
`Owner Initial Mandatory Notices
`
`Page 5 of 5
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