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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CAPTIONCALL, LLC
`Petitioner
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner
`
`
`
`Case IPR2015-01886
`U.S. Patent No. 7,881,441
`
`
`
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`Submitted via PRPS
`
`Dear Board:
`
`
`
`As required under 37 C.F.R. § 42.8, Ultratec, Inc. ("Patent Owner") timely
`
`submits the following mandatory notices to the Patent Trial and Appeal Board.
`
`A. Real Party-In-Interest
`
`The real parties-in-interest, pursuant to 37 C.F.R. § 42.8(b)(1), include
`
`Ultratec, Inc., having a place of business at 450 Science Drive, Madison,
`
`Wisconsin 53711, and CapTel, Inc., having a place of business at 450 Science
`
`Drive, Madison, Wisconsin 53711.
`
`
`
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`
`
`
`

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`B. Related Matters
`
`The following U.S. Patents, also owned by Patent Owner, have been
`
`involved in proceedings in which Petitioner cited prior art that overlaps with or is
`
`similar to the prior art cited in the present Petition. The following patents were
`
`also the subject of litigation entitled Ultratec, Inc. v. Sorenson Communications,
`
`Inc. (Case No. 3:13-CV-00346) in the United States District Court for the Western
`
`District of Wisconsin between plaintiffs, Ultratec, Inc. and CapTel, Inc., and
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`defendants, Sorenson Communications, Inc. and CaptionCall LLC, and were found
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`valid and infringed. At issue in Case No. 3:13-CV-00346 were the following
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`Patent Owner's patents:
`
`•
`
`•
`
`•
`
`•
`
`U.S. Patent No. 5,909,482
`
`U.S. Patent No. 6,233,314
`
`U.S. Patent No. 6,594,346
`
`U.S. Patent No. 6,603,835
`
`•
`
`•
`
`•
`
`•
`
`U.S. Patent No. 7,003,082
`
`U.S. Patent No. 7,319,740
`
`U.S. Patent No. 7,555,104
`
`U.S. Patent No. 8,213,578
`
`as well as Petitioner's patent U.S. Patent No. 8,379,801.
`
`
`
`In addition, the following Inter Partes Review proceedings have been filed
`
`by the Petitioner against each of the Patent Owner's patents-at-issue in Case No.
`
`3:13-CV-00346.
`
`•
`
`•
`
`IPR2013-00540
`
`IPR2013-00541
`
`
`
`
`
`•
`
`•
`
`IPR2013-00542
`
`IPR2013-00544
`
`

`
`•
`
`•
`
`•
`
`IPR2013-00545
`
`IPR2013-00549
`
`IPR2013-00543
`
`•
`
`•
`
`IPR2013-00550
`
`IPR2014-00780
`
`A final written decision finding unpatentability was issued in each of the
`
`Inter Partes Review proceedings above except for IPR2014-00780, though
`
`motions for reconsideration are pending in each such proceeding. No Final
`
`Written Decision has yet issued in IPR2014-00780.
`
`Also, Patent Owner's U.S. Patent Nos. 8,908,838 ("'838 Patent") and
`
`8,917,822 ("'822 Patent") have been involved in proceedings in which Petitioner
`
`cited prior art that overlaps with or is similar to the prior art cited in the present
`
`Petition. Petitioner has filed petitions for inter partes review of the '838 Patent
`
`(IPR2015-00637) and the '822 Patent (IPR2015-00636), and the Board has granted
`
`review on the basis of those Petitions. The '838 Patent and '822 Patent are also the
`
`subject of litigation entitled Ultratec, Inc. v. Sorenson Communications, Inc. (Case
`
`No. 3:14-CV-00847) in the United States District Court for the Western District of
`
`Wisconsin between plaintiffs, Ultratec, Inc. and CapTel, Inc., and defendants,
`
`Sorenson Communications, Inc. and CaptionCall LLC, which is currently stayed.
`
`In addition, Patent Owner's U.S. Patent No. 7,660,398 ("'398 Patent"), the
`
`parent case to U.S. Patent No. 8,515,024 ("'024 patent"), was the subject of a
`
`petition for inter partes review (IPR2014-01287). The Board denied the petition
`
`
`
`
`
`

`
`for IPR of the '398 Patent, though a motion for reconsideration is pending. In
`
`addition, the '398 Patent is the subject of currently pending litigation entitled
`
`Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 3:14-CV-00066) in the
`
`United States District Court for the Western District of Wisconsin between
`
`plaintiffs, Ultratec,
`
`Inc. and CapTel,
`
`Inc., and defendants, Sorenson
`
`Communications, Inc. and CaptionCall LLC. That case is proceeding.
`
`Petitioner has also filed petitions for inter partes review of four additional
`
`patents owned by Patent Owner: 5,974,116 (IPR2015-1355); 7,006,604 (IPR2015-
`
`01358); 6,493,426 (IPR2015-01359); and 6,934,366 (IPR2015-01357). Patent
`
`Owner has filed Preliminary Responses in response to these Petitions.
`
`Finally, Petitioner has filed two additional petitions for inter partes review
`
`contemporaneously with the instant petition on patents also owned by Patent
`
`Owner: 8,515,024 (IPR2015-1885) and 9,131,045 (IPR2015-1889). U.S. Patent
`
`No. 9,131,045 is the subject of litigation between the Petitioner and Patent Owner
`
`entitled Ultratec, Inc. v. Sorenson Communications, Inc. (Case No. 3:15-CV-
`
`00563), in the Western District of Wisconsin. This case is still pending.
`
`
`
`The litigations, Case No. 3:14-CV-00847, 3:15-CV-00563, 3:13-CV-00346,
`
`and 3:14-CV-00066, related patents and applications, and the Inter Partes Reviews
`
`may be affected by a decision in this proceeding.
`
`
`
`
`
`
`
`

`
`C. Lead and Back-Up Counsel
`
`Lead and back-up counsel for the instant proceeding are:
`
`
`
`Lead Counsel
`Michael Jaskolski
`Reg. No. 37,551
`Attorney for Patent Owner
`michael.jaskolski@quarles.com
`QUARLES & BRADY, LLP
`411 East Wisconsin Avenue, Suite 2400
`Milwaukee, Wisconsin 53202
`Tel: (414) 277-5711
`Fax: (414) 978-8711
`
`Back-Up Counsel
`Nikia L. Gray
`Reg. No. 57,770
`Attorney for Patent Owner
`nikia.gray@quarles.com
`QUARLES & BRADY, LLP
`One South Church Avenue, Suite 1700
`Tucson, Arizona 85701
`Tel: (520) 770-8721
`Fax: (520) 770-2240
`
`Back-Up Counsel
`Michael J. Curley
`Reg. No. 63,251
`Attorney for Patent Owner
`michael.curley@quarles.com
`QUARLES & BRADY, LLP
`One South Church Avenue, Suite 1700
`Tucson, Arizona 85701
`Tel: (520) 770-8768
`Fax: (520) 770-2206
`
`
`Back-up Counsel
`Stephen J. Gardner
`Reg. No. 59,057
`Attorney for Patent Owner
`stephen.gardner@quarles.com
`QUARLES & BRADY, LLP
`33 East Main Street, Suite 900
`Madison, WI 53703
`Tel: (608) 283-2476
`Fax: (608) 283-4902
`
` Power of Attorney is filed concurrently herewith under 37 C.F.R. §
`
` A
`
`
`
`42.10(b).
`
`
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`
`
`

`
`D.
`
`Service Information
`
`Service information is as follows, with the postal mailing address being
`
`identical to the hand-delivery address:
`
`QUARLES & BRADY, LLP
`c/o Michael Jaskolski
`michael.jaskolski@quarles.com
`411 East Wisconsin Avenue
`Suite 2350
`Milwaukee, Wisconsin 53202
`Tel: (520) 770-8768
`Fax: (520) 770-2206
`
`
`
`Respectfully submitted,
`
`
`
`s/Michael Jaskolski/
`Michael Jaskolski
`Reg. No. 37,551
`Attorney for Patent Owner
`michael.jaskolski@quarles.com
`QUARLES & BRADY, LLP
`411 East Wisconsin Avenue
`Suite 2400
`Milwaukee, Wisconsin 53202
`Tel: (414) 277-5711
`Fax: (414) 978-8711
`
`Michael J. Curley
`Reg. No. 63,251
`Attorney for Patent Owner
`michael.curley@quarles.com
`One South Church Avenue
`Suite 1700
`Tucson, Arizona 85701
`Tel: (520) 770-8768
`Fax: (520) 770-2206
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`Date: September 29, 2015
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`Nikia L. Gray
`Reg. No. 57,770
`Attorney for Patent Owner
`nikia.gray@quarles.com
`One South Church Avenue
`Suite 1700
`Tucson, Arizona 85701
`Tel: (520) 770-8721
`Fax: (520) 770-2240
`
`Stephen J. Gardner
`Reg. No. 59,057
`Attorney for Patent Owner
`stephen.gardner @quarles.com
`QUARLES & BRADY, LLP
`33 East Main Street, Suite 900
`Madison, Wisconsin 53703
`Tel: (608) 251-5000
`Fax: (608) 251-9166
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CAPTIONCALL, LLC
`Petitioner
`
`v.
`
`ULTRATEC, INC.,
`Patent Owner
`
`
`
`Case IPR2015-01886
`U.S. Patent No. 7,881,441
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`Dear Board:
`
`I hereby certify on this 29th day of September, 2015, that a true and correct
`
`PDF copy of the MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 was electronically
`
`mailed in its entirety to:
`
`Baker Botts L.L.P.
`c/o Brian W. Oaks
`98 San Jacinto Boulevard, Suite 1500
`Austin, TX 78701-4078
`Brian.oaks@bakerbotts.com
`Brett.thompsen@bakerbotts.com
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`/Michael J. Curley/
`Michael J. Curley
`
`
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`

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`
`Reg. No. 63,251
`Attorney for Patent Owner
`michael.curley@quarles.com
`QUARLES & BRADY, LLP
`One South Church Avenue,
`Tucson, Arizona 85701
`Tel: (520) 770-8768
`Fax: (520) 770-2206

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