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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OLD REPUBLIC GENERAL INSURANCE GROUP, INC.;
`OLD REPUBLIC INSURANCE COMPANY;
`OLD REPUBLIC TITLE INSURANCE GROUP, INC.; and
`OLD REPUBLIC NATIONAL TITLE INSURANCE COMPANY
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`Case IPR2015-01992
`Patent 6,546,002
`
`INTELLECTUAL VENTURES II LLC'S
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. §42.8(a)(2)
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313- 1450
`
`

`
`Case IPR20 15-01992
`U.S. Patent No. 6,546,002
`Patent Owner, Intellectual Ventures II LLC, hereby files its Mandatory
`
`Notices Pursuant to 37 C.F.R. § 42.8(a)(2). This notice is being timely filed within
`
`21 days of service of the petition.
`
`I.
`
`REAL PARTY-IN-INTEREST
`
`The patent owner and real party-in-interest is Intellectual Ventures II LLC.
`
`II. RELATED MATTERS
`
`Patent Owner notes the following proceedings that may affect or be affected
`
`by a decision in this proceeding:
`
`Intellectual Ventures I LLC et a/. v. Capital One Financial Corporation et
`
`al., No. 8-14-cv-00111-PWG (S.D. Md.), filed January 15, 2014
`
`Intellectual Ventures I LLC et al. v. Citigroup, Inc. et al., No. 1-14-cv-
`
`04638-AKH (S.D. N.Y.), filed June 25, 2014
`
`Intellectual Ventures I LLC et al. v. PNC Financial Services Group, Inc. et
`
`al., No. 2-14-cv-00832-AJS (W.D. Pa.), filed June 25,2014
`
`Intellectual Ventures I LLC et al. v. Erie Indemnity Company et al., No. 1-
`
`14-cv-00220-MRH (W.D. Pa.), filed August 21,2014
`
`Intellectual Ventures I LLC et al. v. Old Republic General Insurance Group,
`
`Inc. et al., No. 2-14-cv-01130-MRH (W.D. Pa.), filed August 22, 2014
`
`Intellectual Ventures I LLC et al. v. Highmark, Inc. et al., No. 2-14-cv-
`
`01131-MRH (W.D. Pa.), filed August 22, 2014
`
`- 1 -
`
`

`
`Case IPR20 15-01992
`U.S. Patent No. 6,546,002
`International Business Machines Corporation v. Intellectual Ventures II
`
`LLC, IPR2015-00089 (P.T.A.B.), filed October 17, 2014
`
`International Business Machines Corporation v. Intellectual Ventures 11
`
`LLC, IPR2015-00092 (P.T.A.B.), filed October 17, 201 4
`
`Old Republic General Insurance Group, Inc. et al. v. Intellectual Ventures 11
`
`LLC, CBM2015-00184 (P.T.A.B.), filed October 2, 2015
`
`On September 2, 2015, the District Court in the District of Maryland issued
`
`an opinion and order in case 8-14-cv-00111 granting a motion for summary
`
`judgment of invalidity of the '002 Patent. The court found that the asserted
`
`claims of the '002 Patent were patent ineligible under 35 U.S.C. § 101.
`
`Intellectual Ventures is appealing the district court's rulings.
`
`On September 25, 2015, the District Court in the Western District of
`
`Pennsylvania issued an opinion and order in cases 1-14-cv-00220, 2-14-cv-01130,
`
`and 2-14-cv-01131 dismissing the claims for infringement of the '002 Patent.
`
`The court found that the asserted claims of the '002 Patent were directed to an
`
`"abstract idea" and so were patent ineligible under 35 U.S.C. § 101. Intellectual
`
`Ventures intends to appeal the district court's rulings.
`
`- 2-
`
`

`
`Case IPR20 15-01992
`U.S. Patent No. 6,546,002
`
`III. LEAD AND BACKUP COUNSEL
`
`The lead counsel for Intellectual Ventures II LLC is:
`
`Byron L. Pickard, Reg. No. 65,172
`bpickard-PTAB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`Tel.: 202-772-8 5 21
`Fax: 202-371-2540
`
`The backup counsel for Intellectual Ventures II LLC is:
`
`Lori A. Gordon, Reg. No. 50,633
`I gordon-PT AB@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100NewYorkAvenue, N.W.
`Washington, D.C. 20005
`Tel.: 202-772-8862
`Fax: 202··3 71-2540
`
`James R. Hietala, Reg. No. 51,802
`jhietala@intven.com
`Intellectual Ventures
`3150 139thAvenue S.E.
`Bellevue, W A 98005
`Tel.: 425-283-4789
`Fax:425-467-2350
`
`Tim R. Seeley, Reg. No. 53,575
`tim@intven.com
`Intellectual Ventures
`3150 139th Avenue S.E.
`Bellevue, W A 98005
`Tel.: 425-283-4891
`Fax: 425-467-2350
`
`- 3-
`
`

`
`Case IPR20 15-01992
`U.S. Patent No. 6,546,002
`
`IV.
`
`SERVICE INFORMATION
`
`Please address all correspondence to the lead and back-up counsel as shown
`
`above. Patent Owner consents to electronic service by email at ptab@skgf.com,
`
`with courtesy copies to the email addresses provided above.
`
`kespectfully submitted,
`STERNE, KESSLER, GOLDSTErN & FOX P.L.L.C.
`
`Registration No. 65,172
`Attorney for Patent Owner
`
`Date: October 23, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`- 4-
`
`

`
`Case IPR20 15-01992
`U.S. Patent No. 6,546,002
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing INTELLECTUAL
`
`VENTURES II LLC'S MANDATORY NOTICES PURSUANT TO 37 C.F.R.
`
`§42.8(a)(2) was served via FedEx on October 23, 2015, in their entirety on the
`
`following:
`
`Joseph A. Micallef (Lead Counsel)
`Russell E. Cass (Back-up Counsel)
`Erik J. Carlson (Back-up Counsel)
`Vernon M. Winters (Back-up Counsel)
`Samuel A. Dillon (Back-up Counsel)
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`Byr
`Registration No. 65,172
`Attorney for Patent Owner
`
`Date: October 23, 2015
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005
`(202) 371-2600

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