`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`Carl Zeiss Microscopy, LLC
`Petitioner
`
`v.
`
`Advanced Microscopy, Inc.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00051
`Patent 6,313,452
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`Case No. IPR2016-00051
`Patent 6,313,452
`
`
`
`
`
`
`
`
`
`ADVANCED MICROSCOPY INC’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 Under 37
`
`C.F.R. § 42.100.
`
`
`
`
`
`1.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Advanced Microscopy Inc. is the owner by assignment of U.S. Patent No.
`
`6,313,452 (“the ’452 patent”). Advanced Microscopy Inc. is a wholly owned
`
`subsidiary of Wi-LAN Technologies, Inc., which is a wholly owned subsidiary of
`
`Wi-LAN, Inc., a publicly traded company.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial matters, in which the ‘452 patent is at issue, may
`
`affect or be affected by a decision in this proceeding:
`
`(1) Advanced Microscopy Inc. v. Carl Zeiss Microscopy, LLC, Civil
`
`Action No. 1:15-cv-00516, pending in the District of Delaware;
`
`(2) Advanced Microscopy Inc. v. BioTek Instruments, Inc., Civil Action
`
`No. 1:15-cv-1018, pending in the District of Delaware;
`
`(3) Advanced Microscopy Inc. v. FEI Company, Civil Action No. 1:15-
`
`cv-1019, pending in the District of Delaware;
`
`2
`
`
`
`Case No. IPR2016-00051
`Patent 6,313,452
`
`
`
`
`(4) Advanced Microscopy Inc. v. Hitachi High Technologies America,
`
`Inc., Civil Action No. 1:15-cv-1020, pending in the District of Delaware;
`
`(5) Advanced Microscopy Inc. v. Keyence Corporation of America, Civil
`
`Action No. 1:15-cv-1021, pending in the District of Delaware;
`
`(6) Advanced Microscopy Inc. v. Thermo Fisher Scientific Inc., Civil
`
`Action No. 1:15-cv-1022, pending in the District of Delaware; and
`
`(7) Advanced Microscopy Inc. v. Zygo Corporation, Civil Action No.
`
`1:15-cv-1023, pending in the District of Delaware.
`
`3.
`
`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), Patent Owner provides the
`
`following designation of counsel:
`
`Lead Counsel:
`
`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 East 4th Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`
`Back-up Counsel:
`
`David A. Skeels
`(pro hac vice motion pending)
`Friedman, Suder & Cooke
`604 East 4th Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`skeels@fsclaw.com
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), Power of Attorneys for lead and back-up
`
`counsel are filed herewith.
`
`3
`
`
`
`Case No. IPR2016-00051
`Patent 6,313,452
`
`
`
`
`A motion seeking pro hac vice admission for back-up counsel David A.
`
`Skeels pursuant to 37 C.F.R. § 42.10(c) is filed herewith.
`
`
`
`
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Patent Owner consents to email service for the respective lead or back-up
`
`counsel designated above, with courtesy copies to hermesch@fsclaw.com,
`
`putnam@fsclaw.com, and dunn@fsclaw.com. Telephone and facsimile numbers
`
`for lead and back-up counsel are designated above.
`
`5.
`
`Payment of Fees under 37 C.F.R. § 42.103
`
`The undersigned authorizes the U.S. Patent and Trademark Office to charge
`
`any applicable fees associated with this proceeding to Deposit Account No. 50-
`
`Respectfully submitted,
`
`By: / Brett M. Pinkus /
`Brett M. Pinkus
`Registration No. 59,980
`
`
`
`Back-up Counsel:
`
`David A. Skeels
`(pro hac vice motion pending)
`Friedman, Suder & Cooke
`604 East 4th Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`skeels@fsclaw.com
`
`4
`
`6282.
`
`
`
`Date: November 6, 2015
`
`Lead Counsel:
`
`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 East 4th Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`
`
`
`Case No. IPR2016-00051
`Patent 6,313,452
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on this the 6th day of November, 2015, a true and correct
`
`copy of the foregoing PATENT OWNER’S LIMITED POWER OF ATTORNEY
`
`was served via electronic mail, as agreed to by counsel, upon the following counsel
`
`of record:
`
`Arthur Dresner: ADresner@duanemorris.com
`
`Patrick D. McPherson: DPMcPherson@duanemorris.com
`
`Arvind Jairam: ajairam@duanemorris.com
`
`Date: November 6, 2015
`
`By: / Brett M. Pinkus /
`Brett M. Pinkus
`Registration No. 59,980
`
`
`
`
`5
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