`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ANCESTRY.COM DNA, LLC,
`Petitioner
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner
`
`
`
`Patent No. 8,221,381
`
`_______________
`
`Inter Partes Review No. IPR2016-00060
`____________________________________________________________
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`
`sd-672374
`
`1
`
`
`
`IPR2016-00060
`
`
`
`Attorney Docket No. 60414-0000012
`
`Patent Owner DNA GENOTEK INC. hereby files mandatory notices
`
`pursuant to 37 C.F.R. § 42.8(a)(2).
`
`A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest is DNA GENOTEK INC., which is a wholly
`
`owned subsidiary of OraSure Technologies, Inc.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`
`
`In accordance with the Office Patent Trial Practice Guide (77 Fed. Reg.
`
`48,756, at 48,760 (Aug. 14, 2012)), Patent Owner identifies the following related
`
`matters.
`
`
`
`A.
`
`Patent Infringement Actions
`
`• DNA Genotek, Inc. v. Ancestry.com DNA LLC (Case No. 15-00355-SLR
`
`(D.Del.))
`
`• DNA Genotek, Inc. v. Spectrum DNA; Spectrum Solutions L.L.C., and
`
`Spectrum Packaging, LLC (Case No. 15-cv-00661-SLR)
`
`• B. Related Patents/Applications
`
`• U.S. patent application No. 13/523,582 (abandoned) is a continuation of
`
`U.S. patent application No. 12/096,767, now U.S. patent No. 8,221,381 B2.
`
`• U.S. patent application No. 13/536,599 (pending) is a continuation of U.S.
`
`patent application No. 12/096,767, now U.S. patent No. 8,221,381 B2.
`
`sd-672374
`
`2
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`
`
`IPR2016-00060
`
`
`
`Attorney Docket No. 60414-0000012
`
`• U.S. patent application No. 14/831,690 (pending) is a continuation of
`
`13/536,599, now pending, which is a continuation of 12/096,767, now U.S.
`
`patent No. 8,221,381 B2.
`
`Patent Owner does not concede that the identified matters would affect, or
`
`be affected by, a decision in the present Inter Partes Review of U.S. Patent No.
`
`8,221,381 B2.
`
`sd-672374
`
`3
`
`
`
`IPR2016-00060
`
`
`
`Attorney Docket No. 60414-0000012
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`C.
`
`
`Lead Counsel
`
`Backup Counsel
`
`Brian M. Kramer
`bmkramer@mofo.com
`Registration No.: 48,994
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`Tel: 858-314-5415
`Fax: 858-720-5125
`
`Peng Chen
`pchen@mofo.com
`Registration No.: 43,543
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`Tel: 858-720-5117
`Fax: 858-720-5125
`
`Backup Counsel
`
`Backup Counsel
`
`Desmond P. O’Sullivan
`dosullivan@mofo.com
`Registration No.: 67,576
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`Tel: 858-314-7794
`Fax: 858-720-5125
`
`Chika Arakawa
`carakawa@mofo.com
`Registration No.: 72,375
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`Tel: 858-314-5467
`Fax: 858-720-5125
`
`A Power of Attorney is being filed concurrently with these Mandatory
`
`Notices.
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Please direct all correspondence regarding this proceeding to the counsel at
`
`the addresses listed above. Patent Owner also consents to electronic service by
`
`email to 60414-381-IPR@mofo.com.
`
`sd-672374
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`4
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`
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`IPR2016-00060
`
`
`
`Attorney Docket No. 60414-0000012
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this proceeding to Deposit Account 03-1952.
`
`Dated: November 20, 2015
`
`
`Respectfully submitted,
`
`/Peng Chen/
`Peng Chen
`Registration No. 43,543
`Attorneys for Patent Owner
`Morrison & Foerster LLP
`12531 High Bluff Drive
`San Diego, CA 92130-2040
`Telephone: 858.720.5117
`
`
`
`sd-672374
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`5
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`
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`IPR2016-00060
`
`
`
`Attorney Docket No. 60414-0000012
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`
`
`I hereby certify that the attached Patent Owner’s Mandatory Notices were
`
`served as of the below date via mail on the Petitioner at the following
`
`correspondence address:
`
`DBecker-PTAB@fenwick.com
`Daniel M. Becker
`Jennifer R. Bush
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`
`
`Dated: November 20, 2015
`
`
`
`/Peng Chen/
`Peng Chen
`
`sd-672374
`
`6
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