throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`Koito Manufacturing Co., Ltd.
`Petitioner
`
`v.
`
`Adaptive Headlamp Technologies, Inc.
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00079
`Patent 7,241,034 B2
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`

`
`Case IPR2016-00079
`Patent 7,241,034 B2
`
`
`
`
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, 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))
`
`Adaptive Headlamp Technologies, Inc. is the owner by assignment of all
`
`substantial interests in U.S. Patent No. 7,241,034 B2 (“the ‘034 patent”). Adaptive
`
`Headlamp Technologies, 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 ‘034 patent is at issue, may
`
`affect or be affected by a decision in this proceeding:
`
`(a) Adaptive Headlamp Technologies, Inc. v. BMW of North America,
`
`LLC, Civil Action No. 1:14cv00962, pending in the District of Delaware.
`
`(b) Adaptive Headlamp Technologies, Inc. v. FCA US LLC (“Chrysler”),
`
`Maserati North America, Inc. & Fiat Chrysler Automobiles N.V., Civil Action No.
`
`1:15cv00073, pending in the District of Delaware.
`
`2
`
`

`
`Case IPR2016-00079
`Patent 7,241,034 B2
`
`
`
`(c) Adaptive Headlamp Technologies, Inc. v. General Motors LLC, Civil
`
`Action No. 1:15cv00781, pending in the District of Delaware.
`
`(d) Adaptive Headlamp Technologies, Inc. v. Hyundai Motor America,
`
`Civil Action No. 1:15cv00563, pending in the District of Delaware.
`
`(e) Adaptive Headlamp Technologies, Inc. v. Mazda Motor of North
`
`America, Inc., Civil Action No. 1:15cv00782, pending in the District of Delaware.
`
`(f)
`
`Adaptive Headlamp Technologies, Inc. v. Mercedes-Benz USA LLC,
`
`Civil Action No.1:15cv00075, pending in the District of Delaware.
`
`(g) Adaptive Headlamp Technologies, Inc. v. Nissan North America Inc.,
`
`Civil Action No. 1:15cv00074, pending in the District of Delaware.
`
`(h) Adaptive Headlamp Technologies, Inc. v. Toyota Motor Sales, U.S.A.,
`
`Inc., Civil Action No. 1:15cv00779, pending in the District of Delaware; and
`
`(i)
`
`Adaptive Headlamp Technologies, Inc. v. Volvo Cars of North
`
`America, LLC, Civil Action No. 1:15cv00780, 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:
`
`3
`
`

`
`Back-up Counsel:
`
`David A. Skeels
`(pro hac vice motion pending)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`skeels@fsclaw.com
`
`Case IPR2016-00079
`Patent 7,241,034 B2
`
`
`
`Lead Counsel:
`
`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), Power of Attorneys for lead and back-up
`
`counsel are filed herewith.
`
`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.
`
`4
`
`

`
`Case IPR2016-00079
`Patent 7,241,034 B2
`
`
`
`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-
`
`6282.
`
`Dated: November 13, 2015
`
`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 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`skeels@fsclaw.com
`
`
`
`
`
`Lead Counsel:
`
`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`
`
`
`
`
`5
`
`

`
`Case IPR2016-00079
`Patent 7,241,034 B2
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on this the 13th day of November, 2015, a true and
`
`correct copy of the foregoing PATENT OWNER’S MANDATORY NOTICES
`
`UNDER 37 C.F.R. § 42.8 were served via electronic mail upon counsel of record
`
`for Petitioners at the following addresses:
`
`Samuel Borodach (borodach@fr.com);
`
`Michael F. Autuoro (autuoro@fr.com);
`
`IPR10973-0232IP1@fr.com; and
`
`PTABInbound@fr.com.
`
`Dated: November 13, 2015
`
`
`
`By: / Brett M. Pinkus/
`Brett M. Pinkus
`Registration No. 59,980
`
`6

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket