`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`NISSAN NORTH AMERICA, INC.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2016-00113
`Patent 6,012,007
`____________
`
`PATENT OWNER’S MANDATORY NOTICES
`37 C.F.R. § 42.8(a)(2)
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`1
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`Pursuant to 37 C.F.R. § 42.8(a)(2) Patent Owner submits the following
`
`mandatory notices:
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`
`
`(1) Real party-in-interest.
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`The real party-in-interest is Signal IP, Inc., a California corporation, with a
`
`place of business at 11100 Santa Monica Blvd. Suite 380, Los Angeles, CA
`
`90025.
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`
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`(2) Related matters.
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`U.S. Patent No. 6,012,007 is at issue in the following pending litigation:
`
`• Signal IP, Inc. v. Toyota North America, Inc., et al., 2-15-cv-05162
`(CACD);
`• Signal IP, Inc. v. Hyundai Motor America, 8-15-cv-01085 (CACD);
`• Signal IP, Inc. v. Ford Motor Company, 2-14-cv-13729 (MIED);
`• Signal IP, Inc. v. Mercedes-Benz USA, LLC et al., 2-14-cv-03109
`(CACD);
`• Signal IP, Inc. v. Fiat USA, Inc. et al., 2-14-cv-13864 (MIED);
`• Signal IP, Inc. v. BMW of North America, LLC et al., 2-14-cv-03111
`(CACD);
`• Signal IP, Inc. v. Volkswagen Group of America, Inc. d/b/a Audi of
`America, Inc. et al., 2-14-cv-03113 (CACD);
`• Signal IP, Inc. v. Subaru of America, Inc., 2-14-cv-02963 (CACD);
`• Signal IP, Inc. v. Nissan North America, Inc., 2-14-cv-02962
`
`2
`
`
`
`
`
`(CACD);
`• Signal IP, Inc. v. Kia Motors America, Inc., 2-14-cv-02457 (CACD);
`• Signal IP, Inc. v. American Honda Motor Co., Inc. et al., 2-14-cv-
`02454 (CACD);
`• Signal IP, Inc. v. Mazda Motor of America, Inc., Case No 8-14-cv-
`00491 (CACD).
`
`
`
`U.S. Patent No. 6,012,007 is also at issue in IPR2016-00115 (pending),
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`IPR2015-01116 (terminated without institution), and IPR2015-01004
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`(pending).
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`
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`On April 17, 2015, the U.S. District Court for the Central District of
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`California entered an Order re Claims Construction regarding, inter alia,
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`U.S. Patent 6,012,007 at issue in the above-noted litigations. On May 20,
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`2015, various parties to the above-noted litigations entered into a stipulation
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`for entry of a partial final judgment. Pursuant to the stipulation,
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`In light of the Court’s claim construction order, Plaintiff
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`and Defendants stipulate to entry of a partial final
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`judgment that the following claims are invalid due to
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`indefiniteness under 35 U.S.C. § 112, paragraph 2: . . .
`
`claims 1, 8, 9, 17, 18, 19, and 20 of the ’007 patent.
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`Plaintiff and Defendants reserve all appellate rights,
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`3
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`including, but not limited to, the right to appeal the
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`Court’s April 17, 2015 claim construction order to the
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`United States Court of Appeals for the Federal Circuit.
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`Plaintiff reserves all rights as to claims not addressed by
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`the Court’s claim construction order, or any new claims
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`that may be issued by the United States Patent Office.
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`
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`On May 22, 2015, pursuant to the above-referenced stipulation, the
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`U.S. District Court for the Central District of California entered a Partial
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`Judgment of Invalidity, that:
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`. . .
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`Claims 1, 8, 9, 17, 18, 19, and 20 of U.S. Patent No.
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`6,012,007 (“the ’007 patent”) are invalid as indefinite
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`under 35 U.S.C. § 112, paragraph 2.
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`
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`(3) Lead and back-up counsel.
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`Lead Counsel:
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`
`
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`
`
`Tarek N. Fahmi (Reg. No. 41,402)
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
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`4
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`
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`Email: tarek.fahmi@ascendalaw.com
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`Back-up Counsel: Holly J. Atkinson (Reg. No. 69,934)
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`email: holly.atkinson@ascendalaw.com
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`(4) Address for Service.
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`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Fax: 408-773-6177
`Email: patents@ascendalaw.com
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`
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`
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`Patent Owner consents to service by email at the above address.
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`Respectfully submitted,
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`
`
`
`Dated: November 9, 2015
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`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
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`
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`
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
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`5
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`
`
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`
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`6
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S MANDATORY NOTICES
`was served on November 9, 2015, by filing this document though the Patent
`Review Processing System as well as by delivering a copy via email directed
`to the attorneys of record for the Petitioner at the following address:
`
`
`Tawni L. Wilhelm
`Patrick A. Lujin
`Shook, Hardy & Bacon L.L.P.
`2555 Grand Blvd.
`Kansas City, Missouri 64108
`
`twilhelm@shb.com
`plujin@shb.com
`The parties have agreed to electronic service in this proceeding.
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`Respectfully submitted,
`/Tarek N. Fahmi/
`Dated: November 9, 2015
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`
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`
`Tarek N. Fahmi
`
`
`
`
`
`
`Reg. No. 41,402
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
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`7
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