throbber
UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`KIA MOTORS AMERICA, INC.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2016-00115
`Patent 6,012,007
`____________
`
`PATENT OWNER’S MANDATORY NOTICES
`37 C.F.R. § 42.8(a)(2)
`
`
`
`1
`
`
`
`
`
`

`
`Pursuant to 37 C.F.R. § 42.8(a)(2) Patent Owner submits the following
`
`mandatory notices:
`
`
`
`(1) Real party-in-interest.
`
`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.
`
`
`
`(2) Related matters.
`
`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 IPR2016-00113 (pending),
`
`IPR2015-01116 (terminated without institution), and IPR2015-01004
`
`(pending).
`
`
`
`On April 17, 2015, the U.S. District Court for the Central District of
`
`California entered an Order re Claims Construction regarding, inter alia,
`
`U.S. Patent 6,012,007 at issue in the above-noted litigations. On May 20,
`
`2015, various parties to the above-noted litigations entered into a stipulation
`
`for entry of a partial final judgment. Pursuant to the stipulation,
`
`In light of the Court’s claim construction order, Plaintiff
`
`and Defendants stipulate to entry of a partial final
`
`judgment that the following claims are invalid due to
`
`indefiniteness under 35 U.S.C. § 112, paragraph 2: . . .
`
`claims 1, 8, 9, 17, 18, 19, and 20 of the ’007 patent.
`
`Plaintiff and Defendants reserve all appellate rights,
`
`3
`
`
`
`

`
`including, but not limited to, the right to appeal the
`
`Court’s April 17, 2015 claim construction order to the
`
`United States Court of Appeals for the Federal Circuit.
`
`Plaintiff reserves all rights as to claims not addressed by
`
`the Court’s claim construction order, or any new claims
`
`that may be issued by the United States Patent Office.
`
`
`
`On May 22, 2015, pursuant to the above-referenced stipulation, the
`
`U.S. District Court for the Central District of California entered a Partial
`
`Judgment of Invalidity, that:
`
`. . .
`
`Claims 1, 8, 9, 17, 18, 19, and 20 of U.S. Patent No.
`
`6,012,007 (“the ’007 patent”) are invalid as indefinite
`
`under 35 U.S.C. § 112, paragraph 2.
`
`
`
`(3) Lead and back-up counsel.
`
`Lead Counsel:
`
`
`
`
`
`
`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
`
`4
`
`

`
`Email: tarek.fahmi@ascendalaw.com
`
`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
`
`
`
`
`
`
`
`
`
`(4) Address for Service.
`
`
`
`
`
`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
`
`
`
`
`
`Patent Owner consents to service by email at the above address.
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`Dated: November 9, 2015
`
`
`
`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`
`
`
`
`
`
`
`/Tarek N. Fahmi/
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`5
`
`

`
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`6
`
`

`
`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:
`
`
`Heath J. Briggs
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`
`Patrick J. McCarthy
`Greenberg Traurig, LLP
`2101 L Street NW, Ste. 1000
`Washington, DC 20037
`
`Email: KiaGTIPR@gtlaw.com
`The parties have agreed to electronic service in this proceeding.
`
`
`
`
`
`
`Respectfully submitted,
`/Tarek N. Fahmi/
`Dated: November 9, 2015
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`
`
`7

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