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Case No. IPR2016-00190
`Patent No. 6,160,359
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMX LLC
`Petitioner
`
`v.
`INTUITIVE BUILDING CONTROLS, INC.
`Patent Owner
`
`
`
`Case No. IPR2016-00190
`Patent No. 6,160,359
`
`
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`PATENT OWNER MANDATORY NOTICE
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`1
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`

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`Case No. IPR2016-00190
`Patent No. 6,160,359
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`NOTICE OF REAL PARTY IN INTEREST
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`The real party in interest is Intuitive Building Controls, Inc., sole owner of
`
`I.
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`U.S. Patent No. 6,160,359 (hereinafter “the ’359 patent”). Intuitive Building
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`Controls, Inc. is a wholly-owned subsidiary of Wi-LAN Technologies, Inc. (a
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`Delaware corporation), which is a wholly-owned subsidiary of Wi-LAN Inc. (a
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`corporation existing under the laws of Canada). Intuitive Building Controls, Inc.’s
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`business address is 505 East Travis Street, Suite 203, Marshall, Texas 75670.
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`II.
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`NOTICE OF RELATED MATTERS
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`The ’359 patent has been asserted in the following judicial matters, each of
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`which was filed on April 15, 2015 and remains pending in the U.S. District Court
`
`for the Eastern District of Texas:
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`Case No.
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`Caption
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`2:15-cv-00500
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`Intuitive Building Controls, Inc. v. AMX LLC
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`2:15-cv-00502
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`Intuitive Building Controls, Inc. v. Crestron Electronics, Inc.
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`2:15-cv-00503
`
`Intuitive Building Controls, Inc. v. Control4 Corporation
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`The ’359 patent was concurrently filed with U.S. Patent Nos. 5,945,993
`
`(hereinafter “the ’993 patent”) and 6,118,230 (hereinafter “the ’230 patent”) by the
`
`same inventor. The ’359, ’993, and ’230 patents are asserted by Patent Owner in
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`
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`2
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`

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`the above-referenced judicial matters. The ’230 patent is also asserted in the
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`Case No. IPR2016-00190
`Patent No. 6,160,359
`
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`judicial matter of Intuitive Building Controls, Inc. v. UTC Fire & Security
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`Americas Corporation, Inc., Case No. 2:15-cv-00504, currently pending in the
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`United States District Court for the Eastern District of Texas.
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`Petitioner has filed Petitions for inter partes review of the ’230 and ’993
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`patents, which are currently pending as AMX LLC v. Intuitive Building Controls,
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`Inc., Case No. IPR2016-00186, and AMX LLC v. Intuitive Building Controls, Inc.,
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`Case No. IPR2016-00185.
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`Crestron Electronics, Inc. has filed Petitions for inter partes review of the
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`’359 and ’993 patents, which are currently pending as Crestron Electronics, Inc. v.
`
`Intuitive Building Controls, Inc., Case No. IPR2015-01460, and Crestron
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`Electronics, Inc. v. Intuitive Building Controls, Inc., Case No. IPR2015-01379.
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`Crestron Electronics, Inc. has requested reexamination of the ’230 patent.
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`This request has been granted and reexamination is pending as Control No.
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`90/013,357.
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`III.
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`NOTICE OF LEAD AND BACKUP COUNSEL
`
`Lead counsel:
`
`
`Anthony G. Simon, Esq.
`The Simon Law Firm, P.C.
`800 Market Street, Suite 1700
`St. Louis, Missouri 63101
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`3
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`

`
`Case No. IPR2016-00190
`Patent No. 6,160,359
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`
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`Backup counsel (pro hac vice to be requested upon grant of authorization):
`
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`Telephone: (314) 241-2929
`Fax: (314) 241-2029
`Email: asimon@simonlawpc.com
`Registration No. 40813
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`Michael P. Kella, Esq.
`The Simon Law Firm, P.C.
`800 Market Street, Suite 1700
`St. Louis, Missouri 63101
`Telephone: (314) 241-2929
`Fax: (314) 241-2029
`Email: mkella@simonlawpc.com
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`
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`Patent Owner is filing a motion for pro hac vice authorization of Michael P.
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`Kella as backup counsel.
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`Patent Owner is also filing a Power of Attorney naming the above lead and
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`backup counsel as attorneys of record (subject to the Board’s pro hac vice approval
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`of backup counsel).
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`IV.
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`NOTICE OF SERVICE INFORMATION
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`Electronic mail address:
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`IPTeam@simonlawpc.com
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`Postal mailing address:
`
`
`Anthony G. Simon, Esq.
`The Simon Law Firm, P.C.
`800 Market Street, Suite 1700
`St. Louis, Missouri 63101
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`4
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`Case No. IPR2016-00190
`Patent No. 6,160,359
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`Hand delivery address:
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`Same as postal mailing address.
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`Telephone Number:
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`(314) 241-2929
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`Facsimile number:
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`(314) 241-2029
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`
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`Dated: December 11, 2015
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`/ Anthony G. Simon, Reg. No. 40813/
`Anthony G. Simon
`The Simon Law Firm, P.C.
`800 Market Street, Suite 1700
`St. Louis, Missouri 63101
`Telephone: (314) 241-2929
`Email: asimon@simonlawpc.com
`
`
`
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`CERTIFICATE OF SERVICE
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`
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`
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner
`Mandatory Notice Under 37 C.F.R. § 42.8(a)(2) was served via Priority Mail
`Express, by placing a copy in the U.S. Mail directed to the attorneys of record at
`the following address on December 11, 2015:
`
`
`
`Ms. Nicole M. Jantzi
`Mr. Ian B. Brooks
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`5
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`

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`Case No. IPR2016-00190
`Patent No. 6,160,359
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`Email: Nicole.Jantzi@ropesgray.com
`Email: Ian.Brooks@ropesgray.com
`Telephone: (202) 508-4600
`Fax: (202) 508-4650
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`/Anthony G. Simon, Reg. No. 40813/
`Anthony G. Simon
`The Simon Law Firm, P.C.
`800 Market Street, Suite 1700
`St. Louis, Missouri 63101
`Telephone: (314) 241-2929
`Email: asimon@simonlawpc.com
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`Dated: December 11, 2015
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`6

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