`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`UMICORE S.A and UMICORE USA INC.,
`Petitioners,
`
`v.
`
`UCHICAGO ARGONNE, LLC,
`Patent Owner.
`
`
`
`
`
`Case IPR2016-00253
`Patent 6,680,143 B2
`____________________
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner UChicago Argonne, LLC
`
`(“Argonne”) hereby submits the following mandatory notices in connection with
`
`Umicore S.A. and Umicore USA Inc.’s Petition for Inter Partes Review of U.S.
`
`Patent No. 6,680,143, Case No. IPR2016-00253.
`
`I.
`
`37 C.F.R. § 42.8(b)(1): REAL PARTY-IN-INTEREST
`
`The real parties-in-interest are:
`
`(1) Argonne, an Illinois limited liability company with a principal place of
`
`business at 9700 S. Cass Avenue, Lemont, Illinois 60439; Argonne is the operator
`
`of Argonne National Laboratory under U.S. Department of Energy Contract No.
`
`DE-AC02-06CH11357; Argonne is the full owner of all rights and title in U.S.
`
`Patent No. 6,680,143; and
`
`(2) BASF Corporation, a Delaware corporation with a principal place of
`
`business at 100 Park Avenue, Florham Park, New Jersey 07932; BASF
`
`Corporation is an exclusive licensee of U.S. Patent No. 6,680,143, with the right to
`
`enforce the patent.
`
`II.
`
`37 C.F.R. § 42.8(B)(2): RELATED MATTERS
`
`Argonne identifies the following matters that may be deemed related
`
`pursuant to 37 C.F.R. § 42.8(b)(2):
`
`• In the Matter of Certain Lithium Metal Oxide Cathode Materials, Lithium-
`Ion Batteries for Power Tool Products Containing Same, and Power Tool
`Products with Lithium-Ion Batteries Containing Same, Investigation No.
`337-TA-951 (USITC);
`
`2
`
`
`
`0 BASF Corporation, et al. v. UmicoreN. V., et al., C.A. No. 15-172-LPS-CJB
`(D. Del.); and
`
`0 Petition for Inter Partes Review of U.S. Patent No. 6,677,082 (Case No.
`IPR2016—00242).
`
`III.
`
`37 C.F.R. § 42.8(B)(3) AND (4): LEAD AND BACK-UP COUNSEL
`
`Argonne designates the following counsel to transact all business in the
`
`United States Patent & Trademark Office associated with the above-captioned
`
`Petition for Inter Partes Review of U.S. Patent No. 6,680,143:
`
`Lead Counsel
`
`Back-U Counsel
`
`Gregg F. LoCascio, P.C.
`Reg. No. 55,396
`gregg.locascio@kirkland.com
`KIRKLAND & ELLIS LLP
`
`Eugene Goryunov
`Reg. No. 61,579
`eugene.goryunov@kirkland.com
`KIRKLAND & ELLIS LLP
`
`Facsimile: 202 879-5200
`
`655 Fifteenth Street NW
`
`300 North LaSalle
`
`Suite 1200
`Washington, DC 20005
`Telephone: (202) 879-5290
`
`Chicago, IL 60654
`Telephone: (312) 862-7059
`Facsimile: (312) 862-2200
`
`A power of attorney from Argonne for Kirkland & Ellis LLP is being filed
`
`concurrently with these Mandatory Notices.
`
`IV.
`
`37 C.F.R. § 42.8(b)(4): SERVICE INFORMATION
`
`Argonne
`
`consents
`
`to
`
`electronic
`
`service
`
`by
`
`
`at
`
`BASF_IPR@kirkland.com
`
`(referencing
`
`IPR20l6-00253
`
`and
`
`copying
`
`gregg.locascio@kirkland.com and eugene-goryunov@kirkland-com).
`
`To the
`
`extent another fonn of service or contact method is needed, Gregg F. LoCascio,
`
`P.C. should be contacted at the contact information provided above.
`
`
`
`
`
`
`Date: December 21, 2015
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Gregg F. LoCascio, P.C.
`Gregg F. LoCascio, P.C. (Reg. No. 55,396)
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street
`Suite 1200
`Washington, DC 20005
`Telephone: (202) 879-5290
`Facsimile: (202) 879-5200
`gregg.locascio@kirkland.com
`
`Eugene Goryunov (Reg. No. 61,579)
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, IL 60654
`Telephone: (312) 862-7059
`Facsimile: (312) 862-2200
`eugene.goryunov@kirkland.com
`
`Attorneys for Patent Owner
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Mandatory Notices was served on December 21, 2015, by filing this
`
`document through the Patent Review Processing System as well as via email
`
`directed to counsel of record for the Petitioner at the following:
`
`
`
`IPR41377-0003IP1@fr.com
`riffe@fr.com
`colaianni@fr.com
`in@fr.com
`ptabinbound@fr.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Gregg F. LoCascio, P.C.
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