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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TOYOTA MOTOR CORPORATION,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2016-00291
`Patent 5,732,375
`____________
`
`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. 5,732,375 is at issue in the following pending litigation:
`
`• Signal IP, Inc. v Toyota Motor Sales, USA, Inc., et al., 2-15-cv-05162
`(CACD);
`• Signal IP, Inc. v. Ford Motor Company, 2-14-cv-13729 (MIED);
`• 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
`(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-
`
`2
`
`
`
`

`
`02454 (CACD);
`• Signal IP, Inc. v. Mitsubishi Motors North America, Inc., Case No. 8-
`14-cv-00497 (CACD); and
`• Signal IP, Inc. v. Mazda Motor of America, Inc., Case No 8-14-cv-
`00491 (CACD).
`
`
`
`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 5,732,375.
`
`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: . . .
`
`(ii) claims 1 and 7 of the ’375 patent . . . .
`
`Plaintiff and Defendants reserve all appellate rights,
`
`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
`
`3
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`
`
`

`
`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
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`U.S. District Court for the Central District of California entered a Partial
`
`Judgment of Invalidity, Ex. 3001, that, inter alia, claims 1 and 7 of U.S.
`
`Patent No. 5,732,375 are invalid as indefinite under 35 U.S.C. § 112,
`
`paragraph 2.
`
`
`
`U.S. Patent No. 5,732,375 was also at issue in Reexamination Control
`
`No. 90/013,386. Reexamination certificate US 5,732,375 C1 issued Jul. 30,
`
`2015.
`
`U.S. Patent No. 5,732,375 was also at issue in IPR2015-01003, not
`
`instituted.
`
`
`
`(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
`Email: tarek.fahmi@ascendalaw.com
`
`
`4
`
`

`
`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
`
`
`
`
`
`
`
`Back-up Counsel: Jason A. LaBerteaux (Reg. No. 65,724)
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`email: jason.laberteaux@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.
`
`5
`
`
`
`
`
`

`
`
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`
`
`Dated: December 11, 2015
`
`
`
`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: tarek.fahmi@ascendalaw.com
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`
`
`
`
`6
`
`

`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`PATENT OWNER’S MANDATORY NOTICES
`was served on December 11, 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:
`A. Antony Pfeffer
`George E. Badenoch
`John Flock
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`ptab@kenyon.com
`apfeffer@kenyon.com
`gbadenoch@kenyon.com
`jflock@kenyon.com,
`
`
`
`Respectfully submitted,
`/Tarek N. Fahmi/
`
`Tarek N. Fahmi
`Reg. No. 41,402
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: December 11, 2015
`
`
`
`
`
`
`
`
`
`
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`Email: patents@ascendalaw.com
`
`
`
`7

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