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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`TOYOTA MOTOR NORTH AMERICA, INC. and
`TOYOTA MOTOR SALES, U.S.A., INC.,
`Petitioner,
`v.
`SIGNAL IP, INC.,
`Patent Owner.
`____________
`Case IPR2016-00292
`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),
`
`IPR2016-00115 (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
`
`
`
`
`
`
`
`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
`
`

`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`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
`
`
`
`
`
`/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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