`Patent 6,511,499
`
`
`_______________
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SMITH & NEPHEW, INC. &
`ARTHROCARE CORP.,
`Petitioners
`
`v.
`
`ARTHREX, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00486
`Patent 6,511,499
`_______________
`
`MANDATORY NOTICES FOR ARTHREX, INC.
`
`
`
`
`IPR2016-00486
`Patent 6,511,499
`
`Pursuant to 37 CFR § 42.8, Patent Owner Arthrex, Inc. provides the following
`
`mandatory notices:
`
`I.
`
`REAL PARTY-IN-INTEREST (37 CFR § 42.8(b)(1))
`
`The real party-in-interest is Arthrex, Inc. (“Arthrex”), the sole owner of U.S.
`
`Patent No. 6,511,499 (the ’499 patent).
`
`II. RELATED MATTERS (37 CFR § 42.8(b)(2))
`
`1.
`
`PTAB Proceedings
`
`In addition to the present petition for inter partes review, the ’499 patent is
`
`also the subject of a petition for inter partes review filed by Smith & Nephew, Inc.
`
`and Arthrocare Corp. on January 22, 2016 (IPR2016-00483).
`
`U.S. Patent No. 6,214,031, which is related to the ’499 patent, is the subject
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`of a petition for inter partes review filed by Smith & Nephew, Inc. and Arthrocare
`
`Corp. on January 22, 2016 (IPR2016-00484).
`
`U.S. Patent No. 7,195,634, which is related to the ’499 patent, is the subject
`
`of two petitions for inter partes review filed by Smith & Nephew, Inc. and
`
`Arthrocare Corp. on January 22, 2016 (IPR2016-00485 and IPR2016-00487).
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`2.
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`Litigation
`
`The ’499 patent has been asserted in the following patent infringement action,
`
`which presently remains pending in the United States District Court for the Eastern
`
`District of Texas: 2:2015-cv-01047 (Arthrex, Inc. v. Smith & Nephew, Inc. et al.).
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`1
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`3.
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`Patents and Applications
`
`IPR2016-00486
`Patent 6,511,499
`
`
`The ’499 patent claims the benefit of priority to the following applications and
`
`issued patents:
`
`• 09/588,065, filed June 5, 2000 and now Patented as 6,214,031
`
`• 08/954,206, filed October 20, 1997 and now Patented as 6,117,162
`
`• 08/905,393, filed August 4, 1997 and now Abandoned
`
`• Provisional Application 60/023,011 filed August 5, 1996
`
`The following pending patent applications and issued patents claim benefit of
`
`priority to the application that issued as the ’499 patent:
`
`• 10/285,553 filed November 1, 2002 which is Patented as 6,916,333
`
`• 11/177,365 filed July 11, 2005 which is Patented as 7,195,634
`
`• 11/707,067 filed February 16, 2007
`
`• 12/963,102 filed on December 8, 2010
`
`Patent Owner is unaware of any other related matters that would affect or be
`
`affected by this proceeding.
`
`III. LEAD AND BACK-UP COUNSEL (37 CFR 42.8(b)(3))
`
`Patent Owner designates the following lead and back-up counsel:
`
`Anthony P. Cho (Reg. No. 47,209)
`Lead counsel
`Back-up counsel Theodore W. Olds, III (Reg. No. 33,080)
`Back-up counsel Brian S. Tobin (Reg. No. 66,186)
`Back-up counsel Timothy J. Murphy (Reg. No. 64,613)
`
`
`
`2
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`
`
`IPR2016-00486
`Patent 6,511,499
`
`of Carlson, Gaskey & Olds, P.C., 400 West Maple Road, Suite 350, Birmingham,
`
`MI 48009.
`
`A power of attorney from Arthrex to Carlson, Gaskey & Olds, P.C. (Customer
`
`Number 26096) is being filed concurrently with these mandatory notices in
`
`compliance with 37 CFR 42.10(b).
`
`IV. SERVICE INFORMATION (37 CFR § 42.8(b)(4))
`
`Arthrex consents to electronic service in this proceeding by emailing all of the
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`following
`
`
`addresses:
`
`acho@cgolaw.com;
`
`tolds@cgolaw.com;
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`btobin@cgolaw.com; tmurphy@cgolaw.com; sn-iprs@cgolaw.com.
`
`Service on Arthrex in this is requested by email, although Arthrex also
`
`consents to service by sending all correspondence to the lead counsel at the address
`
`indicated above. Further, the attorneys of record may be contacted by telephone at
`
`(248) 988-8360, while their facsimile number is (248) 988-8363.
`
`Respectfully Submitted,
`CARLSON, GASKEY & OLDS, P.C.
`
`
`/Anthony P. Cho/
`Anthony P. Cho
`Registration No. 47,209
`400 West Maple Road, Suite 350
`Birmingham, MI 48009
`Telephone: (248) 988-8360
`
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`Dated: February 11, 2016
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`
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`CERTIFICATE OF SERVICE
`
`IPR2016-00486
`Patent 6,511,499
`
`
`The undersigned certifies that a copy of the foregoing document was served
`
`electronically via email on February 11, 2016, in its entirety on the following:
`
`Michael N. Rader
`Jason M. Honeyman
`Richard F. Giunta
`Jennifer J. Wang
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Tel: (617) 646-8000
`Fax: (617) 646-8646
`MRader-PTAB@wolfgreenfield.com
`JHoneyman-PTAB@wolfgreenfield.com
`RGiunta -PTAB@wolfgreenfield.com
`JWang-PTAB@wolfgreenfield.com
`
`
`Petitioner has consented to electronic service.
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`
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`
`
`/s/ Timothy J. Murphy
`Timothy J. Murphy
`Reg. No. 64,613
`
`
`
`
`
`Date: February 11, 2016
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