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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`MERCEDES-BENZ USA, LLC
`
`Petitioner
`
`v.
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.
`
`Patent Owner
`
`__________
`
`
`
`
`
`Case IPR2016-00501
`Patent 7,241,034
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`

`
`Case IPR2016-00501
`Patent 7,241,034
`
`
`
`
`
`ADAPTIVE HEADLAMP TECHNOLOGIES, INC.’S MANDATORY
`NOTICES UNDER 37 C.F.R. § 42.8
`
`Pursuant to 37 C.F.R. § 42.8, the Patent Owner submits the following
`
`Mandatory Notices in response to the Petition for Inter Partes Review Under 37
`
`C.F.R. § 42.100.
`
`
`
`
`
`1.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Adaptive Headlamp Technologies, Inc. is the owner by assignment of all
`
`substantial interests in U.S. Patent No. 7,241,034 B2 (“the ‘034 patent”). Adaptive
`
`Headlamp Technologies, Inc. is a wholly owned subsidiary of Wi-LAN
`
`Technologies, Inc. which is a wholly owned subsidiary of Wi-LAN, Inc., a
`
`publicly traded company.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following Inter Partes Review proceedings, in which the ‘034 patent is
`
`the sole patent at issue, may affect or be affected by a decision in this proceeding:
`
`(a) Koito Manufacturing Co., Ltd. v. Adaptive Headlamp Technologies,
`
`Inc., Case IPR2016-00079;
`
`(b) BMW of North America, LLC v. Adaptive Headlamp Technologies,
`
`Inc., Case IPR2016-00196; and
`
`(c)
`
`v. Adaptive Headlamp Technologies, Inc., Case IPR2016-00193.
`
`2
`
`

`
`Case IPR2016-00501
`Patent 7,241,034
`
`
`
`The following judicial matters, in which the ‘034 patent is at issue, may
`
`affect or be affected by a decision in this proceeding:
`
`(a) Adaptive Headlamp Technologies, Inc. v. BMW of North America,
`
`LLC, Civil Action No. 1:14cv00962, pending in the District of Delaware.
`
`(b) Adaptive Headlamp Technologies, Inc. v. FCA US LLC (“Chrysler”),
`
`Maserati North America, Inc. & Fiat Chrysler Automobiles N.V., Civil Action No.
`
`1:15cv00073, pending in the District of Delaware.
`
`(c) Adaptive Headlamp Technologies, Inc. v. General Motors LLC, Civil
`
`Action No. 1:15cv00781, pending in the District of Delaware.
`
`(d) Adaptive Headlamp Technologies, Inc. v. Hyundai Motor America,
`
`Civil Action No. 1:15cv00563, pending in the District of Delaware.
`
`(e) Adaptive Headlamp Technologies, Inc. v. Mazda Motor of North
`
`America, Inc., Civil Action No. 1:15cv00782, pending in the District of Delaware.
`
`(f)
`
`Adaptive Headlamp Technologies, Inc. v. Mercedes-Benz USA LLC,
`
`Civil Action No.1:15cv00075, pending in the District of Delaware.
`
`(g) Adaptive Headlamp Technologies, Inc. v. Nissan North America Inc.,
`
`Civil Action No. 1:15cv00074, pending in the District of Delaware.
`
`(h) Adaptive Headlamp Technologies, Inc. v. Toyota Motor Sales, U.S.A.,
`
`Inc., Civil Action No. 1:15cv00779, pending in the District of Delaware; and
`
`3
`
`

`
`Case IPR2016-00501
`Patent 7,241,034
`
`
`
`(i)
`
`Adaptive Headlamp Technologies, Inc. v. Volvo Cars of North
`
`America, LLC, Civil Action No. 1:15cv00780, pending in the District of Delaware
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Patent Owner provides the
`
`following designation of counsel:
`
`Lead Counsel:
`
`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`
`Back-up Counsel:
`
`Jonathan T. Suder
`(pro hac vice motion pending)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`jts@fsclaw.com
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), Power of Attorneys for lead and back-up
`
`counsel are filed herewith.
`
`A motion seeking pro hac vice admission for back-up counsel Jonathan T.
`
`Suder pursuant to 37 C.F.R. § 42.10(c) is filed herewith.
`
`
`
`
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Patent Owner consents to email service for the respective lead or back-up
`
`counsel designated above, with courtesy copies to IPR@fsclaw.com. Telephone
`
`and facsimile numbers for lead and back-up counsel are designated above.
`
`4
`
`

`
`Case IPR2016-00501
`Patent 7,241,034
`
`
`
`5.
`
`Payment of Fees under 37 C.F.R. § 42.103
`
`The undersigned authorizes the U.S. Patent and Trademark Office to charge
`
`any applicable fees associated with this proceeding to Deposit Account No. 50-
`
`6282.
`
`Dated: February 23, 2016.
`
`Respectfully submitted,
`
`By: / Brett M. Pinkus/
`Brett M. Pinkus
`Registration No. 59,980
`
`
`
`Back-up Counsel:
`
`Jonathan T. Suder
`(pro hac vice motion pending)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`jts@fsclaw.com
`
`
`
`
`
`Lead Counsel:
`
`Brett M. Pinkus (Reg. No. 59,980)
`Friedman, Suder & Cooke
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`
`
`
`
`
`
`5
`
`

`
`Case IPR2016-00501
`Patent 7,241,034
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on this the 23rd day of February, 2016, a true and
`
`correct copy of the foregoing PATENT OWNER’S MANDATORY NOTICES
`
`UNDER 37 C.F.R. § 42.8 were served via electronic mail upon counsel of record
`
`for Petitioner, as agreed by counsel, at the following addresses:
`
`James M. Glass (jimglass@quinnemanuel.com)
`
`Marc Kaplan (marckaplan@quinnemanuel.com)
`
`Dated: February 23, 2016.
`
`
`
`By: / Brett M. Pinkus/
`Brett M. Pinkus
`Registration No. 59,980
`
`6

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