`Patent 8,801,755
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`_______________
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`SMITH & NEPHEW, INC. &
`ARTHROCARE CORP.,
`Petitioners
`
`v.
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`ARTHREX, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00507
`Patent 8,801,755
`_______________
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`MANDATORY NOTICES FOR ARTHREX, INC.
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`
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`IPR2016-00507
`Patent 8,801,755
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`Pursuant to 37 CFR § 42.8, Patent Owner Arthrex, Inc. provides the following
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`mandatory notices:
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`I.
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`REAL PARTY-IN-INTEREST (37 CFR § 42.8(b)(1))
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`The real party-in-interest is Arthrex, Inc. (“Arthrex”), the sole owner of U.S.
`
`Patent No. 8,801,755 (the ’755 patent).
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`II. RELATED MATTERS (37 CFR § 42.8(b)(2))
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`1.
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`PTAB Proceedings
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`In addition to the present petition for inter partes review, the ’755 patent is
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`also the subject of a petition for inter partes review filed by Smith & Nephew, Inc.
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`and Arthrocare Corp. on January 27, 2016 (IPR2016-00508).
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`U.S. Patent No. 8,343,186, which is related to the ’755 patent, is the subject
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`of a petition for inter partes review filed by Smith & Nephew, Inc. and Arthrocare
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`Corp. on January 27, 2016 (IPR2016-00505).
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`U.S. Patent No. 8,623,052, which is related to the ’755 patent, is the subject
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`of a petition for inter partes review filed by Smith & Nephew, Inc. and Arthrocare
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`Corp. on January 27, 2016 (IPR2016-00506).
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`2.
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`Litigation
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`The ’755 patent has been asserted in the following patent infringement action,
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`which presently remains pending in the United States District Court for the Eastern
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`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
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`IPR2016-00507
`Patent 8,801,755
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`The ’755 patent claims the benefit of priority to the following applications and
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`issued patents:
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`• 13/933,575 filed July 2, 2013 which is Patented as 8,623,052
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`• 12/751,266 filed March 31, 2010 which is Abandoned
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`• 11/097,172 filed April 4, 2005 which is Patented as 8,343,186
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`• Provisional Application 60/559,425 filed April 6, 2004
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`The following pending patent applications and issued patents claim benefit of
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`priority to the application that issued as the ’755 patent:
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`• 14/155,556 filed January 15, 2014
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`• 14/487,459 filed September 16, 2014
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`Patent Owner is unaware of any other related matters that would affect or be
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`affected by this proceeding.
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`III. LEAD AND BACK-UP COUNSEL (37 CFR 42.8(b)(3))
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`Patent Owner designates the following lead and back-up counsel:
`
`Anthony P. Cho (Reg. No. 47,209)
`Lead counsel
`John E. Carlson (Reg. No. 37,794)
`Back-up counsel
`Back-up counsel Brian S. Tobin (Reg. No. 66,186)
`Back-up counsel Quincy J. Harrison (Reg. No. 65,374)
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`of Carlson, Gaskey & Olds, P.C., 400 West Maple Road, Suite 350, Birmingham,
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`MI 48009.
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`2
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`IPR2016-00507
`Patent 8,801,755
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`A power of attorney from Arthrex to Carlson, Gaskey & Olds, P.C. (Customer
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`Number 26096) is being filed concurrently with these mandatory notices in
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`compliance with 37 CFR 42.10(b).
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`IV. SERVICE INFORMATION (37 CFR § 42.8(b)(4))
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`Arthrex consents to electronic service in this proceeding by emailing all of the
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`following
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`addresses:
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`acho@cgolaw.com;
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`jcarlson@cgolaw.com;
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`btobin@cgolaw.com; qharrison@cgolaw.com; sn-iprs@cgolaw.com.
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`Service on Arthrex in this is requested by email, although Arthrex also
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`consents to service by sending all correspondence to the lead counsel at the address
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`indicated above. Further, the attorneys of record may be contacted by telephone at
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`(248) 988-8360, while their facsimile number is (248) 988-8363.
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`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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`3
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`CERTIFICATE OF SERVICE
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`IPR2016-00507
`Patent 8,801,755
`
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`The undersigned certifies that a copy of the foregoing document was served
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`electronically via email on February 11, 2016, in its entirety on the following:
`
`Randy J. Pritzker
`Michael N. Rader
`Richard F. Giunta
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue
`Boston, MA 02210
`Tel: (617) 646-8000
`Fax: (617) 646-8646
`RPritzker-PTAB@wolfgreenfield.com
`MRader-PTAB@wolfgreenfield.com
`RGiunta-PTAB@wolfgreenfield.com
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`Petitioner has consented to electronic service.
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`
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`Date: February 11, 2016
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`/s/ Quincy J. Harrison
`Quincy J. Harrison
`Reg. No. 65,374
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