`Patent 8,801,755
`
`
`_______________
`
`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 IPR2016-00508
`Patent 8,801,755
`_______________
`
`MANDATORY NOTICES FOR ARTHREX, INC.
`
`
`
`
`IPR2016-00508
`Patent 8,801,755
`
`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. 8,801,755 (the ’755 patent).
`
`II. RELATED MATTERS (37 CFR § 42.8(b)(2))
`
`1.
`
`PTAB Proceedings
`
`In addition to the present petition for inter partes review, the ’755 patent is
`
`also the subject of a petition for inter partes review filed by Smith & Nephew, Inc.
`
`and Arthrocare Corp. on January 27, 2016 (IPR2016-00507).
`
`U.S. Patent No. 8,343,186, which is related to the ’755 patent, is the subject
`
`of a petition for inter partes review filed by Smith & Nephew, Inc. and Arthrocare
`
`Corp. on January 27, 2016 (IPR2016-00505).
`
`U.S. Patent No. 8,623,052, which is related to the ’755 patent, is the subject
`
`of a petition for inter partes review filed by Smith & Nephew, Inc. and Arthrocare
`
`Corp. on January 27, 2016 (IPR2016-00506).
`
`2.
`
`Litigation
`
`The ’755 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.).
`
`
`
`1
`
`
`
`3.
`
`Patents and Applications
`
`IPR2016-00508
`Patent 8,801,755
`
`
`The ’755 patent claims the benefit of priority to the following applications and
`
`issued patents:
`
`• 13/933,575 filed July 2, 2013 which is Patented as 8,623,052
`
`• 12/751,266 filed March 31, 2010 which is Abandoned
`
`• 11/097,172 filed April 4, 2005 which is Patented as 8,343,186
`
`• Provisional Application 60/559,425 filed April 6, 2004
`
`The following pending patent applications and issued patents claim benefit of
`
`priority to the application that issued as the ’755 patent:
`
`• 14/155,556 filed January 15, 2014
`
`• 14/487,459 filed September 16, 2014
`
`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
`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)
`
`of Carlson, Gaskey & Olds, P.C., 400 West Maple Road, Suite 350, Birmingham,
`
`MI 48009.
`
`
`
`2
`
`
`
`IPR2016-00508
`Patent 8,801,755
`
`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
`
`following
`
`
`addresses:
`
`acho@cgolaw.com;
`
`jcarlson@cgolaw.com;
`
`btobin@cgolaw.com; qharrison@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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: February 11, 2016
`
`
`
`
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR2016-00508
`Patent 8,801,755
`
`
`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:
`
`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
`
`Petitioner has consented to electronic service.
`
`
`
`Date: February 11, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Quincy J. Harrison
`Quincy J. Harrison
`Reg. No. 65,374
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
