`Filed: March 23, 2016
`
`
`Filed on behalf of: BodyMedia, Inc.
`By: Michael T. Rosato (mrosato@wsgr.com)
`
`Andrew S. Brown (asbrown@wsgr.com)
`
`Jose C. Villarreal (jvillarreal@wsgr.com)
`
`WILSON SONSINI GOODRICH & ROSATI
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`BODYMEDIA, INC.,
`Patent Owner.
`_____________________________
`
`Case IPR2016-00707
`Patent No. 8,398,546
`_____________________________
`
`
`
`PATENT OWNER’S MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`Case IPR2016-00707
`Patent 8,398,546
`
`Pursuant to 37 C.F.R. § 42.8, the undersigned on behalf of and acting in a
`
`representative capacity for BodyMedia, Inc. (“Patent Owner”), hereby submits the
`
`following mandatory notices in connection with the petition for inter partes review of
`
`U.S. Patent No. 8,398,546, Case IPR2016-00707.
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real parties in interest are BodyMedia, Inc. and AliphCom, Inc. d/b/a
`
`Jawbone. BodyMedia, Inc. is a wholly owned subsidiary of AliphCom, Inc. d/b/a
`
`Jawbone.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
`
`following related matters:
`
`The ’546 patent has been asserted in AliphCom d/b/a Jawbone and BodyMedia,
`
`Inc. v. Fitbit, Inc., No 3:15-cv-02579 (N.D. Cal.), and Certain Activity Tracking
`
`Devices, Systems, and Components Thereof, Inv. No. 337-TA-963 (ITC).
`
`There are currently three inter partes reexaminations pending involving patents
`
`in the same family as the ’546 patent: Basis Sci., Inc. v. BodyMedia, Inc., Control No.
`
`95/002,376 (USPTO), Basis Sci., Inc. v. BodyMedia, Inc., Control No. 95/002,371
`
`(USPTO), and Basis Sci., Inc. v. BodyMedia, Inc., Control No. 95/002,354 (USPTO).
`
`-2-
`
`
`
`Case IPR2016-00707
`Patent 8,398,546
`
`Two of the related patents are also involved in BodyMedia, Inc. v. Basis Sci.,
`
`Inc., No. 2015-1786 (Fed. Cir.), and BodyMedia, Inc. v. Basis Sci., Inc., No. 2015-
`
`1788 (Fed. Cir.).
`
`Petitioner has also filed petitions requesting review of two related patents as
`
`Fitbit, Inc. v. BodyMedia, Inc., Case IPR2016-00543 (PTAB), and Fitbit, Inc. v.
`
`BodyMedia, Inc., Case IPR2016-00545 (PTAB).
`
`
`
`C. Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3))
`
`
`
`Patent Owner provides the following updated designation of counsel:
`
`Lead Counsel
`
`Back-Up Counsel
`
`Michael T. Rosato
`USPTO Reg. No. 52,182
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`
`
`Andrew S. Brown
`USPTO Reg. No. 74,177
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2584
`Fax: 206-883-2699
`Email: asbrown@wsgr.com
`Jose C. Villarreal
`USPTO Reg. No. 43,969
`WILSON SONSINI GOODRICH &
`ROSATI
`900 South Capital of Texas Hwy
`Las Cimas IV, Fifth Floor
`Austin, TX 78746-5546
`Tel.: 512-338-5424
`Fax: 512-338-5499
`Email: jvillarreal@wsgr.com
`
` A
`
` new power of attorney accompanies this notice.
`
`-3-
`
`
`
`Case IPR2016-00707
`Patent 8,398,546
`
`D. Electronic Service
`
`Patent Owner consents to electronic service by email at the email addresses
`
`provided above.
`
`
`
`Date: March 23, 2016
`
`
`
`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`
`-4-
`
`
`
`Case IPR2016-00707
`Patent 8,398,546
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Patent Owner’s Mandatory Notices
`
`under § 42.8 and accompanying Power of Attorney were served on March 23, 2016,
`
`on the Petitioner at the correspondence address of the Petitioner as follows:
`
`
`Naveen Modi
`Yar R. Chaikovsky
`Michael C. Hendershot
`David T. Okano
`PAUL HASTINGS LLP
`875 15th St. N.W.
`Washington, D.C., 20005
`PH-Fitbit-Aliph-IPR@paulhastings.com
`
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`Dated: March 23, 2016
`
`
`
`-5-
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