`
`Paper No. ____
`Filed: July 20, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`General Plastic Industrial Co., Ltd.
`Petitioner,
`v.
`Canon Kabushiki Kaisha
`Patent Owner.
`________________
`
`Case IPR2016-01360
`U.S. Patent 8,909,094
`________________
`
`PATENT OWNER MANDATORY NOTICES – 37 C.F.R. § 42.8
`
`
`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`Pursuant to 37 C.F.R. § 42.8, Canon Kabushiki Kaisha, the patent owner,
`
`submits the following Mandatory Notices.1
`
`Real Party-In-Interest
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(a)(2), Canon Kabushiki
`
`Kaisha (“Canon”), a corporation having a place of business at 30-2, Shimomaruko
`
`3-chome, Ohta-ku, Tokyo, Japan 146-8501, is the real party-in-interest. Canon is
`
`the owner of U.S. Patent 8,909,094 (“the ’094 Patent”). Two assignments were
`
`recorded with the U.S. Patent and Trademark Office in earlier-filed applications in
`
`the same family on May 15, 2002, at Reel No. 012901, Frame No. 0948, and on
`
`September 10, 2003, at Reel No. 014472, Frame No. 0830.
`
`Related Matters
`The ’094 Patent was the subject of an inter partes review petition filed by
`
`General Plastic Industrial Co., Ltd. (“Petitioner”) on September 25, 2015, which
`
`the Board denied. General Plastic Indus. Co. v. Canon Inc., IPR2015-01954,
`
`Paper No. 9 (P.T.A.B. Mar. 9, 2016) (institution denial); General Plastic Indus.
`
`Co. v. Canon Inc., IPR2015-01954, Paper No. 11 (P.T.A.B. May 19, 2016)
`
`(rehearing denial).
`
`1 The English translation of “Canon Kabushiki Kaisha” is “Canon Inc.”
`
`1
`
`
`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`The ’094 Patent is also the subject of two additional inter partes review
`
`petitions filed by Petitioner on July 8, 2016—IPR2016-01359 and IPR2016-01361.
`
`Canon is also aware of the following related litigation matter: In the Matter
`
`of Certain Toner Supply Containers And Components Thereof, Inv. No. 337-TA-
`
`960 (U.S.I.T.C. instituted July 10, 2015), which was terminated after Respondents
`
`(including the present Petitioner) filed an unopposed motion to terminate the
`
`investigation based upon a consent order stipulation.
`
`Also, the following pending patent application is in the same patent family
`
`as the subject patent:
`
`U.S. Patent Appln. No. 14/533,470.
`
`Lead and Back-Up Counsel
`
`Canon designates the following lead and back-up counsel:
`
`LEAD COUNSEL
`Edmund J. Haughey
`(Reg. No. 44,749)
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (202) 530-1010
`Fax: (212) 218-2200
`
`BACK-UP COUNSEL
`Michael P. Sandonato
`(Reg. No. 35,345)
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 218-2100
`Fax: (212) 218-2200
`
`2
`
`
`
`LEAD COUNSEL
`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`BACK-UP COUNSEL
`Justin J. Oliver
`(Reg. No. 44,986)
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (202) 530-1010
`Fax: (212) 218-2200
`
`Service Information
`
`Canon consents to electronic service using the following email address:
`
`Canon094IPR@fchs.com
`
`Any questions concerning this paper may be directed to lead counsel listed
`
`below.
`
`3
`
`
`
`Case IPR2016-01360
`U.S. Patent No. 8,909,094
`
`July 20, 2016
`
`Respectfully submitted,
`
`/Edmund J. Haughey/______________
`Edmund J. Haughey (Reg. No. 44,749)
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER & SCINTO
`Tel: (202) 530-1010
`
`Back-up Counsel:
`
`Michael P. Sandonato (Reg. No. 35,345)
`FITZPATRICK, CELLA, HARPER & SCINTO
`Tel: (212) 218-2100
`
`Justin J. Oliver (Reg. No. 44,986)
`FITZPATRICK, CELLA, HARPER & SCINTO
`Tel: (202) 530-1010
`
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`Fax: (212) 218-2200
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on this
`
`date, a true and correct copy of the Patent Owner’s Mandatory Notices was
`
`electronically served on the Petitioner at the following email address:
`
`smeyer@lockelord.com
`
`July 20, 2016
`
`/Edmund J.Haughey/_______
`Edmund J. Haughey
`Counsel for Patent Owner
`Registration No. 44,749
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
