UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`v.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`Case No.: IPR2016-01520
`Patent No.: 8,559,635
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`v.
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`Patent Owner
`
`Case No.: IPR2016-01520
`Patent No.: 8,559,635
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Petitioner Apple Inc. hereby submits the
`
`following Updated Mandatory Notices (“Notices”).
`
`I.
`
`II.
`
`37 C.F.R. § 42.8(B)(1): REAL PARTY-IN-INTEREST
`Apple is the real party-in-interest for Petitioner.
`
`37 C.F.R. § 42.8(B)(2): RELATED MATTERS
`PMC asserted the ’635 patent against Apple in Case No. 2:15-cv-01366-
`
`JRG-RSP (E.D. Tex. filed July 30, 2015). Additionally, the ’635 patent is at issue
`
`in IPR2016-00754 (trial instituted), which is pending before the Board. This case
`
`may affect, or be affected by, these proceedings. Apple is not aware of other
`
`proceedings involving the ’635 patent.
`
`Other related PMC patents in the same patent family are also the subject of
`
`related Apple IPRs: IPR2016-00751 (trial instituted, terminated), IPR2016-00753
`
`(trial instituted, terminated), and IPR2016-00755 (trial instituted).
`
`Other related PMC patents in the same patent family were the subject of
`
`IPRs brought by Amazon.com: IPR2014-01527, IPR2014-01528, IPR2014-01530,
`
`IPR2014-01531, IPR2014-01532, IPR2014-01533, and IPR2014-01534. The
`
`current status of those proceedings is as follows:
`
`• The PTAB issued a Final Written Decision in IPR2014-01527 on March
`
`23, 2016, invalidating all challenged claims. PMC filed an appeal, No.
`
`17-1155 (Fed. Cir.), which has been terminated.
`
`1
`
`
`
`
`
`• The PTAB issued a Final Written Decision in IPR2014-01528 on March
`
`23, 2016, invalidating all challenged claims. PMC has filed an appeal,
`
`No. 17-1441 (Fed. Cir.), which is pending.
`
`• The PTAB issued a Final Written Decision in IPR2014-01530 on March
`
`24, 2016, invalidating all challenged claims. PMC has filed an appeal,
`
`No. 17-1588 (Fed. Cir.), which has been terminated.
`
`• The PTAB issued a Final Written Decision in IPR2014-01531 on April 1,
`
`2016, invalidating all challenged claims. PMC has filed an appeal, No.
`
`17-1576 (Fed. Cir.), which has been terminated.
`
`• The PTAB issued a Final Written Decision in IPR2014-01532 on March
`
`29, 2016, invalidating all challenged claims. PMC has filed an appeal,
`
`No. 17-1537 (Fed. Cir.), which has been terminated.
`
`• The PTAB issued a Final Written Decision in IPR2014-01533 on March
`
`8, 2016, invalidating all challenged claims. PMC has filed an appeal, No.
`
`16-2606 (Fed. Cir.), which is pending.
`
`• The PTAB issued a Final Written Decision in IPR2014-01534 on March
`
`22, 2016, invalidating all challenged claims. PMC has filed an appeal,
`
`No. 16-2699 (Fed. Cir.), which has been terminated.
`
`IPRs brought by Zynga were instituted against patents related to the ’635
`
`patent in the following proceedings, but the IPRs were terminated before reaching
`
`2
`
`
`
`
`
`a final decision as a result of a settlement: IPR2013-00156 (trial instituted,
`
`terminated), IPR2013-00162 (trial instituted, terminated), IPR2013-00164 (trial
`
`instituted, terminated), and IPR2013-00171 (trial instituted, terminated).
`
`Other related PMC patents in the same patent family have been asserted in
`
`various federal courts, including the following pending cases: PMC v. TCL Corp.,
`
`2:17-cv-00433-JRG (E.D. Tex.); PMC v. Hisense Co. Ltd., 2:17-cv-00437-JRG
`
`(E.D. Tex.); PMC v. Haier Am. Co. LLC, 2:17-cv-00438-JRG (E.D. Tex.); and
`
`PMC v. Tsinghua Tongfang Co., Ltd. , 2:17-cv-00439-JRG (E.D. Tex.). The
`
`following related cases have been closed, PMC v. Funai Electric Co., Ltd., No.
`
`2:16-cv-00105 (E.D. Tex.); PMC v. Samsung Elecs. Am., Inc., No. 2:15-cv-1754-
`
`JRG-RSP (E.D. Tex.); PMC v. Top Victory Elecs. (Taiwan) Co. Ltd., No. 2:15-cv-
`
`1206-JRG-RSP (E.D. Tex.); and PMC v. Amazon.com Inc., 1:13-cv-01608-RGA
`
`(D. Del.). PMC appealed the district court ruling invalidating all asserted claims in
`
`PMC v. Amazon.com Inc., and the Federal Circuit issued an opinion affirming the
`
`district court’s ruling on December 7, 2016 in PMC v. Amazon.com Inc., No. 15-
`
`2008 (Fed. Cir. Dec. 7, 2016).
`
`III. 37 C.F.R. § 42.8(B)(3) AND (4): LEAD AND BACK-UP COUNSEL
`AND SERVICE INFORMATION
`Apple submits a Power of Attorney. 37 C.F.R. § 42.10(b).
`
`
`
`
`
`3
`
`
`
`
`
`Lead Counsel
`Marcus E. Sernel (Reg. No. 55,606)
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`Email: msernel@kirkland.com
`
`
`
`Back-up Counsel
`Joel R. Merkin (Reg. No. 58,600)
`Eugene Goryunov (Reg. No. 61,579),
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`Telephone: (312) 862-2000
`Fax: (312) 862-2200
`Email: jmerkin@kirkland.com
`Email: egoryunov@kirkland.com
`
`Gregory S. Arovas (Reg. No. 38,818)
`Alan Rabinowitz (Reg. No. 66,217)
`Postal and Hand-Delivery Address:
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10028
`Telephone: (212) 446-4800
`Fax: (212) 446-6460
`Email: garovas@kirkland.com
`Email: arabinowitz@kirkland.com
`
`
`A.
`37 C.F.R. § 42.8(b)(4): Service Information
`Apple consents to service by email at: Apple-PMC-PTAB@kirkland.com.
`
`Date: July 12, 2017
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel (Reg. No. 55,606)
`Joel R. Merkin (Reg. No. 58,600)
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`Attorneys For Petitioner
`
`4
`
`
`
`Petitioner’s Updated Mandatory Notices: IPR2016-01520
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`document was served on July 12, 2017 to the following attorneys of record
`
`by electronic transmission:
`
`Jennifer Albert
`Stephen Schneiner
`GOODWIN PROCTER LLP
`901 New York Avenue N.W.
`Washington, D.C. 20001
`jalbert@goodwinlaw.com
`sschreiner@goodwinlaw.com
`DG-PMC-Apple@goodwinlaw.com
`
`Thomas J. Scott
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC
`14090 Southwest Freeway, Suite 450
`Sugar Land, TX 77478
`tscott@pmcip.com
`
`Date: July 12, 2017
`
`Douglas Kline
`GOODWIN PROCTER LLP
`Exchange Place, 53 State Street
`Boston, Massachusetts 02109
`dkline@goodwinlaw.com
`DG-PMC-Apple@goodwinlaw.com
`
`Sarah Fink
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`sfink@goodwinlaw.com
`DG-PMC-Apple@goodwinlaw.com
`
`/s/ Marcus E. Sernel
`Marcus E. Sernel
`
`
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