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Paper No. ___
`Filed: September 30, 2016
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`R.J. REYNOLDS VAPOR COMPANY,
`Petitioner,
`
`v.
`
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`______________
`
`
`
`Case IPR2016-01532
`Patent No. 8,365,742
`
`
`
`______________________________________________________________
`
`
`
`PATENT OWNER’S SUPPLEMENTAL MANDATORY NOTICES
`
`

`
`Case IPR2016-01532
`Patent No. 8,365,742
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner, Fontem Holdings 1 B.V.
`
`submits the following Mandatory Notices in response to the above-captioned
`
`Petition for Inter Partes Review of U.S. Patent No. 8,365,742 (“the ‘742 patent”
`
`or “the involved patent”).
`
`2. Related Proceedings
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
`
`following additional related administrative matters:
`
`kk. Petition for Inter Partes Review of U.S. Patent No. 8,365,742
`
`(which shares priority claims with the involved patent), Case No. IPR2016-01532,
`
`before the Patent Trial and Appeal Board at the U.S. Patent Office, filed August 5,
`
`2016 by Petitioner R.J. Reynolds Vapor Company;
`
`ll.
`
`Petition for Inter Partes Review of U.S. Patent No. 9,326,548
`
`(which shares priority claims with the involved patent), Case No. IPR2016-01691,
`
`before the Patent Trial and Appeal Board at the U.S. Patent Office, filed August
`
`30, 2016 by Petitioner R.J. Reynolds Vapor Company; and
`
`mm. Petition for Inter Partes Review of U.S. Patent No. 9,326,548
`
`(which shares priority claims with the involved patent), Case No. IPR2016-01692,
`
`before the Patent Trial and Appeal Board at the U.S. Patent Office, filed August
`
`30, 2016 by Petitioner R.J. Reynolds Vapor Company.
`
`
`
`1
`
`

`
`3. Lead and Back-up Counsel
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner identifies Tyler R.
`
`Case IPR2016-01532
`Patent No. 8,365,742
`
`Bowen as additional back-up counsel:
`
`Michael J. Wise
`Lead Counsel
`USPTO Reg. No. 34,047
`
`PERKINS COIE LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
`Facsimile: 310-788-3399
`Email: MWise@perkinscoie.com
`
`
`
`
`
`
`4.
`
`Service Information
`
`Joseph P. Hamilton
`Back-up Counsel
`USPTO Reg. No. 51,770
`
`PERKINS COIE LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3271
`Facsimile: 310-788-3399
`Email: JHamilton@perkinscoie.com
`
`
`Tyler R. Bowen
`Back-up Counsel
`USPTO Reg. No. 60,461
`
`PERKINS COIE LLP
`2901 North Central Avenue Suite 2000
`Phoenix, AZ 85012
`Phone: (602) 351-8448
`Email: TBowen@perkinscoie.com
`
`
`
`In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner identifies the
`
`following service information. Counsel for Patent Owner consents to service of
`
`documents via electronic mail.
`
`
`
`
`
`
`
`2
`
`

`
`
`
`Electronic Mail:
`
`Postal Mailing Address:
`
`Hand Delivery Address:
`
`Case IPR2016-01532
`Patent No. 8,365,742
`
`MWise@perkinscoie.com
`JHamilton@perkinscoie.com
`JDerosier@perkinscoie.com
`TBowen@perkinscoie.com
`ACandeloro@perkinscoie.com
`patentprocurement@perkinscoie.com
`
`Patent Docketing
`PERKINS COIE LLP
`P.O. Box 1247
`Seattle, WA 98111-1247
`
`Michael J. Wise
`Joseph P. Hamilton
`PERKINS COIE LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`
`Telephone Number:
`
`Facsimile Number:
`
`310-788-3271
`
`310-788-3399
`
`Respectfully submitted,
`
` / Joseph P. HAMILTON /
`
`Joseph P. Hamilton, Reg. No. 51,770
`Perkins Coie LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3271
`Facsimile: 310-788-3399
`Email: JHamilton@PerkinsCoie.com
`
`Counsel for Patent Owner
`
`Date: September 20, 2016
`
`
`
`By:
`
`
`
`3
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`Case IPR2016-01532
`Patent No. 8,365,742
`
`The undersigned hereby certifies that service on Petitioner was made as
`
`follows, in accordance with 37 CFR 42.6(e):
`
`Date of service:
`
`September 20, 2016
`
`Manner of service:
`
`1. Electronic submission through the USPTO Patent Trial
`and Appeal Board End-to-End System
`2. Electronic mail
`
`Document(s) served: PATENT OWNER’S SUPPLEMENTAL
`MANDATORY NOTICES
`
`Persons served:
`
`Ralph J. Gabric, Lead Counsel
`Robert Mallin, Back-up Counsel
`Yuezhong Feng, Back-up Counsel
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 Cityfront Plaza Drive
`Chicago IL 60611-5599
`rgabric@brinksgilson.com
`rmallin@brinksgilson.com
`yfeng@brinksgilson.com
`
`
`/Amy Candeloro/
`Amy Candeloro, Paralegal
`Perkins Coie LLP

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