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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`REACTIVE SURFACES LTD. LLP,
`
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`Case IPR2016-01914
`
`Patent No. 8,394,618 B2
`
`
`
`
`
`
`
`
`
`PATENT OWNERS’ UPDATED MANDATORY NOTICES
`
`

`

`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`Pursuant to 37 C.F.R. § 42.8, Toyota Motor Corporation (“TMC”) and the
`
`Regents of the University of Minnesota (the “University”), the joint owners of the
`
`subject patent, submit the following updated mandatory notices.1
`
`I.
`
`
`
`Real Parties-in-Interest
`
`The mandatory notices originally submitted by TMC identified TMC, the
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`University, and Toyota Motor Engineering & Manufacturing North America, Inc.
`
`(TMC’s corporate subsidiary) as the real parties-in-interest. TMC and the
`
`University are not aware of any additional real parties-in-interest.
`
`II. Related Matters
`
`
`
`The mandatory notices originally submitted by TMC identified all related
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`judicial or administrative matters of which it was aware. After TMC submitted its
`
`original mandatory notices, Petitioner Reactive Surfaces Ltd. LLP filed a petition
`
`for inter partes review of another patent jointly owned by TMC and the University,
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`U.S. Patent No. 8,252,571 B2. That petition is pending in IPR2017-00572. TMC
`
`and the University are not aware of any additional related matters.
`
`
`
`1 The Petition named TMC as the only patent owner of record. TMC timely
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`submitted its mandatory notices, in which it identified the University as its co-
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`assignee and one of the real parties-in-interest. (Paper 4 at 1.) TMC and the
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`University now jointly submit these updated mandatory notices to confirm the
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`University’s status as a joint owner of the patent.
`
`
`
`
`
` 1
`
`

`

`III. Lead and Back-up Counsel
`
`LEAD COUNSEL
`Joshua A. Lorentz
`Reg. No. 52,406
`Dinsmore & Shohl LLP
`255 E. Fifth St., Ste. 1900
`Cincinnati, OH 45202
`T: (513) 977-8564
`F: (513) 977-8141
`E: joshua.lorentz@dinsmore.com
`BACK-UP COUNSEL
`John D. Luken (pro hac vice)
`Dinsmore & Shohl LLP
`255 E. Fifth St., Ste. 1900
`Cincinnati, OH 45202
`T: (513) 977-8323
`F: (513) 977-8141
`E: john.luken@dinsmore.com
`
`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`
`BACK-UP COUNSEL
`Richard H. Schabowsky
`Reg. No. 68,829
`Dinsmore & Shohl LLP
`93 Shennecosset Rd., Ste. 109
`Groton, CT 06340
`T: (502) 540-2301
`F: (502) 585-2207
`E: richard.schabowsky@dinsmore.com
`BACK-UP COUNSEL
`Oleg Khariton (pro hac vice)
`Dinsmore & Shohl LLP
`255 E. Fifth St., Ste. 1900
`Cincinnati, OH 45202
`T: (513) 977-8323
`F: (513) 977-8141
`E: oleg.khariton@dinsmore.com
`
`TMC previously filed a Power of Attorney. (See Paper 5.) A Power of Attorney
`
`for the University is being filed concurrently with this paper.
`
`IV. Service Information
`
`
`
`Please address all correspondence and service to counsel of record. TMC
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`and the University of Minnesota consent to service by email.
`
`Dated: March 3, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Dinsmore & Shohl LLP
`255 E. Fifth St.
`Cincinnati, OH 45202
`Attorney for TMC and
`The University of Minnesota
`
` 2
`
`

`

`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing PATENT
`
`OWNERS’ UPDATED MANDATORY NOTICES was served on March 3, 2017
`
`by email on the following counsel of record for Petitioner:
`
`David O. Simmons (dsimmons@ivcpatentagency.com)
`
`Jonathan D. Hurt (jhurt@technologylitigators.com)
`
`Mark A.J. Fassold (mfassold@wattsguerra.com)
`
`Jorge Mares (jmares@wattsguerra.com)
`
`
`
`Dated: March 3, 2017
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for Patent Owners
`Toyota Motor Corporation and
`The University of Minnesota
`
`
`
`
`
`
`
`
`
`
`
`

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