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UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`REACTIVE SURFACES LTD. LLP,
`
`Petitioner,
`
`v.
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`TOYOTA MOTOR CORPORATION,
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`Patent Owner.
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`Case IPR2016-01914
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`Patent No. 8,394,618 B2
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`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
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`Regents of the University of Minnesota (the “University”), the joint owners of the
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`subject patent, submit the following updated mandatory notices.
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`I.
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`
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`Real Parties-in-Interest
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`No change.
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`II. Related Matters
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`
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`In addition to the matters identified in the Mandatory Notices filed by TMC
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`on October 21, 2016 and the Updated Mandatory Notices filed jointly by TMC and
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`the University on March 3, 2017, TMC and the University wish to notify the Board
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`of the following inter partes review matters in which the University is the patent
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`owner of record:
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`• LSI Corporation and Avago Technologies U.S., Inc. v. Regents of the
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`University of Minnesota, IPR2017-01068 (“LSI”); and
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`• Ericsson Inc. and Telefonaktiebolaget LM Ericsson v. Regents of the
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`University of Minnesota, IPR2017-01186, IPR2017-01197, IPR2017-01200,
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`IPR2017-01213, IPR2017-01214 and IPR2017-01219 (“Ericsson”).
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`The patents challenged in the LSI and Ericsson cases are not related to the patent
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`involved in this proceeding. TMC and the University identify them in an
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`abundance of caution in the event the Board considers them “related matters”
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`insofar as they involve issues of sovereign immunity that overlap some of the
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`
`
`
`
` 1
`
`

`

`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`issues briefed by the parties here in connection with TMC’s and the University’s
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`motion to dismiss. In the LSI case, the briefing on the University’s motion to
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`dismiss was completed on May 26, 2017.
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`III. Lead and Back-up Counsel
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`
`
`
`
`
`
` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Dinsmore & Shohl LLP
`255 E. Fifth St.
`Cincinnati, OH 45202
`Attorney for Toyota Motor
`Corporation and the Regents of the
`University of Minnesota
`
`No change.
`
`IV. Service Information
`
`
`
`No change.
`
`Dated: June 1, 2017
`
`
`
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`
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`
`
`
`
` 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 June 1, 2017 by
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`email on the following counsel of record for Petitioner:
`
`David O. Simmons (dsimmons@ivcpatentagency.com)
`
`Jonathan D. Hurt (jhurt@technologylitigators.com)
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`Mark A.J. Fassold (mfassold@wattsguerra.com)
`
`Jorge Mares (jmares@wattsguerra.com)
`
`
`
`
`
`
`
` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for Toyota Motor
`Corporation and the Regents of the
`University of Minnesota
`
`
`
`Dated: June 1, 2017
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`
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`

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