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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD. LLP,
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`Petitioner,
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`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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`TOYOTA MOTOR CORPORATION’S MANDATORY NOTICES
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`Pursuant to 37 C.F.R. § 42.8(a)(2), Toyota Motor Corporation (“Toyota”)
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`submits the following mandatory notices.
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`I.
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`Real Parties-in-Interest
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`Toyota, its corporate subsidiary Toyota Motor Engineering & Manufacturing
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`North America, Inc., and Regents of the University of Minnesota (a co-assignee of
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`U.S. Patent No. 8,394,618 B2) are the real parties-in-interest in this proceeding.
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`II. Related Matters
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`Petitioner Reactive Surfaces Ltd. LLP has previously filed the following
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`actions against Toyota seeking a declaratory judgment that U.S. Patent No.
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`8,394,618 B2 is invalid:
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`• Reactive Surfaces Ltd. LLP v. Toyota Motor Engineering & Manufacturing
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`North America, Inc. et al., Case No. 1-13-CV-1098-LY (W.D. Tex.); and
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`• Reactive Surfaces Ltd. LLP v. Toyota Motor Corporation, Case No. 1:14-
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`CV-1009-LY (W.D. Tex.).
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`The cases identified above were dismissed and are no longer pending.
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`Toyota is not aware of any administrative matters that would affect, or be
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`affected by, a decision in this proceeding.
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`Toyota notes that Petitioner has previously filed a petition for inter partes
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`review of another patent assigned to Toyota, U.S. Patent No. 8,324,295 B2. That
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`petition is pending in IPR2016-01462.
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`1
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`III. Lead and Back-up Counsel
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`Toyota identifies the following lead and back-up counsel:
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`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
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`BACK-UP COUNSEL
`Richard H. Schabowsky
`Reg. No. 68,829
`Dinsmore & Shohl LLP
`101 S. Fifth St., Ste. 2500
`Louisville, KY 40202
`T: (502) 540-2301
`F: (502) 585-2207
`E: richard.schabowsky@dinsmore.com
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`A Power of Attorney naming the above lead and back-up counsel as
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`attorneys of record is being filed concurrently with this paper.
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`IV. Service Information
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`Please address all correspondence and service to both counsel as listed
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`above. Toyota consents to service by email.
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`Dated: October 21, 2016
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`Respectfully submitted,
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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
`T: (513) 977-8200
`Attorney for Patent Owner
`Toyota Motor Corporation
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing TOYOTA
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`MOTOR CORPORATION’S MANDATORY NOTICES was served on October
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`21, 2016 by email on the following counsel of record for Petitioner:
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`David O. Simmons (dsimmons@ivcpatentagency.com)
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`Jonathan D. Hurt (jhurt@technologylitigators.com)
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`Dated: October 21, 2016
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`Respectfully submitted,
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for Patent Owner
`Toyota Motor Corporation