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Paper No. ________
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ROCKWELL AUTOMATION, INC., and ROCKWELL AUTOMATION
`TECHNOLOGIES, INC.,
`Petitioner
`
`v.
`
`AUTOMATION MIDDLEWARE SOLUTIONS, INC.
`Patent Owner
`
`
`
`Case IPR2017-00048
`Patent 6,516,236
`Issue Date: February 4, 2003
`Title: MOTION CONTROL SYSTEMS
`
`_______________
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(3) AND (b)(2)
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`4818-6152-7366.1
`
`

`

`IPR2017-00048
`U.S. Patent No. 6,516,236
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3) and (b)(2), Petitioner, Rockwell
`
`Automation, Inc. and Rockwell Automation Technologies, Inc., hereby updates its
`
`mandatory notices to provide the Board with the following update regarding the
`
`related proceedings pending in the Eastern District of Texas, including Automation
`
`Middleware Solutions, Inc. v. Rockwell Automation, Inc., 2:15-cv-01269. On
`
`March 31, 2017, United States District Court Judge Robert W. Schroeder III
`
`granted-in-part Petitioner’s motion for judgment on the pleadings and found that
`
`claims 1–10 of U.S. Patent No. 6,516,236 were unpatentable as a matter of law for
`
`failing to comply with 35 U.S.C. § 101.
`
`
`
`Dated: April 3, 2017
`
`
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`/s/ Jeffrey N. Costakos
`Jeffrey N. Costakos
`Registration Number 34,144
`Attorney for Petitioner
`
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202-5306
`Telephone: 414-297-5782
`Email: jcostakos@foley.com
`
`4818-6152-7366.1
`
`2
`
`

`

`IPR2017-00048
`U.S. Patent No. 6,516,236
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the above-captioned Petitioner’s
`Updated Mandatory Notices Pursuant to 37 C.F.R. § 42.8(a)(3) and (b)(2) was
`served in its entirety on April 3, 2017, upon the following parties by delivering a
`copy via Federal Express at the following address:
`
`Douglas R. Wilson
`dwilson@hpcllp.com
`Heim, Payne & Chorush, L.L.P
`9442 Capital of Texas Hwy.
`Plaza I, Suite 500-146
`Austin, TX 78759
`Tel: (512) 343-3622
`Fax: (512) 345-2924
`dwilson@hpcllp.com
`climbacher@hpcllp.com
`AMSIPR@hpcllp.com
`
`
`
`
`Date: April 3, 2017
`
`
`
`4818-6152-7366.1
`
`3
`
`
`
`FOLEY & LARDNER LLP
`
`/s/ Jeffrey N. Costakos
`Jeffrey N. Costakos
`Registration Number 34,144
`Attorney for Petitioner
`
`Foley & Lardner LLP
`777 East Wisconsin Avenue
`Milwaukee, WI 53202-5306
`Telephone: 414-297-5782
`Email: jcostakos@foley.com
`
`

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