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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROCKWELL AUTOMATION, INC. and
`ROCKWELL AUTOMATION TECHNOLOGIES, INC.,
`Petitioners,
`
`v.
`
`AUTOMATION MIDDLEWARE SOLUTIONS, INC.,
`Patent Owner.
`
`Case IPR2017-00048
`Patent 6,516,236 B1
`
`MANDATORY NOTICES OF THE PATENT OWNER
`PURSUANT TO 37 C.F.R. § 42.8
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`I.
`
`REAL PARTY IN INTEREST
`
`Patent Owner identifies Automation Middleware Solutions, Inc., Wi-LAN
`
`CASE IPR2017-00048
`PATENT 6,516,236
`
`
`
`
`
`
`
`Technologies Inc. and Wi-LAN Inc. as its real parties-in-interest.
`
`II. RELATED MATTERS
`
`A.
`
`Automation Middleware Solutions, Inc. v. Invensys Systems, Inc.,
`
`et al., (E.D. Tex. – 2:15-CV-00898).
`
`B.
`
`Automation Middleware Solutions, Inc. v. Emerson Process
`
`Management, LLLP, et al., (E.D. Tex. – 2:15-CV-01266).
`
`C.
`
`Automation Middleware Solutions, Inc. v. Rockwell Automation,
`
`Inc., et al., (E.D. Tex. – 2:15-CV-1269).
`
`D.
`
` Automation Middleware Solutions, Inc. v. Kollmorgen Corp., et al.,
`
`(E.D. Tex. – 2:15-CV-01539).
`
`E.
`
` Automation Middleware Solutions, Inc. v. Yaskawa America, Inc., et
`
`al., (E.D. Tex. – 2:15-CV-01771).
`
`F.
`
` Automation Middleware Solutions, Inc. v. Mitsubishi Electric Corp.,
`
`et al., (E.D. Tex. – 2:15-CV-01982).
`
`G.
`
`Automation Middleware Solutions, Inc. v. Yokogawa Electric
`
`Corporation, et al., (E.D. Tex. – 2:15-cv-899).
`
`H.
`
`I.
`
`IPR2017-00023 involving related U.S. Patent No. 6,513,058.
`
`IPR2017-00049 involving related U.S. Patent No. 8,073,557.
`
`2
`
`
`

`
`

`
`CASE IPR2017-00048
`PATENT 6,516,236
`
`III. LEAD AND BACK-UP COUNSEL
`
`Lead Counsel:
`
`Douglas R. Wilson (Reg. No. 54,542)
`Heim, Payne & Chorush, LLP
`Phone: (512) 343-3622
`
`Backup Counsel:
`
`Chris Limbacher (pro hac vice to be filed)
`Heim, Payne & Chorush, LLP
`Phone: (713) 221-2000
`
`Terry A. Saud (Reg. No. 62,492)
`Bragalone Conroy PC
`Phone: (214) 785-6685
`
`Monte Bond (pro hac vice to be filed)
`Bragalone Conroy PC
`Phone: (214) 785-6679
`
`Justin B. Kimble (Reg. No. 58,591)
`Bragalone Conroy PC
`Phone: (214) 785-6673
`
`IV. SERVICE INFORMATION
`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
`(Postal and hand delivery addresses same)
`Tel: (512) 343-3622
`Fax: (512) 345-2924
`
`Please address all correspondence and service to Counsel listed above.
`
`3
`
`
`
`
`
`
`
`
`

`
`

`
`CASE IPR2017-00048
`PATENT 6,516,236
`
`Patent owner also consents to electronic service via email at dwilson@hpcllp.com,
`
`climbacher@hpcllp.com, and AMSIPR@hpcllp.com.
`
`Dated: November 8, 2016
`
`Respectfully submitted,
`
`
`By: /Douglas R. Wilson/
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Patent Owner
`Automation Middleware Solutions,
`Inc.
`
`
`
`4
`
`
`
`
`
`
`

`
`

`
`CERTIFICATE OF SERVICE
`
`CASE IPR2017-00048
`PATENT 6,516,236
`
`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a
`
`copy of the foregoing MANDATORY NOTICES OF THE PATENT
`
`OWNER PURSUANT TO 37 C.F.R. § 42.8 was served via email to lead
`
`counsel of record for Petitioner as follows:
`
`Jeffrey N. Costakos
`Foley & Lardner LLP
`MILW-Rockwell-AMS@foley.com
`
`Dated: November 8, 2016
`
`
`By: /Douglas R. Wilson/
`Douglas R. Wilson (Reg. No. 54,542)
`Attorney for Patent Owner
`Automation Middleware Solutions, Inc.
`
`5
`
`
`
`
`
`
`
`
`

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