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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`EMERSON ELECTRIC CO.,
`
`Petitioner
`
`
`
`v.
`
`
`
`SIPCO, LLC,
`
`Patent Owner
`
`Case IPR2017-00216
`
`U.S. Patent 8,013,732
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICE
`INFORMATION UNDER 37 C.F.R. § 42.8(a)(3)
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner hereby updates its
`
`Mandatory Notices.
`
`
`
`

`

`1. REAL PARTY-IN-INTEREST
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`
`In accordance with §§42.8(a)(3), Patent Owner SIPCO, LLC hereby notifies
`the Board that it is now wholly owned by Glocom, Inc.
`
`2. RELATED MATTERS
`
`Related judicial or administrative matters under § 42.8(b)(2) that may affect,
`
`or be affected by, a decision in the present proceeding include:
`
`A. Litigation involving U.S. Patent No. 8,013,732:
`
`1) Emerson Electric Co. et al. v. SIPCO LLC et al., No. 1:15-cv-319
`
`(N.D. Ga.)
`
`2) SIPCO, LLC et al. v. Emerson Electric Co. et al., No. 6:15-cv-907
`
`(E.D. Tex.), transferred to the Northern District of Georgia, opened
`
`as SIPCO, LLC v. Emerson Electric Co., No. 1:16-cv-02690 (N.D.
`
`Ga.), and consolidated with 1:15-cv-319 (N.D. Ga).
`
`3) SIPCO, LLC et al. v. Streetline, Inc. et al., No. 1:16-cv-00830 (D.
`
`Del.).
`
`B. Emerson Electric Co. v. SIPCO, LLC, No. 2017-1866 (Fed. Cir.), which
`
`is an appeal of IPR2015-01973 (U.S. Patent No. 8,013,732).
`
`C. SIPCO, LLC, v. Emerson Electric Co., No. 2018-1364 (Fed. Cir.), which
`
`is an appeal of IPR2016-00984 (U.S. Patent No. 8,754,780).
`
`

`

`IPR2017-00216
`U.S. Patent No. 8,013,732
`D. Patents that may be related to U.S. Patent No. 8,013,732 are subject to
`
`review in:
`
`1) IPR2016-01895 (U.S. Patent No. 7,697,492).
`
`2) IPR2017-00001 (U.S. Patent No. 7,468,661).
`
`3) IPR2017-00359 (U.S. Patent No. 6,437,692).
`
`E. Documents requesting correction of priority involving U.S. Patent No.
`
`8,013,732 or in patents that may be related to U.S. Patent No. 8,013,732
`
`include:
`
`1) As authorized by the Board in IPR2017-00001, Paper No. 37, a
`
`request for a certificate of correction was filed in 11/395,685 (U.S.
`
`Patent No. 7,468,661).
`
`2) As authorized by the Board in IPR2017-00216, Paper No. 34, a
`
`petition under 37 CFR § 1.78(e) to accept an unintentionally
`
`delayed priority claim and a request for a certificate of correction
`
`were filed in 12/477,329 (U.S. Patent No. 8,013,732). The petition
`
`was granted on February 8, 2018.
`
`3) As authorized by the Board in IPR2017-00359, Paper No. 27, a
`
`request for a certificate of correction was filed in 09/439,059 (U.S.
`
`Patent No. 6,437,692).
`
`

`

`IPR2017-00216
`U.S. Patent No. 8,013,732
`4) As authorized by the Board in IPR2016-00984, Paper No. 43, a
`
`petition under 37 CFR § 1.78(e) to accept an unintentionally
`
`delayed priority claim and a request for a certificate of correction
`
`were filed in 13/855,452 (U.S. Patent No. 8,754,780). The petition
`
`was granted on February 8, 2018.
`
`5) A petition under 37 CFR § 1.78(e) to accept an unintentionally
`
`delayed priority claim and a request for a certificate of correction
`
`were filed in 13/222,216 (U.S. Patent No. 8,410,931). The petition
`
`was granted on February 8, 2018.
`
`6) A petition under 37 CFR § 1.78(e) to accept an unintentionally
`
`delayed priority claim and a request for a certificate of correction
`
`were filed in 14/306,412 (U.S. Patent No. 9,571,582). The petition
`
`was granted on February 8, 2018.
`
`7) A request for a certificate of correction was filed in 12/337,739
`
`(U.S. Patent No. 7,978,059).
`
`
`
`
`
`3. LEAD AND BACKUP COUNSEL
`
`SIPCO, LLC will continue to be represented by the counsel identified
`
`below:
`
`

`

`Lead Counsel
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`IPR2017-00216
`U.S. Patent No. 8,013,732
`Back-up Counsel
`Thomas F. Meagher
`Reg. No. 29,831
`Meagher Emanuel Laks Goldberg & Liao,
`LLP
`One Palmer Square, Suite 325
`Princeton, NJ 08542
`(609) 454-3500
`tmeagher@meagheremanuel.com
`
`Dated: February 9, 2018
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /Dr. Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`
`

`

`IPR2017-00216
`U.S. Patent No. 8,013,732
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. §§ 42.6(e), this is to certify that I caused a copy of the
`
`foregoing UPDATED MANDATORY NOTICE to be served on Petitioner’s counsel of
`
`record listed below by filing in the Patent Review Processing System:
`
`Lead Counsel
`Steven Pepe
`Reg. No. 42,069
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`P: 212-596-9046/F: 617.235.9492
`steven.pepe@ropesgray.com
`
`Back-up counsel
`James L. Davis, Jr. (Reg. No. 57,325)
`James R. Batchelder (pro hac vice)
`Kathryn N. Hong (Reg. No. 63,693)
`Daniel Richards (Reg. No. 69,652)
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`james.l.davis@ropesgray.com
`james.batchelder@ropesgray.com
`kathryn.hong@ropesgray.com
`daniel.richards@ropesgray.com
`
`
`
`Respectfully submitted,
`
`By: /Dr. Gregory J. Gonsalves/
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`Dated: February 9, 2018
`
`
`
`

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