`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`
`___________________________
`
`Case IPR2017-00423
`Patent 7,916,781
`___________________________
`
`
`
`____________________________________________________________
`CALIFORNIA INSTITUTE OF TECHNOLOGY’S MANDATORY
`NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00423
`Patent No. 7,916,781
`
`
`Pursuant to 37 C.F.R. § 42.8, California Institute of Technology (“Caltech”)
`
`timely files these mandatory notices with the Patent Trial and Appeal Board.
`
`I.
`
`REAL PARTY IN INTEREST (37 C.F.R. § 42.8(b)(1))
`
`The real party in interest is California Institute of Technology. Caltech is
`
`the owner of all right to U.S. Patent No. 7,916,781 (“the ’781 patent”). Evidence
`
`supporting Caltech’s status as the owner of the ’781 patent is found at reel/frame
`
`021710/0863 showing assignment of the ’781 patent to Caltech.
`
`II. RELATED MATTERS (37 C.F.R. § 42.8(b)(2))
`
`Caltech identifies the following district court and PTAB proceedings
`
`involving the ’781 patent:
`
`• The California Institute of Technology v. Broadcom Limited et al., Case
`No. 2:16-cv-03714 (C.D. Cal.), filed on May 26, 2016; and
`
`• Petition for Inter Partes Review No. IPR2017-00297, filed by Apple
`Inc. on December 12, 2016.
`
`Caltech further identifies the following concluded district court and PTAB
`
`proceedings involving the ’781 patent:
`
`• The California Institute of Technology v. Hughes Communications, Inc.
`et al, Case No. 2:15-cv-01108 (C.D. Cal.), filed on February 17, 2015;
`
`• The California Institute of Technology v. Hughes Communications, Inc.
`et al, Case No. 2:13-cv-07245 (C.D. Cal.), filed on October 1, 2013; and
`
`• Petition for Inter Partes Review No. IPR2015-00059, filed by Hughes
`Communications Inc. on October 14, 2014.
`
`
`
`
`
`Case IPR2017-00423
`Patent No. 7,916,781
`
`III. LEAD AND BACKUP COUNSEL (37 C.F.R. § 42.8(b)(3))
`
`Caltech provides the following designation of counsel:
`
`Lead Counsel:
`
`James M. Glass (Registration No. 46,729)
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Telephone: (212) 849-7000
`Email: jimglass@quinnemanuel.com
`
`Back-up Counsel: Kevin P.B. Johnson (Registration No. 38,927)
`Email: kevinjohnson@quinnemanuel.com
`Todd M. Briggs (Registration No. 44,040)
`Email: toddbriggs@quinnemanuel.com
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`555 Twin Dolphin Dr., 5th Floor
`Redwood Shores, CA 94065
`Telephone: (650) 801-5000
`
`
`
`
`IV. SERVICE INFORMATION
`
`Caltech consents to service by electronic mail at
`
`jimglass@quinnemanuel.com, kevinjohnson@quinnemanuel.com, and
`
`toddbriggs@quinnemanuel.com.
`
`
`
`
`
`Case IPR2017-00423
`Patent No. 7,916,781
`
`
`
`
`Date: January 3, 2017
`
`
`Respectfully submitted,
`
`By: /s/ James M. Glass
`James M. Glass (Reg. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`T: (212) 849-7000
`F: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Attorney for Patent Owner California Institute of
`Technology
`
`
`
`
`
`
`Case IPR2017-00423
`Patent No. 7,916,781
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing Mandatory Notices of
`
`The California Institute of Technology were served on counsel of record for the
`
`Petitioner, Richard Goldberg and Brian M. Seeve, on January 3, 2017, at the
`
`following email address:
`
`richard.goldenberg@wilmerhale.com
`
`
`
`Date: January 3, 2017
`
`
`By: /s/ James M. Glass
`James M. Glass (Reg. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`T: (212) 849-7000
`F: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Attorney for Patent Owner California Institute of
`Technology
`
`
`
`
`
`
`
`
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