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IPR2017-00430
`PATENT NO. 6,088,802
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`
`
`v.
`
`
`
`SPEX TECHNOLOGIES, INC.
`Patent Owner
`
`
`
`Patent No. 6,088,802
`Filing Date: June 4, 1997
`Issue Date: July 11, 2000
`Title: PERIPHERAL DEVICE WITH INTEGRATED SECURITY
`FUNCTIONALITY
`
`
`
`__________________________________________________________________
`
`SPEX TECHNOLOGIES, INC.’S
`MANDATORY NOTICES PURSUANT TO
`37 C.F.R. §42.8(a)(2)
`
`Case No. IPR2017-00430
`__________________________________________________________________
`
`
`
`
`
`

`
`
`
`
`IPR2017-00430
`PATENT NO. 6,088,802
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, SPEX Technologies, Inc.,
`
`hereby files its Mandatory Notices. Unified did not use Priority Mail Express for
`
`service, but instead used Priority Mail, which is not a “means at least as fast and
`
`reliable as Priority Mail Express.” 37 C.F.R. §§ 42.6(e)(1); 42.105(b). The
`
`Petition was received by counsel of record for SPEX on December 19, 2016.
`
`Accordingly, these notices are timely filed within 21 days of December 19, 2016.
`
`I. 37 C.F.R § 42.8(b)(1) – REAL PARTY-IN-INTEREST
`
`
`The patent owner and real party-in-interest is SPEX Technologies, Inc.
`
`II. 37 C.F.R § 42.8(b)(2) – RELATED MATTERS
`
`
`Pursuant to 37 C.F.R § 42.8(b)(2), Patent Owner notes the following related
`
`matters where Patent Owner asserted U.S. Patent No. 6,088,802 (“the ’802
`
`Patent”):
`
` SPEX Technologies, Inc. v. Kingston Technology Company Inc., et al.,
`
`No. 8:16-cv-01790 (C.D. Cal. Filed Sept. 27, 2016);
`
` SPEX Technologies, Inc. v. Western Digital Corporation, et al., No.
`
`8:16-cv-01799 (C.D. Cal. Filed Sept. 28, 2016);
`
` SPEX Technologies, Inc. v. Toshiba America Electronics Components
`
`Inc., et al., No. 8:16-cv-01800 (C.D. Cal. Filed Sept. 28, 2016);
`
` SPEX Technologies, Inc. v. CMS Products, Inc., No. 8:16-cv-01801
`
`(C.D. Cal. Filed Sept. 28, 2016);
`
`
`
`
`
`

`
`
`
`
`IPR2017-00430
`PATENT NO. 6,088,802
`
`
`
` SPEX Technologies, Inc. v. Integral Memory, PLC, No. 8:16-cv-
`
`01805 (C.D. Cal. Filed Sept. 28, 2016);
`
` SPEX Technologies, Inc. v. Apricorn, No. 2:16-cv-07349 (C.D. Cal.
`
`Filed Sept. 28, 2016).
`
`Additionally, U.S. Patent No. 6,003,135 to Bialick, et al., entitled “Modular
`
`Security Device” issued from a commonly owned patent application (U.S. Patent
`
`Appl. No. 08/869,120) filed on the same day as the ’802 patent application (U.S.
`
`Patent Appl. No. 08/869,305), with the same inventive entity as the ’305
`
`application, which was identified as related in the ’305 application, and the
`
`disclosure of which was incorporated by reference in the ’305 application.
`
`III. 37 C.F.R § 42.8(b)(3) – DISCLOSURE OF COUNSEL
`
`
`Pursuant to 37 C.F.R § 42.8(b)(3), Patent Owner identifies lead and back-up
`
`counsel as follows:
`
`Lead Counsel: Vincent J. Rubino, III (Reg. No. 68,504)
`
`Electronic Service Information: vrubino@brownrudnick.com
`
`Post and Delivery: Brown Rudnick LLP, 7 Times Square, New York, NY 10036
`
`Telephone: 212-209-4800
`
`Facsimile: 212-209-4801
`
`
`
`
`
`
`
`

`
`
`
`Back-up Counsel: Alfred R. Fabricant1
`
`
`
`
`
`
`
`IPR2017-00430
`PATENT NO. 6,088,802
`
`Electronic Service Information: afabricant@brownrudnick.com
`
`Post and Delivery: Brown Rudnick LLP, 7 Times Square, New York, NY 10036
`
`Telephone: 212-209-4800
`
`Facsimile: 212-209-4801
`
`
`
`Back-up Counsel: Peter Lambrianakos (Reg. No. 58,279)
`
`Electronic Service Information: plambrianakos@brownrudnick.com
`
`Post and Delivery: Brown Rudnick LLP, 7 Times Square, New York, NY 10036
`
`Telephone: 212-209-4800
`
`Facsimile: 212-209-4801
`
`
`IV. 37 C.F.R § 42.8(b)(4) – CORRESPONDENCE
`
`
`Pursuant to 37 C.F.R § 42.8(b)(4), Patent Owner requests that all electronic
`
`correspondence be directed to lead counsel and back-up counsel at the above
`
`address. Patent Owner also consents to electronic service by email at the following
`
`addresses: plambrianakos@brownrudnick.com; afabricant@brownrudnick.com;
`
`and vrubino@brownrudnick.com.
`
`Dated: January 9, 2017
`
`
`
`
`
`/Vincent J. Rubino, III /
`By:
`Vincent J. Rubino, III (Reg. No. 68,504)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`
`
`1 Alfred Fabricant is identified as back-up counsel subject to appropriate pro hac
`
`vice motion to be filed upon authorization.
`
`
`
`
`
`

`
`IPR2017-00430
`PATENT NO. 6,088,802
`
`
`
`
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00430
`PATENT NO. 6,088,802
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) & 42.105(b)
`
`A copy of Patent Owner’s Mandatory Notices has been served on
`
`Petitioner’s attorneys of record at the correspondence of the Petitioner as follows:
`
`Vincent J. Galluzzo, Reg. No. 67,830
`Teresa Stanek Rea, Reg. No. 30,427
`CROWELL & MORING LLP
`1001 Pennsylvania Avenue, N.W.
`Washington, D.C. 20004
`Tel: (202) 624-2781
`Email: vgalluzzo@crowell.com
`
`Jonathan Stroud, Reg. No. 72,518
`Unified Patents Inc.
`1875 Connecticut Avenue, N.W., Floor 10
`Washington, D.C. 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
`January 9, 2017
`
`By:
`
`/Vincent J. Rubino, III /
`Vincent J. Rubino, III (Reg. No. 68,504)
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com

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