`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`GLOBALFOUNDRIES, INC.,
`Petitioner,
`v.
`
`Godo Kaisha IP Bridge 1,
`Patent Owner.
`
`IPR2017-00757
`
`Patent 6,538,324 B1
`
`
`
`
`
`
`
`
`
`PETITIONER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(3)
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board U.S.
`Patent and Trademark Office P.O.
`Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to 37 C.F.R. §42.8(a)(3), Petitioner, GlobalFoundaries, Inc.
`
`Case IPR2017-00757 for
`U.S. Patent No. 6,538,324
`
`
`
`(“Global”), hereby submits the following Mandatory Notices. These notices
`
`include a change in backup counsel information. These notices are being timely
`
`filed within 21 days of January 23, 2017, the date Petitioner served the Petition for
`
`Inter Partes Review for the above-captioned case on Patent Owner.
`
`I. REAL PARTY IN INTEREST – 37 C.F.R. §42.8(b)(1)
`
`The Petitioner and real party in interest is:
`
`GlobalFoundaries, Inc.
`2600 Great America Way
`Santa Clara, CA 95054
`
`
`II. RELATED MATTERS – 37 C.F.R. §42.8(b)(2)
`
`
`A. Proceedings Before the USPTO Involving Related Patents
`
`Petitioner is presently aware of the following related Inter Partes
`
`review proceedings:
`
`(1) IPR2016-01249 challenging claims 1-3, 5-7, and 9 of the ‘324
`
`patent, filed on June 24, 2016, by Taiwan Semiconductor Manufacturing
`
`Company Limited (currently pending).
`
`(2) IPR2016-01264 challenging claims 1-3, 5-7, and 9 of the ‘324
`
`patent, filed on June 24, 2016, by Taiwan Semiconductor Manufacturing
`
`Company Limited (currently pending).
`
`(3) IPR2017-00753 challenging claims 1-3, 5-7, and 9 of the ‘324
`
`
`
`
`
`Case IPR2017-00757 for
`U.S. Patent No. 6,538,324
`patent, filed on January 23, 2017, by GlobalFoundaries, Inc. (currently
`
`pending).
`
`B. Litigation Involving the Patent-at-Issue
`
`
`
`Petitioner is presently aware of the following litigations involving the
`
`patent-at-issue:
`
`(1) Gogo Kaisha IP Bridge 1 v. Broadcom Limited et al., USDC
`
`EDTEX 2:16-cv-00134-JRG-RSP; filed February 14, 2016 (currently
`
`pending): and
`
`(2) Gogo Kaisha IP Bridge 1 v. OminVision Technologies, Inc., USDC
`
`DEL 1:16-cv-00290-SLR; filed April 22, 2016 (currently pending).
`
`III. LEAD AND BACK-UP COUNSEL – 37 C.F.R. §42.8(b)(3)
`
`Lead Counsel:
`
`Christopher P. Carroll
`
`
`
`
`Registration No. 55,776
`
`
`
`
`Email: christopher.carroll@whitecase.com
`
`
`
`
`White & Case, LLP
`
`
`
`
`75 State Street
`
`
`
`
`Boston, MA 02109-1814
`
`
`
`
`Tel: 617-979-9342
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`
`
`
`Fax: 617-979-9301
`
`
`Backup Counsel:
`
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`
`
`Shamita D. Etienne-Cummings
`Registration No. 46,072
`Email: setienne@whitecase.com
`White & Case, LLP
`701 13th Street N.W.
`Washington, DC 20005
`Tel: 202-626-3695
`Fax: 202-639-9355
`
`
`
`Case IPR2017-00757 for
`U.S. Patent No. 6,538,324
`
`
`
`IV . SERVICE INFORMATION – 37 C.F.R. §42.8(b)(4)
`
`
`Please address all correspondence to both the lead and backup counsels as
`
`shown above. The Petitioner consents to electronic service to the email addresses
`
`shown above.
`
`V . FEES
`
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`
`
`owed by Global and associated with the Inter Partes Review No. IPR 2017-00757 of
`
`U.S. Patent No. 6,538,324 to Deposit Account No. 50-3672.
`
`Respectfully Submitted by:
`
`/Christopher P. Carroll/
`
`Date: January 25, 2017
`
`
`
`Christopher P. Carroll (Reg. No. 55776)
`75 State Street
`Boston, MA 02109-1814
`Telephone: 617-979-9342
`Fax: 617-979-9301
`Email: christopher.carroll@whitecase.com
`
`Lead Counsel for Petitioner
`GLOBALFOUNDRIES, INC.
`
`
`
`
`
`
`
`
`
`Case IPR2017-00757 for
`U.S. Patent No. 6,538,324
`
`CERTIFICATION OF
`SERVICE
`The undersigned certifies that, on the 25th day of January, a true copy of
`
`the forgoing:
`
`
`
`PETITION’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(3)
`
`was served to the Patent Owner by serving the correspondence address of
`
`record for the ’324 Patent to:
`
`Attn: Paul J. Esatto, Jr
`SCULLY SCOTT MURPHY & PRESSER, PC
`400 Garden City
`Plaza Suite 300
`Garden City NY 11530
`
`Courtesy copies of the foregoing were also served by express mail on
`
`counsel of record for
`
`the Petitioner and Patent Owner
`
`in Taiwan
`
`Semiconductor Manufacturing Company Limited v. Godo Kaisha IP Bridge
`
`1, Case No. IPR2016-01264 as follows:
`
`E. Robert Yoches
`Finnegan, Henderson, Farabow, Garrett & Dunner LLP
`901 New York Avenue,
`NW Washington DC
`20001-4413
`
`Michael J. Fink
`Greenblum & Bernstein, P.L.C.
`1950 Roland Clarke Place
`Reston, VA 20191
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`
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`Case IPR2017-00757 for
`U.S. Patent No. 6,538,324
`
`Respectfully submitted,
`
`By: /Christopher P. Carroll/
`Christopher P. Carroll
`Registration. No. 55,776
`White & Case LLP
`75 State Street
`Boston, MA 02109-1814
`christopher.carroll@whitecase.com
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