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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BMW OF NORTH AMERICA, LLC,
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`Petitioner
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`v.
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`STRAGENT, LLC,
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`Patent Owner
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`
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`Case IPR2017-00676
`U.S. Patent 8,209,705
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`MANDATORY NOTICES BY PATENT OWNER UNDER 37 CFR § 42.8
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`Pursuant to 37 CFR § 42.8(a)(2), Patent Owner Stragent, LLC, hereby
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`provides the following mandatory notices.
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`(1) Real Party-in-Interest
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`The real party-in-interest for the Patent Owner is Stragent, LLC, the
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`assignee of U.S. Patent No. 8,209,705.
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`(2) Related Matters
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`The following matters would affect, or be affected by, a decision in the present
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`proceeding based on U.S. Patent No. 8,209,705. (“the ‘705 patent”):
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`Page 1 of 3
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`BMW EXHIBIT 1018
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`a) Patent Owner has asserted the ‘705 patent in three separate suits: Stragent, LLC
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`v. BMW of North America, LLC, Civ. No. 6:16-CV-00446 (E.D. Tex. May 20,
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`2016), Stragent, LLC, v. Mercedes-Benz USA, LLC, No. 6:16-cv-00447 (E.D.
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`Tex. May, 20, 2016) and Stragent, LLC v. Volvo Cars of North America, LLC,
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`Civ. No. 6:16-CV-00448 (E.D. Tex. May 20, 2016);
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`b) An inter partes review petition has been filed for the ‘705 patent (IPR2017-
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`00458); and
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`c) Two inter partes review petitions have been filed for a related patent, U.S. Patent
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`No. 8,566,843 (IPR2017-00457 and IPR2017-00677).
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`(3) Lead and Back-up Counsel
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`Lead Counsel
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`Back-up Counsel
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`Thomas H. Kramer
`Reg. No. 71,042
`O’Kelly & Ernst, LLC
`901 N. Market Street, Suite 1000
`Wilmington, DE 19801
`(302) 778-4000
`tkramer@oeblegal.com
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`
`Thomas F. Meagher
`Reg. No. 29,831
`Meagher Emanuel Laks Goldberg &
`Liao, LLP
`One Palmer Square, Suite 325
`(609) 454-3500
`tmeagher@meagheremanuel.com
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`Respectfully submitted,
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`/Thomas H. Kramer/
`Thomas H. Kramer
`Reg. No. 71,042
`O’Kelly & Ernst, LLC
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 778-4000
`tkramer@oeblegal.com
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`Page 2 of 3
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. 42.6(e) and by the agreement of counsel for Petitioner, I
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`certify that on February 8, 2017, I served a complete electronic copy of the
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`Mandatory Notice and Power of Attorney on the Petitioner’s lead and backup counsel
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`at the following addresses:
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`Lead Counsel
`Lionel M. Lavenue
`Reg. No. 46,859
`lionel.lavenue@finnegan.com
`P: (571) 203-2750 / F: (202) 408-4400
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`11955 Freedom Drive
`Reston, VA 20190
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`Backup Counsel
`J. Christopher Moulder, Ph.D.
`Reg. No. 70,490
`christopher.moulder@finnegan.com
`P: (202) 408-4219 / F: (202) 408-4400
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, D.C. 20001-4413
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`
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`/Thomas H. Kramer/
`Thomas H. Kramer
`Reg. No. 71,042
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 778-4000
`tkramer@oeblegal.com
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`Page 3 of 3
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