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`571 272 7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIFIED PATENTS INC.
`
`Petitioner
`
`V.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`
`CASE IPR2018-00043
`
`PATENT 9,454,748
`
`PATENT OWNER’S MANDATORY NOTICE UNDER 37 C.F.R. § 42.8
`
`
`
`IPR2018—00043
`
`U.S. PATENT 9,454.748
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), and within 21 days of service of the Petition on
`
`undersigned, i.e., within 21 days of October 7, 2017, the undersigned, on behalf of and acting in
`
`a representative capacity for patent owner, FALL LINE PATENTS, LLC (“Patent Owner”),
`
`hereby submits the following mandatory notices in connection with the Petition mailed October
`
`6, 2017, for Inter Partes Review of United States Patent 9,454,748, Case No. IPR2018-00043.
`
`A.
`
`Real Party-in-Interest
`
`The real party—in-interest is FALL LINE PATENTS, LLC (an Oklahoma limited liability
`
`company). FALL LINE PATENTS, LLC is the assignee of 100% interest in US. Patent No.
`
`9,454,748 (the ‘748 Patent”). A chain of title showing current ownership of US. Patent No.
`
`9,454,748 is shown in the records of the US. Patent and Trademark Office, Assignment Branch,
`
`as follows; Assignment from inventor, J. David Payne, to MacroSolve, Inc., executed 08/07/2003
`
`and recorded 8/24/2016 at Reel/Frame 039527/0129; Assignment from MacroSolve, Inc. to
`
`Ediche, LLC, recorded 8/24/2016 at Reel/Frame 039527/0213; Assignment from Ediche, LLC to
`
`Fall Line Patents, LLC, recorded 03/13/2017 at Reel/Frame 041556/0916.
`
`B.
`
`Related Matters
`
`The ‘748 patent is presently the subject of patent infringement lawsuits filed in the
`
`Eastern District of Texas against the following entities:
`
` Case Ca-tion
`Fall Line Patents, LLC v. Choice Hotels Int’l, Inc.
`
`Fall Line Patents, LLC v. Uber Technologies, Inc.
`
`Fall Line Patents, LLC v. Cinemark Holdings, Inc., et a1.
`
`
`
`
`
`
`_—
`. 6: 17-cv-00407
`6
`:17-cv-00408
`6:17-cv-00203
`
`
`
`
`
`In addition to the cases listed above, Patent Owner would state that the two cases listed
`
`below were also filed in the Eastern District of Texas and both involved the ‘748 patent.
`
`2
`
`
`
`IPR2018-00043
`
`U.S. PATENT 9,454.748
`
`However, both cases have now been dismissed but notice of the termination of these cases is not
`
`yet of record in the Patent Office:
`
`Case Cation
`
`
`
`Fall Line Patents, LLC V. American Airlines Grou, Inc. et al.
`_ 6:17-cv-00202
`
`6: l 7-cv-00204
`Fall Line Patents, LLC V. Grubhub Holdings, Inc. et al.
`
`
`
`
`
`
`
`
`C.
`
`Lead Counsel
`
`
`BACK—UP COUNSEL
`' Matthew J. Antonelli (Reg. No. 45973)
`
`Terry L. Watt (Reg. No. 42214)
`matt@ahtlawfirm.com
`terry.Watt(g>c1*owedunlevy.com
`
`
`
`Michael E. Ellis (Reg. No. 72628)
`
`michael@ahtlawfirm.com
`
`
`
`Larry D. Thompson, Jr. (Reg. No. 43952)
`
`
`
`leflfigbahtlawfirmcom
`
`
`
`
`
`LEAD COUNSEL
`
`
`
`
`Postal and Hand Delivery Address
`Crowe & Dunlevy
`321 South Boston, Suite 500
`The Kennedy Bldg.
`Tulsa, OK 74103
`Telephone: 918/592 9800
`Fax:
`918/592-9801
`
`
`
`
`
`
`
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`
`4306 Yoakum Blvd, Suite 450
`
`
`
`
`
`Houston, TX 77006
`Telehonez7l3/58l—3000
`
`
`Please address all correspondence to lead and back-up counsel. Patent Owner consents to
`
`electronic service.
`
`10/27/2017
`(Date)
`
`32690561
`
`Respectfully submitted,
`/terry 1. watt/
`
`Terry L. Watt
`Registration No. 42214
`Customer No. 22267
`
`
`
`IPR2018-00043
`
`U.S. PATENT 9,454.748
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, and pursuant to
`
`CERTIFICATE OF SERVICE
`
`- Petitioner’s consent to electronic service, that service was made via email on the Petitioner as
`
`follows:
`
`
`
` Lead Counsel
`Manner of service:
`
`Documents served:
`Persons served:
`
`
`
`Email: david.obrien.ipr@haynesboone.corn
`Patent Owner’s Mandatory Disclosure
`David W. O’Brien
`
`Phone: 512-8967-8457
`
`Fax: 214-2000-0853
`
`
`
`Haynes & Boone, LLP
`2323 Victory Ave. Suite 700
`
`david.obrien.i r ha nesboone.com
`Dallas, TX
`
`
`Back-up Counsel {via email:
`Raghav Baj aj
`HAYNES AND BOONE, LLP
`
`Phone: 512 867-8520
`
`raghav.bai aj .iprgmaynesboonecom
`
`2323 Victory Ave. Suite 700 Dallas,
`TX 75219
`
`USPTO Reg. No. 66,630
`
`Roshan Mansinghani
`Unified Patents Inc.
`
`1875 Connecticut Ave NW, Floor 10
`
`Washington, DC 20009
`
`David L. McCombs
`
`HAYNES AND BOONE, LLP 2323
`
`Victory Ave. Suite 700 Dallas, TX
`75219
`
`Phone:
`
`214-945-0200
`
`roshan@unifiedpatentscom
`USPTO Reg. No. 62,429
`
`Phone:
`
`214—651-5533
`
`davidmccombs.igr@havnesboone.com
`
`USPTO Reg. No. 32,271
`
`Jonathan Stroud
`
`Unified Patents Inc.
`
`Phone:
`
`650-999-045 5
`
`jonathan@unifiedpatents.com
`
`
`
`1875 Connecticut Ave NW, Floor 10
`USPTO Reg. No. 72,518
`
`Washington, DC 20009
`
`
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