Trials@uspto.cov 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 UPDATED MANDATORY NOTICE
`
`UNDER 37 C.F.R. § 42.8
`
`
`
`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 UPDATED 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), the undersigned, on behalf of and acting in a
`
`representative capacity for patent owner, FALL LINE PATENTS, LLC ("Patent Owner"),
`
`hereby submits the following updated mandatory notices in connection with IPR Case No.
`
`IPR2018-00043 to advise the Board of changes in the Related Matters identified in Patent
`
`Owner's previously-filed Mandatory Notice (Paper 4, October 27, 2017).
`
`A.
`
`Real Party-in-Interest (Unchanged)
`
`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 U.S. Patent No.
`
`9,454,748 (the '748 Patent"). A chain of title showing current ownership of U.S. Patent No.
`
`9,454,748 is shown in the records of the U.S. 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 Caption
`Fall Line Patents, LLC v. Zoe's Kitchen, Inc. et al
`Fall Line Patents, LLC v. AMC Ent. Holdings, Inc. et al
`Fall Line Patents, LLC v. Boston Market Corp.
`Fall Line Patents, LLC v. Starbucks Corp.
`Fall Line Patents, LLC v. McDonald's Corp. et al
`
`6 :18-cv-00407
`6:18-cv-00408
`6 :18-cv-00409
`6:18-cv-00411
`6:18-c '-00412
`
`2
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454.748
`
`Fall Line Patents, LLC v. Panda Restaurant Group, Inc. et al 6:18-cv-00413
`6:18-cv-00415
`Fall Line Patents, LLC v. Papa John's Int., Inc. et al
`Additionally, the following previously-filed cases have now been dismissed:
`
`Case Caption
`Fall Line Patents, LLC v. Pizza Hut, LLC et al
`Fall Line Patents, LLC v. Regal Cinemas, Inc.
`Fall Line Patents, LLC v. Choice Hotels Int., Inc.*
`Fall Line Patents, LLC v. Uber Technologies, Inc.*
`Fall Line Patents, LLC v. American Airlines Group, Inc. et
`al*
`6:17-cv-00203
`Fall Line Patents, LLC v. Cinemark Holdings, Inc. et al*
`6: 17-cv -00204
`Fall Line Patents, LLC v. Grubhub Holdings, Inc. et al*
`* Cases that were identified as active in Patent Owner's previously filed Mandator Notice, filed
`October 27, 2017, Paper 4.
`
`6:18-cV-00406
`6:18-cv-00410
`6:17-cv-00407
`6:17-cv-00408
`6:17-cv-00202
`
`Also, IPR2018-00535, which was initiated by Uber Technologies, Inc., and Choice
`
`Hotels International, Inc., to challenge the '748 Patent has been terminated by mutual consent.
`
`See, Joint Motion to Teiiiiinate Proceedings Pursuant to 35 USC 317 and 37 CDRF 42.74, filed
`
`July 13, 2018 (Paper 10).
`
`C.
`
`Lead Counsel and Backup-Counsel (Unchanged)
`
`There are no changes in the identities of the lead or back-up co.-tinsel
`
`LEAD COUNSEL
`Terry L. Watt (Reg. No. 42214)
`terr_ .watt@crowedunlevy.com
`
`Postal and Hand Delivery Address
`Crowe & Dunlevy
`321 South Boston, Suite 500
`The Kennedy Bldg.
`Tulsa, OK 74103
`Telephone: 918/592 9800
`918/592-9801
`Fax:
`
`BACK-UP COUNSEL
`Matthew J. Antonelli (Reg. No. 45973
`matt@ahtlawfirm.com
`
`Michael E. Ellis (Reg. No. 72628)
`michael@ahtlawfirm.corn
`
`Larry D. Thompson, Jr. (Reg. No. 43952)
`larry@ahtlawfirm.com
`
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`4306 Yoakum Blvd., Suite 450
`Houston, TX 77006
`Telephone:713/581-3000
`
`3
`
`
`
`Please continue to address all correspondence to lead and back-up counsel. Patent Owner
`
`IPR2018-00043
`U.S. PATENT 9,454.748
`
`consents to electronic service.
`
`12/11/2018
`(Date)
`
`3403956.1
`
`Respectfully submitted,
`/terry 1. watt/
`
`Terry L. Watt
`Registration No. 42214
`Customer No. 22267
`
`4
`
`
`
`IPR2018-00043
`U.S. PATENT 9,454.748
`
`CERTIFICATE OF SERVICE '
`
`The undersigned certifies, in accordance with 37 C.F.R. § 42.205, and pursuant to
`
`Petitioner's consent to electronic service, that on December 11, 2018, service was made via
`
`email on the Petitioner as follows:
`
`Lead Counsel
`Manner of service:
`Documents served:
`Persons served:
`
`Email: david.obrien.ipr@haynesboone.com
`Patent Owner's Updated Mandatory Notice
`David W. O'Brien
`Haynes & Boone, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX
`
`Phone: 512-8967-8457
`Fax: 214-2000-0853
`david.obrien.ipr@haynesboone.com
`
`Back-up Counsel (via email)
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700 Dallas,
`TX 75219
`
`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
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`Johnathan R. Bowser
`Unified Patents Inc.
`1875 Connecticut Ave NW, Floor 10
`Washington, DC 20009
`
`Phone: 512 867-8520
`raghay.baj aj . ipr@haynesbo one. com
`USPTO Reg. No. 66,630
`
`214-945-0200
`Phone:
`roshan@unifiedpatents.com
`USPTO Reg. No. 62,429
`
`214-651-5533
`Phone:
`david.mccombs.ipr@haynesboone.com
`USPTO Reg. No. 32,271
`
`650-999-0455
`Phone:
`ionathan@unifiedpatents .com
`USPTO Reg. No. 72,518
`
`Phone: 202-669-0260
`
`jbowser@unifiedpatents.corn
`USPTO Reg. No. 54,574
`
`5
`
`
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