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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`WAHOO FITNESS LLC,
`
`Petitioner
`
`v.
`
`BLACKBIRD TECH LLC d/b/a BLACKBIRD TECHNOLOGIES,
`
`Patent Owner.
`
` Case IPR2018-00275
`Patent 6,434,212
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER BLACKBIRD TECHNOLOGIES’
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`Case IPR2018-00275
`Patent 6,434,212
`
`
`
`
`
`
`1.
`
`
`
`Real Party-in-Interest
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies the
`
`following real party-in-interest: Blackbird Tech LLC d/b/a Blackbird
`
`Technologies.
`
`2.
`
`
`
`Related Matters
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
`
`following related matters in which Patent Owner filed patent infringement
`
`actions for U.S. Patent No. 6,434,212 (“the ‘212 patent”):
`
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Fitbit, Inc.,
`Case No. 16-CV-683 (D. Del.)
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Aliphcom d/b/a
`Jawbone, Case No. 16-CV-684 (D. Del.)
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Sony Corp. et al,
`Case No. 16-CV-685 (D. Del.)
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Timex Group USA,
`Inc.,
`Case No. 16-CV-686 (D. Del.)
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. TomTom, Inc.,
`Case No. 16-CV-687 (D. Del.)
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Wahoo Fitness, Inc.,
`Case No. 16-CV-688 (D. Del.)
`• Blackbird Tech LLC d/b/a Blackbird Technologies v. Garmin International,
`Inc. and Garmin USA, Inc., Case No. 16-CV-689 (D. Del.)
`
`
`
`
`2
`
`
`
`Case IPR2018-00275
`Patent 6,434,212
`
`
`Patent Owner also identifies IPR2017-01058, which was filed against the
`
`‘212 patent by Garmin International, Inc. That IPR has been settled and
`
`terminated.
`
`The ‘212 patent is also the subject of two petitions for inter partes review
`
`filed by TomTom International, B.V., Nos. IPR2017-02023 and -02025, as well as
`
`one petition for inter partes review filed by Fitbit, Inc., No. IPR2017-02012. No
`
`decision for or against institution has yet been issued for these petitions.
`
`3.
`
`
`
`Lead and Back-up Counsel
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner designates the
`
`following counsel to transact all business in the U.S. Patent & Trademark Office
`
`associated with the above-captioned proceeding. A power of attorney
`
`designating the same counsel is being filed concurrently with these Notices:
`
`
`
`3
`
`
`
`Case IPR2018-00275
`Patent 6,434,212
`
`
`Lead Counsel
`Walter D. Davis, Jr.
`(Reg. No. 45,137)
`Davidson Berquist Jackson &
`Gowdey, LLP
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`Phone: (571)765-7700
`Fax: (571)765-7200
`Email: wdavis@dbjg.com
`
`
`Back-up Counsel
`Wayne M. Helge
`(Reg. No. 56,905)
`Davidson Berquist Jackson &
`Gowdey, LLP
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`Phone: (571)765-7700
`Fax: (571)765-7200
`Email: whelge@dbjg.com
`
`Aldo Noto
`(Reg. No. 35,628)
`Davidson Berquist Jackson &
`Gowdey, LLP
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`Phone: (571)765-7700
`Fax: (571)765-7200
`Email: anoto@dbjg.com
`
`
`
`
`
`4.
`
`
`Service Information
`
`
`
`In accordance with 37 C.F.R. § 42.8(b)(4), service of any documents via
`
`mail or hand-delivery may be made at the postal mailing address for lead and
`
`back-up counsel designated above, with electronic service to wdavis@dbjg.com,
`
`whelge@dbjg.com, and anoto@dbjg.com. Counsel consents to electronic service
`
`in this case. Telephone and facsimile numbers for lead and back-up counsel are
`
`designated above.
`
`
`
`4
`
`
`
`Case IPR2018-00275
`Patent 6,434,212
`
`
`Dated: December 21, 2017
`
`Respectfully submitted,
`
`
`
`By: /s/ Walter D. Davis, Jr.
`Walter D. Davis, Jr. (Reg. No. 45,137)
` Counsel for Patent Owner
`
`
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on December 21, 2017, a true and correct copy of the
`
`foregoing Patent Owner Blackbird Technologies’ Mandatory Notices Pursuant to
`
`37 C.F.R. § 42.8 was served on Petitioner by serving the correspondence email
`
`addresses of record as follows:
`
`Matthew L. Cutler (Reg. No. 43,574)
`Douglas A. Robinson (Reg. No. 59,703)
`HARNESS, DICKEY & PIERCE PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`Tel.: 314-726-7500
`Fax: 314-726-7501
`mcutler@hdp.com
`drobinson@hdp.com
`
`
`
`Date: December 21, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` By: /s/ Walter D. Davis, Jr.
`
`
`Walter D. Davis, Jr. (Reg. No. 45,137)
`
`Counsel for Patent Owner
`
`
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