IPR2018-00372
`ALACRITECH, INC.’S MANDATORY NOTICES
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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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`DELL INC.,
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`Petitioner,
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`v.
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`ALACRITECH INC.,
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`Patent Owner
`________________
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`Case IPR2018-00372
`U.S. Patent 7,337,241
`________________
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`MANDATORY NOTICES OF ALACRITECH, INC.
`IN COMPLIANCE WITH 37 C.F.R. § 42.8
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`ALACRITECH, INC.’S MANDATORY NOTICES
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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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`DELL INC.,
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`Petitioner,
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`v.
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`ALACRITECH INC.,
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`Patent Owner
`________________
`
`Case IPR2018-00372
`U.S. Patent 7,337,241
`________________
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`MANDATORY NOTICES OF ALACRITECH, INC.
`IN COMPLIANCE WITH 37 C.F.R. § 42.8
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`Case No. IPR2018-00372
`U.S. Patent No. 7,337,241
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`Pursuant to 37 C.F.R. § 42.8, Alacritech, Inc. (“Alacritech”) hereby submits
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`the following mandatory notices with the Patent Trial and Appeal Board.
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`I.
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`REAL PARTY IN INTEREST
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`The real party in interest is Alacritech, Inc. Alacritech is the owner of all
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`rights to U.S. Patent No. 7,337,241 (“the ’241 patent”). Evidence supporting
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`Alacritech’s status as the owner of the ’241 patent is found on the face of
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`Petitioner’s Exhibit 1001 and at reel/frame 039068/0884showing the assignment of
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`the ’241 patent to Alacritech. A-Tech LLC had an ownership interest in the ’241
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`patent that was subsequently assigned to Alacritech as shown at reel/frames
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`031644/0783 and 039068/0884.
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`II. RELATED MATTERS
`Alacritech identifies the following district court proceeding involving the
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`’241 patent:
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` Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-JRG-RSP (E.D.
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`Tex.)
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` Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP (E.D.
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`Tex.)
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` Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.)
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`The patent family to which the ’241 patent belongs contains 21 additional
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`U.S. patents or patent applications:
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`1
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`Case No. IPR2018-00372
`U.S. Patent No. 7,337,241
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` U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued
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`Jul. 8, 2003 as U.S. Patent No. 6,591,302);
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` U.S. Patent Application No. 10/023,240 (filed Dec. 17, 2001, issued
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`Nov. 15, 2005 as U.S. Patent No. 6,965,941);
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` U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued
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`Jul. 30, 2002 as U.S. Patent No. 6,427,173);
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` U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued
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`Jun. 12, 2001 as 6,247,060 patent);
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` U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued
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`May 1, 2001 as U.S. Patent No. 6,226,680);
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` U.S. Provisional Patent Application No. 60/061,809 (expired);
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` U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued
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`Aug. 13, 2002 as U.S. Patent No. 6,434,620);
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` U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued
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`May 14, 2002 as U.S. Patent No. 6,389,479);
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` U.S. Provisional Patent Application No. 60/098,296 (expired);
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` U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued
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`Oct. 22, 2002 as U.S. Patent No. 6,470,415);
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` U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued
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`Jul. 30, 2002 as U.S. Patent No. 6,427,171);
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`2
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`Case No. IPR2018-00372
`U.S. Patent No. 7,337,241
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` U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued
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`Oct. 19, 2004 as U.S. Patent No. 6,807,581);
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` U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued
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`Dec. 31, 2013 as U.S. Patent No. 8,621,101);
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` U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued
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`Jun. 29, 2004 as U.S. Patent No. 6,757,746);
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` U.S. Patent Application No. 09/801,488 (filed Mar. 7, 2001, issued
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`Feb. 3, 2004 as U.S. Patent No. 6,687,758);
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` U.S. Patent Application No. 09/802,551 (filed Mar. 9, 2001, issued
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`Jul. 11, 2006 as U.S. Patent No. 7,076,568);
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` U.S. Patent Application No. 09/802,426 (filed Mar. 9, 2001, issued
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`May 9, 2006 as U.S. Patent No. 7,042,898);
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` U.S. Patent Application No. 09/802,550 (filed Mar. 9, 2001, issued
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`Dec. 2, 2003 as U.S. Patent No. 6,658,480);
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` U.S. Patent Application No. 09/855,979 (filed May 14, 2001, issued
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`Nov. 7, 2006 as U.S. Patent No. 7,133,940);
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` U.S. Patent Application No. 09/970,124 (filed Oct. 2, 2001, issued
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`Oct. 17, 2006 as U.S. Patent No. 7,124,205);
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` U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued
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`Jul. 30, 2002 as U.S. Patent No. 6,427,173).
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`3
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`III. LEAD AND BACKUP COUNSEL
`Alacritech designated James M. Glass as lead counsel, as well as Joseph M.
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`Case No. IPR2018-00372
`U.S. Patent No. 7,337,241
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`Paunovich, Brian E. Mack, Ziyong Li and Mark Lauer as backup counsel. A power
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`of attorney is filed concurrently with this document. Alacritech consents to
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`electronic service.
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`IV. SERVICE INFORMATION
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`James M. Glass
`Registration No. 46,729
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`Email: jimglass@quinnemanuel.com
`Address: 51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Phone: 212-849-7000
`Fax: 212-849-7100
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`4
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`Joseph M. Paunovich
`Registration No. 59,033
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`Email:
`joepaunovich@quinnemanuel.com
`Address: 865 S. Figueroa Street, 10th Fl.
`Los Angeles, CA 90017
`Phone: 213-443-3000
`Fax: 213-443-3100
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`Brian E. Mack
`Registration No. 57,189
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`Email: brianmack@quinnemanuel.com
`Address: 50 California Street, 22nd Fl.
`San Francisco, CA 94111
`Phone: 415-875-6600
`Fax: 415-875-6700
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`Ziyong Li
`Registration No. 76,089
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`Email: seanli@quinnemanuel.com
`Address: 50 California Street, 22nd Fl.
`San Francisco, CA 94111
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`Case No. IPR2018-00372
`U.S. Patent No. 7,337,241
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`Phone: 415-875-6600
`Fax: 415-875-6700
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`Mark Lauer
`Registration No. 36,578
`SILICON EDGE LAW GROUP LLP
`Email: mark@siliconedgelaw.com
`Address: 7901 Stoneridge Dr., Ste. 528
`Pleasanton, CA 94588
`Phone: 925-621-2121
`Fax: 925-621-2119
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` Respectfully submitted,
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`By: /James M. Glass/
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Tel: 212-849-7000
`Fax: 212-849-7100
`Email: jimglass@quinnemanuel.com
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`Attorney for Patent Owner –
`Alacritech, Inc.
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`5
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`Date: January 5, 2018
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`Case No. IPR2018-00372
`U.S. Patent No. 7,337,241
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certify that the foregoing Mandatory Notices were
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`served on January 5, 2018 by filing these documents through the Patent Review
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`Processing System, as well as by e-mailing copies to:
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`Christopher TL Douglas
`Registration No. 56,950
`christopher.douglas@alston.com
`ALSTON & BIRD LLP
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280
`T: 704-444-1119
`F: 704-444-1111
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`Date: January 5, 2018
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` Respectfully submitted,
`By: /James M. Glass/
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Tel: 212-849-7000
`Fax: 212-849-7100
`Email: jimglass@quinnemanuel.com
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`Attorney for Patent Owner –
`Alacritech, Inc.
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`6
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