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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`WATERS TECHNOLOGIES CORPORATION,
`Petitioner,
`
`v.
`
`BIOMEDICAL DEVICE CONSULTANTS & LABORATORIES OF
`COLORADO, LLC
`Patent Owner
`
`_____________________
`
`
`Case IPR2018-00498
`Patent 9,186,224
`
`_____________________
`
`PATENT OWNER’S MANDATORY
`NOTICES UNDER 37 C.F.R. § 42.8
`
`4849-7434-7873\1
`
`

`

`
`
`PATENT OWNER’S MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`Pursuant to 37 C.F.R. § 42.8, the Patent Owner, Biomedical Device
`
`Consultants and Laboratories of Colorado, LLC (“Patent Owner”), hereby submits
`
`the following Mandatory Notices in response to the Petition for Inter Partes
`
`Review of U.S. Patent No. 9,186,224.
`
`1.
`
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`
`Biomedical Device Consultants and Laboratories of Colorado, LLC, (“BDC
`
`Labs”) is the Patent Owner and a Real Party-In-Interest. BDC Labs is a wholly
`
`owned subsidiary of Tentamus Group GmbH.
`
`2.
`
`Related Matters under 37 C.F.R. § 42.8(b)(2)
`
`The following judicial or administrative matters may affect or be affected by
`
`a decision in this proceeding:
`
`Patent Owner asserted U.S. Patent No. 9,186,224 against TA Instruments –
`
`Waters LLC in a Complaint filed 27 July 2017 in Federal District Court for the
`
`District of Minnesota, which was served on 3 August 2017. The case is captioned
`
`Biomedical Device Consultants & Laboratories of Colorado, LLC v. TA
`
`Instruments – Waters LLC, 0:17-cv-03403-DWF-SEF (D.Minn.). TA Instruments-
`
`Waters LLC is a wholly-owned subsidiary of Petitioner, Waters Technologies
`
`Corporation.
`
`4849-7434-7873\1
`
`2
`
`

`

`
`
`3.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`
`Lead Counsel is Brad J. Hattenbach (Reg. No. 42642) and Back-up Counsel
`
`are Adam Floyd (Reg. No. 39192), Gina Cornelio (Reg. No. 64336), and Clint
`
`Connor (Reg. No. 52764), each of Dorsey & Whitney LLP, Customer No. 20686.
`
`4.
`
`Service Information under 37 C.F.R. § 42.8(b)(4)(i) et seq.
`
`Service Information:
`
`Dorsey & Whitney LLP
`1400 Wewatta Street, Suite 400
`Denver, Colorado 80202-5549
`Tel. (303) 629-3400
`Fax (303) 629-3450
`
`Patent Owner consents to service by electronic mail at:
`
`Docketing-DV@dorsey.com
`
`BDC-WatersIPR@dorsey.com.
`
`5. Power of Attorney under 37 C.F.R. § 42.10(b)
`
`The designated counsel for Patent Owner is already counsel of record in the
`
`subject patent. Therefore, no separate Power of Attorney is required.
`
`
`
`Respectfully submitted this 10th day of April 2018 by
`
`
`
`
`Brad J. Hattenbach
`Reg. No. 42,642
`Customer No. 20686
`
`
`3
`
`
`
`4849-7434-7873\1
`
`

`

`
`
`Dorsey & Whitney LLP
`1400 Wewatta Street, Suite 400
`Denver, Colorado 80202-5549
`303-629-3400 TEL
`303-629-3450 FAX
`
`Adam Floyd (Reg. No. 39192)
`Gina Cornelio (Reg. No. 64336)
`Clint Connor (Reg. No. 52764)
`
`Attorneys for Patent Owner,
`Biomedical Device Consultants &
`Laboratories of Colorado, LLC
`
`4849-7434-7873\1
`
`4
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e)(4), the undersigned certifies that on 10 April
`
`2018 a complete and entire copy of this Patent Owner’s Mandatory Notices Under
`
`37 C.F.R. § 42.8 was served on the Petitioner via electronic mail at the following
`
`addresses:
`
`Deborah M. Vernon, Ph.D.
`Womble Bond Dickinson (US) LLP
`Two International Place
`Boston, Massachusetts 02110
`
`deborah.vernon@wbd-us.com
`224IPR@wbd-us.com
`
`
`
`
`
`/Kimberly C. Croft/
`Kimberly C. Croft
`
`Dorsey & Whitney LLP
`1400 Wewatta Street, Suite 400
`Denver, Colorado 80202-5549
`303-629-3400 TEL
`303-629-3450 FAX
`
`4849-7434-7873\1
`
`5
`
`

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