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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`IXI IP, LLC
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 7,039,033 to Haller, et al.
`
`Case No.: IPR2019-00125
`
`______________
`
`
`
`PATENT OWNER’S MANDATORY NOTICE
`
`
`
`
`
`

`

`Case No. IPR2019-00125
`
`
`I. Mandatory Notices under 37 C.F.R. § 42.8
`
`
`
`Atty. Dkt. No.: IXI0103IPR2
`
`Pursuant to 37 C.F.R. § 42.8, the patent owner, IXI IP, LLC (“Patent
`
`Owner”), hereby submits the following Mandatory Notices in response to the
`
`Petition for Inter Partes Review of U.S. Patent No. 7,039,033 (“the ‘033 Patent”).
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Patent Owner certifies that IXI IP, LLC and IXI Mobile (R&D) Ltd. are the
`
`real parties-in-interest in this proceeding. IXI Mobile (R&D) Ltd. is a company
`
`incorporated and registered under the laws of Israel. IXI Mobile (R&D) Ltd. is an
`
`exclusive licensee of IXI IP, LLC and a party to the related litigation matters.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`Patent Owner identifies the following related judicial or administrative
`
`matters could affect, or could be affected by, a decision in this proceeding:
`
`• IXI Mobile (R&D) Ltd. et al. v. Apple, Inc., U.S. District Court,
`
`Northern District of California, Civil Case No. 4:15-cv-03755
`
`• IXI Mobile (R&D) Ltd. et al. v. Apple, Inc., U.S. District Court,
`
`Northern District of California, Civil Case No. 4:15-cv-03754
`
`• IXI Mobile (R&D) Ltd. et al. v. Apple, Inc., U.S. District Court,
`
`Northern District of California, Civil Case No. 4:15-cv-03752
`
`
`
`
`
`1
`
`

`

`Case No. IPR2019-00125
`
`
`
`
`
`Atty. Dkt. No.: IXI0103IPR2
`
`Concurrently filed related petitions include the following:
`
`• Apple, Inc. v. IXI Mobile (R&D) Ltd., IPR2019-00124
`
`• Apple, Inc. v. IXI Mobile (R&D) Ltd., IPR2019-00139
`
`• Apple, Inc. v. IXI Mobile (R&D) Ltd., IPR2019-00140
`
`• Apple, Inc. v. IXI Mobile (R&D) Ltd., IPR2019-00141
`
`• Apple, Inc. v. IXI Mobile (R&D) Ltd., IPR2019-00181
`
`
`
`
`C. Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`The Patent Owner identifies the following lead and back-up counsel:
`
`
`
`Lead Counsel
`
`Back-Up Counsel
`
`Sangeeta G. Shah (Reg. No. 38,614)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone (248) 358-4400
`Facsimile (248) 358-3351
`IXI0103IPR2@brookskushman.com
`
`David S. Bir (Reg. No. 38,383)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone (248) 358-4400
`Facsimile (248) 358-3351
`IXI0103IPR2@brookskushman.com
`
`
`Pursuant to 37 C.F.R. § 42.10(b), an appropriate Power of Attorney is filed
`
`
`
`concurrently herewith.
`
`
`
`
`
`
`
`2
`
`

`

`Case No. IPR2019-00125
`
`
`
`
`
`Atty. Dkt. No.: IXI0103IPR2
`
`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above. Patent Owner hereby consent to
`
`service
`
`by
`
`email
`
`at
`
`the
`
`following
`
`email
`
`address:
`
`IXI0103IPR2@brookskushman.com.
`
`
`
`
`Dated: November 29, 2018
`
`
`
`Respectfully submitted,
`
`
`
` /Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`David S. Bir (Reg. No. 38,383)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`3
`
`

`

`Case No. IPR2019-00125
`
`
`
`
`
`Atty. Dkt. No.: IXI0103IPR2
`
`Certificate of Service
`
`The undersigned hereby certifies that on November 29, 2018, a complete
`and entire copy of Patent Owner’s Mandatory Notice, was served via electronic
`mail to the counsel of record listed below:
`
`
`LEAD COUNSEL
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR39521-0020IP2@fr.com
`
`
`BACK-UP COUNSEL
`Jeremy J. Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`PTABInbound@fr.com; axf-
`ptab@fr.com; monaldo@fr.com
`
`
`
`
`
`
`
`Dated: November 29, 2018
`
`
`
`Respectfully submitted,
`
`
`
` /Sangeeta G. Shah/
`Sangeeta G. Shah (Reg. No. 38,614)
`David S. Bir (Reg. No. 38,383)
`Brooks Kushman P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`
`4
`
`

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