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Paper No.
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`12
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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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`
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`CANON U.S.A., INC.
`Petitioner,
`
`v.
`
`CELLSPIN SOFT, INC.
`Patent Owner
`
`Case No. IPR 2019-00127
`Patent No. 9,258,698
`
`
`
`
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`AMENDED MANDATORY NOTICE PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
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`

`

`Case IPR 2019-00131 of
`U.S. Patent No. 9,258,698
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, Cellspin Soft, Inc., hereby files its
`
`Amended Mandatory Notices in Response to the Petition for Inter Partes Review on U.S. Patent
`
`No. 9,258,698.
`
`I.
`
`37 C.F.R. § 42.8(b)(1) – Real Party in Interest
`
`The Real Party in Interest for Patent Owner is:
`
`Cellspin Soft, Inc.
`5001 Great America Pkwy, PMB 122
`Santa Clara, CA 95054
`
`
`II.
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`37 C.F.R. § 42.8(b)(2) – Related Matters
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`This inter partes review is related to the following co-pending litigation in the United States
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`District Court for the Northern District of California:
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`• Cellspin Soft, Inc. v. Garmin International, et al., Case No. 4:17-cv-05934
`• Cellspin Soft, Inc. v. Nikon Americas Inc., et al., Case No. 4:17-cv-05936
`• Cellspin Soft, Inc. v. TomTom, Inc., et al., Case No. 4:17-cv-05937
`• Cellspin Soft, Inc. v. GoPro, Inc., Case No. 4:17-cv-05939
`• Cellspin Soft, Inc. v. Eastman Kodak Co., Case No. 4:17-cv-05940
`• Cellspin Soft, Inc. v. Panasonic Corp. of America, Case No. 4:17-cv-05941
`• Cellspin Soft, Inc. v. JK Imaging, Ltd., Case No. 4:17-cv-06881
`
`In addition, Patent Owner has also asserted the ‘698 Patent currently pending before the U.S.
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`Court of Appeals for the Federal Circuit, Appeal No. 2018-1823. The lead case for this appeal is
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`Appeal No. 2018-1817.
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`37 C.F.R. § 42.8(b)(3) – Lead Counsel & Backup Counsel
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`III.
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`Lead Counsel:
`John J. Edmonds, Reg. No. 56,184
`EDMONDS & SCHLATHER, PLLC
`355 South Grand Avenue, Suite 2450
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`- 2 -
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`

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`Los Angeles, CA 90071
`P: 213-973-7846
`F: 213-835-6996
`E: pto-edmonds@ip-lit.com
`
`Backup Counsel:
`Stephen F. Schlather, Reg. No. 70,423
`EDMONDS & SCHLATHER, PLLC
`1616 S. Voss Road, Suite 125
`Houston, TX 77057
`P: 713-364-2371
`F: 832-415-2535
`E: sschlather@ip-lit.com
`
`37 C.F.R. § 42.8(b)(4) – Service Information
`Please address all email correspondence to the lead counsel as shown above. Please address
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`IV.
`
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`all paper correspondence to lead counsel as shown above. Patent Owner consents to electronic
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`service by email addressed to its lead counsel as shown above.
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`

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`Case IPR 2019-00131 of
`U.S. Patent No. 9,258,698
`
`
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`Dated: May 22, 2019
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`Respectfully submitted,
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`EDMONDS & SCHLATHER, PLLC
`
`
`/John J. Edmonds/
`John J. Edmonds, Reg. No. 56,184
`
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`T: 213-973-7846
`F: 213-835-6996
`E: pto-edmonds@ip-lit.com
`
`Attorney for Patent Owner
`Cellspin Soft, Inc.
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`- 4 -
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`

`

`Case IPR 2019-00131 of
`U.S. Patent No. 9,258,698
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that the foregoing AMENDED MANDATORY
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`NOTICE PURUSANT TO 37 C.F.R. § 42.8(a)(2) were served electronically via e-mail on May
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`22, 2019, in its entirety on the following:
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`Dated: May 22, 2019
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`Jared Newton at: jarednewton@quinnemaneul.com
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`Respectfully submitted,
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`EDMONDS & SCHLATHER, PLLC
`
`
`/John J. Edmonds/
`John J. Edmonds, Reg. No. 56,184
`
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`T: 213-973-7846
`F: 213-835-6996
`E: pto-edmonds@ip-lit.com
`
`Attorney for Patent Owner
`Cellspin Soft, Inc.
`
`- 5 -
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`

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