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Trialnguspto.cov
`
`571 272 7822
`
`' UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`STARBUCKS CORPORATION ET AL.
`
`Petitioners
`
`V.
`
`FALL LINE PATENTS, LLC
`
`Patent Owner
`
`CASE IPR2019—00610
`
`PATENT 9,454,748
`
`PATENT OWNER’S MANDATORY NOTICE
`
`UNDER 37 C.F.R. § 42.8
`
`

`

`IPR2019-000610
`
`U.S. PATENT 9,454,748
`
`Pursuant to 37 CPR. § 42.8(b)( 1), the undersigned, on behalf of and acting in a
`
`representative capacity for patent owner, FALL LINE PATENTS, LLC (“Patent Owner”),
`
`hereby submits the following mandatory notices in connection with the Petition mailed January
`
`22, 2019, for Inter Partes Review of United States Patent 9,454,748, Case No. IPR2019-00610.
`
`A.
`
`Real Party-in-Interest
`
`The real party-in—interest is FALL LINE PATENTS, LLC (an Oklahoma limited liability
`
`company). FALL LINE PATENTS, LLC is the assignee of 100% interest in US. Patent No.
`
`9,454,748 (the ‘748 Patent”). A chain of title showing current ownership of US. Patent No.
`
`9,454,748 is shown in the records of the US. Patent and Trademark Office, Assignment Branch,
`
`as follows: Assignment from inventor, J. David Payne, to Macrosolve, Inc., executed
`
`08/07/2003 and recorded 8/24/2016 at Reel/Frame 039527/0129; Assignment from Macrosolve,
`
`Inc. to Ediche, LLC, recorded 8/24/2016 at Reelflirame 03 9527/0213; Assignment from Ediche,
`
`LLC to Fall Line Patents, LLC, recorded 03/13/2017 at Reel/Frame 041556/0916.
`
`B.
`
`Related Matters
`
`The ‘748 patent is presently the subject of patent infringement lawsuits filed in the
`
`Eastern District of Texas against the following entities:
`
`
`_—
`Fall Line Patents, LLC v Zoe’s Kitchen, Inc. et al
`6: 18—cv—00407
`
`
`
`
`
`
`
`
`
`
`
`Fall Line Patents LLC v AMC Ent. Holdings, Inc. et a1
`Fall Line Patents, LLC v Boston Market Corp.
`Fall L1ne Patents LLC v Starbucks Corp.
`
`Fall L1ne Patents LLC v McDonald’s Corp. et a1
`Fall Line Patents, LLC v Panda Restaurant Group, Inc. et a1
`Fall Line Patents, LLC v. Papa John’s Int, Inc. et a1
`
`6: 18-cv—00408
`6:18—cv—00409
`6:18-cv—00411
`
`6:18-cv—00412
`6:18-cv-00413
`6: 1 8—cv-0041 5
`
`

`

`Additionally, the following previously-filed lawsuits have now all been dismissed:
`
`IPR2019-000610
`
`U.S. PATENT 9,454,748
`
`
`
`
`
`
`
`
`Fall Line Patents, LLC V. American Airlines Group, Inc. et
`al
`
`Fall Line Patents, LLC V. Cinemark Holdings, Inc. et a1
`
`Fall Line Patents, LLC V. Grubhub Holdings, Inc. et a1
`
`
`
`6.18-cv-00406
`
`6:18-cv-00410
`
`6-17-cv-00407
`
`
`
`
`
`ll
`
`6:17-cv-00408
`
`6:17-cv-00202
`
`:17-cv—00203
`
`:17-cv—00204
`
`IPR2018—00535, which was initiated by Uber Technologies, Inc., and Choice Hotels
`
`International, Inc. to challenge claims 1, 2, 5, 9, 11, 13, and 15-22 of the ‘748 Patent, was
`
`terminated by mutual consent before the Board rendered its decision regarding institution. See,
`
`Joint Motion to Terminate Proceedings Pursuant to 35 USC 317 and 37 CFR 42.74, filed July 13,
`
`2018 (Paper 10).
`
`Claims 16-19 and 21-22 of the ‘748 patent are currently subject to review in IPR2018-
`
`00043, which was filed by petitioner Unified Patents, Inc. See, Decision instituting IPR, paper 6,
`
`entered April 5, 2018. Oral argument has taken place and the parties are currently awaiting a
`
`decision from the Board
`
`

`

`U.S. PATENT 9,454,748
`
`
`IPR2019-000610
`
`C.
`
`Lead Counsel and Backup-Counsel
`
`SE
`BAD
`T rry L. Watt Reg. No.
`terry.watthcrowedunleyycom
`
`)
`
`.,
`
`_
`_
`,,
`_.
`KUPCOUNSE _
`Matthew J. Antonelli (Reg. No. 45973
`matt@aht1awfirm.com
`
`
`
`Postal and Hand Delivery Address
`Crowe & Dunlevy
`321 South Boston, Suite 500
`The Kennedy Bldg.
`Tulsa, OK 74103
`Telephone: 918/592 9800
`Fax:
`918/592-9801
`
`Michael E. Ellis (Reg. No. 72628)
`michael@ahtlawfirm.oom
`
`Larry D. Thompson, Jr. (Reg. No. 43952)
`larrngahtlawfirmcom
`
`ANTONELLI, HARRINGTON &
`THOMPSON LLP
`
`4306 Yoakum Blvd, Suite 450
`Houston, TX 77006
`Telephonez713/581-3000
`
`Please address all correspondence to lead and back-up counsel. Patent Owner consents to
`
`electronic service.
`
`02/ 1 3/2019
`(Date)
`
`Respectfully submitted,
`/terry 1. watt/
`
`Terry L. Watt
`Registration No. 42214
`Customer No. 22267
`
`

`

`IPR2019-000610
`
`U.S. PATENT 9,454,748
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, in accordance with 37 CPR. § 42.205, and pursuant to
`
`Petitioner’s consent to electronic service, that on February 13, 2019, service was made via email
`
`on the Petitioner as follows:
`
`Lead Counsel
`
`Manner of service:
`Documents served:
`Persons served:
`
`tara.elliott@lw.com
`Email:
`Patent Owner’s Updated Mandatory Notice
`Tara D. Elliott (Reg. No. 52,859)
`Latham & Watkins LLP
`
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC. 20004-1304
`
`Phone: 202.637.2329
`
`Fax: 202.637.2201
`
`tara.elliott I lw.com
`
`Fax: 713.227.9508
`
`Back-up Counsel gvz’a email!
`Lowell D. Mead
`
`Cooley LLP
`3175 Hanover Street
`
`Palo Alto, CA 94304
`
`Ricardo Bonilla
`
`Fish & Richardson PC.
`
`3200 RBC Plaza
`
`60 S. Sixth Street
`
`Minneapolis, MN 55402
`
`Lisa K. Nguyen
`
`Latham & Watkins, LLP
`
`140 Scott Drive
`
`Menlo Park, CA 94025
`
`Robert H. Reckers
`
`Shook, Hardy & Bacon, LLP.
`
`600 Travis Street, Suite 3400
`
`Houston, TX 77002-2926
`
`3424309.]
`
`lmead@cooleycom
`Phone: 650.843.5734
`
`Fax: 650.849.7400
`
`Reg. No. 65,190
`rbonilla@fr.com
`PTABInboundefrcom
`Phone: 214.747.5070
`
`Fax: 877.769.7945
`
`Reg. No. 58,018
`lisa.nguyen@lw.com
`Phone: 650.470.4848
`
`Fax: 650.463.2600
`
`Reg. No. 54,633
`rreckers@shb.com
`Phone: 713.227.8008
`
`

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