`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
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`
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`APPLE INC.
`
`Petitioner,
`
`v.
`
`OPTIS WIRELESS TECHNOLOGY, LLC
`
`Patent Owner.
`
`
`_________________
`
`Case No. IPR2020-00466
`Patent No. 8,411,557
`___________________
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`
`
`
`PATENT OWNER OPTIS WIRELESS TECHNOLOGY, LLC'S
` UPDATED MANDATORY NOTICE PURSUANT TO 37 C.F.R. § 42.8 AND
`THE BOARD'S AUGUST 13, 2020 ORDER
`
`
`
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`
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`10869611
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`
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`IPR2020-00466
`Patent No. 8,411,557
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`
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`Pursuant to 37 C.F.R. § 42.8 and the Board's August 13, 2020 order by email
`
`(Ex. 2018), the Patent Owner Optis Wireless Technology, LLC hereby submits the
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`following updated notice.
`
`I.
`
`Real Party-In-Interest [No Change]
`Optis Wireless Technology, LLC is the owner of U.S. Patent No. 8,411,557
`
`("the '557 patent"). PanOptis Patent Management, LLC, has the right to license
`
`and assert the '557 patent.
`
`II. Related Matters [Updated]
`The Patent Owner identifies the following matter that may be deemed
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`related pursuant to 37 C.F.R. § 42.8(b)(2):
`
`• Optis Wireless Technology, LLC ("Patent Owner") Optis Cellular
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`Technology, LLC, Unwired Planet, LLC, Unwired Planet International
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`Limited and PanOptis Patent Management, LLC ("Plaintiffs) have
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`asserted the '557 patent against Apple in Optis Wireless Technology, LLC
`
`v. Apple Inc., Case No. 2:19-cv-00066-JRG (E.D. Tex.).
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`[Updated August 19, 2020] Between August 3 and August 11, 2020, a jury
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`trial was held in the above-mentioned matter. On August 3, 2020, Petitioner filed
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`an opposed motion "to dismiss without prejudice its counterclaim for a declaratory
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`judgment of invalidity of U.S. Patent No. 8,411,557 (Count X of Apple's Answer,
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`Affirmative Defenses, and Counterclaims to Plaintiffs' First Amended Complaint,
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`- 1 -
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`IPR2020-00466
`Patent No. 8,411,557
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`Dkt. 110)." Ex. 2019. On August 4, 2020, the Court denied Petitioner's motion to
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`dismiss. Ex. 2020. Thereafter on August 7, 2020, Patent Owner's expert, Dr.
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`Madisetti, testified why the '557 patent was not rendered obvious by either a
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`combination of Sutivong1 and Tan (Ex. 1005) or a combination of Harris (Ex.
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`1004) and Tan (Ex. 1005), and Petitioner's expert testified why he believed
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`Sutivong and Tan rendered the '557 patent obvious. Both experts were subject to
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`cross-examination. The jury rendered a verdict on August 11, 2020, finding that
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`Petitioner had failed to establish that independent claims 1 and 10 of the '557
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`patent were invalid. Ex. 2021 at 5.
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`III. Lead And Back-Up Counsel [No Change]
`Lead Counsel
`Hong Annita Zhong (Reg. No. 66,530)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`hzhong@irell.com
`azhong@irell.com
`
`
`Back-up Counsel
`Jason Sheasby (pro hac vice to be requested)
`IRELL & MANELLA LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, California 90067
`Telephone: (310) 277-1010
`Facsimile: (310) 203-7199
`jsheasby@irell.com
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`
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`
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`1 Petitioner referenced U.S. Application No. 2006/0018336 (Ex. 2006) at
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`trial. The petition asserts the substantively identical WO 2006/019710 (Ex. 1003).
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`- 2 -
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`IPR2020-00466
`Patent No. 8,411,557
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`IV. Service Information [No Change]
`The Patent Owner consents to electronic service by email to the email
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`addresses above and to the following email address: PanOptisIPRs@irell.com.
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`Dated: August 19, 2020
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`Respectfully submitted,
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`By: /Hong Zhong/
`
`H. Annita Zhong, Reg. No. 66,530
`IRELL & MANELLA LLP
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`- 3 -
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`IPR2020-00466
`Patent No. 8,411,557
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. section § 42.6, that on
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`August 19, 2020, a complete copy of the foregoing document and Exhibits 2018-
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`2021 were served upon the following, by ELECTRONIC MAIL:
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`
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`WILMER CUTLER PICKERING HALE AND DORR, LLP
`
`Jason D. Kipnis, Reg. No. 40,680
`Jason.Kipnis@wilmerhale.com
`
`Mary V. Sooter, Reg. No. 71,022
`Mindy.Sooter@wilmerhale.com
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`David L. Cavanaugh, Reg. No. 36,476
`David.Cavanaugh@wilmerhale.com
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`Ravinder Deol, Reg. No. 62,165
`Ravi.Deol@wilmerhale.com
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` /Susan M. Langworthy/
` Susan M. Langworthy
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`- 4 -
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