`
`Paper No. 9
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`QUALCOMM INCORPORATED
`
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`
`Patent Owner
`
`
`
`CASE NO. IPR2020-00510
`
`U.S. PATENT 8,023,580
`
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. §42.8
`
`
`99802351.1
`
`
`
`Patent No. 8,023,580
`IPR2020-00510
`
`Pursuant to 37 C.F.R. §42.8(a)(3), Petitioner Qualcomm Incorporated
`
`provides these Updated Mandatory Notices, which have been updated below to
`
`reflect the following developments:
`
`On March 26, 2020, the following two related matters were dismissed with
`
`prejudice:
`
` Rembrandt Wireless Technologies, LP v. Broadcom Incorporated et
`
`al., Case No. 8:19-cv-708 (C.D. Cal.); and
`
` Rembrandt Wireless Techs., LP v. Apple Inc., Case No. 2:19-cv-025
`
`(E.D. Tex.).
`
`On April 9, 2020, the following related matter was stayed:
`
` Rembrandt Wireless Techs., LP v. Qualcomm Incorporated, Case
`
`No. 8:19-cv-705 (C.D. Cal.).
`
`On April 16, 2020, the following four related IPR matters were terminated
`
`prior to institution:
`
` Apple Inc. v. Rembrandt Wireless Technologies, LP., Case Nos.
`
`IPR2020-00033, -00034, -00036, and -00037 (P.T.A.B.).
`
`In the interest of completeness, these Mandatory Notices are also updated to
`
`include the additional closed matters addressed in the Petition, and related patents,
`
`also included in Patent Owner’s Mandatory Notices.
`
`99802351.1
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`- 1 -
`
`
`
`B. Related Matters (37 C.F.R. §42.8(b)(2))
`
`Open Matters
`
`Patent No. 8,023,580
`IPR2020-00510
`
`
`The ’580 Patent is involved in the following proceedings that may affect or
`
`be affected by a decision in this proceeding:
`
` Rembrandt Wireless Techs., LP v. Qualcomm Incorporated, Case
`
`No. 8:19-cv-705 (C.D. Cal.) [Stayed].
`
`U.S. Patent No. 8,457,228 (“’228 Patent”), which is a continuation of the ’580
`
`Patent, is involved in the same district court proceeding and in:
`
` Qualcomm Incorporated v. Rembrandt Wireless Techs., LP., Case
`
`Nos. IPR2020-00509 (P.T.A.B.).
`
`Closed Matters
`
`The ’580 Patent was involved in the following proceedings:
`
` Rembrandt Wireless Techs., LP v. Broadcom Incorporated et al.,
`
`Case No. 8:19-cv-708 (C.D. Cal.) [Dismissed];
`
` Rembrandt Wireless Techs., LP v. Apple Inc., Case No. 2:19-cv-025
`
`(E.D. Tex.) [Dismissed];
`
` Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. Ltd., Case Nos.:
`o 2:16-cv-00170 (E.D. Tex.) [Dismissed]; and
`o 16-1729 (Fed. Cir.) [Aff’d In-Part, Rev’d In-Part, Remanded].
`
`99802351.1
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`- 2 -
`
`
`
`Patent No. 8,023,580
`IPR2020-00510
`
`
` Apple Inc. v. Rembrandt Wireless Techs., LP., Case Nos.
`o IPR2020-00033 (P.T.A.B.) [Terminated Pre-Institution]; and
`o IPR2020-00034 (P.T.A.B.) [Terminated Pre-Institution].
`
` Samsung Elecs. Co. Ltd. v. Rembrandt Wireless Techs. LP, Case Nos.:
`o IPR2014-00889 (P.T.A.B.) [Not instituted];
`o IPR2014-00890 (P.T.A.B.) [Not instituted];
`o IPR2014-00891 (P.T.A.B.) [Not instituted];
`o IPR2014-00892 (P.T.A.B.) [Final Written Decision];
`o IPR2014-00893 (P.T.A.B.) [Final Written Decision];
`o IPR2014-00895 (P.T.A.B.) [Final Written Decision]; and
`o IPR2015-00555 (P.T.A.B.) [Not Instituted]; and
`
` Ex Parte Reexam. No. 90/013,809 [Reexam. Certificate Issued].
`
`
`
`The ’228 Patent was involved in the same closed district court and appeal
`
`proceedings, and was also involved in the following closed USPTO proceedings:
`
` Apple Inc. v. Rembrandt Wireless Techs., LP., Case Nos.
`o IPR2020-00036 (P.T.A.B.) [Terminated Pre-Institution]; and
`o IPR2020-00037 (P.T.A.B.) [Terminated Pre-Institution].
`
`99802351.1
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`- 3 -
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`
`
`Patent No. 8,023,580
`IPR2020-00510
`
` Samsung Elecs. Co. Ltd. v. Rembrandt Wireless Techs., LP, Case Nos.:
`o IPR2014-00514 (P.T.A.B.) [Not instituted];
`o IPR2014-00515 (P.T.A.B.) [Not Instituted];
`o IPR2014-00518 (P.T.A.B.) [Final Written Decision];
`o IPR2014-00519 (P.T.A.B.) [Final Written Decision];
`o IPR2015-00114 (P.T.A.B.) [Not Instituted];
`o IPR2015-00118 (P.T.A.B.) [Not Instituted]; and
`
` Ex Parte Reexam. No. 90/013,808 [Reexam. Cert. Issued].
`
`Related Applications & Patents
`
`Provisional App. No. 60/067,562, filed on Dec. 5, 1997 [Expired];
`
`App. No. 09/205,205 / Patent No. 6,614,838 [Expired];
`
`App. No. 10/412,878 / Patent No. 7,248,626 [Expired];
`
`App. No. 11/774,803 / Patent No. 7,675,965 [Expired];
`
`App. No. 13/198,568 / Patent No. 8,457,228 (the ’228 Patent) [Expired];
`
`App. No. 13/899,227 , filed May 21, 2013 [Abandoned];
`
`App. No. 14/549,064 / Patent No. 9,432,172 [Expired]; and
`
`App. No. 15/226,595, filed Aug. 2, 2016 [Abandoned].
`
`Dated: April 20, 2020
`
`Respectfully submitted,
`
`
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`Lead Counsel for Petitioner
`
`
`
`99802351.1
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`- 4 -
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`
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`Patent No. 8,023,580
`IPR2020-00510
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. §42.6(e), the undersigned certifies that on April 20,
`
`2020, a copy of these Petitioner’s Updated Mandatory Notices were served on Patent
`
`Owner at the e-mail addresses listed below:
`
`jbrowning@gbpatent.com
`mfink@gbpatent.com
`rodonnell@vklaw.com
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Eagle H. Robinson/
`Eagle H. Robinson (Reg. No. 61,361)
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78701
`Tel: 512-474-5201 Fax: 512-536-4598
`eagle.robinson@nortonrosefulbright.com
`
`Lead Counsel for Petitioner
`QUALCOMM INCORPORATED
`
`99802351.1
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`- 5 -
`
`
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