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UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`INTEL CORPORATION
`Petitioner,
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`v.
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`PACT XPP SCHWEIZ AG
`Patent Owner
`________________
`
`Case IPR2020-00532
`U.S. Patent 8,471,593
`________________
`
`MANDATORY NOTICES OF PACT XPP SCHWEIZ AG
`IN COMPLIANCE WITH 37 C.F.R. § 42.8
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`Case No. IPR2020-00532
`U.S. Patent No. 8,471,593
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`PATENT OWNER’S EXHIBIT LIST
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`Exhibit No. Description
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`2001
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`Certified translation of Commercial Register showing the change
`of name of Scientia Sol Mentis AG to PACT XPP Schweiz AG
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`Case No. IPR2020-00532
`U.S. Patent No. 8,471,593
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`Pursuant to 37 C.F.R. § 42.8, PACT XPP SCHWEIZ AG (“PACT” or
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`“Patent Owner”) hereby submits the following mandatory notices with the Patent
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`Trial and Appeal Board.1
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`I.
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`REAL PARTY IN INTEREST
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`The real party in interest is PACT XPP SCHWEIZ AG. PACT is the owner
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`of all rights to U.S. Patent No. 8,471,593 (“the ’593 patent”). Evidence supporting
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`PACT’s status as the owner of the ’593 patent is found at reel/frame 045532/0745
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`showing the assignment of the ’593 patent to Scientia Sol Mentis AG. Scientia Sol
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`Mentis AG changed its name to PACT XPP SCHWEIZ AG. Ex. 2001.
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`II. RELATED MATTERS
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`Patent Owner identifies the following district court proceedings involving
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`the ’593 patent:
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` PACT XPP Schweiz AG v. Intel Corporation, Civil Action No. 19-267
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`(D. Del. Feb. 7, 2019);
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` PACT XPP Schweiz AG v. Intel Corporation, Civil Action No. 19-273
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`1 This filing, as well as the electronic service email address identified below, does
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`not constitute an admission of the validity of Petitioner’s service of its Petition.
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`Patent Owner reserves its right to challenge Petitioner’s service procedure. Patent
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`Owner also reserves its right to challenge the Petition based on 35 U.S.C. 315(a)(1)
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`as it is barred by a civil action challenging the validity of the patent.
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`Case No. IPR2020-00532
`U.S. Patent No. 8,471,593
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`(W.D. Tex. April 23, 2019);
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` Intel Corporation v. PACT XPP Schweiz AG, Civil Action No. 19-2241
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`(N.D. Cal. April 25, 2019);
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` PACT XPP Schweiz AG v. Intel Corporation, Civil Action No. 19-1066
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`(D. Del. May 30, 2019).
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`The patent family to which the ’593 Patent belongs contains following U.S.
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`patents and patent applications:
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`1. Patent Application No. 60/238,855 (expired)
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`2. Patent Application No. PCT/EP01/11593 (expired);
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`3. U.S. Patent No. 8,058,899 (U.S. Patent Application No. 12/371,040).
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`III. LEAD AND BACKUP COUNSEL
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`Patent Owner designated Ziyong Li as lead counsel, as well as Nima Hefazi
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`and Joseph M. Paunovich as backup counsel. A Power of Attorney is filed
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`concurrently with this document. Patent Owner consents to electronic service
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`directed to the following email address:
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`qe-pact-intel@quinnemanuel.com.
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`IV. COUNSEL INFORMATION
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`Ziyong Li
`Registration No. 76,089
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
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`
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`Nima Hefazi
`Registration No. 63,658
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`Email:
`nimahefazi@quinnemanuel.com
`2
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`Case No. IPR2020-00532
`U.S. Patent No. 8,471,593
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`Tel: (415) 875-6373
`Fax: (415) 875-6700
`Email: seanli@quinnemanuel.com
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`Date: February 27, 2020
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`865 S. Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`Phone: 213-443-3000
`Fax: 213-443-3100
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`Joseph M. Paunovich
`Registration No. 59,033
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`Email:
`joepaunovich@quinnemanuel.com
`865 S. Figueroa Street, 10th Floor
`Los Angeles, CA 90017
`Phone: 213-443-3000
`Fax: 213-443-3100
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` Respectfully submitted,
`
`By: /Ziyong Li/
` Ziyong Li (Reg. No. 76,089)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Tel: (415) 875-6373
`Fax: (415) 875-6700
`Email: seanli@quinnemanuel.com
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`
`Attorney for Patent Owner –
`PACT XPP SCHWEIZ AG.
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`Case No. IPR2020-00532
`U.S. Patent No. 8,471,593
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certify that the foregoing document was served on
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`February 27, 2020 by filing these documents through the Patent Review Processing
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`System, as well as by e-mailing copies to:
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`Kevin Bendix
`Reg. No. 67,164
`Intel_PACT_IPR@kirkland.com
`kevin.bendix@kirkland.com
`KIRKLAND & ELLIS LLP
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
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`Robert A. Appleby, P.C.
`Reg. No. 40,897
`robert.appleby@kirkland.com
`Gregory S. Arovas, P.C.
`Reg. No. 38,818
`greg.arovas@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
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`
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`Date: February 27, 2020
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` Respectfully submitted,
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`By: /Ziyong Li/
` Ziyong Li (Reg. No. 76,089)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`4
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`Case No. IPR2020-00532
`U.S. Patent No. 8,471,593
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`San Francisco, CA 94111
`Tel: (415) 875-6373
`Fax: (415) 875-6700
`Email: seanli@quinnemanuel.com
`
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`Attorney for Patent Owner –
`PACT XPP SCHWEIZ AG.
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`5
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`

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