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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`
`
`
`
`
`
`PTAB Case No. IPR2020-01576
`Patent No. 8,265,096
`
`
`
`
`
`
`
`
`JOINT REQUEST TO KEEP SEPARATE PURSUANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`5
`
`10
`
`15
`
`
`
`
`
`
`150941707.1
`
`-1-
`
`

`

`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Intel Corporation
`
`(“Petitioner”) and UNM Rainforest Innovations (“Patent Owner”) (collectively
`
`“Parties”) jointly request that Exhibit 1028, a true copy of the written UNM-Intel
`
`Agreement (dated December 31, 2020) between Parties referenced in the Joint Mo-
`
`5
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`tion to Terminate, be treated as business confidential information and kept separate
`
`from the file of the involved patent.
`
`Dated: January 22, 2021
`
`Respectfully submitted,
`
` /Christina McCullough/
`Lead Counsel
`Christina McCullough, Reg. No. 58,720
`
`Back-up Counsel
`Brianna Kadjo, Reg. No. 74,307
`
`Attorneys for Intel Corporation
`
`/Ari Rafilson /
`Alfonso Chan, Reg. No. 45,964
`Ari Rafilson, Reg. No. 58,693
`achan@shorechan.com
`arafilson@shorechan.com
`SHORE CHAN DEPUMPO, LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Telephone: (214) 593-9110
`Attorneys for Patent Owner
`UNM Rainforest Innovations
`
`PERKINS COIE LLP
`1201 Third Avenue
`Suite 4900
`Seattle, WA 98101
`(206) 359-8000
`
`Dated: January 22, 2021
`
` /Jay P. Kesan /
`Jay P. Kesan, Reg. No. 37,488
`Jkesan@dimuro.com
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: (703) 289-5118
`
`150941707.1
`
`-2-
`
`

`

`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§42.6(3)(1), 42.6(e)(4), and 42.25(b), the under-
`
`signed certifies that a complete copy of JOINT REQUEST TO KEEP SEPA-
`
`RATE PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74 was filed elec-
`
`5
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`tronically through the Patent Trial and Appeal Board’s PTAB E2E System and
`
`provided, via electronic service, to the Patent Owner by serving the
`
`correspondence address of record as follows:
`
`Jay P. Kesan, Reg. No. 37,488
`Jkesan@dimuro.com
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: (703) 289-5118
`
`Dated: January 22, 2021
`
`Alfonso Chan, Reg. No. 45,964
`Ari Rafilson, Reg. No. 58,693
`achan@shorechan.com
`arafilson@shorechan.com
`SHORE CHAN DEPUMPO, LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Telephone: (214) 593-9110
`
`Attorneys for Patent Owner
`UNM Rainforest Innovations
`
`Respectfully submitted,
`
`/ Kate Smith /
`Kate Smith
`Paralegal
`Perkins Coie LLP
`3105 Porter Drive
`Palo Alto, CA 94304
`
`10
`
`15
`
`20
`
`150941707.1
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`-3-
`
`

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