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Paper No. 3
`October 5, 2020
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`QUEST DIAGNOSTICS INCORPORATED,
`
`Petitioner
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner
`
`_______________________
`
`IPR2020-01576
`
`Patent No. 8,265,096
`
`________________________
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(3)
`
`

`

`
`
`Under 37 C.F.R. § 42.8(a)(3), Patent Owner UNM Rainforest
`
`Innovations hereby submits the following mandatory notices:
`
`A. Real Party-In-Interest – 37 CFR § 42.8(b)(1)
`
`UNM Rainforest Innovations hereby makes its appearance as Patent
`
`Owner and Real Party-In-Interest.
`
`B. Related Matters – 37 C.F.R. § 42.8(b)(2)
`
`The following judicial matters may affect or be affected by a decision in
`
`this proceeding: STC.UNM v. Quest Diagnostics Incorporated and Quest Diagnostics
`
`Clinical Laboratories, Inc., No. D-202-CV-2017-06833 (2nd Dist. NM).
`
`C. Lead and Back-up Counsel – 37 C.F.R. § 42.8(b)(3)
`
`UNM Rainforest Innovations is represented in this proceeding by the
`
`following:
`
`LEAD COUNSEL
`Jay P. Kesan, Reg. No. 37,488
`DIMUROGINSBERG, PC
` DGKEYIP GROUP
`1750 Tysons Blvd., Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`Telephone: (703) 289-5118
`
`BACKUP COUNSEL
`Alfonso Chan, Reg. No. 45,964
`Ari Rafilson, Reg. No. 58,693
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`achan@shorechan.com
`arafilson@shorechan.com
`Telephone: (214) 593-9110
`
`
`
`
`
`
`2
`
`

`

`D. Electronic Service
`
`UNM Rainforest Innovations consents to service by email. Please address
`
`all correspondence and service to counsel as listed above.
`
`
`
`
`
`
`
`Date: October 5, 2020
`
`
`
`
`
`/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
`
`
`
`
`
` Respectfully submitted,
`
`
`
`
`
`/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
`
`3
`
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§42.6(3)(1), 42.6(e)(4), and 42.25(b), the
`
`undersigned certifies that a complete copy of Patent Owner’s Mandatory Notices
`
`Pursuant to 37 C.F.R. § 42.8(a)(3) was filed electronically through the Patent
`
`Trial and Appeal Board’s PTAB E2E System and provided, via electronic
`
`service, to the Petitioner by serving the correspondence address of record as
`
`follows:
`
`Christina McCullough
`Brianna Kadjo
`Sarah Piepmeier
`PERKINS COIE LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101
`
`
`
`Dated: October 5, 2020
`
`
`
`
`
`/Jay P. Kesan /
`Jay P. Kesan
`Reg. No. 37,488
`
`
`
`
`
`
`
`
`
`4
`
`
`

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