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UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MOBILEIRON, INC.,
`Petitioner
`v.
`BLACKBERRY LIMITED,
`Patent Owner
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`
`
`CASE NO. IPR2021-00162
`U.S. Patent No. 8,442,489
`Issue Date: May 14, 2013
`
`Title: SYSTEM AND METHOD FOR CONFIGURING DEVICES FOR SECURE OPERATIONS
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`
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`PETITIONER’S UPDATED MANDATORY NOTICES
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`

`

`IPR2021-00162
`PETITIONER’S UPDATED MANDATORY NOTICES
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`
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`Pursuant to 37 C.F.R. § 42.8(a)(3), Petitioner MobileIron, Inc. hereby
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`updates its Mandatory Notices to reflect a change in the real party-in-interest, the
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`substitution of counsel and updated service information.
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`I. Mandatory Notices Under §42.8(A)(1)
`A. Real Party-In-Interest under §42.8(b)(1)
`MobileIron, Inc. is the real party-in-interest to this IPR petition. Ivanti, Inc.
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`publicly announced that it has acquired Petitioner. See
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`https://www.ivanti.com/company/press-releases/2020/ivanti-acquires-
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`mobileironand-pulse-secure (last visited December 28, 2020).
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`B.
`Related Matters under §42.8(b)(2)
`This is the first IPR petition filed against the ’489 patent. The ’489 patent is
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`the subject of a declaratory judgment claim brought by Petitioner against
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`BlackBerry Corporation (Patent Owner) and BlackBerry Ltd. (collectively,
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`Defendants): MobileIron. Inc. v. Blackberry Corp., et al., Case No. 3:20-cv-02877
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`(N.D. Cal.). Petitioner filed the original complaint (Ex.1013, ¶¶83-89). Petitioner
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`filed a First Amended Complaint (Ex.1014, ¶¶84-90) on June 29, 2020. Petitioner
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`has not asserted in those complaints that any claim of the ’099 patent is invalid.
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`Defendants have not yet answered, and no trial date has been set.
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`1
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`

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`IPR2021-00162
`PETITIONER’S UPDATED MANDATORY NOTICES
`On September 17, 2020, Patent Owner filed five IPR petitions for patents
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`asserted by Petitioner against Patent Owner in the litigation: (1) BlackBerry Ltd. v.
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`MobileIron, Inc., IPR2020-01519 (PTAB) (2) BlackBerry Ltd. v. MobileIron,
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`Inc., IPR2020-01593 (PTAB); (3) BlackBerry Limited v. MobileIron, Inc.,
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`IPR2020-01594 (PTAB); (4) BlackBerry Limited v. MobileIron, Inc., IPR2020-
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`01604 (PTAB); and BlackBerry Limited v. MobileIron, Inc., IPR2020-01634
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`(PTAB). Petitioner has filed an IPR petition for a patent asserted in the litigation:
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`MobileIron, Inc. v. BlackBerry Ltd., IPR2020-01741 (PTAB). The Board has
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`provided filing dates for the five petitions filed by Patent Owner and approved the
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`mandatory notices, but no responses have as yet been filed by the Petitioner or
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`Patent Owner in any of the actions. None of these petitions relates to the ’489
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`patent.
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`On November 2, 2020, Petitioner filed an additional IPR petition for another
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`patent asserted in the litigations, MobileIron, Inc. v. BlackBerry Ltd., IPR2021-
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`00157 (PTAB). On November 4, 2020, Petitioner filed yet another IPR petition for
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`a another, different patent asserted in the litigation contemporaneous with this
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`petition. MobileIron, Inc. v. BlackBerry Ltd., IPR2021-00126 (PTAB).
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`C.
`Lead and Back-Up Counsel under §42.8(b)(3)
`Petitioner provides the following designation of counsel.
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`
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`2
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`

`

`LEAD COUNSEL
`
`IPR2021-00162
`PETITIONER’S UPDATED MANDATORY NOTICES
`BACK-UP COUNSEL
`
`R. Parrish Freeman (Reg. No. 42,556)
`Maschoff Brennan
`1389 Center Drive, Suite 300
`Park City, Utah 84098
`Email:
`pfreeman@mabr.com
`Tel: (435) 252-1360
`Fax: (435) 252-1361
`
`Backup Counsel:
`
`John T. Gadd (Reg. No. 52,928)
`Maschoff Brennan
`111 South Main Street, Suite 600
`Salt Lake City, Utah 84111
`Email:
`jgadd@mabr.com
`Tel: (801) 297-1850
`Fax: (435) 252-1361
`
`
`Eric L. Maschoff (Reg. No. 36,596)
`Maschoff Brennan
`1389 Center Drive, Suite 300
`Park City, Utah 84098
`Email:
`emaschoff@mabr.com
`Tel: (435) 252-1360
`Fax: (435) 252-1361
`
`Backup Counsel:
`
`David T. Call (Reg. No. 67,930)
`Maschoff Brennan
`111 South Main Street, Suite 600
`Salt Lake City, Utah 84111
`Email:
`dcall@mabr.com
`Tel: (801) 297-1850
`Fax: (435) 252-1361
`
`
`Service Information
`D.
`Petitioner consents to electronic service at the addresses provided above for
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`
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`lead and back-up counsel.
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`Dated: January 5, 2021
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`3
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`Respectfully submitted,
`
`/Sanjeet K. Dutta/
`Sanjeet K. Dutta
`Registration No. 46,145
`GOODWIN PROCTER LLP
`601 Marshall Street
`Redwood City, CA 94063
`Email: sdutta@goodwinlaw.com
`Tel.: (650) 752-3100
`
`
`
`

`

`
`
`IPR2021-00162
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), I hereby certify that the foregoing
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`
`
`PETITIONER’S UPDATED MANDATORY NOTICES was served by electronic
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`mail by agreement upon the following counsel of record for the Patent Owner:
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`
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`Michael Hawkins
`
`IPR21828-0059IP1@fr.com
`Nicholas Stephens
`Christopher Hoff
`Andrew Dommer
`Patrick Bisenius
`Terry J. Stalford
`
`PTABInbound@fr.com
`
`hawkins@fr.com
`Fish & Richardson
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
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`Dated: January 5, 2021
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`/Sanjeet K. Dutta/
`Sanjeet K. Dutta
`Registration No. 46,145
`GOODWIN PROCTER LLP
`601 Marshall Street
`Redwood City, CA 94063
`Email: sdutta@goodwinlaw.com
`Tel.: (650) 752-3100
`
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`4
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`

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