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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`
`Case IPR2021-00453
`__________________________________________________________________
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`

`

`A. Real Party in Interest (§42.8(b)(1))
`The real party in interest of this petition pursuant to § 42.8(b)(1) is Apple
`
`Inc. (“Apple”) located at One Infinite Loop, Cupertino, CA 95014.
`
`B. Other Proceedings (§42.8(b)(2))1
`Patents and Applications
`1.
`
`U.S. Patent No. 10,517,484 (“’484 patent”) is related to following issued
`
`patents or pending applications:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`U.S. Patent Application No. 17/078,771
`
`U.S. Patent Application No. 16/895,727
`
`U.S. Patent Application No. 16/880,095
`
`U.S. Patent Application No. 16/669,794
`
`U.S. Patent No. 10,820,807
`
`U.S. Patent No. 10,660,526
`
`U.S. Patent No. 10,667,774
`
`U.S. Patent Application No. 16/284,514
`
`U.S. Patent Application No. 16/272,069
`
`
`
`1 These Mandatory Notices are being updated to reflect that the Federal Circuit
`
`affirmed the Board’s unpatentability findings in IPR2019-00916 and IPR2020-
`
`00175, which involve family members of the ’484 patent.
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`

`

`IPR2021-00453
`
`
`
`U.S. Patent No. 10,517,484
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`U.S. Patent No. 10,201,283
`
`U.S. Patent No. 10,136,819
`
`U.S. Patent No. 9,885,698 (the “’698 patent”)
`
`U.S. Patent No. 9,494,567
`
`U.S. Patent Application No. 16/004,359
`
`U.S. Patent No. 9,993,159
`
`U.S. Patent No. 10,386,230
`
`U.S. Patent No. 10,126,283
`
`U.S. Patent No. 9,995,722
`
`U.S. Patent No. 9,897,584
`
`U.S. Patent No. 9,797,876
`
`U.S. Patent No. 9,500,634
`
`U.S. Patent No. 10,441,176
`
`U.S. Patent No. 10,172,523
`
`U.S. Patent No. 10,188,299 (the “’299 patent”)
`
`U.S. Patent No. 9,651,533 (the “’533 patent”)
`
`U.S. Patent No. 9,164,032
`
`U.S. Patent No. 10,213,113 (the “’113 patent”)
`
`U.S. Patent No. 10,098,546 (the “’546 patent”)
`2
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`

`

`IPR2021-00453
`
`
`
`U.S. Patent No. 10,517,484
`
`•
`
`•
`
`•
`
`U.S. Patent No. 9,861,286 (the “’286 patent”)
`
`U.S. Patent No. 9,757,040 (the “’040 patent”)
`
`U.S. Patent No. 9,500,635
`
`2.
`
`Related Litigation
`
`The ’484 patent has been asserted in the following litigations:
`
`• Omni MedSci, Inc. v. Apple Inc., Action No. 2-20-cv-00563-YGR (N.D.
`
`Cal.) (pending); and
`
`The ’533 patent, ’040 patent, ’286 patent, ’698 patent, ’546 patent, ’299
`
`patent, and ’113 patent have been asserted in the following litigations:
`
`• Omni MedSci, Inc. v. Apple Inc., Action No. 2-18-cv-00429-RWS (E.D.
`
`Tex.) (terminated).
`
`• Omni MedSci, Inc. v. Apple Inc., Action No. 2-19-cv-05924 (N.D. Cal.)
`
`(pending); and
`
`• Omni MedSci, Inc. v. Apple Inc., Action No. 2-18-cv-00134-RWS (E.D.
`
`Tex.) (terminated).
`
`3.
`
`Patent Office Proceedings
`
`The ’484 patent is not subject to any other proceedings before the Office.
`
`The ’484 patent’s parents have been subject to multiple IPR proceedings:
`
`• The ’533 patent was subject to:
`
`3
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`

`

`IPR2021-00453
`
`
`
`U.S. Patent No. 10,517,484
`
`o IPR2019-00913 (terminated); and
`o IPR2019-00916 (Final Written Decision, all challenged claims
`unpatentable) (Paper No. 39, (“’533 FWD”)), aff’d, Omni
`
`MedSci, Inc. v. Apple Inc., No. 2021-1229 (Fed. Cir.) (judgment
`
`affirmed and mandate issued July 15, 2022);
`
`• The ’040 patent is subject to IPR2019-00910 (terminated) and
`
`IPR2019-00917 (terminated via settlement), both filed by Apple;
`
`• The ’286 patent is subject to IPR2019-00911 (terminated) and
`
`IPR2019-00914 (terminated via settlement), both filed by Apple;
`
`• The ’698 patent is subject to IPR2019-00912 (terminated) and
`
`IPR2019-00915 (terminated via settlement), both filed by Apple;
`
`• The ’546 patent is subject to IPR2020-00029 (terminated via
`
`settlement);
`
`• The ’299 patent is subject to IPR2020-00175 (Final Written Decision,
`
`all challenged claims unpatentable), aff’d, Omni MedSci, Inc. v. Apple
`
`Inc., No. 2021-2213 (Fed. Cir.) (judgment affirmed and mandate
`
`issued July 15, 2022); and
`
`• The ’113 patent is subject to IPR2020-00209 (terminated via
`
`settlement).
`
`4
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`

`

`IPR2021-00453
`
`
`
`U.S. Patent No. 10,517,484
`
`Lead and Backup Counsel (§42.8(b)(3))
`C.
`Lead Counsel is: Jeffrey P. Kushan (Reg. No. 43,401), jkushan@sidley.com,
`
`(202) 736-8914. Back-Up Counsel are: Ching-Lee Fukuda (Reg. No. 44,334),
`
`clfukuda@sidley.com, (212) 839-7364; and Thomas A. Broughan III (Reg. No.
`
`66,001), tbroughan@sidley.com, (202) 736-8314.
`
`Service Information (§42.8(b)(4))
`D.
`Service on Petitioner may be made by e-mail (iprnotices@sidley.com), mail
`
`or hand delivery to: Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C.
`
`20005. The fax number for lead and backup lead counsel is (202) 736-8711.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8914
`Lead Counsel for Petitioner
`
`
`
`
`
`Dated: July 19, 2022
`
`
`Ching-Lee Fukuda
`Reg. No. 44,334
`Sidley Austin LLP
`787 Seventh Avenue
`New York, NY 10019
`clfukuda@sidley.com
`(212) 839-7364
`
`Thomas A. Broughan III
`Reg. No. 66,001
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`tbroughan@sidley.com
`
`5
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`

`

`IPR2021-00453
`
`
`
`U.S. Patent No. 10,517,484
`
`Backup Counsel for Petitioner
`
`
`
`
`6
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 19th day of July, 2022, I caused to be served a
`
`true and correct copy of the foregoing by electronic mail on the following counsel
`
`of record:
`
`Thomas A. Lewry
`John S. LeRoy
`John M. Halan
`Christopher C. Smith
`Andrew Turner
`BROOKS, KUSHMAN P.C.
`OMSC0119IPR1@brookskushman.com
`
`
`Dated:
`
`July 19, 2022
`
`
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`
`
`
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`

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