`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`_______________
`
`Patent No. 8,416,862 B2
`
`Inter Partes Review No. IPR2021-01590
`_____________________________________________________________
`
`PATENT OWNER’S MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`AND NOTICE OF LEAD AND BACKUP COUNSEL
`
`
`
`
`
`IPR2021-01590
`
`
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Bell Northern Research, LLC
`
`(“BNR”) hereby submits the following Mandatory Notices.
`
`A. Real Party-In-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), the real party-in-interest is Bell Northern
`
`Research, LLC, which is a wholly owned subsidiary of Hilco Patent Acquisition 56,
`
`LLC, which is owned by Hilco IP Merchant Capital, LLC, Hilco, Inc., KLIM AIV I,
`
`LP, and Fifth Street Station LLC.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), BNR identifies the following related
`
`matters:
`
`U.S. District Court Cases
`
` Bell Northern Research, LLC v. Apple Inc., Case No. 6:21-cv-00833
`
`(W.D. Tex.)
`
` Bell Northern Research, LLC v. Lenovo Group Ltd. et al., Case
`
`No. 6:21-cv-00847 (W.D. Tex.)
`
` Bell Northern Research, LLC v. Dell Technologies Inc. et al., Case
`
`No. 6:21-cv-00909 (W.D. Tex.)
`
` Bell Northern Research, LLC v. HP Inc., Case No. 6:21-cv-00939
`
`(W.D. Tex.)
`
`1
`
`
`
`IPR2021-01590
`
`
`
` Bell Northern Research, LLC v. Commscope Holding Company, Inc. et
`
`al., Case No. 6:21-cv-00941 (W.D. Tex.)
`
` Bell Northern Research, LLC v. Oneplus Technology (Shenzhen) Co.
`
`Ltd. et al., Case No. 3:21-cv-02293 (N.D. Tex.)
`
` Bell Northern Research, LLC v. Samsung Electronics Co., Ltd. et al.,
`
`Case No. 2:19-cv-00286 (E.D. Tex.)
`
` Bell Northern Research, LLC v. TCL Technology Group Corporation
`
`et al., Case No. 2:21-cv-07323 (C.D. Cal.)
`
` TCL Industries Holdings Co., Ltd. et al. v. Bell Northern Research,
`
`LLC, Case No. 3:21-cv-01598 (S.D. Cal.)
`
` Bell Northern Research, LLC v. Huawei Device (Dongguan) Co., Ltd.
`
`et al., Case No. 3:18-cv-01784 (S.D. Cal.)
`
` Bell Northern Research, LLC v. Kyocera Corp. et al., Case No. 3:18-
`
`cv-01785 (S.D. Cal.)
`
` Bell Northern Research, LLC v. ZTE Corporation et al., Case No. 3:18-
`
`cv-01786 (S.D. Cal.)
`
` Bell Northern Research, LLC v. LG Electronics, Inc. et al., Case
`
`No. 3:18-cv-02864 (S.D. Cal.)
`
`2
`
`
`
`IPR2021-01590
`
`
`
`
`PTAB Proceedings
`
` Oneplus Technology (Shenzhen) Co. Ltd. v. Bell Northern Research,
`
`LLC, Case No. IPR2022-00048 (PTAB)
`
` Samsung Electronics Co., Ltd. v. Bell Northern Research, LLC, Case
`
`No. IPR2020-00613 (PTAB)
`
` Samsung Electronics Co., Ltd. v. Bell Northern Research, LLC, Case
`
`No. IPR2020-00611 (PTAB)
`
` LG Electronics, Inc. v. Bell Northern Research, LLC, Case
`
`No. IPR2020-00108 (PTAB)
`
` Huawei Technologies Co., Ltd. v. Bell Northern Research, LLC, Case
`
`No. IPR2019-01439 (PTAB)
`
` ZTE Corporation v. Bell Northern Research, LLC, Case No. IPR2019-
`
`01438 (PTAB)
`
`ITC Investigations
`
` In the Matter of Certain Electronic Devices Having Wireless
`
`Communication Capabilities and Components Thereof, Inv. No. 337-
`
`TA-3568 (ITC)
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`BNR designates the following as lead and back-up counsel:
`
`3
`
`
`
`IPR2021-01590
`
`
`
`
`Lead Counsel
`Daniel S. Young
`Registration No. 48,277
`dyoung@adseroip.com
`
`Back-Up Counsel
`Chad E. King
`Registration No. 44,187
`chad@adseroip.com
`
`Postal and Hand-Delivery Address:
`ADSERO IP LLC
`8210 Southpark Terrace
`Littleton, CO 80120
`(303) 268-0066 (telephone)
`(833) 793-0703 (facsimile)
`
`Postal and Hand-Delivery Address:
`ADSERO IP LLC
`8210 Southpark Terrace
`Littleton, CO 80120
`(303) 268-0066 (telephone)
`(833) 793-0703 (facsimile)
`
`Power of Attorney
`
`A Power of Attorney to transact all business in the United States Patent &
`
`Trademark Office (“USPTO”) in connection with the above-referenced Inter Partes
`
`Review from BNR to the above-designated counsel at Adsero IP is being filed
`
`concurrently with these Mandatory Notices.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel, above. Service of any documents via hand-
`
`delivery may be made at the postal mailing address of the respective lead and back-
`
`up counsel designated above. BNR consents to electronic service by email at the
`
`above listed email addresses of lead and back-up counsel.
`
`
`
`4
`
`
`
`Dated: October 25, 2021
`
`IPR2021-01590
`
`
`
`
`
`
`
`/s/Daniel S. Young/
`Daniel S. Young, Reg. No. 48,277
`Chad E. King, Reg. No. 44,187
`ADSERO IP LLC
`8210 Southpark Terrace
`Littleton, CO 80120
`(303) 268-0066 (telephone)
`(833) 793-0703 (facsimile)
`
` By:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Counsel for Patent Owner
`Bell Northern Research, LLC
`
`5
`
`
`
`IPR2021-01590
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that a copy of
`
`the foregoing PATENT OWNER’S MANDATORY NOTICES UNDER 37
`
`C.F.R. § 42.8 AND NOTICE OF LEAD AND BACKUP COUNSEL was filed
`
`through the Patent Trial and Appeal Board End to End (PTAB E2E) electronic
`
`filing system on October 25, 2021, with confirmation copy served via electronic
`
`mail, on the following counsel of record for Petitioner:
`
`W. Karl Renner
`FISH & RICHARDSON P.C.
`Email: IPR50095-0050IP1@fr.com
`Reference No. IPR50095-0050IP1
`
`Timothy W. Riffe
`Jeremy J. Monaldo
`Jennifer Huang
`Daniel D. Smith
`Kim Leung
`Christopher Hoff
`Usman A. Khan
`FISH & RICHARDSON P.C.
`Email: PTABInbound@fr.com
`axf-ptab@fr.com
`riffe@fr.com
`hoff@fr.com
`
`
`
`
`Dated: October 25, 2021
`
` By:
`
`
`
`/s/Daniel S. Young/
`Daniel S. Young
`Registration No. 48,277
`
`
`
`
`
`6
`
`
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