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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`APPLE INC.,
`Petitioners,
`
`v.
`
`LOGANTREE LP
`Patent Owner
`______________
`Case IPR2022-00040
`Patent 6,059,576
`______________
`
`PATENT OWNER’S
`MANDATORY NOTICES UNDER 37 C.F.R. 42.8(a)(2)
`
`Pursuant to 37 C.F.R. § 42.8, LoganTree LP (“Patent Owner”), hereby
`
`
`
`
`
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`provides the following mandatory notices:
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8 (b)(1))
`LoganTree LP is the owner of the entire interest in U.S. Patent No. 6,059,576
`
`(“the ’576 Patent”), and thus is a real-party-in-interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The Patent Owner identifies the following judicial and/or administrative
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`
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`matters that may affect, or may be affected by, a decision in this Inter Partes Review:
`1
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` The ’576 Patent was submitted for reexamination on April 4, 2014, No.
`
`90/013,201, with a Reexamination Certificate issued on March 17, 2015.
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` The ’576 Patent was previously the subject of LoganTree LP, v. Apple Inc.,
`
`6:21-cv-00397, in the Western District of Texas. On May 16, 2022, that
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`district court proceeding was transferred from the Western District of Texas
`
`to the Northern District of California, as LoganTree LP v. Apple Inc., 5:22-
`
`cv-02892.
`
` The ’576 Patent is or has been asserted in a number of other district court
`
`proceedings since 2015, including LoganTree LP v. LG Electronics, Inc., et
`
`al., 4:21-cv-00332 (E.D. Tex. Apr. 27, 2021); LoganTree LP v. Huawei
`
`Technologies USA Inc., et al., 4:21-cv-00119 (E.D. Tex. Mar. 25, 2021);
`
`LoganTree LP v. Fossil Group, Inc., 1:21-cv-00385 (D. Del. Mar. 16, 2021);
`
`LoganTree LP v. Omron Healthcare, Inc., 1:18-cv-01617 (D. Del. Oct. 18,
`
`2018); LoganTree LP v. Garmin International, Inc., et al., 6:17-cv-01217
`
`(D. Kan. Aug. 23, 2017) (transferred from the Western District of Texas,
`
`LoganTree LP v. Garmin International, Inc., et al., 5:17-cv-00098);
`
`LoganTree LP v. FitBit Inc., 3:16-cv-02443 (N.D. Cal. May 5, 2016)
`
`(transferred from the Eastern District of Texas, LoganTree LP v. FitBit Inc.,
`
`2:15-cv-01575).
`
` 
` 
`
`2
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`

`

` The ’576 Patent has been the subject of other IPR petitions, including FitBit,
`
`Inc. v. LoganTree LP, PTAB-IPR2017-00256 and Fitbit, Inc. v. LoganTree
`
`LP, PTAB-IPR2017-00258, both of which were terminated by agreement
`
`before institution; Garmin International, Inc., et al. v. LoganTree LP,
`
`PTAB-IPR2018-00564 and Garmin International, Inc., et al. v. LoganTree
`
`LP, PTAB-IPR2018-00565 (the “Garmin IPRs”), both of which reached
`
`Final Written Decision finding that Petitioner had not met its burden
`
`showing the challenged claims to be unpatentable.
`
` The Garmin IPRs were both appealed to the U.S. Court of Appeals for the
`
`Federal Circuit, Garmin International, Inc. et al. v. LoganTree LP, 2020-
`
`1108 and 2020-1109, in which the Federal Circuit affirmed the Final Written
`
`Decisions on September 11, 2020.
`
` Finally, this proceeding is pending concurrently with IPR2022-00037 also
`
`filed by Petitioner for IPR of the ’576 Patent.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Patent Owner designates the following counsel:
`Lead Counsel
`Back-Up Counsel
`Jason McManis (pro hac vice to be filed)
`David E. Warden
`(jmcmanis@azalaw.com)
`Registration No. 35,733
`(dwarden@azalaw.com)
`Colin Phillips (pro hac vice to be filed)
`Telephone: 713-655-1101
`(cphillips@azalaw.com)
`Telephone: 713-655-1101
`
`
`
` 
` 
`
`3
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`

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`Address: AHMAD, ZAVITSANOS & MENSING P.C.
`
`
`1221 McKinney, Suite 3460
`
`
`Houston, TX 77010
`
`
`(713) 655-1101 (Reception)
`
`
`(713) 655-0062 (Facsimile)
`
`
`D. Service Information (37 C.F.R. § 42.8(b)(4))
`Please direct all correspondence regarding this proceeding to the counsel at
`
`
`
`the address listed above. Patent Owner also consents to electronic service by email
`
`to the e-mail address for Lead Counsel, with copy to the email addresses for Back-
`
`Up Counsel and to jeffrey.wright@azalaw.com.
`
`
`
`
`
`
`Dated: August 26, 2022
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`Respectfully Submitted,
`
`By: /s/ David E. Warden
`
`David E. Warden
`
`Reg. No. 35,733
`
`Attorney for Patent Owner
`
`LoganTree LP
`
`
`
`AHMAD, ZAVITSANOS & MENSING, P.C.
`1221 McKinney Street, Suite 3460
`Houston, TX 77010
`Telephone: 713-655-1101
`Facsimile: 713-655-0062
`
` 
` 
`
`4
`
`

`

`CERTIFICATE OF SERVICE
`I hereby certify that LoganTree LP’s Mandatory Notices Under 37 C.F.R.
`
`42.8(a)(2) were served on August 26, 2022, by electronic mail to the following:
`Lead Counsel
`Back-up Counsel
`Andrew B. Patrick, Reg. No. 63,471
`W. Karl Renner
`Usman A. Khan, Reg. No. 70,439
`Reg. No. 41,265
`Kim Leung, Reg. No. 64,399
`Fish & Richardson P.C.
`3200 RBC Plaza
`3200 RBC Plaza
`60 South Sixth Street
`60 South Sixth Street
`Minneapolis, MN 55402
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Tel: 202-783-5070
`Fax: 877-769-7945
`Fax: 877-769-7945
`PTABInbound@fr.com
`IPR50095-00411IP2@fr.com
`Axf-ptab@fr.com
`patrick@fr.com
`
`khan@fr.com
`leung@fr.com
`
`
`
`
`
`
`
`
`By: /s/ David E. Warden
`
`David E. Warden
`
`
`
`Reg. No. 35,733
`
`Attorney for Patent Owner
`
`LoganTree, LP
`
`
`
`
`Dated: August 26, 2022
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`AHMAD, ZAVITSANOS & MENSING, P.C.
`1221 McKinney Street, Suite 3460
`Houston, TX 77010
`Telephone: 713-655-1101
`
` 
` 
`
`5
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`

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