`
`_____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`TRAXCELL TECHNOLOGIES, LLC
`Patent Owner
`
`_____________________
`
`
`Case IPR2022-00073
`Patent No. 10,820,147
`
`_____________________
`
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Updated Mandatory Notices
`IPR2022-00073 / U.S. Patent No. 10,820,147
`
`Petitioner, Apple Inc., provides the following Updated Mandatory Notices in
`
`
`
`accordance with 37 C.F.R. 42.8(a)(3). This update principally addresses status of
`
`disputes (including 3rd party disputes) in other fora, including dismissal of the district
`
`court proceeding (WDTX-6-21-cv-00074) in which Patent Owner had previously
`
`sought to amend its complaint to including the ’147 patent and which Petitioner
`
`addressed in its Petition relative to Fintiv factors 1-6.1
`
`A. Related Matters
`In accordance with 37 C.F.R. 42.8(b)(2), Petitioner identifies the following
`
`judicial or administrative proceeding which would affect, or be affected by, a
`
`decision in this proceeding:
`
`Case Heading
`
`Number
`
`Court
`
`Filed
`
`IPR2022-00442 PTAB
`
`Jan. 18, 2022
`
`Status
`Update
`3rd party
`petition
`
`Google LLC v.
`Traxcell
`Technologies, LLC
`
`Apple Inc. v. Traxcell
`Technologies LLC
`
`IPR2021-01552 PTAB Sep. 21, 2021 Trial
`instituted,
`Feb. 7, 2022
`as to related
`’196 Patent
`
`
`1 A copy of the dismissal without prejudice is attached as Ex. 1019.
`1
`
`
`
`
`
`
`
`Petitioner’s Updated Mandatory Notices
`IPR2022-00073 / U.S. Patent No. 10,820,147
`
`Filed
`
`Number
`
`Court
`
`Status
`Update
`6-21-cv-00074 WDTX Jan. 26, 2021 Dismissed
`without
`Prejudice
`(Dec. 16,
`2021)
`
`
`
`Case Heading
`
`Traxcell
`Technologies, LLC v.
`Apple Inc.
`
`Traxcell
`Technologies, LLC v.
`Apple Inc.
`
`Apple Inc. v. Traxcell
`Technologies LLC
`
`Traxcell
`Technologies, LLC v.
`Google LLC
`Traxcell
`Technologies, LLC v.
`Google LLC
`Traxcell
`Technologies, LLC v.
`Verizon Wireless
`Personal
`Communications, LP
`
`6-21-cv-01314 WDTX Dec. 16, 2021 Stipulation of
`Dismissal
`without
`Prejudice by
`Traxcell (Jan.
`20, 2022)
`
`3-21-cv-06059 NDCA Aug. 5, 2021 Declaratory
`Judgment
`complaint
`(non-
`infringement)
`6-21-cv-00023 WDTX Jan. 12, 2021 Dismissed
`(Dec. 16,
`2021)
`6-21-cv-01312 WDTX Dec. 16, 2021 New
`complaint
`
`6-20-cv-01175 WDTX Oct. 25, 2021 3rd Amended
`Complaint,
`adding ’147
`Patent 2
`
`
`
`2 Ex. 1020.
`
`
`
`2
`
`
`
`
`
`
`
`B.
`
`Service Information
`
`Petitioner’s Updated Mandatory Notices
`IPR2022-00073 / U.S. Patent No. 10,820,147
`
`Petitioner may be served through its counsel identified above. Petitioner
`
`consents to electronic service pursuant to 37 C.F.R. 42.8(b)(4)(i).
`
`Dated: February 24, 2022
`
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Telephone: 512-867-8457
`Facsimile: 214-200-0853
`
`
`
`
`Respectfully Submitted:
`
`/David W. OBrien/
`David W. O’Brien
`Registration No. 40,107
`Lead Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`Petitioner’s Updated Mandatory Notices
`IPR2022-00073 / U.S. Patent No. 10,820,147
`
`CERTIFICATE OF SERVICE
`
`
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
`
`37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
`
`Persons served
`
`
`Date of service February 24, 2022
`Manner of service Electronic mail
`Documents served Updated Mandatory Notices
`Petitioner’s Updated Exhibit List
`Exhibits 1019, 1020
`William P. Ramey, III
`RAMEY & SCHWALLER, LLP
`5020 Montrose Blvd., Ste. 800
`Houston, Texas 77006
`Email: wramey@rameyfirm.com
`uspto@rameyfirm.com
`
`
`Melissa D. Schwaller
`RAMEY & SCHWALLER, LLP
`5020 Montrose Blvd., Ste. 800
`Houston, Texas 77006
`Email: mschwaller@rameyfirm.com
`
`/David W. OBrien/
`David W. O’Brien
`Lead Counsel for Petitioner
`Registration No. 40,107
`
`
`
`4
`
`
`
`
`
`
`
`
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