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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`
`Petitioner
`
`
`
`v.
`
`
`
`BILLJCO LLC,
`
`Patent Owner
`
`
`
`
`
`CASE: IPR2022-00131
`
`U.S. PATENT NO. 8,639,267
`
`
`
`
`
`MANDATORY NOTICES BY PATENT OWNER
`
`
`
` 
`
`
`
` 
`
`

`

`
`
`
`
`
`
`
`
`IPR2022-00131
`Patent No. 8,639,267
`
`Patent Owner, BillJCo, LLC submits the following mandatory notice.
`
`I. REAL PARTY-IN-INTEREST
`
`
`
`The real party-in-interest is the patent owner, BillJCo, LLC, a limited liability
`
`company having its principal place of business at 1704 Katherine Court, Flower
`
`Mound, TX 75022.
`
`II. RELATED MATTERS
`
`
`
`A. District Court Litigation
`
`The following district court litigations may affect, or be affected by, a
`
`decision in this proceeding:
`
` BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528 (W.D. Tex.);
`
` BillJCo, LLC v. Cisco Systems, Inc., Case No. 2:21-cv-181 (E.D. Tex.)
`
`(Lead Case, consolidated with the following matter); and
`
` BillJCo, LLC v. Hewlett Packard Enterprise Company & Aruba Networks,
`
`LLC, Case No. 2:21-cv-00183 (E.D. Tex.) (Member Case, consolidated with
`
`the preceding matter).
`
`B.
`
`Patent Trial and Appeal Board
`
`
`
`U.S. Patent No. 8,639,267 (“the ‘267 Patent”) is not subject to any other
`
`inter partes review (“IPR”) proceedings.
`
`
`
`39362835.2
`
`- 2 - 
`
`

`

`
`
`
`
`
`
`
`IPR2022-00131
`Patent No. 8,639,267
`
`The following IPR proceeding(s) involve a patent related the ‘267 Patent and
`
`may affect, or be affected by, a decision in this proceeding:
`
` Apple Inc. v. BillJCo LLC, IPR2022-00129, filed November 30, 2021.
`
`C. United States Patent and Trademark Office
`
`
`
`The following pending U.S. patent application(s) may affect, or be affected
`
`by, a decision in this proceeding:
`
` U.S. Patent Application Serial No. 17/392,725, filed August 3, 2021
`
`III. LEAD AND BACKUP COUNSEL
`
`Lead Counsel
`Brian R. Michalek
`Reg. No. 65,816
`SAUL EWING ARNSTEIN & LEHR
`LLP
`161 N. Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7100
`brian.michalek@saul.com
`
`
`Backup Counsel
`Joseph M. Kuo
`Reg. No. 38,943
`SAUL EWING ARNSTEIN & LEHR
`LLP
`161 N. Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7100
`joseph.kuo@saul.com
`
`Brian R. Landry
`Reg. No. 62,074
`SAUL EWING ARNSTEIN & LEHR
`LLP
`131 Dartmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`brian.landry@saul.com
`In accordance with 37 C.F.R. § 42.10(b), a power of attorney is not required
`
`
`
`because the designated counsel are already counsel of record in the subject patent.
`
`
`
`39362835.2
`
`- 3 - 
`
`

`

`
`
`
`IV. SERVICE INFORMATION
`
`
`
`
`IPR2022-00131
`Patent No. 8,639,267
`
`Patent Owner consents to electronic service of all documents at the below
`
`email addresses:
`
` brian.michalek@saul.com
`
` joseph.kuo@saul.com
`
` brian.landry@saul.com
`
` IPGroupMailbox@saul.com
`
`Dated: December 14, 2021
`
`
`
`Respectfully submitted
`
`
`
`By:
`
`
`
`/Brian R. Landry/
`Brian Landry (Reg. No. 62,074)
`SAUL EWING ARNSTEIN & LEHR
`LLP
`131 Dartmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`brian.landry@saul.com
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`39362835.2
`
`- 4 - 
`
`

`

`
`
`
`
`
`
`
`
`
`IPR2022-00131
`Patent No. 8,639,267
`
`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
`
`The undersigned hereby certifies that on December 14, 2021, I caused a true
`
`and correct copy of the foregoing to be served on the following counsel for
`
`Petitioner by electronic mail to the following email addresses:
`
`Larissa S. Bifano
`
`Jonathan Hicks
`
`Joseph Wolfe
`
`
`
`larissa.bifano@dlapiper.com
`
`jonathan.hicks@dlapiper.com
`
`joseph.wolfe@us.dlapiper.com
`
`
`
`39362835.2
`
`- 5 - 
`
`

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