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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
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`MEDIVIS, INC.
`Petitioner
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`v.
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`NOVARAD CORP.
`Patent Owner
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`US Patent No. 11,004,271
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`Inter Partes Review No. IPR2023-00042
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`_______________
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`PETITIONER’S UPDATED MANDATORY NOTICES
`PURSUANT TO CFR § 42.88
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`ME1 44062253v.1
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`Patent No. 11,004,271
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`Attorney Docket No. 127971-00012
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`1.
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`Real Party-in-Interest
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`The real party in interest for this petition for inter partes review (IPR) is
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`Medivis, Inc., of 174 5th Avenue, Suite 505, New York, NY, 10010.
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`2.
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`Related Matters
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`On October 13, 2021, Novarad filed a complaint in the District of Delaware
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`alleging that Medivis infringes U.S. Patent No. 11,004,271 (the ‘271 Patent) and
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`U.S. Patent No. 10,945,807 (the ‘807 Patent). The Delaware case is designated
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`C.A. No. 21-1447-GBW. Novarad served the complaint on Medivis on October
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`14, 2021.
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`Along with the petition for review of the ‘271 Patent, Medivis also filed a
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`petition for review of the ‘807 Patent. Like the ‘271 Patent, the ‘807 patent is
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`owned by Novarad, lists the same two inventors, and is generally directed to
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`similar AR-assisted surgical navigation methods. Nonetheless, the ‘807 Patent is
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`not part of the ‘271 Patent family.
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`Medivis filed its petitions while discovery in the Delaware litigation was in
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`its early stages. For example, claim construction still has not been briefed, let
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`alone argued or decided. On December 6, 2022, the parties agreed to stay the
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`litigation, without prejudice, pending final disposition of the inter partes review
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`proceedings IPR2023-00042 and IPR2023-00045. The next day, December 7,
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`2022, the Court ordered the stipulated stay. Thus, the Delaware litigation is now
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`ME1 44062253v.1
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`1
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`Patent No. 11,004,271
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`Attorney Docket No. 127971-00012
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`stayed pending final disposition of the IPR2023-00042 and IPR2023-00045
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`proceedings.
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`The ‘271 Patent results from a second continuation of an application that
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`matured into U.S. Patent 9,892,564. The first continuation of the original parent
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`matured into U.S. Patent 10,475,244. The ‘271 Patent itself appears to have two
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`continuations: (1) Application No. 17/316,222 (now U.S. Patent 11,481,987); and
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`(2) Application No. 17/972,489, filed on October 24, 2022, and is currently
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`pending.
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`3.
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`Counsel and Service Information
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`Lead Counsel
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`Back-Up Counsel
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`Kia Freeman, Reg. No. 47,577
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`kfreeman@mccarter.com
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`T: 617-449-6549
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`Erik Paul Belt (pro hac vice to be filed)
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`ebelt@mccarter.com
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`T: 617-449-6506
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`John Curran, Reg. No. 50,445
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`jcurran@mccarter.com
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`T: 617-449-6519
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`All of the foregoing counsel are attorneys at McCarter & English, LLP, 265
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`Franklin Street, Boston, MA 02110. Medivis consents to service by email at all of
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`the foregoing email addresses.
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`ME1 44062253v.1
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`Patent No. 11,004,271
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`Attorney Docket No. 127971-00012
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`Respectfully submitted,
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`Dated: February 2, 2023
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`By:
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`/s/ Kia Freeman /s/
`Kia L. Freeman
`Registration No. 47,577
`Attorney for Petitioner
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`ME1 44062253v.1
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`Patent No. 11,004,271
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`Attorney Docket No. 127971-00012
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing was served on
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`February 2, 2023 by transmitting a copy to the patent owner at the email addresses
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`identified in the Patent Owner’s Mandatory Notices dated November 2, 2022:
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`hansen@tnw.com
`brett.davis@tnw.com
`litigation@tnw.com
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`By:
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`/s/ John Curran /s/
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`John Curran
`Registration No. 50,445
`Attorney for Petitioner
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`ME1 44062253v.1
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