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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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`MICROSOFT CORP., DELL TECHNOLOGIES INC., and DELL INC.,
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`Petitioners,
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`v.
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`OZMO LICENSING LLC,
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`Patent Owner
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`PATENT OWNER’S UPDATED MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8
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`3849403.v1
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`
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`Ozmo Licensing LLC, the Patent Owner, respectfully submits this Updated
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`Mandatory Notice Information pursuant to 37 C.F.R. § 42.8 to update the
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`Designation of Counsel, in which Daniel A. Fleisher has been added to the list of
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`back-up counsel:
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`1.
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`2.
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`Real Party in Interest - 37 C.F.R. § 42.8(b)(1) (UNCHANGED)
`The Patent Owner and real party-in-interest is Ozmo Licensing LLC.
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`Related Matters - 37 C.F.R. § 42.8(b)(2) (UNCHANGED)
`Patent Owner notes that U.S. Patent No. 8,599,814 (“the ’814 Patent”) is at
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`issue in the following pending judicial matters that may affect, or be affected by, a
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`decision in this proceeding:
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`• Ozmo Licensing LLC v. TCL Electronics Holdings Ltd. et al., Civil Action
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`No. 6:23-cv-249-ADA (W.D. Tex. Waco) (pending);
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`• Ozmo Licensing LLC v. Dell Technologies Inc. et al., Civil Action No. 1:23-
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`cv-747-ADA (W.D. Tex. Austin) (pending);
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`• Ozmo Licensing LLC v. Acer Inc. et al., Civil Action No. 6:21-cv-01225-
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`ADA (W.D. Tex. Waco) (pending; Patent Owner notes that a joint stipulation
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`to voluntarily dismiss made “subject to the approval of the Court” has been
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`filed in this matter (ECF 45), but an order approving the dismissal of the case
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`has not yet been issued by the Court).
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`3849403.v1
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`2
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`In addition, a related patent to the ’814 Patent, that is, U.S. Patent No.
`
`9,264,991, is at issue in the following pending judicial matters or administrative
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`matters that may affect, or be affected by, a decision in this proceeding:
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`• Unified Patents, LLC v. Ozmo Licensing LLC, IPR2023-00193 (pending).
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`Further, Patent Owner notes that the ’814 Patent was at issue in the following
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`previous judicial or administrative matters that may affect, or be affected by, a
`
`decision in this proceeding:
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`• Ozmo Licensing LLC v. HP Inc., Civil Action No. 6:21-cv-00383-ADA
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`(W.D. Tex. Waco) (settled/voluntarily dismissed, November 24, 2021);
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`• Ozmo Licensing LLC v. Dell Technologies, Inc. et al., Civil Action No. 6:22-
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`cv-00642 (W.D. Tex. Waco) (transferred to Civil Action No. 1:23-cv-747-
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`ADA, W.D. Tex. Austin, listed above).
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`The ’814 Patent is a continuation of U.S. Patent App. No. 12/892,825, filed on
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`September 28, 2010, now abandoned, which is a division of U.S. Patent App. No.
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`11/422,945, filed on June 8, 2006, now U.S. Patent No. 7,826,408, which is a
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`continuation of U.S. Patent App. No. 11/376,729, filed on March 14, 2006, now
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`abandoned, which claims priority from U.S. Provisional App. No. 60/661,763, filed
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`on March 14, 2005.
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`Eight other applications and issued U.S. patents claim priority to the
`
`application which became the ’814 Patent, as follows:
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`3849403.v1
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`U.S. Patent App. Ser. No. 16/669,110, filed October 30, 2019, which issued as
`
`U.S. Patent No. 11,382,034, claims priority to the application which became the ’814
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`Patent.
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`U.S. Patent App. Ser. No. 16/668,999, filed October 30, 2019, which issued as
`
`U.S. Patent No. 11,252,659, claims priority to the application which became the ’814
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`Patent.
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`U.S. Patent App. Ser. No. 14/073,260, filed November 6, 2013, which issued
`
`as U.S. Patent No. 9,264,991, claims priority to the application which became the
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`’814 Patent.
`
`U.S. Patent App. Ser. No. 17/476,659, filed September 16, 2021, now issued as
`
`U.S. Patent No. 11,627,525, claims priority to the application which became the ’814
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`Patent.
`
`U.S. Patent App. Ser. No. 16/912,262, filed June 25, 2020, which issued as
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`U.S. Patent No. 10,873,906, claims priority to the application which became the ’814
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`Patent.
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`U.S. Patent App. Ser. No. 17/125,797, filed December 17, 2020, which issued
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`as U.S. Patent No. 11,012,934, claims priority to the application which became the
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`’814 Patent.
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`U.S. Patent App. Ser. No. 14/990,203, filed January 7, 2016, now abandoned,
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`claims priority to the application which became the ’814 Patent.
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`3849403.v1
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`4
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`U.S. Patent App. Ser. No. 17/322,492, filed May 15, 2021, which issued as
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`U.S. Patent No. 11,122,504, claims priority to the application which became the ’814
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`Patent.
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`In addition, one other issued U.S. patent shares a common priority claim with
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`the application which became the ’814 Patent, as follows:
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`U.S. Patent App. No. 13/249,059, now issued as U.S. Patent No. 8,165,102,
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`claims priority from U.S. Provisional App. No. 60/661,763.
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`The above is not a concession that these matters affect, or will be affected by, a
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`decision in the proceeding.
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`3.
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`Designation of Counsel: (CHANGED)
`Lead Counsel:
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`Lawrence P. Cogswell III, Ph.D., Reg. No. 71,441
`E-mail: lawrence.cogswell@hbsr.com
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`Postal and Hand-Delivery Address:
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`First Back-up Counsel:
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`Timothy J. Meagher, Reg. No. 39,302
`E-mail: timothy.meagher@hbsr.com
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`Postal and Hand-Delivery Address:
`Hamilton, Brook, Smith & Reynolds, P.C.
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`5
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`3849403.v1
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`
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`Second Back-up Counsel:
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`Keith J. Wood, Reg. No. 45,235
`E-mail: keith.wood@hbsr.com
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`Postal and Hand-Delivery Address:
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`Third Back-up Counsel:
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`Daniel A. Fleisher, Reg. No. 72,010
`E-mail: daniel.fleisher@hbsr.com
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`Postal and Hand-Delivery Address:
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
`Service Information (UNCHANGED)
`Pursuant to 37 C.F.R. § 42.8(b)(4), Patent Owner may be served at the above
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`4.
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`addresses for Lead and Back-up Counsels. Pursuant to 37 C.F.R. § 42.6(e)(1), Patent
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`Owner consents to electronic service by e-mail at the above listed email addresses of
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`Lead and Back-up Counsels.
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`3849403.v1
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`6
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`Respectfully submitted this 24th day of October 2023.
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
`
`
`/Lawrence P. Cogswell III, Ph.D. 71,441/
`Lawrence P. Cogswell III, Ph.D.
`Reg. No. 71,441
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Boulevard
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`Lead Counsel for Patent Owner
`OZMO LICENSING LLC
`________________________
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`3849403.v1
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`Case No. IPR2023-01060
`U.S. Patent No. 8,599,814
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on October 24, 2023, the
`foregoing Patent Owner’s Updated Mandatory Notice Information Pursuant to
`37 C.F.R. § 42.8 is being served electronically by agreement of the parties to the
`following e-mail service addresses:
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`brian.erickson@dlapiper.com
`chris.katsantonis@us.dlapiper.com
`Ozmo-IPR@us.dlapiper.com
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`
`/Lawrence P. Cogswell III, Ph.D. 71,441/
`Lawrence P. Cogswell III, Ph.D.
`Reg. No. 71,441
`Lead Counsel for Patent Owner
`OZMO LICENSING LLC
`___________________________________
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`3849403.v1
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`8
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