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IPR2024-00283
`Patent 6,993,658
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`AMAZON.COM, INC.
`
`Petitioner,
`v.
`DYNAPASS IP HOLDINGS LLC
`
`Patent Owner
`__________________
`Inter Partes Review No. IPR2024-00283
`Patent No. 6,993,658
`
`PATENT OWNER’S MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`

`

`IPR2024-00283
`Patent No. 6,993,658
`
`I.
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`A.
`
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`Dynapass IP Holdings LLC, the owner of U.S. Patent No. 6,993,658 (the
`
`“’658 Patent”), is the real-party-in-interest and has an address at 555 Anton Blvd,
`
`Ste 850, Costa Mesa, CA. DynaPass Inc. is also a real party in interest.
`
`B.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following matters would affect, or be affected by, a decision in this
`
`proceeding regarding the ’658 Patent:
`
`
`
`Dynapass IP Holdings LLC v. JPMorgan Chase & Co., et al., 2:22-cv-
`
`00212 (Lead Case), in the United States District Court for the Eastern District of
`
`Texas.
`
`
`
`Dynapass IP Holdings LLC v. Bank of America Corp., et al., 2:22-cv-
`
`00210 (Member Case), in the United States District Court for the Eastern District of
`
`Texas.
`
`
`
`Dynapass IP Holdings LLC v. BOKF, National Association, 2:22-cv-
`
`00211 (Member Case), in the United States District Court for the Eastern District of
`
`Texas.
`
`
`
`Dynapass IP Holdings LLC v. PNC Financial Services Group, Inc. et
`
`al., 2:22-cv-00214 (Member Case), in the United States District Court for the
`
`Eastern District of Texas.
`
`1
`
`

`

`IPR2024-00283
`Patent No. 6,993,658
`
`
`
`Bank of America, N.A.; Truist Bank; BOKF, N.A.; Wells Fargo Bank,
`
`N.A.; and PNC Bank, N.A. v. Dynapass IP Holdings LLC, No. IPR2023-00367,
`
`before the Patent and Trial Appeal Board (Denied Institution on July 18, 2023).
`
`
`
`Unified Patents, LLC. v. Dynapass IP Holdings LLC, No. IPR2023-
`
`00425, before the Patent and Trial Appeal Board (Granted Institution on July 18,
`
`2023).
`
`
`
`Dynapass IP Holdings LLC v. Amazon.com, Inc., 2:23-cv-00063 (Lead
`
`Case), in the United States District Court for the Eastern District of Texas.
`
`
`
`Dynapass IP Holdings LLC v. The Charles Schwab Corporation, et al.,
`
`2:23-cv-00064 (Member Case), in the United States District Court for the Eastern
`
`District of Texas.
`
`
`
`Dynapass IP Holdings LLC v. Experian Information Services, Inc.,
`
`2:23-cv-00066 (Member Case), in the United States District Court for the Eastern
`
`District of Texas.
`
`
`
`Dynapass IP Holdings LLC v. Simmons First National Corporation, et
`
`al., 2:23-cv-00068 (Member Case), in the United States District Court for the
`
`Eastern District of Texas.
`
`
`
`Jack Henry & Associates, Inc. v. Dynapass IP Holdings LLC, 1:23-cv-
`
`00388, in the United States District Court for the District of Delaware.
`
`2
`
`

`

`IPR2024-00283
`Patent No. 6,993,658
`
`
`
`JPMorgan Chase Bank, N.A. v. Dynapass IP Holdings LLC, No.
`
`IPR2023-01331, before the Patent and Trial Appeal Board (Petition filed on August
`
`16, 2023).
`
`
`
`Experian Information Solutions, Inc. v. Dynapass IP Holdings LLC,
`
`No. IPR2023-01406, before the Patent and Trial Appeal Board (Petition filed on
`
`September 28, 2023).
`
`C.
`
`Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3)); Service
`Information (37 C.F.R. § 42.8(b)(4))
`
`Patent Owner provides the following designation of lead and back-up counsel
`
`and service information. Please direct all correspondence regarding this proceeding
`
`to lead and back-up counsel at their respective email addresses below. Patent Owner
`
`consents to electronic service.
`
`Lead Counsel:
`
`Backup Counsel:
`
`John Wittenzellner
`USPTO Registration No. 61,662
`WILLIAMS SIMONS & LANDIS PLLC
`1735 Market Street, Suite 125, #453
`Philadelphia, PA 19103
`Tel: (512) 543-1373
`Fax: (512) 793-9575
`johnw@wsltrial.com
`IPRDYNAPASSWSL@wsltrial.com
`
`Michael J. Fagan, Jr.
`USPTO Registration No. 71,654
`WILLIAMS SIMONS & LANDIS PLLC
`2633 McKinney Ave., Suite 130
`Dallas, TX 75204
`Tel: (512) 543-1557
`
`3
`
`

`

`IPR2024-00283
`Patent No. 6,993,658
`
`Fax: (512) 793-9575
`mfagan@wsltrial.com
`
`Mark McCarthy
`USPTO Registration No. 69,575
`WILLIAMS SIMONS & LANDIS PLLC
`The Littlefield Building
`601 Congress Ave., Suite 600
`Austin, TX 78701
`Tel: (512) 717-6583
`Fax: (512) 793-9575
`mmccarthy@wsltrial.com
`
`Dated: January 5, 2024
`
`
`
`Respectfully submitted,
`
`By: /John Wittenzellner/
`John Wittenzellner
`USPTO Registration No. 61,662
`Counsel for Patent Owner
`Dynapass IP Holdings LLC
`
`4
`
`

`

`IPR2024-00283
`Patent No. 6,993,658
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on January 5, 2024,
`
`the foregoing document was served on counsel of record for Petitioners by filing this
`
`document through the End-to-End System, as well as via electronic mail to counsel
`
`of record for Petitioner at the following addresses:
`
`Alexander B. Stein (alexander.stein@morganlewis.com)
`Ahren C. Hsu-Hoffman (Ahren.hsu-hoffman@morganlewis.com)
`Austin L. Zuck (Austin.zuck@morganlewis.com)
`
`By: /John Wittenzellner/
`John Wittenzellner
`USPTO Registration No. 61,662
`Counsel for Patent Owner
`Dynapass IP Holdings LLC
`
`
`
`5
`
`

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