Under the Interim Processes for PTAB Workload Management Memorandum (“Memorandum”) issued on March 26, 2025, 1 the decision whether to institute review in this proceeding will be bifurcated between (i) discretionary considerations and (ii) merits and other non-discretionary statutory decisions.

The Memorandum provides that, within two months of the entry of the Notice of Filing Date Accorded, a patent owner may file a brief explaining any bases for discretionary denial.

The processes described in the Memorandum apply to any inter partes review or post-grant review proceeding where the: (1) deadline for the patent owner to file a preliminary response has not yet passed; or (2) deadline for the patent owner to file a preliminary response has not yet passed and the time for filing discretionary briefing has elapsed.

The Memorandum does not address the circumstance in which the time for filing discretionary briefing has not yet elapsed, but will elapse in one month or less—that is, petitions accorded a filing date between January 27, 2025 and February 27, 2025.

To address this situation, in this case, Patent Owner may file a brief for discretionary denial within one month of the date

Such motion must: a. Contain a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding; and b.

(a) Identify the registered practitioner who will serve as lead counsel; (b) Identify the most recent prior proceeding in which the person seeking to appear was recognized pro hac vice by order of the Patent Trial and Appeal Board pursuant to a motion of the type described in 37 C.F.R. § 42.10(c)(1); and (c) Be accompanied by Certification in the form of an affidavit or declaration in which the individual seeking pro hac vice recognition attests to the following: i.

If the affiant or declarant is unable to provide the information requested above or make the required statements or representations under oath, or if the affiant or declarant does not qualify as a provisionally recognized PTAB attorney pursuant to 37 C.F.R. § 42.10(c)(2), the procedure set forth in 37 C.F.R. § 42.10(c)(2) is not available, and pro hac vice recognition may only be obtained via the process set forth in 37 C.F.R. § 42.10(c)(1).

Pro hac vice recognition will not be effective until the party files an updated mandatory notice after the expiration of the applicable time period (5 or 10 days) set forth in 37 C.F.R. § 42.10(c)(2)(iii).

The parties are also reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

Such motion must: a. Contain a statement of facts showing there is good cause for the Board to recognize counsel pro hac vice during the proceeding; and b.

A notice of intent to designate a provisionally recognized PTAB attorney as back-up counsel filed pursuant to 37 C.F.R. § 42.10(c)(2) must: (a) Identify the registered practitioner who will serve as lead counsel; (b) Identify the most recent prior proceeding in which the person seeking to appear was recognized pro hac vice by order of the Patent Trial and Appeal Board pursuant to a motion of the type described in 37 C.F.R. § 42.10(c)(1); and (c) Be accompanied by Certification in the form of an affidavit or declaration in which the individual seeking pro hac vice recognition attests to the following: i.

If the affiant or declarant is unable to provide the information requested above or make the required statements or representations under oath, or if the affiant or declarant does not qualify as a provisionally recognized PTAB attorney pursuant to 37 C.F.R. § 42.10(c)(2), the procedure set forth in 37 C.F.R. § 42.10(c)(2) is not available, and pro hac vice recognition may only be obtained via the process set forth in 37 C.F.R. § 42.10(c)(1).

Pro hac vice recognition will not be effective until the party files an updated mandatory notice after the expiration of the applicable time period (5 or 10 days) set forth in 37 C.F.R. § 42.10(c)(2)(iii).

The parties are also reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial Appeal Case Tracking System (P-TACTS), accessible from the Board Web site at http://www.uspto.gov/PTAB.

As explained below, none of these are material errors and the Board should exercise its discretion to deny institution.

Mail Stop Patent Board Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O.

Box 1450 Alexandria, VA 22313-1450

In the Inter Partes Review of U.S. Patent No. 8,736,729 I hereby appoint Practitioner(s) at Mayer Brown LLP associated with Customer Number 26565, as my attorney(s) to prosecute the aforementioned proceeding, and to transact all business in the United States Patent and Trademark Office connected therewith, including appointment of lead and backup counsel.

Please recognize the correspondence address (including any electronic mail address) for the above identified Inter Partes Review proceeding to be the address associated with appointed lead and backup counsel.

FOR: Maxell, Ltd. Signature: _________________________ Name: Tatsuya Yamamoto Title: Date: General Manager January 31, 2025

Case IPR2025-00444 Patent No. 8,736,729 Mandatory Notices Pursuant to 37 C.F.R. § 42.8, Patent Owner Maxell Ltd., (“Patent Owner”) hereby provides the following mandatory notices:

Related Matters Pursuant to 37 C.F.R. § 42.8(b)(2), Patent Owner submits that the ’729 Patent is currently subject to the following action: Maxell, Ltd. v. LG Electronics Inc. et al., 5-23-cv-00152 E.D.

filed December 29, 2023 (transferred) and Maxell, Ltd. v. LG Electronics Inc. et al., 5-24-cv-04972 N.D. Cal.

The ’729 Patent was previously subject to the following actions: Maxell, Ltd. v. Apple Inc., 6-21-cv-00158 (WDTX) filed February 19, 2021, Maxell Ltd. v. ZTE Corporation, 5-18-cv-00080 (EDTX) filed June 15, 2018; ZTE Corporation et al v. Maxell, Ltd. et al.,IPR2018-00238 (PTAB) filed November 22, 2017 and Maxell, Ltd. v. ZTE Corporation et al., 5-16-cv-00179 (EDTX) filed November 18, 2016.

Service Information Pursuant to 37 C.F.R. §42.8(b)(4), Patent Owner identifies the following service information: Please direct all correspondence regarding this proceeding to lead counsel at the address identified above.