`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HARVEST TRADING GROUP, INC.
`
`Petitioner,
`
`A
`
`Case IPR2016—00947
`
`V.
`
`Patent 8,962,685
`
`VIREO
`
`SYSTEMS,
`
`INC.
`
`and
`
`UNEMED CORPORATION
`
`Patent Owner.
`
`
`MOTION TO ACT TO THE EXCLUSION OF A CO—OWNER
`
`UNDER 37 C.F.R. § 42.9§b[
`
`Vireo Systems, Inc. (“Vireo”), co-owner of U.S. Patent No. 8,962,685 (the
`
`“’685 Patent”), pursuant to 37 C.F.R. § 42.9(b), moves to act to the exclusion of
`
`patent co—oWner, Board of Regents of the University of Nebraska (“University”)
`
`and UNeMed Corporation (“UNeMed”), as holder of all of UniVersity’s substantial
`
`rights in the ‘685 Patent.
`
`University has granted UNeMed all of its substantial rights to the ‘685
`
`Patent, including the exclusive rights to license the University’s rights to the ‘685
`
`Patent. Exhibit A, Declaration of Michael Dixon, 1] 4. UNeMed, in turn, licensed
`
`certain of its rights in the ‘685 Patent to Vireo. Exhibit A, 1] 5. UNeMed has
`
`3/313181.1
`
`
`
`Voluntarily consented to Vireo prosecuting IPR proceeding IPR20l6-00947 to the
`
`exclusion of UNeMed. Exhibit A, 1] 6. UNeMed also believes that its interest will
`
`be adequately represented by Vireo, and that Vireo acting to the exclusion of
`
`UNeMed in IPR20l6-00947 is in the interests ofjustice and efficiency. Exhibit A,
`
`117.
`
`Respectfully submitted,
`
`BRADLEY ARANT BOULT
`
`CUMMINGS LLP
`
`64‘
`
`[ARM
`
`all, Reg. No. 44,734
`Stephen H.
`BRADLEY ARANT
`
`BOULT CUMMINGS LLP
`
`200 Clinton Avenue West, Suite 900
`
`Huntsville, AL 35801-4900
`
`Telephone: (256) 517-5140
`Facsimile: (256) 517-5240
`
`Dated: May 17, 2016
`
`By:
`
`3/3l3l8l.l
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), 1, Stephen H. Hall, certify that on this 17th
`
`day of May 2016, a copy of this
`
`MOTION To ACT TO THE EXCLUSION or A CO-OWNER UNDER 37
`
`C.F.R. §42.9(b)
`
`was filed with the Patent Trial and Appeal Board via PRPS and served upon the
`below—listed counsel by Federal Express:
`
`Raymond A. Miller
`Curtis Wadsworth, J.D., Ph.D.
`
`500 Grant St., Suite 5000
`Pittsburgh, PA 15212
`
`By:
`
`/Stephen H. Hall 44,734/
`
`Stephen H. Hall
`BRADLEY ARANT
`
`BOULT CUMMINGS LLP
`
`200 Clinton Avenue West, Suite 900
`
`Huntsville, AL 35801-4900
`Telephone: (256) 517-5140
`Facsimile: (256) 517-5240
`
`3/313l81.l
`
`
`
`EXHIBIT A
`
`
`
`"UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Case IPR2016-00945
`
`Patent 8,354,450
`
`and
`
`Case IPR2016—0fl947
`
`Patent 8,962,685
`
`
`
`VIREO SYSTEMS, INC. and UNEMED
`CORPORATION
`
`Patent Owner.
`
`HARVEST TRADING GROUP, INC.
`
`
`
`Petitioner,
`
`DECLARATION OF MICHAEL DIXON
`
`1, Michael .Dixon, under penalty of perjury, declare:
`
`1.
`
`I am over the age of eighteen (18) and have persona} knowledge of the
`
`matters set forth herein.
`
`2.
`
`I am. the President and CEO of UNeMed Corporation (“UN‘ejMied”), a
`
`corporation organized under the laws ofthe State ofNebraska. I have been President
`
`of UNeMed since April 2009.
`
`I have been CEO since May 2011.
`
`3.
`
`4.
`
`I have personal knowledge of the facts set fomh in this Declaration.
`
`UNeMed is the exeiusive licensee of patent rights owned by the Board
`
`of Regents of the University of Nebraska with a worldwide commercial iicense with
`
`3/313189.!
`
`1
`
`
`
`right to grant sublicenses to all such patent rights. This license includes U.S. Patent
`
`Nos. 8,354,450 (application serial no. .12/909,377) and 8,962,685 (application serial
`
`no. l2/740,909).
`
`5.
`
`UNeMed entered. into a. license agreement with Vireo Systems, Inc.
`
`(“Vireo”) granting Vireo certain exclusive rights to make, use, and sell products
`
`within the scope of the claims ofU.S. Patent No. 7,608,641, U.S. Patent App. No.
`
`12/477,413, US. Patent App. No. 60/470,356, and all patents issuing therefrom or
`
`from any continuation, continuation—in—part, divisional, reissue, reexamination, or
`
`equivalent foreign. application claiming the benefit of filing of or right of priority to
`
`these patents, which include US Patent Nos. 8,354,450 and 8,962,685.
`
`6.
`
`UNel\/Ied voluntarily consents to Vireo prosecuting IPR proceedings
`
`IPR20l.6-00945 and .l'PR20l6-00947, filed by Harvest Trading Group, Inc. against
`
`Vireo and UNe.l\/led, to the exclusion of UNel\/led.
`
`7.
`
`U'N'eMed believes that its interests wiil. be adequately represented by
`
`Vireo, and that Vireo acting to the exclusion of UNeMed. in IPR proceedings
`
`IPR20l6»OO945 and lPR20l.6—O0947 is in the interests ofjustice and efficiency.
`
`This the
`
`day of May, 2016.
`
`
`% J,
`
`Michael Dixon
`
`3/3131891
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