`
`By: Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5383
`Fax: (612) 332-9081
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`H&S MANUFACTURING COMPANY, INC.
`
`Petitioner
`
`v.
`
`OXBO INTERNATIONAL CORPORATION
`
`Patent Owner
`
`____________
`
`Case IPR2016-00950
`Patent 8,166,739
`____________
`
`UPDATED MANDATORY NOTICES UNDER 37 C.F.R. §42.8
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00950
`Patent No. 8,166,739
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner hereby provides this
`
`notification of a judgment in a related matter affecting the present proceeding:
`
`In the concurrent litigation involving the patent-at-issue, Oxbo Int’l
`
`Corp. v. H&S Mfg. Co., No. 15-cv-00292, (W.D. Wis.), the District Court
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`conducted a full trial on the merits of the case, including on the issue of validity
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`of the patent-at-issue over prior art cited by Petitioner in the present proceedings1
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`and in view of the same secondary considerations evidence also of record in the
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`present proceedings. On June 16, 2017, the jury returned a verdict that claim 1
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`of the ’739 Patent at issue in these proceedings is valid and infringed.
`
`
`
`
`
`
`1 The prior art combination(s) considered during the district court litigation
`were different from the single instituted ground in this proceeding, but were among
`the non-instituted grounds. Specifically, US Honey (US Patent No. 5,031,394)
`(EX1017) and Wuebbels (U.S. Patent No. 6,775,969) (EX1019) were considered
`for the state of the art, while other references including Beougher (EX1010),
`Schnittjer (EX1011), Zhavoronkin (EX1012), CA Honey (EX1018), von
`Allworden (EX1020), and Dow ’757 (EX1013) were specifically considered.
`2
`
`
`
`
`
`
`
`A copy of the verdict form from the related District Court action has been
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`submitted as EX2021.
`
`Respectfully submitted,
`
`MERCHANT & GOULD, P.C.
`
`/Andrew J. Lagatta/
`Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 332-5300
`Fax: (612) 332-9081
`alagatta@merchantgould.com
`OxboIPR@merchantgould.com
`
`Date: June 23, 2017
`
`
`
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`
`
`
`
`
`
`3
`
`
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`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R § 42.6(e), the undersigned hereby certifies that a copy
`
`of this Updated Mandatory Notices Under 37 C.F.R. §42.8, EX2021, and an updated
`
`Exhibit List has been served on June 23, 2017, by email on counsel of record for the
`
`patent owner at the following name and address:
`
`Brad D. Pederson (Reg. No. 32,432)
`Eric H. Chadwick (Reg. No. 42,664)
`PATTERSON THUENTE PEDERSEN, P.A.
`80 South Eighth Street, Suite 4800
`Minneapolis, MN 55402
`Phone: (612) 349-5740
`Facsimile: (612) 349-9266
`pedersen@ptslaw.com
`chadwick@ptslaw.com
`
`
`
`Respectfully submitted,
`
`MERCHANT & GOULD, P.C.
`
`
`
`/Andrew J. Lagatta/
`Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`80 South 8th St., Suite 3200
`Minneapolis, MN 55402
`Telephone: (612) 332-5300
`Fax: (612) 332-9081
`alagatta@merchantgould.com
`OxboIPR@merchantgould.com
`
`
`
`
`4
`
`Date: June 23, 2017
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