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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`_______________
`
`
`
`SAMSUNG ELECTRONICS CO. LTD.
`Petitioner,
`
`v.
`
`PROMOS TECHNOLOGIES, INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2017-00038
`Patent 6,195,302
`
`_______________
`
`
`
`MANDATORY NOTICES BY PATENT OWNER
`PROMOS TECHNOLOGIES, INC.
`UNDER 37 C.F.R. § 42.8(a)(2)
`AND
`DESIGNATION OF LEAD AND BACK-UP COUNSEL
`
`
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`

`
`Case No. IPR2017-00038
`Patent No. 6,195,302
`
`
`
`
`The Patent Owner PROMOS TECHNOLOGIES, INC. submits the following mandatory
`
`notices and designation of counsel pursuant to 37 C.F.R. § 42.8(a)(2).
`
`
`
`
`
`1.
`
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Patent owner PROMOS TECHNOLOGIES, INC. is the sole Patent Owner and Real
`
`Party-In-Interest, and has been properly named as such in the Petition.
`
`
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial matter, in which the ’302 Patent is at issue, may affect or be
`
`affected by a decision in this proceeding: ProMOS Technologies, Inc. v. Samsung Electronics
`
`Co. Ltd. et al., Civil Action No. 1:15-cv-00898-SLR-SRF (D. Del.). The district court
`
`proceeding is presently stayed.
`
`
`
`
`
`Petitioners have also sought inter partes review of the ’302 patent in IPR2017-00039.
`
`There are an additional five patents asserted in the district court action: U.S. Patent Nos.
`
`6,849,897; 6,020,259; 6,088,270; 6,699,789; and 5,761,112. Petitioners sought inter partes
`
`review for each of these patents as follows: IPR2017-00032 (the ’897 Patent); IPR2017-00033
`
`and IPR2017-00035 (the ’259 patent); IPR2017-00036 (the ’270 patent); IPR2017-00037 (the
`
`’789 patent); and IPR2017-00040 (the ’112 patent).
`
`
`
`
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Patent Owner provides the following
`
`designation of counsel:
`
`Lead Counsel:
`
`
`
`
`
`
`
`
`
`Craig R. Kaufman (Reg. No. 34,636)
`TechKnowledge Law Group LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: 650-517-5200
`
`
`
`

`
`Case No. IPR2017-00038
`Patent No. 6,195,302
`
`
`
`
`Fax: 650-226-3133
`Email: ckaufman@tklg-llp.com
`
`Backup Counsel:
`
`
`
`
`
`
`
`
`
`Kevin C. Jones (Reg. No. 55,308)
`TechKnowledge Law Group LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`Telephone: 650-517-5200
`Fax: 650-226-3133
`Email: kjones@tklg-llp.com
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), Powers of Attorney for lead and back-up counsel are
`
`being filed concurrently with these Mandatory Notices.
`
`
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`
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`4.
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`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service of any documents via mail or hand-delivery may be made at the postal mailing
`
`address for lead counsel designated above, with electronic service to Promos.Samsung-
`
`TKLGALL@tklg-llp.com. Telephone and facsimile numbers for lead counsel are designated
`
`
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`
`
`Respectfully submitted,
`
`By:
`
`
`
`/s/ Craig R. Kaufman
`Registration No. 34,636
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`above.
`
`
`
`Dated: October 26, 2016
`
`
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`

`
`Case No. IPR2017-00038
`Patent No. 6,195,302
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on October 26, 2016, a true and correct copy of the foregoing
`
`
`
`Mandatory Notices by Patent Owner ProMOS Technologies, Inc. under 37 C.F.R. § 42.8(a)(2)
`
`and Designation of Lead and Backup Counsel was served via email to the Petitioners by serving
`
`the correspondence email addresses of record as follows:
`
`
`
`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP,
`875 15th St. N.W.
`Washington, DC, 20005
`Telephone: 202.551.1990
`Fax: 202.551.1705
`Email: PH-Samsung-ProMOS1-
`IPR@paulhastings.com
`
`Chetan R. Bansal (Limited Recognition No. L0667)
`Paul Hastings LLP,
`875 15th St. N.W.
`Washington, DC, 20005
`Telephone: 202.551.1948
`Fax: 202.551.1705
`Email: PH-Samsung-ProMOS1-
`IPR@paulhastings.com
`
`Joseph E. Palys (Reg. No. 46,508)
`Paul Hastings LLP,
`875 15th St. N.W.
`Washington, DC, 20005
`Telephone: 202.551.1996
`Fax: 202.551.1705
`Email: PH-Samsung-ProMOS1-
`IPR@paulhastings.com
`
`Arvind Jairam (Reg. No. 62,759)
`Paul Hastings LLP,
`875 15th St. N.W.
`Washington, DC, 20005
`Telephone: 202.551.1887
`Fax: 202.551.1705
`Email: PH-Samsung-ProMOS1-
`IPR@paulhastings.com
`
`
`
`
`
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`
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`3015-0004\00009688.001
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`By:
`
`
`
`
`
`
`
`
`/s/ Deborah L. Grover
`Deborah L. Grover
`TechKnowledge Law Group LLP
`100 Marine Parkway, Suite 200
`Redwood Shores, CA 94065
`650-517-5200

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