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UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`
`________________________
`
`Case IPR2018-00934
`U.S. Patent No. 8,998,058
`________________________
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner Ethicon LLC submits the
`
`following updated mandatory notices with additions to the Related Matters.
`
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Ethicon LLC (the assignee of U.S. Pat. No. 8,998,058 (“the 058 Patent”)) is
`
`
`
`
`an indirect subsidiary of Johnson & Johnson. Ethicon LLC has exclusively licensed
`
`Ethicon Endo-Surgery, Inc. to sell products in the United States that would infringe
`
`the 058 Patent absent a license. Ethicon Endo-Surgery, Inc. has exclusively
`
`sublicensed that right to Ethicon US, LLC. Ethicon US, LLC and Ethicon Endo-
`
`Surgery, Inc. are indirect subsidiaries of Johnson & Johnson.
`
`
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`Patent Owner identifies the following judicial and/or administrative matters
`
`that may be deemed related under 37 C.F.R. § 42.8(b)(2):
`
`The 058 Patent is presently asserted in Ethicon LLC et al. v. Intuitive
`
`Surgical, Inc. et al., C.A. No. 1:17-cv-00871-LPS (D. Del.) (“the Delaware
`
`litigation”). U.S. Pat. Nos. 9,585,658 (“the 658 Patent”), 8,616,431 (“the 431
`
`Patent”), 8,479,969 (“the 969 Patent”), 9,113,874 (“the 874 Patent”), 9,084,601
`
`(“the 601 Patent”), and 8,991,677 (“the 677 Patent”) are also asserted in the
`
`Delaware litigation.
`
`The following petitions for inter partes review have been filed against the
`
`601 and 677 Patents, which are related to the 058 Patent:
`
`
`
`
`2
`
`

`

`• IPR2018-933 (601 Patent)
`
`• IPR2018-935 (677 Patent)
`
`The 058 Patent is a continuation of U.S. Patent Application No. 13/832,522,
`
`now U.S. Patent No. 9,084,601, which is a continuation of U.S. Patent Application
`
`No. 13/118,210, now U.S. Patent No. 8,752,749, which is a continuation-in-part of
`
`U.S. Patent Application No. 12/856,099, now U.S. Patent No. 8,196,795, which is
`
`a continuation of U.S. Patent Application No. 12/031,628, now U.S. Patent No.
`
`7,793,812.
`
`No U.S. patents or applications claim priority to U.S. Patent Application No.
`
`14/282,494, which issued as the 058 Patent.
`
`The following additional U.S. patents and patent applications claim priority
`
`to one or more of the same application(s) to which the 058 Patent claims priority:
`
`• PCT/US12/39302
`
`• U.S. Patent Application No. 13/023,238, now U.S. Patent No. 8,540,130
`
`• U.S. Patent Application No. 13/369,666, now U.S. Patent No. 8,573,465
`
`• U.S. Patent Application No. 14/281,177, now U.S. Patent No. 9,095,339
`
`• U.S. Patent Application No. 14/283,729, now U.S. Patent No. 8,991,677
`
`• U.S. Patent Application No. 14/755,151, now U.S. Patent No. 9,498,219
`
`• U.S. Patent Application No. 15/146,482, now U.S. Patent No. 9,980,729
`
`
`
`
`3
`
`

`

`• U.S. Patent Application No. 15/146,486; now U.S. Patent No. 9,999,426
`
`• U.S. Patent Application No. 15/146,490; now U.S. Patent No. 10,004,505
`
`• U.S. Patent Application No. 15/661,984
`
`• U.S. Patent Application No. 15/661,994
`
`• U.S. Patent Application No. 15/662,018
`
`• U.S. Patent Application No. 15/662,034, now U.S. Patent No. 9,901,344
`
`• U.S. Patent Application No. 15/662,051, now U.S. Patent No. 9,901,345
`
`• U.S. Patent Application No. 15/662,067, now U.S. Patent No. 9,901,346
`
`• U.S. Patent Application No. 15/950,899
`
`C. Lead and Back-Up Counsel and Service Information (37 C.F.R. §
`42.8(b)(3)-(4))
`
`Patent Owner identifies the following lead and back-up counsel and service
`
`
`
`information:
`
`Lead Counsel
`Anish R. Desai
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8730
`F: 212-310-8007
`anish.desai@weil.com
`USPTO Reg. No. 73,760
`Customer No. 506,499
`
`Back-Up Counsel
`Elizabeth Stotland Weiswasser
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8022
`F: 212-310-8007
`elizabeth.weiswasser@weil.com
`USPTO Reg. No. 55,721
`
`
`
`
`
`
`
`
`
`4
`
`

`

`Adrian Percer
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`T: 650-802-3141
`F: 650-802-3100
`adrian.percer@weil.com
`USPTO Reg. No. 46,986
`
`Christopher T. Marando
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7094
`F: 202-857-0940
`christopher.marando@weil.com
`USPTO Reg. No. 67,898
`
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7153
`F: 202-857-0940
`christopher.pepe@weil.com
`USPTO Reg. No. 73,851
`
`Please address all correspondence to lead and backup counsel. Patent Owner
`
`consents to service by electronic mail at the following address:
`
`Ethicon.IPR.Service@weil.com.
`
`Date: July 3, 2018
`
` Respectfully submitted,
`
` /Anish R. Desai/
`Anish R. Desai
`Reg. No. 73,760
`Lead Counsel for Patent Owner
`
` 1
`
`5
`
`

`

`CERTIFICATE OF SERVICE
`
`
`The undersigned hereby certifies that on July 3, 2018, the foregoing
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES PURSUANT TO
`
`37 C.F.R. § 42.8 was served via electronic mail, upon the following:
`
`John C. Phillips
`Ryan P. O’Connor
`FISH & RICHARDSON
`12390 El Camino Real
`San Diego, CA 92130
`phillips@fr.com
`oconnor@fr.com
`
`Steven R. Katz
`FISH & RICHARDSON
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`katz@fr.com
`
`
`IPR11030-0049IP2@fr.com
`PTABInbound@fr.com
`
`
`
`
`
`/Timothy J. Andersen/ a
`Timothy J. Andersen
`Case Manager
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, DC 20036
`T: 202-682-7075
`timothy.andersen@weil.com
`
`
`
`
`
`
`
`
`

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