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`
`
`Paper No. _____
`Filed: February 22, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`FOUNDATION MEDICINE, INC.,
`Petitioner,
`
`v.
`
`GUARDANT HEALTH, INC.,
`Patent Owner.
`_____________________________
`
`Case IPR2019-00637
`Patent No. 9,902,992
`_____________________________
`
`
`PATENT OWNER GUARDANT HEALTH, INC.’S MANDATORY
`NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`
`
`
`
`

`

`A. Real Party-In-Interest
`
`
`
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies Guardant
`
`Health, Inc. as the real party-in-interest.
`
`B. Related Matters
`
`
`
`In accordance with 37 C.F.R. § 42.8(b)(2), Patent Owner identifies the
`
`following related matters:
`
`
`
`Guardant Health, Inc. v. Foundation Medicine, Inc., Case No. 17-cv-1616
`
`(D.Del.) and Guardant Health, Inc. v. Personal Genome Diagnostics, Inc., Case
`
`No. 17-cv-1623 (D. Del.). The subject patent was also challenged in Foundation
`
`Medicine, Inc. v. Guardant Health, Inc., IPR2019-00636.
`
`The following related matters are also identified: Guardant Health, Inc. v.
`
`Foundation Medicine, Inc., IPR2017-01170, -01447, -01448 regarding U.S. Patent
`
`No. 9,340,830; Foundation Medicine, Inc. v. Guardant Health, Inc., IPR2019-
`
`00130 regarding U.S. Patent No. 9,598,731; Foundation Medicine, Inc. v.
`
`Guardant Health, Inc., IPR2019-00652 regarding U.S. Patent No. 9,834, 822;
`
`Foundation Medicine, Inc. v. Guardant Health, Inc., IPR2019-00653 regarding
`
`U.S. Patent No. 9,834,822; Personal Genome Diagnostics, Inc. v. Guardant
`
`Health, Inc., PGR2018-00058 regarding U.S. Patent No. 9,834,822; Foundation
`
`Medicine, Inc. v. Guardant Health, Inc., IPR2019-00634 regarding U.S. Patent No.
`
`-2-
`
`

`

`9,840,743; and Personal Genome Diagnostics, Inc. v. Guardant Health, Inc.,
`
`PGR2018-00057 regarding U.S. Patent No. 9,840,743.
`
`C. Lead and Back-up Counsel
`
`
`
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner provides the
`
`following designation of counsel:
`
`Lead Counsel
`Michael T. Rosato
`USPTO Reg. No. 52,182
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`
`
`
`
`Back-Up Counsel
`Steven W. Parmelee
`USPTO Reg. No. 31,990
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2542
`Fax: 206-883-2699
`Email: sparmelee@wsgr.com
`Back-Up Counsel
`Sonja R. Gerrard
`USPTO Reg. No. 72,802
`WILSON SONSINI GOODRICH &
`ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2649
`Fax: 206-883-2699
`Email: sgerrard@wsgr.com
`
`D. Electronic Service
`
`Patent Owner consents to electronic service by email at the email addresses
`
`provided above.
`
`-3-
`
`

`

`
`
`Date: February 22, 2019
`
`
`
`Respectfully submitted,
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`
`
`-4-
`
`

`

`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Patent Owner Guardant Health,
`
`Inc.’s Mandatory Notices Under 37 C.F.R. § 42.8 and accompanying Power of
`
`Attorney were served on February 22, 2019, at the following electronic service
`
`addresses:
`
`Rolando Medina
`Stephanie L. Schonewald
`CHOATE, HALL & STEWART LLP
`rmedina@choate.com
`sschonewald@choate.com
`IPR2019-00130FMI@choate.com
`
`
`Date: February 22, 2019
`
`
`
`
`
`
`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
`
`
`
`
`
`-5-
`
`

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