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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FORD MOTOR COMPANY
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`Petitioner,
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`v.
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`3086802.v1
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`MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
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`Patent Owner, and
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`ETHANOL BOOSTING SYSTEMS, LLC,
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`Exclusive Licensee
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`Case No. IPR2019-01400
`U.S. Patent No. 8,069,839
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`PATENT OWNER’S UPDATED MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`Massachusetts Institute of Technology, the Patent Owner, respectfully submits
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`this Updated Mandatory Notice Information pursuant to 37 C.F.R. § 42.8 to update
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`the related matters:
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`1.
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`Real Parties in Interest - 37 C.F.R. § 42.8(b)(1) (UNCHANGED)
`The real parties-in-interest are Massachusetts Institute of Technology, the
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`Patent Owner, and Ethanol Boosting Systems, LLC, the Exclusive Licensee. In
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`addition to being the Exclusive Licensee of U.S. Patent No. 8,069,839 (“the ’839
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`Patent”), Ethanol Boosting Systems, LLC has the right to sue for any infringement of
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`the ’839 Patent, and the exclusive right to sublicense any alleged infringer of the ’839
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`Patent.
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`2.
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`Related Matters - 37 C.F.R. § 42.8(b)(2) (UPDATED)
`Patent Owner notes that the ’839 Patent is at issue in the following pending
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`judicial matters or administrative matters that may affect, or be affected by, a
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`decision in this proceeding:
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`• Ethanol Boosting Systems, LLC et al v. Ford Motor Company, Civil Action
`No. 1:19-cv-00196-CFC-SRF (D. Del.)
`Patent Owner notes that another petition for IPR has been filed for the ’839
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`Patent under the case heading IPR2020-00013; and that petitions for IPR have been
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`filed for related U.S. Patent No. 9,810,166 under the case headings IPR2019-01399
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`and IPR2020-00010; for U.S. Patent No. 9,255,519 under the case headings
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`3086802.v1
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`2
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`IPR2019-01401 and IPR2020-00011; and for U.S. Patent No. 10,138,826 under the
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`case headings IPR2019-01402 and IPR2020-00012.
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`The ’839 Patent is a continuation of U.S. Patent Application Ser. No.
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`12/815,842, filed on June 15, 2010, which issued as U.S. Patent No. 7,971,572,
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`which is a continuation of U.S. Patent Application Ser. No. 12/329,729, filed on
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`December 8, 2008, which issued as U.S. Patent No. 7,762,233, which is a
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`continuation of U.S. Patent Application Ser. No. 11/840,719, filed on August 17,
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`2007, which issued as U.S. Patent No. 7,740,004, which is a continuation of U.S.
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`Patent Application Ser. No. 10/991,774, filed November 18, 2004, which issued as
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`U.S. Patent No. 7,314,033.
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`Two pending U.S. Patent Applications, Ser. No. 16/251,658, filed on January
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`18, 2019, and Ser. No. 16/424,471, filed on May 28, 2019, claim priority to the same
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`application to which the ’839 Patent claims priority, namely, U.S. Patent Application
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`Ser. No. 10/991,774, filed November 18, 2004, which issued as U.S. Patent No.
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`7,314,033.
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`Other issued U.S. Patents also claim priority to U.S. Patent Application Ser.
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`No. 10/991,774, filed November 18, 2004, which issued as U.S. Patent No.
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`7,314,033, as follows:
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`U.S. Patent Application Ser. No. 14/982,086, filed on December 29, 2015,
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`which issued as U.S. Patent No. 9,695,784;
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`3
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`3086802.v1
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`U.S. Patent Application Ser. No. 14/478,069, filed on September 5, 2014,
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`which issued as U.S. Patent No. 9,255,519;
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`U.S. Patent Application Ser. No. 14/249,806, filed on April 10, 2014, which
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`issued as U.S. Patent No. 8,857,410;
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`U.S. Patent Application Ser. No. 13/956,498, filed on August 1, 2013, which
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`issued as U.S. Patent No. 8,733,321;
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`U.S. Patent Application Ser. No. 13/629,836, filed on September 28, 2012,
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`which issued as U.S. Patent No. 8,522,746;
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`U.S. Patent Application Ser. No. 13/368,382, filed on February 8, 2012, which
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`issued as U.S. Patent No. 8,302,580;
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`U.S. Patent Application Ser. No. 13/282,787, filed on October 27, 2011, which
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`issued as U.S. Patent No. 8,146,568;
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`U.S. Patent Application Ser. No. 11/100,026, filed April 6, 2005, which issued
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`as U.S. Patent No. 7,225,787;
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`U.S. Patent Application Ser. No. 12/701,034, filed on February 5, 2010, which
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`issued as U.S. Patent No. 8,468,983;
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`U.S. Patent Application Ser. No. 15/919,175, filed on March 12, 2018, which
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`issued as U.S. Patent No. 10,221,783;
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`U.S. Patent Application Ser. No. 14/807,125 filed on July 23, 2015, which
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`issued as U.S. Patent No. 9,708,965;
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`4
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`3086802.v1
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`U.S. Patent Application Ser. No. 11/229,755 filed on September 19, 2005,
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`which issued as U.S. Patent No. 7,444,987;
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`U.S. Patent Application Ser. No. 12/942,133 filed on November 9, 2010,
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`which issued as U.S. Patent No. 8,353,269;
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`U.S. Patent Application Ser. No. 13/410,373 filed on March 2, 2012, which
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`issued as U.S. Patent No. 8,276,565;
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`U.S. Patent Application Ser. No. 16/170,648 filed on October 25, 2018, which
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`issued as U.S. Patent No. 10,344,689;
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`U.S. Patent Application Ser. No. 11/871,384, filed on October 12, 2007, which
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`issued as U.S. Patent No. 7,640,915;
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`U.S. Patent Application Ser. No. 12/621,425 filed on November 18, 2009,
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`which issued as U.S. Patent No. 7,841,325;
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`U.S. Patent Application Ser. No. 12/907,163 filed on October 19, 2010, which
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`issued as U.S. Patent No. 8,171,915;
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`U.S. Patent Application Ser. No. 13/895,713 filed on May 16, 2013, which
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`issued as U.S. Patent No. 8,707,913;
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`U.S. Patent Application Ser. No. 15/463,425 filed on March 20, 2017, which
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`issued as U.S. Patent No. 9,810,166, which is the subject of the petitions for IPR
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`mentioned above under the case headings IPR2019-01399 and IPR2020-00010;
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`3086802.v1
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`5
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`U.S. Patent Application Ser. No. 14/478,069 filed on September 5, 2014,
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`which issued as U.S. Patent No. 9,255,519, which is the subject of the petitions for
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`IPR mentioned above under the case headings IPR2019-01401 and IPR2020-00011;
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`U.S. Patent Application Ser. No. 15/716,675 filed on September 27, 2017,
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`which issued as U.S. Patent No. 10,138,826, which is the subject of the petitions for
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`IPR mentioned above under the case headings IPR2019-01402 and IPR2020-00012.
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`The above is not a concession that these matters affect, or will be affected by, a
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`decision in the proceeding.
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`3086802.v1
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`6
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`3.
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`Designation of Counsel (UNCHANGED):
`Lead Counsel:
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`
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`Lawrence P. Cogswell III, Ph.D., Reg. No. 71,441
`E-mail: lawrence.cogswell@hbsr.com
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`Postal and Hand-Delivery Address:
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Blvd.
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`First Back-up Counsel:
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`Keith J. Wood, Reg. No. 45,235
`E-mail: keith.wood@hbsr.com
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`Postal and Hand-Delivery Address:
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Blvd.
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
`Service Information (UNCHANGED)
`Pursuant to 37 C.F.R. § 42.8(b)(4), Patent Owner may be served at the above
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`4.
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`addresses for Lead and First Back-up Counsel. Pursuant to 37 C.F.R. § 42.6(e)(1),
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`Patent Owner consents to electronic service by e-mail at the above listed email
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`addresses of Lead and First Back-up Counsel.
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`5.
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`Patent Owner’s Preliminary Response (UNCHANGED)
`Patent Owner reserves the right to file a Preliminary Response at a later date.
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`3086802.v1
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`Respectfully submitted this 6th day of November, 2019
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`
`/Keith J. Wood, Reg. No. 45235/
`Keith J. Wood
`Reg. No. 45,235
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Blvd.
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`First Back-up Counsel for Patent Owner
`Massachusetts Institute of Technology and for
`Exclusive Licensee Ethanol Boosting Systems,
`LLC
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`3086802.v1
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`8
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`Case IPR2019-01400
`U.S. Patent No. 8,069,839
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on November 6, 2019, the
`foregoing Patent Owner’s Updated Mandatory Notice Information Pursuant to
`37 C.F.R. § 42.8 is being served electronically by agreement of the parties at the
`following email addresses.
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`Ford-EBS@alston.com
`christopher.douglas@alston.com
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`/Keith J. Wood, Reg. No. 45235/
`Keith J. Wood
`Reg. No. 45,235
`First Back-up Counsel for Patent Owner
`Massachusetts Institute of Technology and
`for Exclusive Licensee Ethanol Boosting
`Systems, LLC
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`3086802.v1
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