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Case IPR2019-01458
`U.S. Patent No. 7,170,519
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`WORLD PROGRAMMING LIMITED,
`Petitioner,
`v.
`SAS INSTITUTE INC.,
`Patent Owner.
`____________________
`
`Case IPR2019-01458
`U.S. Patent No. 7,170,519
`____________________
`
`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`

`

`
`
`SAS Institute Inc. (“SAS”), the Patent Owner, provides the following
`
`mandatory notices pursuant to 37 C.F.R. § 42.8(a)(2).
`
`I.
`
`REAL PARTY-IN-INTEREST
`Pursuant to 37 C.F.R. § 42.8(b)(1), the real party-in-interest is SAS Institute
`
`Inc., the assignee of record for U.S. Patent No. 7,170,519 (“’519 patent”).
`
`II. RELATED MATTERS
`Pursuant to 37 C.F.R. § 42.8(b)(2), Patent Owner states the following:
`
`A.
`Proceedings Before the USPTO Involving the Patent-at-Issue
`One other inter partes review matter is pending for the ʼ519 patent,
`
`IPR2019-01457.
`
`B.
`Proceedings Before the USPTO Involving Related Patents
`The ’519 patent is not related to any patents or pending applications
`
`involved in proceedings currently before the USPTO.
`
`C.
`Litigation Involving the Patent-at-Issue
`The ʼ519 patent is subject to the following civil action: SAS Institute Inc. v.
`
`World Programming Limited et al., Case No. 2:18-cv-00295-JRG (E.D. Tex.).
`
`III. 37 C.F.R § 42.8(b)(3) – LEAD AND BACKUP COUNSEL
`In accordance with 37 C.F.R. §§ 42.8(b)(3), 42.8(b)(4) and 42.10(a), Patent
`
`Owner identifies the following lead and backup counsel and service information:
`
`
`
`

`

`
`
`Lead Counsel:
`David B. Cochran
`Reg. No. 39,142
`Jones Day
`901 Lakeside Ave.
`Cleveland, OH 44114
`(216) 586-7029
`dcochran@jonesday.com
`
`Backup Counsel:
`Joseph M. Sauer
`Reg. No. 47,919
`Jones Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-7506
`jmsauer@jonesday.com
`
`Joshua R. Nightingale
`Reg. No. 67,865
`Jones Day
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`(412) 394-7950
`jrnightingale@jonesday.com
`
`Patent Owner consents to electronic service by email at the email addresses
`
`
`
`listed above.
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney is submitted herewith.
`
`
`
`
`
`Dated: August 23, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Joseph M. Sauer/
`Joseph M. Sauer
`Reg. No. 47,919
`Jones Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-7506
`jmsauer@jonesday.com
`
`- 2 -
`
`

`

`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Petitioner a true and correct copy of the foregoing “Patent Owner’s
`
`Mandatory Notices” by email on August 23, 2019 at the following address of
`
`record:
`
`Christopher V. Ryan
`Reg. No. 54,759
`Baker Botts L.L.P.
`
`Brian W. Oaks
`Reg. No. 44,981
`Baker Botts L.L.P.
`
`WPL_IPR@bakerbotts.com
`
`
`
`
`
`Dated: August 23, 2019
`
`
`
`
`
`
`
`
`
`
`/Joseph M. Sauer/
`Joseph M. Sauer
`Reg. No. 47,919
`Jones Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-7506
`jmsauer@jonesday.com
`
`

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