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`Paper No. ____
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`FITBIT, INC.,
`
`Petitioner
`
`v.
`
`PHILIPS NORTH AMERICA LLC,
`
`Patent Owner.
`
`_______________
`
`U.S. Patent No. 7,088,233
`Issue Date: August 8, 2006
`Title: Personal Medical Device Communication System and Method
`_______________
`
`Case No. IPR2020-00783
`_______________
`
`____________________________________________________________
`
`Patent Owner’s Mandatory Notices
`Under 37 C.F.R. § 42.8
`
`4842-7185-3754.1
`
`
`
`IPR2020-00783
`U.S. Patent No. 7,088,233
`
`
`Patent Owner Mandatory Notices
`
`
`Pursuant to 37 C.F.R. § 42.8, Philips North America LLC (“Philips”)
`
`provides this Mandatory Notice within 21 days of service of the Petition (Paper 1)
`
`on April 8, 2020.
`
`I.
`
`Real Party-in-Interest Pursuant to 37 C.F.R. § 42.8 (b)(1):
`
`Philips North America LLC is the sole assignee of U.S. Patent No.
`
`7,088,233 (the “’233 patent”).
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`II.
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`Related Matters Pursuant to 37 C.F.R. § 42.8 (b)(2):
`
`Philips North America LLC is aware of the following matters involving the
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`’233 patent.
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`The ’233 patent is at issue in the following cases: Philips North America
`
`LLC v. Fitbit, Inc., No. 1:19-cv-11586-IT (D. Mass.); and Philips North America
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`LLC v. Garmin International, Inc. et al., Case No. 2:19-cv-06301-AB-KS, Central
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`District of California. The Massachusetts district court action also involves U.S.
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`Patent Nos. 8,277,377 (“the ’377 patent”), 6,976,958 (“the ’958 patent”) and
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`6,013,007 (“the ’007 patent”). The California district court action also involves the
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`’377 patent, the ’958 patent, and the ’007 patent, as well as U.S. Patent Nos.
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`9,314,192, and 9,801,542.
`
`
`
`
`
`4842-7185-3754.1
`
`1
`
`
`
`IPR2020-00783
`U.S. Patent No. 7,088,233
`
`
`Patent Owner Mandatory Notices
`
`
`On April 8, 2020, Petitioner filed a petition for inter partes review
`
`challenging the ’958 patent (IPR2020-00782). On April 15, 2020, Petitioner also
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`filed an IPR against U.S Patent No. 8,277,377 (IPR2020-00828).
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`III. Lead and Back-Up Counsel Pursuant to 37 C.F.R. § 42.8(b)(3):
`
`Philips North America LLC designates the following Lead and Back-up
`
`Counsel:
`
`Lead Counsel
`George C. Beck
`Foley & Lardner LLP
`3000 K Street, N.W., Suite 600
`Washington, DC 20007
`Direct Line: 202-945-6014
`Email: GBeck@foley.com
`Fax: 202-672-5399
`USPTO Reg. No. 38,072
`
`
`
`Back-up Counsel
`Eley O. Thompson
`Foley & Lardner LLP
`321 N. Clark Street, Suite 2800
`Chicago, IL 60654-5313
`Direct Line: (312) 832-4359
`Email: EThompson@foley.com
`Fax: (312) 832-4700
`USPTO Reg. No. 36,035
`
`
`
`
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`IV. Service Information Pursuant to 37 C.F.R. §§ 42.8(b)(4):
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Patent Owner consents to electronic service by e-mail at:
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`PhilipsIPRs@foley.com
`
`GBeck@foley.com
`
`EThompson@foley.com
`
`2
`
`4842-7185-3754.1
`
`
`
`IPR2020-00783
`U.S. Patent No. 7,088,233
`
`
`Patent Owner Mandatory Notices
`
`
`Any questions concerning this paper may be directed to lead counsel.
`
`
`
`Dated: April 29, 2020
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`/George C. Beck/
`George C. Beck
`Registration No. 38,072
`Counsel for Patent Owner
`
`
`4842-7185-3754.1
`
`3
`
`
`
`IPR2020-00783
`U.S. Patent No. 7,088,233
`
`
`Patent Owner Mandatory Notices
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Philips North
`
`America LLC’s Mandatory Notices Under 37 C.F.R. § 42.8 was served on
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`April 29, 2020, by email directed to the attorneys of record for the Petitioners at
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`the following address:
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`PH-Fitbit-Philips-IPR@paulhastings.com
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`
`
`
`Dated: April 29, 2020
`
`By: /George C. Beck/
`
`George C. Beck
`
`Registration No. 38,072
`
`Counsel for Patent Owner
`
`
`
`
`
`
`4842-7185-3754.1
`
`
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