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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`NINTENDO CO., LTD., and NINTENDO OF AMERICA INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner.
`
`______________
`
`
`U.S. Patent No. 6,411,941 B1
`
`Case No.: IPR2021-01338
`
`______________
`
`
`
`
`
`PATENT OWNER’S MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`
`
`

`

`Case No.: IPR2021-01338
`Patent No.: 6,411,947
`
`
`
`
`Atty. Dkt. No.: ANCC0124IPR
`
`Pursuant to 37 C.F.R. § 42.8, the patent owner, Ancora Technologies Inc.
`
`(“Patent Owner”), hereby submits the following Mandatory Notices in response to
`
`the Petition for Inter Partes Review of U.S. Patent No. 6,411,941 B1 (“the ‘941
`
`Patent”).
`
`A. Real Party-In-Interest - 37 C.F.R. § 42.8(b)(1)
`
`Patent Owner certifies that Ancora Technologies Inc. is the real party-in-
`
`interest in this proceeding.
`
`B. Related Matters - 37 C.F.R. § 42.8(b)(2)
`
`Patent Owner asserts that Petitioners infringe the ’941 Patent in Ancora
`
`Technologies, Inc. v. Nintendo Co., Ltd., No. 6:21-cv-00738 (W.D. Tex.)
`
`(complaint filed July 16, 2021).
`
`Patent Owner has asserted the ’941 Patent against other parties in the
`
`following currently-pending district-court lawsuits: Ancora Technologies, Inc. v.
`
`VIZIO, Inc., No. 6:21-cv-00739 (W.D. Tex.); Ancora Technologies, Inc. v. Roku,
`
`Inc., No. 6:21-cv-00737 (W.D. Tex.); Ancora Technologies, Inc. v. Google, LLC,
`
`No. 6:21-cv-00735 (W.D. Tex.); Ancora Technologies, Inc. v. Lenovo Group
`
`Limited, No. 1:19-cv-01712 (D. Del.). Patent Owner also asserted the ’941 Patent
`
`against other parties in the following recently-dismissed district-court lawsuits:
`
`Ancora Technologies, Inc. v. LG Electronics, Inc., No. 1:20-cv-00034 (W.D. Tex.);
`
`1
`
`

`

`Case No.: IPR2021-01338
`Patent No.: 6,411,947
`
`
`Ancora Technologies, Inc. v. HTC America, Inc., No. 2:16-cv-01919 (W.D.
`
`Atty. Dkt. No.: ANCC0124IPR
`
`Wash.); Ancora Technologies, Inc. v. TCT Mobile (US) Inc., Nos. 8:19-cv-02192,
`
`2:20-cv-01252 (C.D. Cal.); Ancora Technologies, Inc. v. Sony Corp., No. 1:19-cv-
`
`01703 (D. Del.); Ancora Technologies, Inc. v. Samsung Electronics Co., Ltd., No.
`
`6:19-cv-00385 (W.D. Tex.).
`
`There are presently no inter partes review or other post-grant review
`
`proceedings pending with respect to the ’941 Patent. The present Petition contains
`
`the same grounds of invalidity as the grounds that were instituted in the prior TCL
`
`IPR proceeding. See TCL Institution Decision (IPR2020-01609). Those same
`
`grounds were again instituted in the prior Sony IPR proceeding. See Sony
`
`Institution Decision (IPR2021-00663). Both of these two previously-instituted IPR
`
`proceedings were terminated due to settlement prior to any further activity after the
`
`respective institution decisions. See Decision re Settlement as to TCT and TCL
`
`After Institution of Trial, TCT Mobile (US) Inc. v. Ancora Technologies, Inc., No.
`
`IPR2020-01609 (June 10, 2021) (Paper No. 21); Termination Due to Settlement
`
`After Institution of Trial, Sony Mobile Commc’ns AB v. Ancora Technologies, Inc.,
`
`No. IPR2021-00663 (July 16, 2021) (Paper No. 20).
`
`C. Lead and Back-Up Counsel - 37 C.F.R. § 42.8(b)(3)
`
`The Patent Owner identifies the following lead and back-up counsel:
`
`
`
`2
`
`

`

`Case No.: IPR2021-01338
`Patent No.: 6,411,947
`
`
`
`Lead Counsel
`Marc Lorelli (Reg. No. 43,759)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone (248) 358-4400
`Facsimile (248) 358-3351
`mlorelli@brookskushman.com
`
`Atty. Dkt. No.: ANCC0124IPR
`
`Back-Up Counsel
`John P. Rondini (Reg. No. 64,949)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`Telephone (248) 358-4400
`Facsimile (248) 358-3351
`jrondini@brookskushman.com
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), an appropriate Power of Attorney is filed
`
`concurrently.
`
`D.
`
`Service Information - 37 C.F.R. § 42.8(b)(4)
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above. Patent Owner consents to service
`
`by email at the following email address: ANCC0124IPR@brookskushman.com.
`
`
`
`
`
`
`
`Dated: August 31, 2021
`
`
`
`Respectfully submitted,
`
`
`
` /Marc Lorelli/
`Marc Lorelli (Reg. No. 43,759)
`John P. Rondini (Reg. No. 64,949)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`
`3
`
`
`
`
`
`

`

`Case No.: IPR2021-01338
`Patent No.: 6,411,947
`
`
`
`Atty. Dkt. No.: ANCC0124IPR
`
`Certificate of Service
`
`The undersigned hereby certifies that on August 31, 2021, a complete and
`entire copy of Patent Owner’s Mandatory Notices, was served via electronic
`mail
`to
`the attorneys
`listed below at PerkinsService-Nintendo-Ancora-
`IPR@perkinscoie.com:
`
`
`LEAD COUNSEL
`Jerry A. Riedinger
`Reg. No. 30,582
`riedinger-ptab@perkinscoie.com
`Perkins Coie LLP
`
`
`
`
`
`
`BACK-UP COUNSEL
`Jose Villarreal, Reg. No. 43,969
`villarreal-ptab@perkinscoie.com
`Perkins Coie LLP
`
`Kyle Canavera, Reg. No. 72,167
`canavera-ptab@perkinscoie.com
`Perkins Coie LLP
`
`
`Theresa H. Nguyen
`(to be admitted pro hac vice)
`nguyen-ptab@perkinscoie.com
`Perkins Coie LLP
`
`Tara Kurtis, Reg. No. 74,846
`kurtis-ptab@perkinscoie.com
`Perkins Coie LLP
`
`
`
`Respectfully submitted,
`
`
`
` /Marc Lorelli/
`Marc Lorelli (Reg. No. 43,759)
`John P. Rondini (Reg. No. 64,949)
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`(248) 358-4400
`
`Attorneys for Patent Owner
`
`4
`
`

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