`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FEDERAL RESERVE BANK OF ATLANTA, FEDERAL RESERVE BANK OF
`BOSTON, FEDERAL RESERVE BANK OF CHICAGO, FEDERAL RESERVE
`BANK OF CLEVELAND, FEDERAL RESERVE BANK OF DALLAS,
`FEDERAL RESERVE BANK OF KANSAS CITY, FEDERAL RESERVE BANK
`OF MINNEAPOLIS, FEDERAL RESERVE BANK OF NEW YORK, FEDERAL
`RESERVE BANK OF PHILADELPHIA, FEDERAL RESERVE BANK OF
`RICHMOND, FEDERAL RESERVE BANK OF SAN FRANCISCO,
`and FEDERAL RESERVE BANK OF ST. LOUIS,
`
`Petitioners,
`
`v.
`
`BOZEMAN FINANCIAL LLC,
`
`Patent Owner.
`
`
`
`Case No.: CBM2017-00036
`U.S. Patent No. 8,768,840
`
`
`
`
`PETITIONERS’ FIRST SUPPLEMENTAL MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
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`
`I. MANDATORY NOTICES
`
`A. Real Parties-in-Interest
`
`
`
`The following parties are Real Parties-in-Interest to Petitioners’ CBM
`
`Petition:
`
`•
`Federal Reserve Bank of Atlanta
`•
`Federal Reserve Bank of Boston
`•
`Federal Reserve Bank of Chicago
`•
`Federal Reserve Bank of Cleveland
`•
`Federal Reserve Bank of Dallas
`•
`Federal Reserve Bank of Kansas City
`•
`Federal Reserve Bank of Minneapolis
`•
`Federal Reserve Bank of New York
`•
`Federal Reserve Bank of Philadelphia
`•
`Federal Reserve Bank of Richmond
`•
`Federal Reserve Bank of St. Louis
`•
`Federal Reserve Bank of San Francisco
`B. Related Matters
`
`On January 31, 2017, Petitioners concurrently filed a petition for CBM
`
`review of a related patent, U.S. Patent No. 6,754,640 (“the ‘640 Patent,” Ex. 1006),
`
`similarly entitled Universal Positive Pay Match, Authentication, Authorization,
`
`Settlement and Clearing System. That petition has been accorded case number
`
`CBM2017-00035. The patent at issue in this proceeding, U.S. Patent No.
`
`8,768,840 (“the ‘840 Patent”) claims priority to the ‘640 Patent through a string of
`
`
`
`
`
`
`
`
`applications. Specifically, the ‘840 Patent is a continuation of Application No.
`
`12/893,837 (abandoned), which is a divisional of Application No. 10/871,006
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`(abandoned), which is a continuation-in-part of the ‘640 Patent.
`
`On February 1, 2017, Petitioners filed a complaint against Patent Owner in
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`the United States District Court for the Northern District of Georgia seeking a
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`declaratory judgment that Petitioners have not infringed and are not infringing the
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`‘640 Patent and the ‘840 Patent. The case is styled Federal Reserve Bank of
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`Atlanta, Federal Reserve Bank of Boston, Federal Reserve Bank of Chicago,
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`Federal Reserve Bank of Cleveland, Federal Reserve Bank of Dallas, Federal
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`Reserve Bank of Kansas City, Federal Reserve Bank of Minneapolis, Federal
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`Reserve Bank of New York, Federal Reserve Bank of Philadelphia, Federal
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`Reserve Bank of Richmond, Federal Reserve Bank of San Francisco, and Federal
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`Reserve Bank of St. Louis v. Bozeman Financial LLC, Case No. 1:17-CV-00389-
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`AT (N.D. Ga.) (the “Georgia Action”). The Georgia Action has been stayed at the
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`request of Bozeman Financial LLC with the consent of the plaintiffs pending
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`completion of the related CBM proceedings.
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`C. Counsel and Service Information
`
`Petitioners identify the following lead and backup counsel:
`
`LEAD COUNSEL
`
`BACKUP COUNSEL
`
`Natasha H. Moffitt
`Reg. No. 53,340
`
`Holmes J. Hawkins III
`Reg. No. 38,913
`
`2
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`
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`
`
`KING & SPALDING LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-2783
`Fax: (404) 572-5134
`nmoffitt@kslaw.com
`
`KING & SPALDING LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-2888
`Fax: (404) 572-5134
`hhawkins@kslaw.com
`
`Abby L. Parsons
`Reg. No. 61,473
`KING & SPALDING LLP
`1000 Louisiana Street
`Suite 4000
`Houston, TX 77002
`Tel.: (713) 751-3294
`Fax: (713) 751-3290
`aparsons@kslaw.com
`
`Petitioners consent
`
`to electronic
`
`service at nmoffitt@kslaw.com,
`
`hhawkins@kslaw.com, aparsons@kslaw.com, and ATLIPdocketing@kslaw.com.
`
`Respectfully submitted, this 11th day of May, 2017.
`
`
`
`
`
`/Natasha H. Moffitt #53,340/
`Natasha H. Moffitt
` Reg. No. 53,340
`Holmes J. Hawkins III
` Reg. No. 38,913
`KING & SPALDING LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`Tel.: (404) 572-4600
`Fax: (404) 572-5134
`nmoffitt@kslaw.com
`hhawkins@kslaw.com
`
`
`3
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`
`
`Abby L. Parsons
` Reg. No. 61,473
`KING & SPALDING LLP
`1000 Louisiana Street
`Suite 4000
`Houston, TX 77002
`Tel.: (713) 751-3294
`Fax: (713) 751-3290
`aparsons@kslaw.com
`
`
`
`4
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`
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on this 11th day of May, 2017, a true and
`
`correct copy of the foregoing PETITIONERS’ FIRST SUPPLEMENTAL
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 was served by UPS
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`NEXT DAY AIR on the attorneys of record for Patent Owner at the following
`
`addresses:
`
`John W. Goldschmidt, Jr.
`FERENCE & ASSOCIATES LLC
`409 Broad Street
`Pittsburgh, Pennsylvania 15143
`
`Thomas J. Maiorino
`Maiorino Law Group LLC
`224 Amberfield Drive
`Mt. Laurel, New Jersey 08054
`
`This 11th day of May, 2017.
`
`
`/Natasha H. Moffitt #53,340/
`Natasha H. Moffitt
`
`Reg. No. 53,340
`
`KING & SPALDING LLP
`1180 Peachtree Street, NE
`Atlanta, GA 30309
`
`Tel.: (404) 572-4600
`
`Fax: (404) 572-5134
`Email: nmoffitt@kslaw.com
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