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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
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`JIAWEI TECHNOLOGY (HK) LTD., JIAWEI TECHNOLOGY (USA)
`LTD., SHENZHEN JIAWEI PHOTOVOLTAIC LIGHTING CO., LTD.,
`ATICO INTERNATIONAL (ASIA) LTD., ATICO INTERNATIONAL
`USA, INC., CHIEN LUEN INDUSTRIES CO., LTD., INC.
`(SHIEN LUEN FLORIDA), CHIEN LUEN INDUSTRIES CO., LTD., INC.
`(SHIEN LUEN CHINA), COLEMAN CABLE, LLC, NATURE’S MARK,
`RITE AID CORP., SMART SOLAR, INC., AND
`TEST RITE PRODUCTS CORP.
`Petitioners
`
`v.
`
`SIMON NICHOLAS RICHMOND
`Patent Owner
`____________
`
`Case IPR2014-00936
`
`Patent 7,196,477
`
`____________
`
`MANDATORY NOTICES BY PATENT OWNER UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, Simon Nicholas
`
`Richmond, submits the following mandatory notices in connection with the above-
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`captioned Petition for Inter Partes Review of U.S. Patent No. 7,196,477 (the ‘477
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`patent).
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`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
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`The real party in interest in this proceeding is Simon Nicholas Richmond.
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`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
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`The table below identifies child or sibling patents of the ’477 patent which
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`may affect, or be affected by, a decision in this proceeding.
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`Patent Application No. Status
`U.S. Patent No. 7,429,827, issued on September 30,
`11/102,229
`2008
`ABANDONED, filed on September 29, 2008
`U.S. Patent No. 8,362,700, issued on January 29, 2013
`ABANDONED, filed on January 28, 2013
`PENDING, filed on November 18, 2013
`
`12/286,553
`12/978,358
`13/751,665
`14/082,797
`
`
`
`The table below identifies prior or concurrent inter partes reviews (and
`
`respective status thereof) involving the '477 patent or involving a parent, child, or
`
`sibling patent which may affect, or be affected by, a decision in this proceeding.
`
` Inter Partes Reviews
`
`Status
`
`
`
`2
`
`
`
`IPR2014-00937 for U.S. Patent No. 8,362,700 PENDING, filed June 11, 2014
`IPR2014-00938 for U.S. Patent No. 7,429,827 PENDING, filed June 11, 2014
`
`
`
`There are no prior or concurrent inter partes or ex parte reexaminations
`
`involving the '477 patent or involving a parent, child, or sibling patent which may
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`affect, or be affected by, a decision in this proceeding.
`
`
`
`The table below identifies prior or concurrent district court litigations (and
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`respective status thereof) involving the '477 patent or involving a parent, child, or
`
`sibling patent which may affect, or be affected by, a decision in this proceeding.
`
`District Court Litigation
`International Development Corporation
`v. Simon Nicholas Richmond and
`Adventive Ideas, LLC, Case No. 4:08-
`cv-111-RAS (E.D. Tex.)
`International Development Corporation
`v. Simon Nicholas Richmond and
`Adventive Ideas, LLC, Case No. 3:09-
`cv-02495-GEB (D.N.J.)
`Simon Nicholas Richmond v. Jiawei
`Technology (HK) Ltd., et al., Case Nos.
`3:13-cv-1944, -1949, -1950, -1951, -
`1952, -1953, -1954, -1957, -1958, -
`1960, -2916 (all MLC-DEA) (D.N.J.)
`
`Status
`DISMISSED WITHOUT
`PREJUDICE, refiled in D.N.J. as Case
`No. 3:09-cv-02495, see below.
`
`SETTLED, following a Markman
`Order favorable to the Patent Owner.
`
`PENDING, the Court consolidated
`these cases for case management and
`pretrial discovery on August 20, 2013
`into Civ. Action No. 13-1944 (MLC),
`along with another one of Richmond’s
`patent infringement case (Case No. 13-
`1959) that is not related to this inter
`partes review by Petitioners.
`
`
`
`
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`There are no prior or concurrent Federal Circuit appeals involving the '477
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`patent or involving a parent, child, or sibling patent which may affect, or be
`
`
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`3
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`
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`affected by, a decision in this proceeding.
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`
`
`LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(b)(3)
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`Lead Counsel:
`
` Theodore F. Shiells
`
` Reg. No. 31,569
`
` SHIELLS LAW FIRM, P.C.
`
`
`
`Back-Up Counsel:
`
` Marcus Benavides
`
` Reg. No. 58,289
`
` The Law Practice of Marcus Benavides
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`SERVICE INFORMATION UNDER 37 C.F.R. § 42.8(b)(4)
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`
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`Patent Owner consents to service via email at the addresses identified below.
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`Further, Patent owner may be served as follows:
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`Electronic Mail:
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`tfshiells@shiellslaw.com, admin@shiellslaw.com
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`Postal Mail:
`
`SHIELLS LAW FIRM, P.C.
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`
`
`
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`1201 Main Street, Suite 2470
`
`Dallas, Texas 75202
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`4
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` Hand Delivery: SHIELLS LAW FIRM, P.C.
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`
`
`
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`1201 Main Street, Suite 2470
`
`Dallas, Texas 75202
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` Telephone No.: 214-979-7312
`
` Facsimile No.:
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`214-979-7301
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`
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`Respectfully submitted,
`
`
`SHIELLS LAW FIRM P.C.
`
`______/Theodore F. Shiells/______________
`Theodore F. Shiells
`Reg. No. 31,569
`
`
`Dated: July 2, 2014
`
`SHIELLS LAW FIRM P.C.
`1201 Main Street – Suite 2470
`Dallas, Texas 75202
`Telephone: (214) 979-7312
`Fax: (214) 979-7301
`
`
`
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`
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`
`
`5
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`
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on July 2, 2014, a copy of the MANDATORY NOTICES BY
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`PATENT OWNER UNDER 37 C.F.R. § 42.8 was served on Lead and Backup
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`Attorneys for Petitioner, via the consented to method of email to the following
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`email addresses:
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`mark.nelson@dentons.com, lissi.mojica@dentons.com,
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`kevin.greenleaf@dentons.com, daniel.valenzuela@dentons.com, and
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`iptdocketchi@dentons.com.
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`Respectfully submitted,
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`Dated: July 2, 2014
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`______/Theodore F. Shiells/______________
`Theodore F. Shiells
`
`6
`
`
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