throbber
Paper 5
`Date: October 16, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`REFLECTIX, INC.
`Petitioner
`
`v.
`
`PROMETHEAN INSULATION TECHNOLOGY LLC
`Patent Owner
`
`
`
`Case IPR2015–01982
`Patent 8,936,847
`
`
`
`PROMETHEAN INSULATION TECHNOLOGY LLC’S
`MANDATORY NOTICES
`
`
`
`
`
`
`

`
`Promethean Insulation’s Mandatory Notices
`
`IPR2015–01982 (8,936,847)
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), patent owner hereby files the following
`mandatory notices.
`I.
`37 C.F.R. § 42.8(b)(1)—Real Party in Interest
`The real party in interest is:
`
`Promethean Insulation Technology LLC
`2400 Dallas Parkway, Suite 200
`Plano, Texas 75093
`Promethean Insulation Technology LLC is a wholly owned subsidiary of Acacia
`Research Group LLC, which in turn is a subsidiary of Acacia Research Corp., a
`publicly traded company.
`II.
`37 C.F.R. § 42.8(b)(2)—Related Matters
`Other judicial or administrative matters that would likely affect, or be affected
`by, a decision in this proceeding include the following litigation matters in the
`Eastern District of Texas: Promethean Insulation Tech. LLC v.
`
`Case No.
`2:15-cv-00029
`
`Filed
`Jan. 20, 2015
`
`2:15-cv-00028
`2:14-cv-00004
`
`Jan. 20, 2015
`Jan. 7, 2014
`
`Defendant(s)
`Soprema, Inc. (Canada), Soprema, Inc.
`(United States) and Soprema U.S.A., Inc.
`Reflectix, Inc.
`Soprema, Inc. (Canada), Soprema, Inc.
`(United States) and Soprema U.S.A., Inc.
`Energy Q LLC
`Insulation Solutions, Inc.
`TVM Building Products Inc.
`Reach Barrier LLC, The Home Depot USA,
`Inc., The Home Depot, Inc.
`Sealed Air Corp., Reflectix, Inc., The Home
`Depot, Inc. and Home Depot U.S.A., Inc.
`Additionally, the subject matter patent in the petition has the following descendant
`
`2:13-cv-01126 Dec. 23, 2013
`2:13-cv-01128 Dec. 23, 2013
`2:13-cv-01124 Dec. 20, 2013
`2:13-cv-01116 Dec. 19, 2013
`
`2:13-cv-01113 Dec. 18, 2013
`
`
`
`Page 2
`
`

`
`Promethean Insulation’s Mandatory Notices
`
`IPR2015–01982 (8,936,847)
`
`application currently pending:
`
`U.S. Patent Application No. 14/818,505 (filed Aug. 05, 2015)
`Finally, the subject matter patent in this petition has the following non-instituted
`IPRs concerning related patents: Reflectix, Inc. v. Promethean Insulation Tech. LLC,
`
`No. IPR2015-00039 (filed Oct. 10, 2014) (U.S. Patent No. 7,935,410)
`No. IPR2015-00042 (filed Oct. 10, 2014) (U.S. Patent No. 7,935,411)
`No. IPR2015-00044 (filed Oct. 10, 2014) (U.S. Patent No. 8,327,601)
`No. IPR2015-00045 (filed Oct. 10, 2014) (U.S. Patent No. 8,343,614)
`No. IPR2015-00047 (filed Oct. 10, 2014) (U.S. Patent No. 8,221,871)
`Each IPR has a pending request by petitioner for rehearing of non-institution
`decision.
`III. 37 C.F.R. § 42.8(b)(3)—Lead and Backup Counsel
`Lead and backup counsel are as shown:
`
`
`
`Lead Counsel
`Joshua S. Wyde
`(Reg. No. 57,698)
`jwyde@wydelegal.com
`The Law Office of Joshua S Wyde
`3740 Greenbriar St. #980609
`Houston, TX 77098–0609
`Telephone: (713) 482–1916
`Facsimile: (713) 466–6563
`
`Back-Up Counsel
`Shaukat Karjeker
`(Reg. No. 34,049)
`skarjeker@cclaw.com
`Carstens & Cahoon, LLP
`13760 Noel Road, Suite 900
`Dallas, TX 75240
`Telephone: (972) 367–2001
`Facsimile: (972) 367–2002
`
`
`IV. 37 C.F.R. § 42.8(b)(4)—Service Information
`Service information is the same as shown above. Patent owner consents to
`electronic service.
`
`
`
`Page 3
`
`

`
`Promethean Insulation’s Mandatory Notices
`
`IPR2015–01982 (8,936,847)
`
`Dated: October 16, 2015
`
`
`
`Respectfully submitted,
` /Joshua S. Wyde/
`Joshua S. Wyde (Reg. No. 57,698)
`The Law Office of Joshua S Wyde
`3740 Greenbriar St. #980609
`Houston, TX 77098–0609
`jwyde@wydelegal.com
`Tel: (713) 482–1916
`Fax: (713) 466–6563
`Counsel for Patent Owner,
`PROMETHEAN INSULATION
`TECHNOLOGY LLC
`
`
`
`
`Page 4
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on the sixteenth day of October, 2015, a
`complete and entire copy of the foregoing “PROMETHEAN INSULATION
`TECHNOLOGY LLC’S MANDATORY NOTICES,” was served on the petitioner
`at the electronic correspondence addresses shown below.
`
`
`Nathan J. Rees, Lead Counsel (Reg. No. 63,820)
` nate.rees@nortonrosefulbright.com
` Phone: (214) 855–7164
`Wayne Livingstone, Backup Counsel (Reg. No. 60,988)
` wayne.livingstone@nortonrosefulbright.com
` Phone: (214) 855–8386
`Fulbright & Jaworski LLP
`2200 Ross Avenue, Suite 2800
`Dallas, TX 75201
`Fax: 214.855.8200
`
`
`
`
`
`
`
`Dated: October 16, 2015
`
`
`
` /Joshua S. Wyde/
`Joshua S. Wyde (Reg. No. 57,698)
`The Law Office of Joshua S Wyde
`3740 Greenbriar St. #980609
`Houston, TX 77098–0609
`jwyde@wydelegal.com
`Tel: (713) 482–1916
`Fax: (713) 466–6563
`Counsel for Patent Owner,
`PROMETHEAN INSULATION
`TECHNOLOGY LLC

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