UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`QOMO HITEVISION, LLC,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`Inter Partes Review Proceeding No. IPR2016-00661
`U.S. Patent No. 8,508,751
`
`
`
`PATENT OWNER’S NOTICE PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`QOMO HITEVISION, LLC,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`Inter Partes Review Proceeding No. IPR2016-00661
`U.S. Patent No. 8,508,751
`
`
`
`PATENT OWNER’S NOTICE PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`
`
`CASE NO. IPR2016-00661
`
`I.
`
`Real Party-in-interest
`
`The real party in interest for the Patent Owner is Pathway Innovations and
`
`Technologies, Inc. (“Pathway” or “Patent Owner”) having its principal place of
`
`business at 10211 Pacific Mesa Blvd., Suite 412, San Diego, CA 92121.
`
`II. Related Matters
`
`
`
`The present inter partes review proceeding is related to the following
`
`judicial or administrative matters:
`
`
`
`In the Matter of Certain Document Cameras and Software for Use
`
`Therewith, Investigation No. 337-TA-967, in the United States International Trade
`
`Commission (“the ‘967 Investigation”). The Commission instituted this
`
`investigation on September 24, 2015, based on a complaint filed by Patent Owner
`
`against Respondents: QOMO Hitevision, LLC (“QOMO”); Recordex USA, Inc.
`
`(“Recordex”); and Adesso, Inc. (“Adesso”). 80 Fed. Reg. 57642 (Sept. 24, 2015).
`
`The complaint alleges violations of 19 U.S.C. § 1337 in the sale for importation,
`
`importation, or sale within the United States after importation of certain document
`
`cameras and software for use therewith by reason of infringement of United States
`
`Design Patent No. D647,906; United States Design Patent No. D647,389; United
`
`States Design Patent No. D715,300; and United States Patent No. 8,508,751 (“the
`
`‘751 patent”). See id.
`
`Page 1
`
`
`
`o
`
`o
`
`o
`
`CASE NO. IPR2016-00661
`
`QOMO was found to be in default. Order No. 10 (Dec. 7,
`
`2015). On December 17, 2015, therefore, Pathway filed a
`
`request for entry of a limited exclusion order and/or cease and
`
`desist order. The ITC has not yet entered a limited exclusion
`
`order and/or cease and desist order.
`
`Adesso was terminated based on a consent order stipulation and
`
`consent order. Order No. 5 (Nov. 23, 2015)
`
`Recordex entered into a confidential settlement agreement with
`
`Patent Owner effective April 4, 2016. On April 11, 2016,
`
`Patent Owner and Recordex jointly moved to terminate the
`
`Investigation as to Recordex based on the settlement agreement.
`
`On April 20, 2016, the ITC issued an Initial Determination
`
`granting the parties’ joint motion to terminate the Investigation
`
`as to Recordex. A Final Determination by the ITC terminating
`
`the investigation with respect to Recordex is expected in the
`
`near future.
`
`
`
`Pathway Innovations and Technologies, Inc. v. QOMO Hitevision,
`
`LLC, Case No. 3:15-cv-01540-JLS-JLB, in the United States District Court for the
`
`Southern District of California, filed July 13, 2015. ECF No. 1 (asserting
`
`infringement of the ‘751 patent). On October 23, 2015, the Court granted
`
`Page 2
`
`
`
`CASE NO. IPR2016-00661
`
`Defendant’s Motion for a Stay pending the outcome of the ‘967 ITC investigation.
`
`ECF No. 15 at 3 (“The parties SHALL FILE a joint status report within fourteen
`
`(14) days of the ITC’s entry of a limited exclusion order against Defendant in the
`
`‘967 Investigation or, if the ITC does not enter a limited exclusion order against
`
`Defendant, within fourteen (14) days of the ITC’s final decision in the ‘967
`
`Investigation.”)(emphasis in original).
`
`
`
` Pathway Innovations and Technologies, Inc. v. Adesso, Inc., Case
`
`No. 3:15-cv-01538-JLS-JLB, in the United States District Court for the Southern
`
`District of California, filed July 13, 2015. ECF No. 1. On April 5, 2016, the Court
`
`granted Defendant’s Motion for a Stay pending the outcome of the ‘967 ITC
`
`investigation as to Recordex. ECF No. 24 at 6 (“The parties SHALL FILE a joint
`
`status report within fourteen (14) days of the ITC’s final decision in the ‘967
`
`Investigation.”)(emphasis in original).
`
`
`
`Pathway Innovations and Technologies, Inc. v. Recordex USA, Inc.,
`
`Case No. 3:15-cv-01536-JLS-JLB, in the United States District Court for the
`
`Southern District of California, filed July 13, 2015. ECF No. 1. On April 8, 2016,
`
`the Court approved the Parties’ Joint Stipulation to Dismiss with Prejudice in view
`
`of the Parties’ settlement agreement.
`
`Page 3
`
`
`
`CASE NO. IPR2016-00661
`
`III. Lead and Backup Counsel
`
`Lead counsel is Trevor Q. Coddington, Ph.D., Esq. (PTO Registration No.
`
`46,633) of San Diego IP Law Group LLP, 12526 High Bluff Drive, Suite 300, San
`
`Diego, CA 92130.
`
`Backup counsel are James V. Fazio, III (California Bar No. 183,353) and
`
`David M. Beckwith (PTO Registration No. 73,041) of San Diego IP Law Group
`
`LLP, 12526 High Bluff Drive, Suite 300, San Diego, CA 92130.
`
`IV. Service Information
`
`Patent Owner can be served via Counsel at:
`
`SAN DIEGO IP LAW GROUP LLP
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`trevorcoddington@sandiegoiplaw.com
`jamesfazio@sandiegoiplaw.com
`davidbeckwith@sandiegoiplaw.com
`(858) 792-3446 Telephone
`(858) 408-4422 Facsimile
`
`Respectfully submitted,
`SAN DIEGO IP LAW GROUP LLP
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: May 8, 2016
`
`
`
`SAN DIEGO IP LAW GROUP LLP
`12526 High Bluff Drive, Suite 300
`San Diego, Ca 92130
`
`/Trevor Coddington/
`Trevor Coddington
`Registration No. 46,633
`
`Page 4
`
`
`
`CASE NO. IPR2016-00661
`
`
`Counsel for Patent Owner,
`Pathway Innovations and Technologies, Inc.
`
`
`
`
`Page 5
`
`
`
`
`
`CERTIFICATE
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
`
`NOTICE PURSUANT TO 37 C.F.R. § 42.8 was served electronically via email on May
`
`6, 2016, in its entirety on the following:
`
`Lei Mei (mei@meimark.com)
`Laurence Sandell (lsandell@meimark.com)
`MEI & MARK LLP
`P.O. Box 65981
`Washington, DC 20035
`
`
`
`
`
`
`
`Respectfully submitted,
`SAN DIEGO IP LAW GROUP LLP
`
`
`
`
`
`
`
`
`
`
`
`/Trevor Coddington/
`Trevor Coddington
`Registration No. 46,633
`
`Date: May 5, 2016
`
`
`
`SAN DIEGO IP LAW GROUP LLP
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`
`Counsel for Patent Owner,
`Pathway Innovations and Technologies, Inc.
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