throbber
Filed on behalf of Patent Owner
`
`By: Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Tel:
`(612) 371-5208
`Fax: (612) 332-9081
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SOLENIS LLC
`
`Petitioner,
`
`v.
`
`ECOLAB USA INC.
`
`Patent Owner.
`
`____________
`
`Case IPR2016-01281
`Patent 8,465,623
`____________
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`

`

`Nalco Company, LLC (“Nalco”) and Ecolab USA Inc. (“Ecolab”) hereby
`
`file updated Mandatory Notices pursuant to 37 C.F.R. § 42.8(a)(2), to reflect that
`
`(1) the original proceeding, Nalco Company v. Solenis LLC, No. 1:15-cv-08913,
`
`was dismissed and (2) Ecolab and Nalco filed a new proceeding, Nalco Company
`
`LLC and Ecolab USA Inc. v. Solenis LLC, No. 1:16-cv-08897.
`
`I.
`
`37 C.F.R. § 42.8(b)(1) – Real Party in Interest
`
`The Real Parties in Interest for Patent Owner are: Ecolab USA Inc. and
`
`Nalco Company LLC.
`
`II.
`
` 37 C.F.R. § 42.8(b)(2) – Related Matter
`
`Nalco Company v. Solenis LLC, No. 1:15-cv-08913 (N.D. IL 2015) was
`
`dismissed for lack of standing on January 4, 2017. A patent infringement lawsuit
`
`was filed in the Northern District of Illinois on September 14, 2016, Nalco
`
`Company LLC and Ecolab USA Inc. v. Solenis LLC, No. 1:16-cv-08897. This
`
`litigation is currently stayed pending the resolution of the IPR proceedings
`
`(IPR2016-01281 & IPR2016-01282).
`
`III. 37 C.F.R. § 42.8(b)(3) – Lead and Back Up Counsel
`
`Lead Counsel:
`
`
`Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5208
`
`2
`
`

`

`
`
`
`
`Fax: (612) 332-9081
`Email: tzeuli@merchantgould.com
`
`
`Back Up Counsel:
`
`Andrew J. Lagatta, Reg. No. 62,529
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5383
`Fax: (612) 332-9081
`
`Email: alagatta@merchantgould.com
`
`Anneliese Mayer, Reg. No. 54,434
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5339
`Fax: (612) 332-9081
`Email: amayer@merchantgould.com
`
`Rachel Zimmerman Scobie, Pro Hac Vice
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 336-4667
`Fax: (612) 332-9081
`Email: rscobie@merchantgould.com
`
`Corey R. Anthony, Reg. No. 65,292
`NALCO Water/An Ecolab Company
`1601 W. Diehl Road
`Naperville, IL 60563
`Telephone: (630) 305-2581
`Email: corey.anthony@ecolab.com
`
`
`3
`
`

`

`IV. 37 C.F.R. § 42.8(b)(4) – Service Information
`
`Please address all correspondence to the lead counsel and back up counsel as
`
`shown above. The Patent Owner consents to electronic service by email at the
`
`email addresses shown above and NalcoIPR@merchantgould.com.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`owed by Patent Owner and associated with this inter partes review to its Deposit
`
`Account 13-2725.
`
`Respectfully submitted,
`
`MERCHANT & GOULD P.C.
`
`
`
`/Anthony R. Zeuli/
`Anthony R. Zeuli, Reg. No. 45,255
`
`Attorney for Patent Owner
`
`
`
`
`Date: July 19, 2017
`
`4
`
`

`

`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “PATENT OWNER’S UPDATED
`
`MANDATORY NOTICES” and “CERTIFICATION OF SERVICE” for the
`
`above-captioned matter were served in their entirety on July 19, 2017, upon the
`
`following parties via e-mail at the below email addresses:
`
`Lead Counsel
`Michael P. Chu (Reg. No. 37,112)
`McDermott Will & Emery LLP
`227 W. Monroe Street
`Chicago, Illinois 60606
`Telephone: 312-984-5485
`Facsimile: 312-984-7700
`mchu@mwe.com
`
`
`Date: July 19, 2017
`
`
`
`(Trial No. IPR2016-01281)
`
`Backup Counsel
`Kevin P. Shortsle (Reg. No. 58,084)
`McDermott Will & Emery LLP
`227 W. Monroe Street
`Chicago, Illinois 60606
`Telephone: 312-984-3361
`Facsimile: 312-984-7700
`kshortsle@mwe.com
`
`Respectfully submitted,
`
`MERCHANT & GOULD P.C.
`
`
`
`
`
`/Anthony R. Zeuli/
`Anthony R. Zeuli, Reg. No. 45,255
`Merchant & Gould P.C.
`3200 IDS Center
`80 South 8th Street
`Minneapolis, MN 55402
`Telephone: (612) 371-5208
`Fax: (612) 332-9081
`Email: tzeuli@merchantgould.com
`NalcoIPR@merchantgould.com
`
`ATTORNEYS FOR PATENT OWNER
`
`5
`
`

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