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Filed on behalf of Nalco Company
`
`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.
`
`NALCO COMPANY
`
`Patent Owner.
`
`____________
`
`Case IPR2016-01281
`Patent 8,465,623
`
`____________
`
`MANDATORY NOTICES PURSUANT
`TO 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`

`
`Nalco Company (“Nalco”) hereby files its Mandatory Notices pursuant to 37
`
`C.F.R. § 42.8(a)(2).
`
`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.
`
`It is noted that an assignment of U.S. Patent No. 8,465,623 from the stated
`
`patent owner, Nalco Company, to Ecolab USA Inc. will be recorded at the USPTO
`
`in the near future. Patent Owner requests a change of caption in the present
`
`proceeding to reflect that Ecolab USA Inc. is the current patent owner of the ’623
`
`patent, and will seek update of the caption in the below-referenced related matter
`
`to reflect this change of parties as well. Upon completion of that substitution,
`
`Patent Owner will update its Mandatory Notices to update the case citation
`
`accordingly.
`
`Additionally, Nalco Company LLC represents a name change of Nalco
`
`Company occurring after transfer of the ‘623 Patent to Ecolab USA Inc. Nalco
`
`Company LLC should also be a real party in interest in the present proceeding.
`
`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).
`
`2
`
`
`
`

`
`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
`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
`
`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.
`
`3
`
`

`
`V.
`
`Power of Attorney
`
`A Power of Attorney from Ecolab USA Inc. to the above-listed counsel is
`
`being filed concurrently herewith.
`
`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
`Nalco Company
`
`Date: July 26, 2016
`
`4
`
`

`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that “PATENT OWNER’S
`
`MANDATORY NOTICES,” “PATENT OWNER’S POWER OF ATTORNEY”
`
`and “CERTIFICATION OF SERVICE” for the above-captioned matter were
`
`served in their entirety on July 26, 2016, 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 26, 2016
`
`
`
`
`(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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