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`IPR2017-00694
`Updated Mandatory Notice
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ALBAAD MASSUOT YITZHAK, LTD. AND ALBAAD USA, INC.,
`Petitioner,
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`v.
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`EDGEWELL PERSONAL CARE BRANDS, LLC,
`Patent Owner.
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`Case IPR2017-00694
`Patent 6,432,075 B1
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`UPDATED MANDATORY NOTICE PURSUANT TO 37 C.F.R. § 42.8(b)(1)
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`IPR2017-00694
`Updated Mandatory Notice
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` Paper No. _______
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`Pursuant to 37 C.F.R.§ 42.8(b)(1), the exclusive licensee, Edgewell Personal
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`Care Brands, LLC (“Edgewell”), hereby submits this Updated Mandatory Notice
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`to supplement the “Real Party-In-Interest” requirement. The Updated Mandatory
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`Notice is in response to the Order issued on April 21, 2017 (Paper 8) by the Board
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`in the present proceeding, and based on advice received from Mr. Andrew Kellogg,
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`Supervisory Paralegal, in an e-mail communication dated April 26, 2017.
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`Edgewell concurrently submits Ex. 2001, which provides evidence that it
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`has the right and authority to participate in the present proceeding and to defend
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`U.S. Patent No. 6,432,075 (“the ’075 patent”). See Ex. 2001 (“Confirmation of
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`Exclusive Licensee Edgewell Personal Care Brands, LLC’s Authority to Conduct
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`Inter Partes Review”). In the Order (Paper 8 at 3), the Board stated that “the
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`record before us includes no evidence to support the assertion that Edgewell is an
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`exclusive licensee to the ‘075 patent, with a right to participate in this proceeding,
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`or that Edgewell is otherwise authorized to act on behalf of the owner of the ‘075
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`patent.” The Confirmation in Ex. 2001 provides the sought evidence.
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`As stated in the initial Mandatory Notice submitted on February 9, 2017,
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`Uni-Charm is the owner of the ‘075 patent by virtue of assignments that have been
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`duly and properly recorded with the U.S. Patent and Trademark Office on
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`November 8, 2000. However, Edgewell is the exclusive licensee with all
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`Page 1 of 5
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`IPR2017-00694
`Updated Mandatory Notice
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` Paper No. _______
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`substantial rights in the ‘075 patent, including the right to enforce and defend the
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`‘075 patent in the present inter partes review proceedings and in the parallel
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`proceeding for patent infringement that is pending in the United States District
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`Court for the District of Delaware (Case 1:15-cv-01188-RGA). Ex. 2001; see also
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`Ex. 2002, Plaintiff’s Second Amended Complaint, ¶¶ 41-42 (Sep. 6, 2016).
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`The Confirmation provides the evidence sought by the Board to “support the
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`assertion that Edgewell is an exclusive licensee to the ‘075 patent, with a right to
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`participate in this proceeding, or that Edgewell is otherwise authorized to act on
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`behalf of the owner of the ‘075 patent.” IPR2017-00694, Paper 8 at 3. In ZTE
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`(USA), Inc. v Elec. & Telecomm. Research Instit., the Board accepted a similar
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`confirmation document as sufficient evidence that the exclusive licensee had the
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`right to participate in the inter partes review on behalf of the patent owner.
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`IPR2015-00029, Paper 12 at 2, n. 1 (PTAB Mar. 20, 2015).
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`Thus, Edgewell is the effective “patentee” or “patent owner” having the
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`right to participate in the present inter partes review proceedings, including the
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`filing of the Patent Owner Preliminary Response. See also, e.g., Motorola Mobility
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`LLC v. Michael Arnouse, IPR2013-00010, Paper 27 at 3-4 (PTAB Apr. 5, 2013);
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`Id., Paper 30 at 6 (PTAB Apr. 19, 2013); Prima Tek II, L.L.C. v. A-Roo Co., 222
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`Page 2 of 5
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`IPR2017-00694
`Updated Mandatory Notice
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` Paper No. _______
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`F.3d 1372 (Fed. Cir. 2000) (holding that an exclusive licensee with all substantial
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`rights is deemed the effective “patentee”).
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`Date: April 28, 2017
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`Respectfully submitted,
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`By: /Daniel J. Burnham – Reg. No. 39,618/
`Daniel J. Burnham – Reg. No. 39,618
`Nixon Peabody LLP
`70 West Madison, Suite 3500
`Chicago, Illinois 60602
`Tel: 312-425-3900
`Counsel for Patent Owner
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`Page 3 of 5
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`IPR2017-00694
`Updated Mandatory Notice
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` Paper No. _______
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`EXHIBIT LIST
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`Exhibit No.
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`Description
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`2001
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`2002
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`Confirmation of Exclusive Licensee Edgewell
`Personal Care Brands, LLC’s Authority to Conduct
`Inter Partes Review
`Second Amended Complaint in Civil Action No. 1:15-
`cv-01188-RGA (D. Del.)
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`Page 4 of 5
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`IPR2017-00694
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`Updated Mandatory Notice
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`CERTIFICATE OF SERVICE
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` Paper No. _______
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
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`foregoing Updated Mandatory Notice Pursuant To 37 C.F.R. § 42.8(b)(1) was
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`served electronically via e-mail on April 28, 2017, to Counsel for Petitioner,
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`Albaad Massuot Yitzhak, LTD. and Albaad USA, Inc., at the following email
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`addresses:
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`1)
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`2)
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`dloewenstein@pearlcohen.com; and
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`gyonay@pearlcohen.com.
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`By: /Daniel J. Burnham/
`Counsel for Patent Owner
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`Page 5 of 5
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