Paper No. ______
`Date Filed: July 13, 2017
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`Filed on behalf of: QMax Industries, LLC (Patent Owner)
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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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`CONTROLS SOUTHEAST INC.,
`Petitioner
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`v.
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`QMAX INDUSTRIES, LLC
`Patent Owner
`____________
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`Case No. IPR2017-00976
`Patent No. 8,469,082 B2
`____________
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`CORRECTED MANDATORY NOTICES OF PATENT OWNER
`QMAX INDUSTRIES, LLC
`____________
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`Filed: July 13, 2017
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`Date Filed: July 13, 2017
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`Filed on behalf of: QMax Industries, LLC (Patent Owner)
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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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`CONTROLS SOUTHEAST INC.,
`Petitioner
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`v.
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`QMAX INDUSTRIES, LLC
`Patent Owner
`____________
`
`Case No. IPR2017-00976
`Patent No. 8,469,082 B2
`____________
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`CORRECTED MANDATORY NOTICES OF PATENT OWNER
`QMAX INDUSTRIES, LLC
`____________
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`Filed: July 13, 2017
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`On March 27, 2017, pursuant to 37 CFR § 42.8, patent owner QMax
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`Industries, LLC (“QMax”) submitted mandatory notices.
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`In a teleconference yesterday, counsel for the Petitioner was kind enough to
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`bring to the undersigned’s attention that these mandatory notices did not include
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`mention of pending patent applications. The undersigned apologizes profusely for
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`this error, and now submits these corrected mandatory notices to remedy this.
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`The undersigned notes, in this regard, that there was no deceptive intent
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`behind the previous omission of pending patent applications. The undersigned is
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`new to trial practice, and failed to appreciate that “[a]dministrative matters include
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`every application and patent claiming, or which may claim, the benefit of the
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`priority of the filing date of the party’s involved patent or application as well as
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`any ex parte and inter partes reexaminations for an involved patent.” Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012).
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`The undersigned again thanks Petitioner’s counsel for bringing this issue to
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`the undersigned’s attention, and submits these corrected mandatory notices.
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`Real Party-In-Interest (37 CFR § 42.8(b)(1))
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`QMax Industries, LLC, a limited liability company organized and existing
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`under the laws of the State of North Carolina and having its place of business at
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`10615 Texland Boulevard, Suite 400, Charlotte, North Carolina, is the real party in
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`interest. Rights in the patent were previously assigned to 3IP, LLC, a limited
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`liability company organized and existing under the laws of the State of North
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`Carolina. An assignment from inventor Thomas William Perry (“Perry”) to 3IP,
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`LLC was recorded with the U.S. Patent and Trademark Office at reel/frame
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`028237/0728. 3IP, LLC was merged into QMax Industries, LLC effective June 19,
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`2013. The articles of merger merging 3IP, LLC into QMax Industries, LLC were
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`recorded at the U.S. Patent and Trademark Office at reel/frame 030672/0073.
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`Related Matters (37 CFR § 42.8(b)(2))
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`QMax is a defendant and counterclaimant in an action involving the patent
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`that was brought by the petitioner in the United States District Court for the
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`Western District of North Carolina, which has been assigned Case No. 3:16-cv-
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`00230-FDW-DSC and has been assigned the caption “Controls Southeast, Inc. v.
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`QMax Industries, Inc.” The petitioner also filed a petition for inter partes review
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`of U.S. Patent No. 8,662,156, which also is owned by QMax. This related inter
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`partes review has been assigned case no. IPR2017-00977.
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`Additionally, the following U.S. patent properties share commonality of
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`disclosure and priority with U.S. Patent No. 8,469,082:
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`• U.S. Patent No. 8,662,156
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`• U.S. Patent No. 8,899,310
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`• U.S. Patent App. No. 14/556,057 (Pending)
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`• U.S. Patent App. No. 15/484,109 (Pending)
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`• U.S. Patent App. No. 15/484,111 (Pending)
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`• U.S. Patent App. No. 15/484,112 (Pending)
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`• U.S. Patent App. No. 15/484,115 (Pending)
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`• U.S. Patent App. No. 15/484,117 (Pending)
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`• U.S. Patent App. No. 15/484,120 (Pending)
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`• U.S. Patent App. No. 15/484,123 (Pending)
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`Although they may not affect or be affected by this proceeding, in the
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`interest of full disclosure, Patent Owner notes that the following patent properties
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`also share commonality of disclosure and priority with U.S. Patent No. 8,469,082:
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`• Patent Cooperation Treaty Patent Application
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`PCT/US2009/066904 (expired)
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`• Brazilian Patent Application Pl0922270-7 (abandoned)
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`• European Patent Application No. 09831257.2 (abandoned)
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`• Canadian Patent Application No. 2,745,879 (abandoned after
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`allowance – reinstatement available)
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`• Australian Patent Application No. 2009322122 (abandoned)
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`4
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`Lead and Back-Up Counsel (37 CFR § 42.8(b)(3))
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`QMax designates the following lead and back-up counsel:
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`LEAD COUNSEL
`
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`Chad. D. Tillman
`Reg. No. 38,634
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`Tillman Wright, PLLC
`11325 N. Community House Rd.
`Suite 250
`Charlotte, NC 28277
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`Tel.: 704-248-6292
`Fax: 877-248-5100
`Email: chad@ti-law.com
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`BACK-UP COUNSEL
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`Jeremy C. Doerre
`Reg. No. 62,146
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`Tillman Wright, PLLC
`11325 N. Community House Rd.
`Suite 250
`Charlotte, NC 28277
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`Tel.: 704-248-4883
`Fax: 877-248-5100
`Email: jdoerre@ti-law.com
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`As both lead and back-up counsel are already counsel of record in the
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`subject patent, pursuant to 37 CFR § 42.10(b) which sets forth that “the patent
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`owner should not file an additional power of attorney if the designated counsel is
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`already counsel of record in the subject patent or application,” a power of attorney
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`is not being filed at this time.
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`Service Information (37 CFR § 42.8(b)(4))
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`QMax consents to electronic service using the following email address:
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`uspto@tillmanwright.com
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`QMax additionally provides the following contact information for this
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`matter:
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`Postal Mailing Address
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`Tillman Wright, PLLC
`PO Box 49309
`Charlotte, NC 28277
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`Hand-Delivery Address
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`Tillman Wright, PLLC
`11325 N. Community House Rd.
`Suite 250
`Charlotte, NC 28277
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`Telephone Number
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`Jeremy C. Doerre
`704-248-4883
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`Fax Number
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`877-248-5100
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`Any questions concerning this paper or this matter may be directed to the
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`undersigned counsel.
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`Respectfully submitted,
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`/Jeremy C. Doerre/
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`Jeremy C. Doerre
`Reg. No. 62,146
`Counsel for Patent Owner
`Tillman Wright, PLLC
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`jdoerre@ti-law.com
`704-248-4883
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`7
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing document entitled “Corrected
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`Mandatory Notices of Patent Owner QMax Industries, LLC” was served to
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`petitioner by causing it to be sent by email on July 13, 2017 to counsel for the
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`petitioner at the following email addresses:
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`Benjamin E. Leace
`Lead Counsel for Petitioner
`beleace@ratnerprestia.com
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`Andrew J. Koopman
`Counsel for Petitioner
`akoopman@ratnerprestia.com
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`Christopher H. Blaszkowski
`Counsel for Petitioner
`cblaszkowski@ratnerprestia.com
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`Dated: July 13, 2017
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`Respectfully submitted,
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`/Jeremy C. Doerre/
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`Jeremy C. Doerre
`Reg. No. 62,146
`Counsel for Patent Owner
`Tillman Wright, PLLC
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`jdoerre@ti-law.com
`704-248-4883
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