`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`SanDisk LLC
`Petitioner
`
`v.
`
`Memory Technologies, LLC
`Patent Owner
`__________
`
`Case IPR2017-01022
`Patent No. RE45,542
`__________
`
`MEMORY TECHNOLOGIES, LLC’S MANDATORY NOTICES
`PURSUANT TO C.F.R. §42.8(a)(2)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Patent Owner Memory Technologies, LLC, hereby files its Mandatory
`
`Notices for the above-captioned proceeding.
`
`I.
`
`37 C.F.R § 42.8(b)(1) – REAL PARTY-IN-INTEREST
`
`The real parties-in-interest are Memory Technologies, LLC and Pendrell
`
`Corporation.
`
`II.
`
`37 C.F.R § 42.8(b)(2) – RELATED MATTERS
`
`Patent Owner notes the following proceedings that may affect or be affected
`
`by a decision in this proceeding:
`
`A.
`
`Proceedings Before the USPTO Involving Related Patents
`
`Petitioner SanDisk has filed five concurrent IPR petitions against patents
`
`owned by Memory Technologies. The patents at issue in each of these concurrent
`
`proceedings are unrelated except by their common assignment to Memory
`
`Technologies and by having been asserted in lawsuits involving Memory
`
`Technologies and Petitioner. In addition to the current matter, these matters include
`
`the following case numbers and patents:
`
`Patent No.
`7,827,370
`7,739,487
`7,565,469
`7,275,186
`
`Case No.
`IPR2017-00868
`IPR2017-00978
`IPR2017-00979
`IPR2017-01069
`
`Petitioner
`SanDisk LLC
`SanDisk LLC
`SanDisk LLC
`SanDisk LLC
`
`B.
`
`Litigations Involving the Involved Patent
`
`The involved patent is at issue in the following actions:
`
`
`
`1
`
`
`
` Memory Technologies, LLC v. SanDisk LLC, et al., No. 8:16-cv-02163
`
`(Dec. 6, 2016 C.D. Cal.); and
`
` Certain Flash Memory Devices and Components Thereof, Inv. No. 337-
`
`TA-1034 (Dec. 6, 2016 USITC).
`
`III. 37 C.F.R § 42.8(b)(3) – LEAD AND BACKUP COUNSEL
`
`The lead counsel for Memory Technologies, LLC is:
`
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`The backup counsel for Memory Technologies, LLC are:
`
`Nicholas T. Peters
`Reg. No. 53,456
`ntpete@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`Thomas F. Lebens
`Reg. No. 38,221
`tom@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`100 Cross Street, Suite 203A
`San Luis Obispo, CA 93401
`(805) 548-1800
`(805) 980-3483 (fax)
`
`2
`
`
`
`Paul B. Henkelmann
`Reg. No. 65,891
`phenkelmann@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`IV. 37 C.F.R § 42.8(b)(4) – SERVICE INFORMATION
`
`Please address all correspondence to the lead and backup counsel as shown
`
`above. Patent Owner
`
`consents
`
`to
`
`electronic
`
`service by
`
`
`at
`
`Respectfully submitted,
`FITCH, EVEN, TABIN & FLANNERY LLP
`By: /Timothy P. Maloney/
`
`
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`
`MTL-IPR@fitcheven.com.
`
`Dated: March 22, 2017
`
`120 South LaSalle Street
`Suite 1600
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies in accordance with 37 C.F.R. § 42.6(e) that on
`
`March 22, 2017, a copy of the foregoing Memory Technologies, LLC’s Mandatory
`
`Notices Pursuant to C.F.R. §42.8(a)(2) was served on Petitioners at the following
`
`email addresses:
`
`Eliot D. Williams, eliot.williams@bakerbotts.com
`Brian Oaks, brian.oaks@bakerbotts.com
`David Wu, david.wu@bakerbotts.com
`
`By: /Timothy P. Maloney/
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`
`
`
`
`
`Dated: March 22, 2017
`
`120 South LaSalle Street
`Suite 1600
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`4
`
`
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