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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`PARROT S.A., PARROT DRONES S.A.S., and PARROT INC.,
`Petitioners
`v.
`QFO LABS, INC.,
`Patent Owner.
`___________________
`
`Case IPR2017-01400
`Patent 9,645,580
`
`
`PATENT OWNER’S UPDATED NOTICE,
`PROVIDED UNDER 37 C.F.R. §42.8(a)(3) and §42.8(b)(2),
`REGARDING RELATED MATTERS
`
`
`
`Mail Stop: Patent Board
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), the Patent Owner, QFO Labs, Inc.,
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`provides the following updated notice:
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`
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`
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`In re: Case IPR2017-01400 – U.S. PATENT NO. 9,645,580
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`Page 2 of 5
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`MANDATORY NOTICE UNDER 37 C.F.R § 42.8(a)(3):
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`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
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`1. Related Patent Office Matters
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`The Patent Owner is also party (a) to two inter partes reviews of claims of
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`U.S. Patent No. 7,931,239 (Cases IPR2016-01550 and IPR2017-01089, in the
`
`latter of which, institution of trial was denied – Paper 15, September 28, 2017), to
`
`which the application that issued as Patent 9,645,580 is related through two
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`intermediary applications (Application No. 14/791,253 and Application No.
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`13/092,940, which is now Patent 9,073,532), and is party (b) to two inter partes
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`reviews of claims of U.S. Patent No. 9,073,532 (Cases IPR2016-01559 and
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`IPR2017-01090, in the latter of which, institution of trial was denied – Paper 15,
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`September 28, 2017), to which the application that issued as Patent 9,645,580 is
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`related through intermediary Application No. 14/791,253. Patents 7,931,239,
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`9,073,532 and 9,645,580 share a common specification. The Petitioners and the
`
`Patent Owner are the same in the present IPR matter, and in the related IPR
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`matters.
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`There is one pending related patent application:
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`U.S. Application No. 14/791,253 filed July 3, 2015 and titled “METHOD
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`FOR OPERATING A RADIO-CONTROLLED FLYING HOVERCRAFT,” of
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`which the application that issued as Patent 9,645,580 is a continuation application.
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`
`
`In re: Case IPR2017-01400 – U.S. PATENT NO. 9,645,580
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`Page 3 of 5
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`
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`
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`U.S. Application No. 14/791,253 claims priority, through a chain of intermediary
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`applications (including the applications that issued as U.S. Patents 9,073,532 and
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`7,931,239), to U.S. Provisional Application No. 60/407,444 filed August 30, 2002.
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`Application No. 14/791,253 is presently allowed.
`
`
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`2. Related Litigation Matters
`
`There are six related litigation matters:
`
`(1) A Delaware suit filed on August 8, 2016 by Petitioners for declaratory
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`judgment against U.S. Patents 7,931,239 and 9,073,532, which was subsequently
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`amended to include U.S. Patent 9,645,580: Parrot S.A., et al. v. QFO Labs, Inc.,
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`Case No. 1:16-cv-00682-GMS (D. Del.).
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`(2) A Minnesota suit filed on October 12, 2016 by Patentee for infringement
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`of U.S. Patents 7,931,239 and 9,073,532, which was subsequently amended to
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`include U.S. Patent 9,645,580: QFO Labs, Inc. v. Parrot S.A., et al., Case No. 16-
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`cv-03443-JRT-HB (D. Minn.). On June 19, 2017, the complaint in Case 16-cv-
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`03443 (JRT-HB) was dismissed without prejudice.
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`(3) A Minnesota suit filed on April 7, 2017 by Patentee for infringement of
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`U.S. Patents 7,931,239 and 9,073,532, which was subsequently amended to include
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`U.S. Patent 9,645,580: QFO Labs, Inc. v. Brookstone Stores, Inc., Case No. 0:17-
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`cv-01100-JNE-SR (D. Minn.). Following resolution of the dispute pursuant to a
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`
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`In re: Case IPR2017-01400 – U.S. PATENT NO. 9,645,580
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`Page 4 of 5
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`
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`Confidential Settlement Agreement and Release along with a License Agreement,
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`a Notice of Voluntary Dismissal with Prejudice was filed on September 26, 2017,
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`and the case was dismissed by the Court on September 29, 2017.
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`(4) A Minnesota suit filed on November 3, 2017 by Patentee for
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`infringement of U.S. Patents 7,931,239, 9,073,532, and 9,645,580: QFO Labs, Inc.
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`v. Amazon.com, Inc., CASE 0:17-cv-05014-DWF-HB (D. Minn.).
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`(5) A Minnesota suit filed on November 3, 2017 by Patentee for
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`infringement of U.S. Patents 7,931,239, 9,073,532, and 9,645,580: QFO Labs, Inc.
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`v. Best Buy Co., Inc., CASE 0:17-cv-05011-JNE-TNL (D. Minn.).
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`(6) A Minnesota suit filed on November 3, 2017 by Patentee for
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`infringement of U.S. Patents 7,931,239, 9,073,532, and 9,645,580: QFO Labs, Inc.
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`v. Target Corporation, CASE 0:17-cv-05012-JRT-DTS (D. Minn.).
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`
`
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`
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`Dated: November 13, 2017
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`Respectfully submitted,
`
`
` /Charles A. Lemaire/
`Charles A. Lemaire, Reg. No. 36,198
`clemaire@lemairepatent.com
`
`Jonathan M. Rixen, Reg. No. 57,689
`jrixen@lemairepatent.com
`
`Lemaire Patent Law Firm
`14565 Grand Avenue
`Burnsville, Minnesota 55306
`Telephone: (952) 435-0201
`Facsimile: (952) 435-0299
`
`
`
`Attorneys for Patent Owner, QFO Labs, Inc.
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`
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`In re: Case IPR2017-01400 – U.S. PATENT NO. 9,645,580
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`Page 5 of 5
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`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq., the undersigned certifies that on
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`November 13, 2017 a complete and entire copy of this “PATENT OWNER’S
`
`UPDATED NOTICE, PROVIDED UNDER 37 C.F.R. §42.8(a)(3) and
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`§42.8(b)(2), REGARDING RELATED MATTERS” was served upon the
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`Petitioners, by electronically serving the Petitioners’ appointed attorneys of record
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`by e-mail at:
`
`James M. Glass
`jimglass@quinnemanuel.com
`
`
`
`Matthew A. Traupman
`matthewtraupman@quinnemanuel.com
`
`
`
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`
`
`
`
`Dated: November 13, 2017
`
`
`
`
`
`
`By: /Gregory A. Lemaire/
`Gregory A. Lemaire
`Administrative Assistant
`Lemaire Patent Law Firm, P.L.L.C.
`14565 Grand Avenue
`Burnsville, Minnesota 55306
`
`
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