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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
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`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC,
`Petitioners
`
`v.
`
`KIRN MEDICAL DESIGN, L.L.C.,
`Patent Owner
`
`_______________
`
`Inter Partes Review No. IPR2017-00646
`Patent 6,631,715
`
`_______________
`
`
`
`EXCLUSIVE LICENSEE APPLIED MEDICAL TECHNOLOGY, INC.’S
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(2)
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`CORPAK Ex 1012, Page 1
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`
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`
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`Pursuant to 37 C.F.R. § 42.8(a)(2), the undersigned, on behalf of the
`
`exclusive licensee Applied Medical Technology, Inc. (“AMT”), hereby submits the
`
`following mandatory notices in connection with the above-captioned petition for
`
`inter partes review of U.S. Patent No. 6,631,715 (“the ‘715 patent”).
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`
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`I.
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`
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`37 C.F.R. § 42.8(b)(1) - EACH REAL PARTY-IN-INTEREST
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`The real parties-in-interest are AMT and Kirn Medical Design, L.L.C.
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`(“Kirn”). Kirn is the owner of the ‘715 patent. AMT is the exclusive
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`licensee of the ‘715 patent by virtue of an agreement with Kirn.
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`
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`II.
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`37 C.F.R. § 42.8(b)(2) - RELATED MATTERS
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`a. Judicial Matters
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`The ‘715 patent is the current subject of the litigation styled Applied
`
`Medical Technology, Inc. v. Corpak Medsystems, Inc., 1:16-cv-02190 (N.D.
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`Ohio).
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`b. Administrative Matters
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`The ‘715 patent issued from U.S. Appl. No. 09/939,399, which claims
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`priority to Provisional U.S. Application No. 60/230,525, which was filed on
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`September 1, 2000. U.S. Patent No. 6,837,237, which issued on January 4, 2005,
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`claims priority to the ‘399 application.
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`CORPAK Ex 1012, Page 2
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`
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`III. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Exclusive licensee Applied Medical Technology, Inc. designates the
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`following lead and back-up counsel:
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`Lead Counsel
`Gregory M. York (Reg. No. 57,533)
`Pearne & Gordon LLP
`1801 E. 9th Street, Suite 1200
`Cleveland, Ohio 44114-3108
`gyork@pearne.com
`Phone: (216) 579-1700
`Fax: (216) 579-6073
`
`Back-Up Counsel
`Christopher T. Meta (Reg. No. 70,141)
`Pearne & Gordon LLP
`cmeta@pearne.com
`
`Steven J. Solomon (Reg. No. 48,719)
`Pearne & Gordon LLP
`ssolomon@pearne.com
`
`Michael P. Padden (pro hac petition)
`Pearne & Gordon LLP
`mpadden@pearne.com
`Please address all correspondence and service to counsel as listed above.
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`
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`Exclusive licensee Applied Medical Technology, Inc. consents to electronic
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`service by email at: gyork@pearne.com, cmeta@pearne.com, and
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`mpadden@pearne.com.
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`Date: February 7, 2017
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`Respectfully submitted,
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`By: /Gregory M. York/
`Gregory M. York (Reg. No. 57,533)
`Pearne & Gordon LLP
`Attorney for Exclusive Licensee Applied
`Medical Technology, Inc.
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`CORPAK Ex 1012, Page 3
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CORPAK MEDSYSTEMS, INC. and HALYARD HEALTH, INC,
`Petitioners
`
`V.
`
`KIRN MEDICAL DESIGN, L.L.C.,
`Patent Owner
`
`Inter Partes Review No. IPR2017—00646
`
`Patent 6,631,715
`
`CONFIRMATION OF
`
`EXCLUSIVE LICENSEE APPLIED MEDICAL TECHNOLOGY, INC.’S
`AUTHORITY TO CONDUCT INTER PARTES REVIEW
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`CORPAK Ex 1012, Page 4
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`CORPAK Ex 1012, Page 4
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`
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`Kim Medical Design, L.L.C. (“Kim”), the owner of US. Patent No.
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`6,631,715 (“the ‘715 patent”), and Applied Medical Technology, Inc. (“AMT”),
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`hereby give notice to the Patent Trial and Appeal Board that AMT is the exclusive
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`licensee of the ‘715 patent. Kim consents to AMT’S defense of the ‘715 patent in
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`Case No. IPR2017-00646 by counsel retained by AMT.
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`The individual signing below has the authority to execute this document on
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`behalf of Kim Medical Design, L.L.C.
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`For: Kim Medical Design, L.L.C.
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`
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`Title:
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`{72ragged 77/
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`Date:
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`Z 3
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`f
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`1'7
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`The individual signing below has the authority to execute this document on
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`behalf of Applied Medical Technology, Inc.
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`For: Applied Medical Technology, Inc.
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`
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`CORPAK Ex 1012, Page 5
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`CORPAK Ex 1012, Page 5
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`
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`CERTIFICATE OF SERVICE
`
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on February 7,
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`
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`2017, a complete and entire copy of this EXCLUSIVE LICENSEE APPLIED
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`MEDICAL TECHNOLOGY, INC.’S MANDATORY NOTICES and
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`accompanying POWER OF ATTORNEY were provided via electronic mail to the
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`attorneys of record for Petitioners:
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`Lead Counsel:
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`
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`Richard M. McDermott
`Registration No. 40,720
`ALSTON & BIRD LLP
`101 S. Tryon St, Ste 4000
`Charlotte, NC 28280
`rick.mcdermott@alston.com
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`Backup Counsel: Jitendra Malik Ph.D.
`Registration No. 55,823
`ALSTON & BIRD LLP
`jitty.malik@alston.com
`
`Tasneem D. Delphry
`Registration No. 72,506
`ALSTON & BIRD LLP
`tasneem.delphry@alston.com
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`/Gregory M. York/
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`Gregory M. York (Reg. No. 57,533)
`Pearne & Gordon LLP
`Attorney for Exclusive Licensee Applied
`Medical Technology, Inc.
`
`CORPAK Ex 1012, Page 6
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`
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