`Knauf Insulation, Inc., and Knauf Insulation SPRL
`By: Joshua P. Larsen (Lead Counsel)
`joshua.larsen@btlaw.com
`James R. Sweeney II (Back-up Counsel)
`james.sweeney@btlaw.com
`Daniel J. Lueders (Back-up Counsel)
`dlueders@uspatent.com
`
`Paper No. 7
`Date: July 5, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`
` JOHNS MANVILLE CORPORATION AND JOHNS MANVILLE, INC.,
`Petitioners,
`
`v.
`
`KNAUF INSULATION, INC., AND KNAUF INSULATION SPRL,
`Patent Owners.
`
`_________________
`
`IPR2018-00863
`Patent 9,464,207
`_________________
`
`
`PATENT OWNERS’ UPDATED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
`
`
`
`IPR2018-00863 (Patent 9,464,207)
`Patent Owners’ Updated Mandatory Notices
`
`
`Patent Owners Knauf Insulation, Inc., and Knauf Insulation SPRL
`
`respectfully submit the following Updated Mandatory Notices pursuant to 37
`
`C.F.R. § 42.8(a)(3).1
`
`I.
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`RELATED MATTERS UNDER 37 C.F.R. § 42.8(b)(2)
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`Pursuant to 37 C.F.R. § 42.8(b)(2), records of the U.S. Patent and Trademark
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`Office (“USPTO”) indicate that U.S. Patent No. 9,464,207 (“the '207 Patent”)
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`issued October 11, 2016, from U.S. Patent Application Serial No. 13/868,233, filed
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`April 23, 2013, and claims priority to U.S. Patent Application Serial No.
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`12/976,379, filed December 22, 2010 (now abandoned), to U.S. Patent Application
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`Serial No. 11/493,080, filed July 26, 2006 (now U.S. Patent No. 7,888,4452), to
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`U.S. Provisional Patent Application Serial No. 60/743,071, filed December 22,
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`2005, and to U.S. Provisional Patent Application Serial No. 60/702,456, filed July
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`26, 2005.
`
`
`1 The real parties-in-interest under 37 C.F.R. § 42.8(b)(1), the lead and back-up
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`counsel under 37 C.F.R. § 42.8(b)(3), and the service information under 37 C.F.R.
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`§ 42.8(b)(4) have not changed relative to Patent Owners’ Mandatory Notices filed
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`April 16, 2018.
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`2 U.S. Patent No. 7,888,445 is the subject of two co-pending reexaminations,
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`assigned Control Nos. 90/013,029 and 95/000,672.
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`1
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`
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`IPR2018-00863 (Patent 9,464,207)
`Patent Owners’ Updated Mandatory Notices
`
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`The '207 Patent is involved in the following pending litigation: Knauf
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`Insulation, LLC, et al. v. Johns Manville Corporation, et al., Civil Action No.
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`1:15-cv-00111-WTL-MJD (S.D. Ind.), filed January 27, 2015.
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`U.S. Patent Application Serial No. 14/828,916, filed August 18, 2015, which
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`is now abandoned, claimed priority to the '207 Patent.
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`U.S. Patent No. 9,926,464, issued March 27, 2018, from U.S. Patent
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`Application Serial No. 15/177,442, filed June 9, 2016, claims priority to the '207
`
`Patent.3
`
`U.S. Patent No. 9,745,489, issued August 29, 2017, from U.S. Patent
`
`Application Serial No. 15/378,159, filed December 14, 2016, claims priority to the
`
`'207 Patent.
`
`U.S. Patent Application Serial No. 15/665,867, filed August 1, 2017, which
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`is now abandoned, claimed priority to the '207 Patent.
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`U.S. Patent Application Serial No. 15/875,185, filed January 19, 2018,
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`which is currently pending, claims priority to the '207 Patent.
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`
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`
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`3 U.S. Patent No. 9,926,464 is the subject of co-pending IPR2018-00879.
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`2
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`IPR2018-00863 (Patent 9,464,207)
`Patent Owners’ Updated Mandatory Notices
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`Date: July 5, 2018
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`Barnes & Thornburg LLP
`11 South Meridian Street
`Indianapolis, Indiana 46204
`Telephone: (317) 231-6422
`Facsimile: (317) 231-7433
`E-mail: joshua.larsen@btlaw.com
`
`Respectfully submitted,
`
`
`
`/Joshua P. Larsen/
`Joshua P. Larsen
`Reg. No. 62,761
`Counsel for Patent Owners
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`3
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`IPR2018-00863 (Patent 9,464,207)
`Patent Owners’ Updated Mandatory Notices
`
`
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on this 5th day
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`of July 2018, I caused a true and correct copy of the foregoing PATENT
`
`OWNERS’ UPDATED MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 to
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`be served via e-mail (as agreed in the Service Information section of the Petition)
`
`on the following counsel of record for the Petitioners:
`
`Kristopher L. Reed
`Matthew C. Holohan
`Darin J. Gibby
`1400 Wewatta Street, Suite 600
`Denver, CO 80202
`JMIPR@kilpatricktownsend.com
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`/Joshua P. Larsen/
`Joshua P. Larsen
`Reg. No. 62,761
`Counsel for Patent Owners
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