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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,
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`v.
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`KNAUF INSULATION, INC., AND KNAUF INSULATION SPRL,
`Patent Owners.
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`_________________
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`IPR2018-00879
`Patent 9,926,464
`_________________
`
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`KNAUF INSULATION, INC., AND KNAUF INSULATION SPRL’S
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
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`IPR2018-00879 (Patent 9,926,464)
`Patent Owners’ Mandatory Notices
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`Patent Owners Knauf Insulation, Inc., and Knauf Insulation SPRL
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`respectfully submit the following Mandatory Notices under 37 C.F.R. § 42.8(a)(2).
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`I.
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`REAL PARTY-IN-INTEREST UNDER 37 C.F.R. § 42.8(b)(1)
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`Pursuant to 37 C.F.R. § 42.8(b)(1), the real-parties-in-interest are Patent
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`Owners Knauf Insulation, Inc., and Knauf Insulation SPRL.
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`II. 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. 9,926,464 (“the '464 Patent”)
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`issued March 27, 2018, from U.S. Patent Application Serial No. 15/177,442, filed
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`June 9, 2016, and claims priority to U.S. Patent Application Serial No. 13/868,233,
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`filed April 23, 2013 (now U.S. Patent No. 9,464,2071), to U.S. Patent Application
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`Serial No. 12/976,379, filed December 22, 2010 (now abandoned), to U.S. Patent
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`Application Serial No. 11/493,080, filed July 26, 2006 (now U.S. Patent No.
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`7,888,4452), to U.S. Provisional Patent Application Serial No. 60/743,071, filed
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`December 22, 2005, and to U.S. Provisional Patent Application Serial No.
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`60/702,456, filed July 26, 2005.
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`1 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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`2 U.S. Patent No. 9,464,207 is the subject of co-pending IPR2018-00863.
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`1
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`IPR2018-00879 (Patent 9,926,464)
`Patent Owners’ Mandatory Notices
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`The '464 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 No. 9,745,489, issued August 29, 2017, from U.S. Patent
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`Application Serial No. 15/378,159, filed December 14, 2016, claims priority to the
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`'464 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 '464 Patent.
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`III. LEAD AND BACK-UP COUNSEL UNDER 37 C.F.R. § 42.8(b)(3)
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`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Patent Owners provide the
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`following designation of counsel:
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`Joshua P. Larsen (Lead Counsel)
`Registration No. 62,761
`Barnes & Thornburg LLP
`11 South Meridian Street
`Indianapolis, Indiana 46204
`Telephone: (317) 231-6422
`Facsimile: (317) 231-7433
`E-mail: joshua.larsen@btlaw.com
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`James R. Sweeney II (Back-up Counsel)
`Registration No. 45,670
`Barnes & Thornburg LLP
`11 South Meridian Street
`Indianapolis, Indiana 46204
`Telephone: (317) 231-7771
`Facsimile: (317) 231-7433
`E-mail: james.sweeney@btlaw.com
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`2
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`IPR2018-00879 (Patent 9,926,464)
`Patent Owners’ Mandatory Notices
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`Daniel J. Lueders (Back-up Counsel)
`Registration No. 32,581
`Woodard Emhardt Moriarty McNett
`& Henry LLC
`111 Monument Circle, Suite 3700
`Indianapolis, Indiana 46204
`Telephone: (317) 634-3456
`Facsimile: (317) 637-7561
`E-mail: dlueders@uspatent.com
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney is being submitted to
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`the Board herewith.
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`IV. SERVICE INFORMATION UNDER 37 C.F.R. § 42.8(b)(4)
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`Pursuant to 37 C.F.R. § 42.8(b)(4), Patent Owners consent to service at the
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`following electronic mail address: KnaufIPR@btlaw.com. Additional service
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`information for Patent Owners is provided in the designation of Lead and Back-up
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`Counsel above.
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`Date: April 16, 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
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`Respectfully submitted,
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`
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`/Joshua P. Larsen/
`Joshua P. Larsen
`Reg. No. 62,761
`Counsel for Patent Owners
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`3
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`IPR2018-00879 (Patent 9,926,464)
`Patent Owners’ Mandatory Notices
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on this 16th
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`day of April 2018, I caused a true and correct copy of the foregoing KNAUF
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`INSULATION, INC., AND KNAUF INSULATION SPRL’S MANDATORY
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`NOTICES UNDER 37 C.F.R. § 42.8 to be served via e-mail (as agreed in the
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`Service Information section of the Petition) on the following counsel of record for
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`the Petitioners:
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`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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