`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`
`Petitioner
`
`v.
`
`TECHNO VIEW IP, INC.,
`
`Patent Owner
`
`
`
`Case IPR2018-01045
`
`U.S. Patent 8,206,218
`
`
`MANDATORY NOTICES BY PATENT OWNER
`
`UNDER 37 CFR § 42.8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 37 CFR § 42.8(a)(2), exclusive licensee TECHNO VIEW IP,
`
`INC. hereby provides the following mandatory notices.
`
`I.
`
`Real Party-in-Interest
`
`The real party-in-interest for the Patent Owner is TECHNO VIEW IP,
`
`INC. In 2016, TD VISION CORPORATION S.A. DE C.V., the assignee of
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`U.S. Patent No. 8,206,218 (“the ‘218 patent”) provided TECHNO VIEW IP,
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`INC. with an exclusive license, including all substantial rights in and to the
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`‘218 patent. Further, TD VISION CORPORATION S.A. DE C.V. has not
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`contended it is a required party in litigation surrounding the ‘218 patent.1
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`Therefore, the effective Patent Owner, and the real party-in-interest for the
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`purposes of this inter partes review, is TECHNO VIEW IP, INC.
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`
`
`
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`1 See Motorola Mobility LLC v. Michael Arnouse, IPR2013-00010, Paper No.
`30 (finding assignee was the real party in interest because “[Assignee] has
`provided an exclusive license of ‘all substantial rights’ in the ’484 patent to ...
`[Effective Patent Owner];” that “by virtue of its averments of standing in the
`District Court, [Effective Patent Owner] has represented that it is the ‘effective
`patentee’ under Sicom;” and that ‘[Assignee] does not contend that he is a
`‘required party’ under Rule 19(a) in the district court litigation.”). See also
`Sicom Sys. Ltd. v. Agilent Techs., Inc., 427 F.3d 971, 976 (Fed. Cir. 2005) (“an
`exclusive license may be treated like an assignment for purposes of creating
`standing if it conveys to the licensee all substantial rights.”).
`
`
`
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`II. Related Matters
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`The following matters would affect, or be affected by, a decision in the present
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`proceeding based on the ‘218 Patent:
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`a) An exclusive licensee has asserted the ‘218 patent in Techno View IP, Inc. v.
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`Sony Interactive Entertainment America LLC, No. 8:17-cv-01268 (N.D. Cal.
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`July 23, 2017) and Techno View IP, Inc. v. Oculus VR, LLC, and Facebook,
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`Inc., No. 1:17-cv-00386 (D. Del. April 6, 2017); and
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`b) the related U.S. Patent No. 7,666,096, of which the ‘218 Patent is a
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`continuation, has been challenged in inter partes review No. IPR2018-01044.
`
`III. Lead and Back-up Counsel
`
`Lead Counsel
`
`Back-up Counsel
`
`Thomas H. Kramer
`Reg. No. 71,042
`O’Kelly Ernst & Joyce, LLC
`901 N. Market Street, Suite 1000
`Wilmington, DE 19801
`(302) 778-4000
`tkramer@oelegal.com
`
`
`Thomas F. Meagher
`Reg. No. 29,831
`Meagher Emanuel Laks Goldberg &
`Liao, LLP
`One Palmer Square, Suite 325
`Princeton, NJ 08542
`(609) 454-3500
`tmeagher@meagheremanuel.com
`
`Alan C. Pattillo
`Reg. No. 76,601
`Meagher Emanuel Laks Goldberg &
`Liao, LLP
`One Palmer Square, Suite 325
`Princeton, NJ 08542
`(609) 454-3500
`cpattillo@meagheremanuel.com
`
`
`
`
`
`
`Respectfully submitted,
`
`/Thomas H. Kramer/
`Thomas H. Kramer
`Reg. No. 71,042
`O’Kelly Ernst & Joyce, LLC
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 778-4000
`tkramer@oelegal.com
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. 42.6(e) and by the agreement of counsel for Petitioner,
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`I certify that on June 11, 2018, I served a complete electronic copy of the
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`Mandatory Notice and Power of Attorney on the Petitioner’s lead and backup
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`counsel at the following addresses:
`
`Lead Counsel
`Abran J. Kean
`Reg. No. 58,540
`Abran.kean@eriseip.com / ptab@eriseip.com
`ERISE IP, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`(913) 777-5600
`
`Backup Counsel
`Eric. A. Buresh
`Reg. No. 50,394
`Eric.buresh@eriseip.com / ptab@eriseip.com
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`(913) 777-5600
`
`
`
`/Thomas H. Kramer/
`Thomas H. Kramer
`Reg. No. 71,042
`O’Kelly Ernst & Joyce, LLC
`901 N. Market Street, Suite 1000
`Wilmington, Delaware 19801
`(302) 778-4000
`tkramer@oelegal.com
`
`
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