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`Case: IPR2018-01592
`Patent No.: 9,320,122
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`EXHIBIT 1017
`
`PRIME WIRE & CABLE, INC.
`
` Petitioner,
`
`v.
`
`CANTIGNY LIGHTING
`CONTROL, LLC.
`
` Patent owner
`
`JASCO PRODUCTS, INC.
`
` Licensee
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
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`

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`50381 6388
`
`05/07/201 6
`
`PATENT ASSIGNMENT COVER SHEET
`
`Electronic Version v1.1
`
`Stylesheet Version v1.2
`
`SUBMISSION TYPE:
`
`NEW ASSIGNMENT
`
`NATURE OF CONVEYANCE:
`
`ASSIGNMENT
`
`EPAS ID: PAT3863036
`
`CONVEYING PARTY DATA
`
`JOHN JOSEPH KING
`
`05/04/2016
`
`RECEIVING PARTY DATA
`
`_
`
`PROPERTY NUMBERS Total: 4
`
`Application Number:
`
`Application Number:
`
`Application Number:
`
`Patent Number:
`
`14979376
`
`14979377
`
`15131836
`
`9320122
`
`CORRESPONDENCE DATA
`
`Fax Number:
`
`
`
`Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent
`using a fax number, if provided; if that is unsuccessful, it will be sent Via US Mail.
`
`Email:
`
`john.king@jkinglawoffice.c0m
`
`Correspondent Name:
`Address Line 1:
`
`CANTIGNY LIGHTING CONTROL
`2018 DORSET DRIVE
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`Address Line 4:
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`WHEATON, ILLINOIS 60189
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`NAME OF SUBMITTER:
`
`JOHN J. KING
`
`SIGNATURE:
`
`DATE SIGNED:
`
`Total Attachments: 4
`
`/john j king/
`
`05/07/2016
`
`source=Assignment2transmittal#page1.tif
`
`source=Assignment2transmittal#page2.tif
`
`source=Assignment2#page1.tif
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`source=Assignment2#page2.tif
`
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 Page 1 of 5
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 PRWTOI 5
`
`503816388
`
`REEL: 038505 FRAME: 0163
`
`

`

`Form PTO-1595 (Rev. 06-12)
`OMB No. 0651-0027 (exp. 04/30/2015)
`
`US. DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`
`RECORDATION FORM COVER SHEET
`
`PATENTS ON LY
`
`To the Director of the US. Patent and Trademark Office: Please record the attached documents orthe new address(es) below.
`
`1. Name of conveying party(ies)
`
`2. Name and address of receiving party(ies)
`
`Name: Cantigny Lighting Control, LLC
`
`John J. King
`
`Internal Address:
`
`Additional name(s) of conveying party(ies) attached? |:|Yes lil No
`3. Nature of conveyance/Execution Date(s):
`
`Street Address: 2018 Dorset Drive
`
`City: Wheaton
`
`State:
`
`|L
`
`0
`
`t
`
`:US
`
`2 :60189
`
`
`
`Execution Date(s)
`
`|:| Merger
`El Change of Name
`
`E Assignment
`El Security Agreement
`El Joint Research Agreement
`El Government Interest Assignment
`El Executive Order 9424, Confirmatory License
`
`0”“ W— ip ElOther— Additional name(s) & address(es) attached? |:| Yes IEI N0
`
`4- Application or patent number(S):
`A. Patent Application No.(s)
`
`|:| This document serves as an Oath/Declaration (37 CFR 1.63).
`B. Patent No.(s)
`
`US Patent Appl. 14/979,376, filed 12/27/2015, US Patent 9,320,122
`
`5. Name and address to whom correspondence
`concerning document should be mailed:
`
`6. Total number of applications and patents
`involved: 4
`
`Additional numbers attached? IEYes D No
`
`- John J. King
`Name-
`Internal Address:
`
`Street Address: 2018 Dorset Drive
`
`7. Total fee (37 CFR 1.21(h) & 3.41)
`
`$ 0-00
`
`El Authorized to be charged to deposit account
`|:| Enclosed
`El None required (government interest not affecting title)
`
`City:Wheaton— 8- Payment Information
`
`Zip: 60189
`
`State: ”-
`
`Phone Number:
`
`Docket Number:
`
`Email Address:_
`
`Deposit Account Number
`
`Authorized User Name
`
`May 4, 2016
`9. Signature: /john j. king/
`W Date
`
`John J. King
`
`Total number of pages including cover 4
`sheet, attachments, and documents:
`Name of Person Signing
`Documents to be recorded (including cover sheet) should be faxed to (571) 273-0140, or mailed to:
`Mail Stop Assignment Recordation Services, Director of the USPTO, P.O.Box 1450, Alexandria, VA. 22313-1450
`.
`-
`Q
`IIIAA-
`I
`I.
`....
`A
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`.
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 Page 2 of 5
`REEL: 038505 FRAME: 0164
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`

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`Supplemental page including additional assigned applications:
`
`US Patent Application 14/979,377; filed December 27, 2015; and
`US Patent Application 15/131,836 filed April 18, 2016;
`
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 Page 3 of 5
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 PRWf 5
`REEL: 038505 FRAME: 0165
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`

`

`ASSIGNIWENT
`
`WHEREAS, John King, an individual residing in Wheaton, Illinois, (hereafter called “Assignor”) is the
`owner ot‘the entire right, title, and interest and assignee of the US. Patent and applications listed in the
`Exhibit attached hereto;
`
`AND WHEREAS, Cantigny Lighting Control, LLC, an Illinois limited liability company, having a place
`of business at 2018 Dorset Drive, Wheaten, [L 60139 (hereaiter,
`together with any successors,
`legal
`representatives or assigns thereof, called “Assignee‘j wants to acquire the entire right, title and interest in
`and to said U.S. Patents and applications listed in the Exhihit attached hereto, and all the inventions
`therein, and Assignor is willing to enter into such assignment.
`
`NOW, THEREFORE, effeetive on July 20, 2015 and in consideration of the sum of One Dollar ($1.00)
`in hand paid and other good and valuable consideration the receipt of which from ASSIGNEE is hereby
`acknowledged, Assignor has sold, assigned, transferred and set over, and does hereby sell, assign, transfer
`and set over to ASSIGNEE the entire right,
`title and interest in and to the US. Patent listed in the
`Exhibit attached hereto, and all patents, patent applications, foreign patents, foreign patent applications,
`continuation; continuations—iu-part, divisionals, extensions, renewals, reissues and re-examinations that
`claim priority on the basis thereof, all rights to sue for past, present and future infringement, including the
`right to collect and receive any damages, royalties, or settlements for such infringements, all rights to sue
`for injunctive or other equitable relief, all rights to relief wider 35 U.S.C. § 154(d). and any and all causes
`of action relating to any of the inventions or discoveries thereof;
`
`Assignor hereby covenants that it has full right to convey the entire interest herein assigned. and that it
`has not executed, and will not execute, any agreement in conflict with this Assignment;
`
`Assignor hereby further covenants and agrees that it will communicate to ASSIGNEE any and all facts
`known to it respecting said patents, and testify in any legal proceeding, sign all lawful papers, execute and
`deliver all papers and take any actions that may be necessary or desirable to perfect the title to any
`aforementioned patents and inventions, execute all divisional, continuation, reexamination, reissue and
`Substjnite applications, and make all
`rightful oaths and generally do everything possible to aid
`ASSIGNEE, to obtain and enforee proper patent protection for said inventions in all countries.
`
`IN TESTIMONY WHEREOF, I hereunto set my hand this
`
`an:
`
`day of May, 2016.
`
`JOHN KING
`(Assignor)
`
`if; m/
`
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 Page 4 of 5
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 PRqW-pf 5
`REEL: 038505 FRAME: 0166
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`

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`EXHIBIT
`
`11.8. PATENTS & APPLICATIONS
`
`US Patent 9,320,122:
`US Palcm Application 14/979,376, filed December 27, 2015'.
`US Patent Application l4f979-,377; filed December 27, 2015; and
`US Patent Application 15/131,836 filed April [3, 2016;
`
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 Page 5 of 5
`Case 5:18-cv-00044-RJC-DSC Document 1-4 Filed 03/14/18 Pngafiof 5
`
`RECORDED: 05/07/2016
`
`REEL: 038505 FRAME: 0167
`
`