`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`PRIME WIRE & CABLE, INC.,
`Petitioner
`
`v.
`
`CANTIGNY LIGHTING CONTROL, LLC,
`Patent Owner
`__________
`
`Case IPR2018-01592
`Patent No. 9,320,122 B2
`__________
`
`CANTIGNY LIGHTING CONTROL, LLC’S
`MANDATORY NOTICES PURSUANT TO C.F.R. §42.8(a)(2)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Patent Owner Cantigny Lighting Control, LLC (“Cantigny”), hereby files its
`
`Mandatory Notices for the above-captioned proceeding.
`
`I.
`
`37 C.F.R § 42.8(b)(1) – REAL PARTY-IN-INTEREST
`
`The real parties-in-interest are Cantigny Lighting Control, LLC, owner of
`
`U.S. Patent No. 9,320,122 (“the ‘122 patent), and Jasco Products Company, LLC,
`
`the exclusive licensee of the ‘122 patent.
`
`II.
`
`37 C.F.R § 42.8(b)(2) – RELATED MATTERS
`
`Patent Owner notes the following proceedings that may affect or be affected
`
`by a decision in this proceeding:
`
`A.
`
`Proceedings Before the USPTO Involving Related Patents
`
`U.S. Patent App. No. 15/131,836, issued as U.S. Patent No. 9,888,551, and
`
`was filed as a divisional application of U.S. Patent App. No. 14/944,302, the
`
`application that led to the ‘122 patent. U.S. Patent App. No. 15/822,295, now
`
`pending, was filed as a divisional application of U.S. Patent App. No. 15/131,836,
`
`and claims the benefit of U.S. Patent App. No. 14/944,302 (the ‘122 patent). U.S.
`
`Patent App. No. 14/944,302 (the ‘122 patent) was filed as a divisional application of
`
`U.S. Patent App. No. 14/066,724, which issued as U.S. Patent No. 9,226,373. U.S.
`
`Patent App. No. 14/979,376, now pending, is a divisional application of U.S. Patent
`
`App. No. 14/066,724.
`
`1
`
`
`
`B.
`
`Litigation Involving the ‘122 Patent
`
`The involved patent is at issue in the following action:
`
` Jasco Products Company, LLC v. Prime Wire & Cable, Inc., Case No.
`
`5:18-cv-00044-RJC-DSC (W.D.N.C., filed March 14, 2018).
`
`III. 37 C.F.R § 42.8(b)(3) – LEAD AND BACKUP COUNSEL
`
`The lead counsel for Cantigny is:
`
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 2100
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`The backup counsel for Cantigny are:
`
`Karen J. Wang
`Reg. No. 62,503
`kwang@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`9330 Scranton Road, Suite 350
`San Diego, CA 92121
`(858) 552-1311
`(858) 552-0095
`
`Paul B. Henkelmann
`Reg. No. 65,891
`phenkelmann@fitcheven.com
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 2100
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`2
`
`
`
`IV. 37 C.F.R § 42.8(b)(4) – SERVICE INFORMATION
`
`Please address all correspondence to the lead and backup counsel as shown
`
`above. Patent Owner
`
`consents
`
`to
`
`electronic
`
`service by
`
`
`at
`
`cantigny-ipr@fitcheven.com.
`
`Respectfully submitted,
`FITCH, EVEN, TABIN & FLANNERY LLP
`By: /Timothy P. Maloney/
`
`
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`
`Dated: October 9, 2018
`
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies in accordance with 37 C.F.R. § 42.6(e) that on
`
`October 9, 2018, a copy of the foregoing Cantigny Lighting Control, LLC’s
`
`Mandatory Notices Pursuant to C.F.R. §42.8(a)(2) was served on Petitioner at the
`
`following email addresses:
`
`John K. Buche, jbuche@buchelaw.com
`Bryce A. Johnson, bjohnson@buchelaw.com
`
`Dated: October 9, 2018
`
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`
`
`By: /Timothy P. Maloney/
`Timothy P. Maloney
`Reg. No. 38,233
`tim@fitcheven.com
`
`
`
`
`
`4
`
`
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