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Paper No.
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`KINGSTON TECHNOLOGY COMPANY, INC.
`Petitioner,
`
`v.
`
`MEMORY TECHNOLOGIES, LLC
`Patent Owner.
`
`Case IPR2019-00644
`Patent RE45,542
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`

`

`Patent Owner Memory Technologies, LLC (“Patent Owner”) provides the
`
`Case IPR2019-00644
`Patent RE45,542
`
`following Mandatory Notices for this proceeding.
`
`I. Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), the real party-in-interest is Memory
`
`Technologies, LLC, the assignee of record for U.S. Patent RE45,542 (“the ’RE542
`
`patent”).
`
`II. Related Matters
`
`Patent Owner identifies the following matters that may be considered related
`
`pursuant to 37 C.F.R. 42.8(b)(2).
`
`A. Litigations
`
`The ’RE542 patent is at issue in the following pending litigation:
`
`• Memory Technologies, LLC v. Kingston Technology Corp. et al.,
`
`No. 8-18-cv-00171 (C.D. Cal. Jan. 31, 2018).
`
`The ’RE542 patent was at issue in the following terminated litigations:
`
`• Memory Technologies, LLC v. SanDisk LLC et al., No. 8-16-cv-02163
`
`(C.D. Cal. Dec. 6, 2016) (voluntarily dismissed with prejudice); and
`
`• Certain Flash Memory Devices and Components Thereof,
`
`No. 337-TA-1034 (ITC Dec. 5, 2016) (settled and terminated).
`
`B.
`
`Proceedings Before the USPTO
`
`The ’RE542 patent was at issue in the following terminated inter partes
`
`review:
`
`• SanDisk LLC v. Memory Technologies, LLC, IPR2017-01022
`
`(P.T.A.B. May 3, 2017) (settled before institution decision).
`
`1
`
`

`

`Case IPR2019-00644
`
`Patent RE45,542
`
`III. Lead and Back—Up Counsel and Service Information
`
`Patent Owner designates the following lead and backup counsel for this
`
`proceeding.
`
`Lead Counsel
`
`Back-U Counsel
`
`James D. Stein (Reg. No. 63,782)
`Lee & Hayes P.C.
`1 175 Peachtree Street NE
`
`Andrew Strickland (Reg. No. 67,755)
`Lee & Hayes RC.
`1 175 Peachtree Street NE
`
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
`
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
`
`Phone: 404.736.1918
`
`Phone: 404.736.1925
`
`andrew.strickland@leehayes.com William B. Dyer III (Reg. No- 41,725)
`
`james.stein@leehayes.com
`
`Lee & Hayes RC.
`1175 Peachtree Street NE
`
`100 Colony Square, Suite 2000
`Atlanta, GA 30361
`Phone: 404.736.1857
`
`b111.d er I leeha es.com
`
`
`
`Please address all correspondence regarding this proceeding to lead and back-
`
`up counsel. Patent Owner consents
`
`to electronic
`
`service by e-mail
`
`at
`
`MTL-RE542_IPR644@leehayes.com.
`
`Dated: March 8, 2019
`
`Respectfully submitted,
`
`/James D. Stein/
`
`James D. Stein
`
`Reg. No. 63,782
`
`

`

`Case IPR2019-00644
`Patent RE45,542
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PATENT OWNER’S
`
`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 was served
`
`electronically by email on March 8, 2019 on lead and back-up counsel of record for
`
`Kingston Technology Company,
`
`Inc.,
`
`identified below,
`
`at kingston-
`
`RE542ipr@pillsburylaw.com.
`
`Lead Counsel
`Robert C.F. Pérez
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22101
`Telephone: 703.770.7900
`Facsimile: 703.770.7901
`
`
`
`
`Back-Up Counsel
`Christopher Kao
`Brock S. Weber
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`Four Embarcadero Center, 22nd Floor
`San Francisco, CA 94111
`Telephone: 415.983.1000
`Facsimile: 415.983.1200
`
`/James D. Stein/
`James D. Stein
`Reg. No. 63,782
`
`
`
`
`
`3
`
`

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