`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2019-00911
`U.S. Patent No. 9,861,286
`
`––––––––––––––––––
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`IPR2019-00911
`
`U.S. Pat. No. 9,861,286
`
`Pursuant to 37 C.F.R. § 42.8, Petitioner provides the following update to its
`
`mandatory notices to withdraw Kathi Cover (Reg. No. 37,803) as back-up counsel
`
`in this proceeding. Ms. Cover has left Sidley Austin LLP and ended her
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`representation of Petitioner. In addition, the district court in Texas has granted
`
`Apple’s motion to transfer the two district court cases to the Northern District of
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`California. However, the cases have not yet been assigned new case numbers or a
`
`judge. Petitioner will update these notices when such information is available.
`
`I.
`
`Real Party In-interest (§42.8(b)(1))
`
`The real party in interest pursuant to § 42.8(b)(1) is Apple Inc. (“Apple”)
`
`located at One Infinite Loop, Cupertino, CA 95014.
`
`II. Other Proceedings (§42.8(b)(2))
`
`A.
`
`Patents and Applications
`
`U.S. Patent No. 9,861,286 (“’286 patent”) is related to following issued
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`patents or pending applications:
`
`• U.S. Patent No. 9,757,040
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`• U.S. Patent No. 9,500,635
`
`• U.S. Patent No. 10,098,546
`
`• U.S. Appl. No. 16/016,649
`
`B. Related Litigation
`
`The ’286 Patent has been asserted in the following litigations:
`
`1
`Petitioner’s Updated Mandatory Notices
`
`
`
`IPR2019-00911
`
`U.S. Pat. No. 9,861,286
`
`• Omni MedSci, Inc. v. Apple Inc., Action No. 2-18-cv-00134-RWS
`
`(pending); and
`
`• Omni MedSci, Inc. v. Apple Inc., Action No. 2-18-cv-00429-RWS
`
`(pending).
`
`C.
`
`Patent Office Proceedings
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`The ’286 Patent is subject to IPR2019-00914 filed by Apple. Its parent, the
`
`’040 Patent, is subject to IPR2019-00910 and IPR2019-00917 filed by Apple.
`
`III. Lead and Back-up Counsel and Service Information (§42.8(b)(3)-(4))
`
`Lead Counsel is: Jeffrey P. Kushan (Reg. No. 43,401), jkushan@sidley.com,
`
`(202) 736-8914. Back-Up Lead Counsel are: Ching-Lee Fukuda (Reg. No.
`
`44,334), clfukuda@sidley.com, (212) 839-7364; and Thomas A. Broughan III
`
`(Reg. No. 66,001), tbroughan@sidley.com, (202) 736-8314.
`
`IV. Service Information (§42.8(b)(4))
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`Service on Petitioner may be made by e-mail (iprnotices@sidley.com), mail
`
`or hand delivery to: Sidley Austin LLP, 1501 K Street, N.W., Washington, D.C.
`
`20005. The fax number for lead and backup lead counsel is (202) 736-8711.
`
`
`
`2
`Petitioner’s Updated Mandatory Notices
`
`
`
`IPR2019-00911
`
`Dated: August 23, 2019
`
`U.S. Pat. No. 9,861,286
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioner
`
`3
`Petitioner’s Updated Mandatory Notices
`
`
`
`IPR2019-00911
`
`U.S. Pat. No. 9,861,286
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 23rd day of
`
`August, 2019, I caused to be served a true and correct copy of the foregoing by
`
`email on the following counsel:
`
`
`
`Thomas A. Lewry
`Robert C. J. Tuttle
`John M. Halan
`Christopher C. Smith
`Andrew B. Turner
`John S. LeRoy
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
`
`E-mail: OMSC0112IPR1@brookskushman.com
`
`Dated: August 23, 2019
`
`Respectfully submitted,
`
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioner
`
`
`
`
`
`
`4
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