`
`
`
` .
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`ROKU, INC.
`Petitioner
`
`v.
`
`CANON KABUSHIKI KAISHA
`
`Patent Owner
`
`
`____________________
`
`Case IPR2020-00343
`Patent No. 8,713,206
`_________________
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`Patent Owner, Canon Kabushiki Kaisha, provides the following mandatory
`
`notices pursuant to 37 CPR. § 42.8.
`
`I.
`
`Real Party—in-Interest
`
`Pursuant
`
`to 37 CPR. § 42.8(b)(1),
`
`the real party-in-interest
`
`is Canon
`
`Kabushiki Kaisha, the assignee for US. Patent No. 8,713,206 (“the ’206 patent”).
`
`H.
`
`Related Matters
`
`Patent Owner identifies the following matters that may be deemed related
`
`pursuant to 37 CPR. § 42.8(b)(2).
`
`A.
`
`Proceedings Before the USPTO Involving the Patent-at—Issue
`
`The ’206 patent, which is the subject of this proceeding, is not at issue in any
`
`other proceeding before the Office.
`
`B.
`
`Proceedings before the USPTO Involving Related Patents
`
`The following proceedings before the Office involve a patent related to the
`
`’206 patent:
`
`IPR2020-0034l
`
`Patent 8,078,767
`
`IPR2020-00342
`
`Patent 8,346,986
`
`Patent 7,8 10, 130
`
`IPR2020-00355
`
`Patent 7,746,413
`
`IPR2020-00357
`
`Patent 7,746,413
`
`IPR2020-00358
`
`
`
` IPR2020—00359
`
`Patent 7,810,130
`
`C. US. Patent Applications Related to the Patent-at-Issue
`
`The application for the ’206 patent (U.S. Patent Application No. 13/707,652)
`
`is a continuation of US. Patent Application No. 13/281,543, filed on October 26,
`
`2011 (now US. Patent No. 8,346,986), a division of US. Patent Application No.
`
`12/545,270, filed on August 21, 2009 (now US. Patent No. 8,078,767), and a
`
`continuation of PCT/JP2009/05583 l , filed March 24, 2009.
`
`D.
`
`U.S. Litigations Involving the Patent-at—Issue
`
`The following judicial matter, in which the ’206 patent is at issue, may affect
`
`or be affected by a decision in this proceeding:
`
`Canon, Inc. v. TCL Electronics Holdings Ltd, et al., No. 18-cv-00546-JRG
`
`(E.D. Tex.)
`
`Further, the ’206 patent was at issue in Canon, Inc. v. Roku, Inc., No. 19-
`
`cv-00245-ADA (W.D. Tex.) (dismissed August 7, 2019).
`
`III. Lead and Back-up Counsel and Service Information
`
`In accordance with 37 CPR. § 42.8(b)(3) and (b)(4), Patent Owner
`
`identifies the following lead and back-up counsel and service information:
`
`
`
`Back-Up Counsel
`
`Lead Counsel
`
`Joseph E. Palys (Reg. No. 46,508)
`Paul Hastings LLP
`875 15th Street NW
`
`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP
`875 15th Street NW
`
`Washington, DC 20005
`Telephone: (202) 551-1996
`Facsimile: (202) 551-0496
`E-mail: PH-Roku-C anon-
`
`Washington, DC 20005
`Telephone: (202) 55 1-1990
`Facsimile: (202) 55 1-0490
`E-mail: PH-Roku-Canon—
`
`IPR@paulhastings.com
`
`IPR@paulhastings.com
`
`Dated: January 14, 2020
`
`Respectfully submitted,
`
`/Joseph E. Palys/
`By:
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 14, 2020, I caused a true and correct copy of
`
`the foregoing Patent Owner’s Mandatory Notices Pursuant To 37 C.F.R. § 42.8 to
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`be served electronically on the following counsel of record for Petitioner at the
`
`following email address:
`
`Scott A. McKeown
`Kyle K. Tsui
`ROPES & GRAY LLP
`2099 Pennsylvania Avenue, NW
`Washington, D.C. 20006-6807
`scott.mckeown@ropesgray.com
`kyle.tsui@ropesgray.com
`
`Christopher M. Bonny
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`christopher.bonny@ropesgray.com
`
`
`
`
`By: /Joseph E. Palys/
`Joseph E. Palys
`Reg. No. 46,508
`
`Counsel for Patent Owner
`
`
`
`
`
`Dated: January 14, 2020
`
`
`
`
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