throbber
Filed on behalf of Cytonome/ST, LLC.
`By: Kirt O’Neill (koneill@akingump.com)
`
`AKIN GUMP STRAUSS HAUER & FELD LLP
`
`112 E. Pecan Street, Suite 1010
`San Antonio, Texas 78205
`Tel: (210) 281-7106
`Fax: (210) 224-2035
`
`
`
`
`
`
`
`Paper No. ___
`Date Filed: August 18, 2020
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`NANOCELLECT BIOMEDICAL, INC.,
`Petitioner
`
`v.
`
`CYTONOME/ST, LLC,
`Patent Owner
`
`________________
`
`Case IPR2020-00548
`Patent 8,623,295
`________________
`
`
`CYTONOME/ST, LLC’S UPDATED EXHIBIT LIST
`
`
`
`

`

`IPR2020-00548
`Patent No. 8,623,295
`
`Pursuant to 37 C.F.R. § 42.63(e), Patent Owner, Cytonome/ST, LLC, hereby
`
`submits a current list of its exhibits:
`
`Exhibit
`
`Description
`
`EX2001
`
`Declaration of Don W. Arnold, Ph.D.
`
`EX2002
`
`Curriculum Vitae of Dr. Arnold
`
`EX2003
`
`EX2004
`
`EX2005
`
`EX2006
`
`EX2007
`
`EX2008
`
`EX2009
`
`EX2010
`
`Scheduling Order, Cytonome/ST, LLC v. NanoCellect Biomedical,
`Inc., C.A. No. 1:19-00301 (RGA) (D. Del. filed May 8, 2019) (D.I.
`15)
`
`Proposed Order to Amend Scheduling Order, Cytonome/ST, LLC v.
`NanoCellect Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (D.
`Del. filed April 14, 2020) (D.I. 79)
`
`Text Order Granting Proposed Order to Amend Scheduling Order,
`Cytonome/ST, LLC v. NanoCellect Biomedical, Inc., C.A. No.
`1:19-00301 (RGA) (D. Del. filed April 15, 2020) (granting D.I. 79)
`
`Joint Claim Construction Brief, Cytonome/ST, LLC v. NanoCellect
`Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (D. Del. filed
`February 21, 2020) (D.I. 66)
`
`NanoCellect’s Invalidity Contentions, Cytonome/ST, LLC v.
`NanoCellect Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (served
`September 20, 2019)
`
`NanoCellect’s Invalidity Contentions Claim Chart for ʼ295 Patent,
`Cytonome/ST, LLC v. NanoCellect Biomedical, Inc., C.A. No. 1:19-
`00301 (RGA) (served September 20, 2019)
`
`E-mail correspondence between counsel for NanoCellect and
`Cytonome regarding New Mediation Date (dated April 20, 2020)
`
`E-mail correspondence between Judge Thynge and counsel for
`NanoCellect and Cytonome regarding New Mediation Date (dated
`April 20, 2020)
`
`EX2011
`
`Prosecution History of U.S. Patent No. 6,877,528
`
`-1-
`
`

`

`IPR2020-00548
`Patent No. 8,623,295
`
`
`EX2012
`
`EX2013
`
`EX2014
`
`EX2015
`
`EX2016
`
`EX2017
`
`EX2018
`
`EX2019
`
`EX2020
`
`EX2021
`
`EX2022
`
`Claim Construction Memorandum Opinion, Cytonome/ST, LLC v.
`NanoCellect Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (filed
`May 26, 2020)
`
`Prosecution History of U.S. Patent No. 7,584,857 (filed August 7,
`2006)
`
`U.S. Patent No. 5,858,187 to Ramsey et al. (“Ramsey”) (filed
`September 26, 1996)
`
`Markman Transcript, Cytonome/ST, LLC v. NanoCellect
`Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (dated April 28,
`2020)
`
`NanoCellect’s Identification of Claim Terms for Construction,
`Cytonome/ST, LLC v. NanoCellect Biomedical, Inc., C.A. No. 1:19-
`00301 (RGA) (served October 11, 2019)
`
`NanoCellect’s Proposed Claim Constructions, Cytonome/ST, LLC
`v. NanoCellect Biomedical, Inc., C.A. No. 1:19-00301 (RGA)
`(served October 25, 2019)
`
`NanoCellect’s Responsive Claim Construction Brief, Cytonome/ST,
`LLC v. NanoCellect Biomedical, Inc., C.A. No. 1:19-00301 (RGA)
`(served January 10, 2020)
`
`Joint Claim Construction Brief Appendix, Cytonome/ST, LLC v.
`NanoCellect Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (D.
`Del. filed February 21, 2020) (D.I. 67)
`
`E-mail correspondence between counsel for NanoCellect,
`Cytonome, and Judge Thynge regarding mediation (dated February
`11, 2020)
`
`Cover Letter to Cytonome’s Infringement Contentions Indicating
`Asserted Claims (served August 7, 2019)
`
`Order Granting Patent Mediation Conferences and Mediation
`Statements, Cytonome/ST, LLC v. NanoCellect Biomedical, Inc.,
`C.A. No. 1:19-00301 (RGA) (D. Del. filed May 15, 2020) (D.I. 83)
`
`EX2023
`
`E-mail correspondence between counsel for NanoCellect and
`Cytonome regarding Construction of “Buffer” (dated May 8, 2020)
`
`-2-
`
`

`

`IPR2020-00548
`Patent No. 8,623,295
`
`
`EX2024
`
`EX2025
`
`EX2026
`
`EX2027
`
`EX2028
`
`EX2029
`
`EX2030
`
`EX2031
`
`EX2032
`
`Cytonome’s Letter to the Court Regarding Claim Construction,
`Cytonome/ST, LLC v. NanoCellect Biomedical, Inc., C.A. No.
`1:19-00301 (RGA) (D. Del. filed May 13, 2020) (D.I. 82)
`
`Cytonome’s Exhibits to Letter to the Court Regarding Claim
`Construction, Cytonome/ST, LLC v. NanoCellect Biomedical, Inc.,
`C.A. No. 1:19-00301 (RGA) (D. Del. filed May 13, 2020) (D.I. 82-
`1)
`
`NanoCellect’s Letter to the Court Regarding Claim Construction,
`Cytonome/ST, LLC v. NanoCellect Biomedical, Inc., C.A. No.
`1:19-00301 (RGA) (D. Del. filed May 15, 2020) (D.I. 84)
`
`NanoCellect’s Exhibits to Letter to the Court Regarding Claim
`Construction, Cytonome/ST, LLC v. NanoCellect Biomedical, Inc.,
`C.A. No. 1:19-00301 (RGA) (D. Del. filed May 15, 2020) (D.I. 84-
`1)
`
`Claim Construction Order, Cytonome/ST, LLC v. NanoCellect
`Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (D. Del. filed June
`2, 2020) (D.I. 88)
`
`NanoCellect’s Letter to Counsel, Limiting the Asserted Prior Art
`(served December 3, 2019)
`
`U.S. Patent No. 6,506,609 to Wada et al. (“Wada”) (filed May 11,
`2000)
`
`NanoCellect’s Answer and Counterclaims, Cytonome/ST, LLC v.
`NanoCellect Biomedical, Inc., C.A. No. 1:19-00301 (RGA) (D.
`Del. filed April 19, 2019) (D.I. 10)
`
`E-mail correspondence between counsel for NanoCellect and
`Cytonome regarding Stipulation and Proposed Order to Amend the
`Schedule (dated April 14, 2020)
`
`EX2033
`
`Declaration of Thomas W. Landers in Support of Motion to Appear
`Pro Hac Vice
`
`
`
`
`
`-3-
`
`

`

`
`
`
`
`Respectfully submitted,
`
`/Kirt O’Neill/
`By:
`Kirt O’Neill
`Registration No. 38,257
`koneill@akingump.com
`Daniel L. Moffett
`Registration No. 60,715
`dmoffett@akingump.com
`George Andrew Rosbrook
`Registration No. 69,728
`arosbrook@akingump.com
`Dorian Ojemen
`Registration No. 72,596
`dojemen@akingump.com
`Thomas W. Landers
`Pro Hac Vice Admission Pending
`AKIN GUMP STRAUSS HAUER &
`FELD LLP
`112 E. Pecan Street, Suite 1010
`San Antonio, Texas 78205
`Tel: 210-281-7100
`Fax: 210-224-2035
`
`
`Counsel for Patent Owner
`Cytonome/ST, LLC
`
`IPR2020-00548
`Patent No. 8,623,295
`
`
`Dated: August 18, 2020
`
`
`
`
`
`
`
`-4-
`
`

`

`IPR2020-00548
`Patent No. 8,623,295
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Cytonome/ST,
`
`LLC’s Updated Exhibit List was served on counsel of record on August 18, 2020
`
`by filing this document through the End-to-End System, as well as delivering a
`
`copy via electronic mail to counsel of record for the Petitioner at the following
`
`addresses:
`
`WILSON SONSINI GOODRICH & ROSATI
`Michael T. Rosato – mrosato@wsgr.com
`Lora Green – lgreen @wsgr.com
`Douglas Carsten – dcarsten@wsgr.com
`Jad A. Mills – jmills@wsgr.com
`
`
`
`
`Dated: August 18, 2020
`
`Respectfully submitted,
`
`By: /Kirt O’Neill/
`Kirt O’Neill
`Registration No. 38,257
`Counsel for Patent Owner
`
`
`
`
`
`
`
`-5-
`
`

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