`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SUPERCELL OY,
`Petitioner,
`
`v.
`
`GREE, INC.,
`Patent Owner.
`
`Case IPR2020-01633
`Patent 9,079,107 B2
`
`PATENT OWNER’S MANDATORY NOTICE
`PURSUANT TO 37 C.F.R. § 42.8
`
`
`
`IPR2020-01633
`U.S. Pat. No. 9,079,107
`GREE, Inc., the Patent Owner, provides the following mandatory notices
`
`pursuant to 37 C.F.R. § 42.8.
`
`I.
`
`Real Party-in-Interest
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), the real party-in-interest is GREE, Inc., the
`
`assignee of record for U.S. Patent No. 9,079,107 (“the ’107 patent”).
`
`II.
`
`Related Matters
`
`Patent Owner identifies the following matters that may be deemed related
`
`pursuant to 37 C.F.R. § 42.8(b)(2).
`
`A.
`
`Proceedings Before the USPTO Involving the Patent-at-Issue
`
`The ’107 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 proceeding before the Office involves a patent related to the
`
`’107 patent: IPR2020-01628 (regarding U.S. Patent No. 9,561,439).
`
`C.
`
`U.S. Patent Applications Related to the Patent-at-Issue
`
`U.S. Application No. 16/822,178, filed on March 18, 2020, is a pending U.S.
`
`patent application that is a division of the ’107 patent.
`
`2
`
`
`
`IPR2020-01633
`U.S. Pat. No. 9,079,107
`
`D.
`
`U.S. Litigations Involving the Patent-at-Issue and Related Patents
`
`There is a litigation pending in the U.S. District Court for the Eastern District of
`
`Texas involving the ’107 patent, as well as related U.S. Patent No. 9,561,439: Gree,
`
`Inc. v. Supercell Oy, Civil Action No. 2:19-cv-00311.
`
`III. Lead and Back-up Counsel and Service Information
`
`In accordance with 37 C.F.R. § 42.8(b)(3) and (b)(4), Patent Owner identifies
`
`the following lead and back-up counsel and service information. Patent Owner
`
`agrees to electronic service to the email addresses identified below.
`
`Lead Counsel:
`
`Backup Counsel
`
`John C. Alemanni
`Reg. No. 47,384
`4208 Six Forks Road, Suite 1400
`Raleigh, NC 27609
`Telephone: 919-420-1724
`Fax: 919-420-1800
`Email:
`jalemanni@kilpatricktownsend.com
`Backup Counsel
`
`Andrew Rinehart
`Reg. No. 75,537
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`Telephone: 336-607-7312
`Fax: 336-607-7500
`Email:
`arinehart@kilpatricktownsend.com
`Backup Counsel
`
`Joshua H. Lee
`Reg. No. 61,076
`1100 Peachtree Street NE
`Suite 2800
`Atlanta, GA 30309-4528
`Telephone: 404-815-6582
`Fax: 404-541-3252
`Email:
`jlee@kilpatricktownsend.com
`
`Scott A. McKeown
`Reg. No. 42,866
`Ropes & Gray
`2099 Pennsylvania Avenue, N.W.
`Washington, D.C. 20006
`Telephone: 202-508-4740
`Fax: 202-508-4650
`Email:
`Scott.McKeown@ropesgray.com
`
`3
`
`
`
`IPR2020-01633
`U.S. Pat. No. 9,079,107
`
`Dated: October 5, 2020
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Counsel for Patent Owner
`
`4
`
`
`
`IPR2020-01633
`U.S. Pat. No. 9,079,107
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Mandatory Notice Pursuant to 37 C.F.R. §42.8 has been served electronically via
`
`email upon the following:
`
`Rajiv P. Patel
`Brian M. Hoffman
`Jennifer R. Bush
`Kevin X. McGann
`Michael J. Sacksteder
`Geoffrey Miller
`Emily J. Bullis
`Fenwick & West LLP
`RPatel-ptab@fenwick.com
`
`Dated: October 5, 2020
`
`By: /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Counsel for Patent Owner
`
`5
`
`
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