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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v .
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`PINN, INC.,
`Patent Owner.
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`Case IPR2021-00220
`Patent No. 10,455,066
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`PATENT OWNER’S
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`MANDATORY NOTICES
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`PURSUANT TO 37 C.F.R. § 42.8
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`1
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`Patent Owner submits the following mandatory notices pursuant to 37
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`C.F.R. § 42.8(a)(2):
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`37 C.F.R. § 42.8(b)(1) – REAL PARTY-IN-INTEREST
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`Patent Owner Pinn, Inc., a California corporation, is a real party-in-interest.
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`37 C.F.R. § 42.8(b)(2) – RELATED MATTERS
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`I.
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`II.
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`Pursuant to 37 C.F.R. § 42.8(b)(2), Patent Owner notifies the Board of the
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`following judicial or administrative matters that would affect, or be affected by, a
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`decision in this proceeding.
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`A. Litigation Involving the Patent-at-Issue
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`U.S. Patent No. 10,455,066 is at issue in the following pending litigation:
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`Pinn, Inc. v. Apple Inc., Case No. 8:19-cv-1805 (C.D. Cal.), filed September 20,
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`2019. Related Patent Nos. 9,807,491 and 10,609,198 are also at issue in the
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`district court.
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`The following administrative matters, all by Petitioner Apple Inc, may be
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`affected by a decision in this proceeding:
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`AIA Review #
`IPR2020-01668
`IPR2021-00221
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`Patent #
`9,807,491
`10,455,066
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`III. 37 C.F.R. § 42.8(b)(3) – LEAD AND BACK-UP COUNSEL
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`Patent Owner hereby designates lead and back-up counsel. A Power of
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`Attorney is concurrently filed herewith.
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`2
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`Lead Counsel
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`Back-up Counsel
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`Back-up Counsel
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`Cabrach Connor, Reg. No. 53,837
`CONNOR KUDLAC LEE PLLC
`609 Castle Ridge Road, Suite 450
`Austin, Texas 78746
`E-mail: cab@connorkudlaclee.com
`Tel.: (512) 646-2060
`Fax.: (888) 387-1134
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`Carder W. Brooks., Reg. No. 75,456
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 Commerce Street, Suite 3500 Fort Worth, Texas
`76102-4135
`E-mail: cbrooks@whitakerchalk.com
`Tel.: (817) 878-0500
`Fax: (817) 878-0501
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`David A. Skeels
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 Commerce Street, Suite 3500
`Fort Worth, Texas 76102-4135
`E-mail: dskeels@whitakerchalk.com
`Tel.: (817) 878-0500
`Fax: (817) 878-0501
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`Back-up Counsel
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`John R. Kasha, Reg. No. 53,100
`Kasha Law LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
`E-mail: john.kasha@kashalaw.com
`Tel.: (703) 867-1886
`Fax: (301) 340-3022
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`IV. 37 C.F.R. § 42.8(b)(4) – SERVICE INFORMATION
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`Please address all correspondence to the lead and back-up counsel as shown
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`above. Patent Owner consents to electronic service by e-mail at the e-mail addresses
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`provided above.
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with IPR2021-00220 to Deposit Account 50-2555.
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`Date: January 6, 2021
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`Respectfully submitted,
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`/Cabrach Connor/
`Cabrach Connor
`Registration No. 53,837
`Lead Counsel for Patent Owner
`CONNOR KUDLAC LEE PLLC
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`CERTIFICATE OF SERVICE
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`I certify that a copy of the foregoing Patent Owner’s Mandatory Notices
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`Pursuant to 37 C.F.R. § 42.8 was served electronically via e-mail on January 6,
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`2021, to the following counsel of record for Petitioner:
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`W. Karl Renner (Lead Counsel)
`IPR39521-0092IP2@fr.com
`Kim Leung (Back-up Counsel)
`leung@fr.com
`Usman Khan (Back-up Counsel)
`khan@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
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`Date: January 6, 2021
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`/Cabrach Connor/
`Cabrach Connor
`Registration No. 53,837
`Lead Counsel for Patent Owner
`CONNOR KUDLAC LEE PLLC
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`4
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