`__________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`TIKTOK INC., Petitioner
`v.
`10TALES, INC.,
`Patent Owner
`__________
`IPR Case No. IPR2021-00476
`Patent 8,856,030
`__________
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`SMRH:4842-7727-9467
`
`
`
`
`
`IPR2021-00476
`U.S. Patent No 8,856,030
`Petitioner TikTok Inc. provides the following updated Mandatory Notices
`
`
`
`pursuant to 37 CFR § 42.8. On May 21, 2021, Judge Albright of the Western District
`
`of Texas transferred related case 10Tales, Inc. v. TikTok Inc. et al., No. 6:20-cv-810
`
`(W.D. Tex.) involving U.S. Patent No. 8,856,030 (“the ’030 Patent”) to the U.S.
`
`District Court for the Northern District of California. The case is now captioned
`
`10Tales, Inc. v. TikTok Inc. et al., No. 3:21-cv-03868 (N.D. Cal.), with an initial case
`
`management conference set for August 20, 2021, and no set trial date.
`
`Additionally, Patent Owner asserts that the case captioned US Inventor et al. v.
`
`Hirshfeld, No. 2:21-cv-00047-JRG (E.D. Tex. Feb. 8, 2021), is related to this
`
`petition. Petitioner takes no position as to the relevance of this case, as it does not
`
`relate to deciding non-infringement, invalidity, or unenforceability of the ’030
`
`Patent. To the best of Petitioner’s knowledge, no trial date has been set. To the best
`
`of Petitioner’s knowledge, there are no other related cases. The remainder of
`
`Petitioner’s mandatory notices remain unchanged.
`
`Updated Related Matters (37 C.F.R. § 42.8(b)(2))
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Petitioner hereby provides the following
`
`updated related matters of which it is currently aware:
`
` 10Tales, Inc. v. TikTok Inc. et al., No. 3:21-cv-03868 (N.D. Cal. May 21,
`
`2021),1 and
`
`
`1 Transferred from 10Tales, Inc. v. TikTok Inc. et al., No. 6:20-cv-810 (W.D. Tex.), filed Sept. 2,
`2020.
`
`SMRH:4842-7727-9467
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`- 1 -
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`IPR2021-00476
`U.S. Patent No 8,856,030
` US Inventor et al. v. Hirshfeld, No. 2:21-cv-00047-JRG (E.D. Tex. Feb. 8,
`
`
`
`2021).
`
`
`
`
`
`
`Dated: May 28, 2021
`
`
`Respectfully submitted,
`
`/s/ Stephen S. Korniczky
`
`Stephen S. Korniczky (Reg. No. 34,853)
`Martin R. Bader (Reg. No. 54,736)
`Ericka J. Schulz (Reg. No. 60,665)
`Eric K. Gill (Reg. No. 71,709)
`SHEPPARD, MULLIN, RICHTER &
`HAMPTON LLP
`12275 El Camino Real, Suite 100
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
`LegalTM-TK-10T@sheppardmullin.com
`
`Counsel for Petitioner TikTok Inc.
`
`
`SMRH:4842-7727-9467
`
`
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`- 2 -
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that on May 28, 2021, a true and correct copy of the
`
`foregoing was also sent via electronic mail to the attorneys of record for Patent
`
`Owner in this matter IPR2021-00476:
`
`
`FLACHSBART & GREENSPOON, LLC
`Robert P. Greenspoon
`rpg@fg-law.com
`William W. Flachsbart
`wwf@fg-law.com
`
`
`The undersigned certifies that on May 28, 2021, a true and correct copy of the
`
`foregoing was also sent via electronic mail to the attorneys of record for Plaintiff in
`
`the concurrent litigation matter:
`
`
`COZEN O’CONNOR
`Barry P. Golob
`bgolob@cozen.com
`David M. Stahl
`dstahl@cozen.com
`Eric Levi
`elevi@cozen.com
`Samuel A. Lewis
`slewis@cozen.com
`Thomas J. Fisher
`tfisher@cozen.com
`
`THE DAVIS FIRM, PC
`William E. Davis, III
`bdavis@davisfirm.com
`Rudolph Fink, IV
`rfink@davisfirm.com
`
`
`SMRH:4842-7727-9467
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`-3-
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`IPR2021-00476
`U.S. Patent No. 8,856,030
`
` /
`
` Stephen S. Korniczky /
`Stephen S. Korniczky
`(Reg. No. 34,853)
`Counsel for Petitioner TikTok Inc.
`
`
`
`
`Date: May 28, 2021
`
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Tel.: (858) 720-8900
`Fax: (858) 509-3691
`LegalTM-TK-
`10T@sheppardmullin.com
`
`
`
`
`SMRH:4842-7727-9467
`
`
`
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`-4-
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`
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