Filed on behalf of Netsirv, LLC.
`By:
`
`Brett Klein
`
`Winthrop & Weinstine, P.A.
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`Tel. (612) 604-6400
`e—mai1:
`patent@winthrop.com
`bklein@winthrop.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETSIRV, LLC,
`Petitioner
`
`V.
`
`BOXBEE, INC.,
`Patent Owner
`
`U.S. Patent 8,756,166
`Appl. No. 14/010,175 filed August 26, 2013
`Issued June 17, 2014
`Title: SYSTEM AND METHOD FOR STORAGE CONTAINER TRACKING
`
`AND DELIVERY
`
`STATEMENT REGARDING SERVICE
`
`
`By:
`
`Brett Klein
`
`Winthrop & Weinstine, P.A.
`225 South Sixth Street, Suite 3500
`Minneapolis, MN 55402
`Tel. (612) 604-6400
`e—mai1:
`patent@winthrop.com
`bklein@winthrop.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETSIRV, LLC,
`Petitioner
`
`V.
`
`BOXBEE, INC.,
`Patent Owner
`
`U.S. Patent 8,756,166
`Appl. No. 14/010,175 filed August 26, 2013
`Issued June 17, 2014
`Title: SYSTEM AND METHOD FOR STORAGE CONTAINER TRACKING
`
`AND DELIVERY
`
`STATEMENT REGARDING SERVICE
`
`
`
`STATEMENT REGARDING SERVICE
`
`37 C.F.R. § 42.6(e)(3) requires that “[i]f a party is represented by counsel
`
`of record in the proceeding, service must be on counsel.”
`
`(emphasis
`
`added).
`
`37 C.F.R. § 42.6(e)(2) requires that “[e]ach document filed with the
`
`Board, if not previously served, must be serviced simultaneously on each
`
`opposing party.”
`
`Kristopher D. Matthews is the only named inventor of the ‘l66 patent
`
`and Boxbee,
`
`Inc.
`
`is the only named applicant of the ‘166 Patent.
`
`Moreover, a review of the Assignments on the Web database prior to
`
`filing the petition suggested that Boxbee, Inc. remained the owner of the
`
`‘ 166 patent.
`
`At the time of filing the Petition, Petitioner’s counsel was not aware of
`
`any ongoing litigation between Petitioner and Mr. Matthews or Boxbee,
`
`Inc. that would identify counsel for litigation—type proceedings.
`
`Still further, at the time of filing the Petition, Petitioner’s counsel was
`
`unaware of who the patent owner would engage for representation before
`
`the PTAB and had no reason to believe that Boxbee, Inc. would choose
`
`to retain prosecution counsel for the PTAB proceeding.
`
`
`
`Accordingly, Petitioner’s counsel was unaware of any counsel of record
`
`in the proceeding for Boxbee, Inc.
`
`On March 17, 2015, the present Petition for Post Grant Review of U.S.
`
`Patent No. 8,756,166 (the ‘l66 patent) was filed and served on Boxbee,
`
`Inc. A copy was sent to Kristopher D. Matthews at Boxbee, Inc., 435
`
`23rd Street, Suite 19, San Francisco, CA 94107, and emailed to
`
`kristoph@boxbee.com.
`
`The service of the petition on Boxbee, Inc. was performed in an effort to
`
`comply with the above listed rules and Petitioner’s counsel believes that
`
`these rules have been met.
`
`It is worth noting that Petitioner’s counsel have experienced delay in past
`
`proceedings where a petition for inter partes review was served on a
`
`client’s counsel of record at the patent office. The delay occurred when it
`
`took time for the prosecuting attorney to forward the petition to the patent
`
`owner, and for the patent owner to ultimately forward the petition to the
`
`counsel
`
`selected for
`
`representing them in the PTAB proceeding.
`
`Petitioner’s counsel believed that serving the Petition on Boxbee, Inc.
`
`would afford the patent owner the best opportunity to be quickly
`
`informed and allow for selection of counsel for these proceedings and to
`
`act on the Petition.
`
`
`
`10.
`
`37 C.F.R.
`
`§ 42.205(a), applying specifically to Post Grant Review
`
`proceedings, requires that “[i]n addition to the requirements of § 42.6, .
`
`.
`
`.
`
`The petition and supporting evidence must be served on the patent owner
`
`at the correspondence address of record for the subject patent. The
`
`petitioner may additionally serve the petition and supporting evidence on
`
`the patent owner at any other address known to the petitioner as likely to
`
`effect service.”
`
`ll.
`
`Petitioner’s counsel notes that the timing of additional requirements of
`
`section 42.205(a) are not explicitly addressed by the rules.
`
`12. According to the USPTO online Patent Application Information Retrieval
`
`system, a correspondence address for Schox PLC is listed, but no
`
`attorney or agent of record is listed. The prosecution history record for
`
`the ‘l66 patent shows that Jeffrey Schox was the prosecuting attorney for
`
`Applicant Boxbee, Inc.
`
`13.
`
`Petitioner has, today, served the Petition on Schox PLC.
`
`Dated:
`
`27 gal)’,
`
`Respectfully Submitted,
`
`By:
`
`Brett Klein
`
`Reg. No. 64,448
`Counsel for Petitioner
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the foregoing Statement was served on Boxbee, Inc., by
`
`filing these documents through the Patent Review Processing System as well as:
`
`e-mailing a copy to info@schoxp1c.com and kristoph@boxbee.com
`
`and by mailing a copy to:
`
`Jeffrey Schox
`
`Schox, PLC
`
`500 3rd Street, Suite 515
`
`San Francisco, CA 94107
`
`and
`
`Kristopher D. Matthews
`
`Boxbee, Inc.
`
`435 23rd Street, Suite 19,
`
`San Francisco, CA 94107
`
`Dated:
`
`7[ Z 7g 20‘ Y’
`
`Respectfully Submitted,
`
`
`By:
`
`Brett Klein
`
`Reg. No. 64,448
`
`Counsel for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that the Petition filed on March 17, 2015 was, today, served
`
`on Boxbee, Inc., by e-mailing a copy to info@schoxplc.com
`
`and by mailing a copy to:
`
`Jeffrey Schox
`
`Schox, PLC
`
`500 3rd Street, Suite 515
`
`San Francisco, CA 94107
`
`Dated:
`
`)5 Z 7 1 Z0! 1/
`
`Respectfully Submitted,
`
`1018 1989vl
`
`I Brett Klein
`Reg. No. 64,448
`
`Counsel for Patent Owner
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