`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`TELEBRANDS CORP.,
`Petitioner
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner
`
`___________________
`
`Case PGR2017-00040
`U.S. Patent 9,682,789
`___________________
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(3)
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Case PGR2017-00040
`U.S. Patent 9,682,789
`
`
`Patent Owner, Tinnus Enterprises, LLC, hereby files its Updated Mandatory
`
`Notices Pursuant to 37 C.F.R. § 42.8(a)(3) to update litigation proceedings and
`
`related matters.
`
`I.
`
`RELATED MATTERS
`A. Related Applications Before the USPTO Involving the Patent-at-
`Issue
`
`Patent Owner notifies the Board of the following update in prosecution
`
`matters involving U.S. Patents commonly-owned with U.S. Pat. No. 9,682,789 (the
`
`“’789 patent”), which may affect or be affected by a decision in this proceeding:
`
` The USPTO issued a Notice of Allowance for U.S. application serial no.
`15/613,037 (the “’037 application”) on January 25, 2018. Like the ’789
`patent, the ’037 application claims priority under 35 U.S.C. §120 to
`application serial no. 14/492,487, which issued as related U.S. Patent No.
`9,051,066. The Examiner specifically addresses issues presented in
`PGR2017-00040 petition and in Dr. Kamrin’s declaration (Ex. 1021).
`
`Litigation Involving the Patent-at-Issue
`
`B.
`Patent Owner also notifies the Board of the following updates in the
`
`litigation proceedings involving U.S. Patents commonly-owned with the ’789
`
`patent, which may affect or be affected by a decision in this proceeding.
`
`The following actions/proceedings involve related U.S. Patent Nos.
`
`9,051,066; 9,242,749; 9,315,282; 9,527,612, 9,682,789; and/or 9,533,779:
`
`1
`
`
`
`Case PGR2017-00040
`U.S. Patent 9,682,789
`
`
` Tinnus Enterprises, LLC v. Telebrands Corporation, No. 2017-1175
`(Fed. Cir. January 16, 2018) (Rule 36 judgment affirming the district
`court’s preliminary injunction against Telebrands in Case Nos. 6:16-cv-
`00033-RWS-JDL and 6:16-cv-00034).
`
` Tinnus Enterprises, LLC v. Telebrands Corporation, No. 2017-1760
`(Fed. Cir. January 16, 2018) (Rule 36 judgment affirming the district
`court’s preliminary injunction against Telebrands and denial of
`Telebrands’ motion for reconsideration in Case Nos. 6:16-cv-00033-
`RWS-JDL and 6:16-cv-00034).
`
` Tinnus Enterprises, LLC v. Telebrands Corporation, No. 2017-1811
`(Fed. Cir. January 16, 2018) (Rule 36 judgment affirming the district
`court’s preliminary injunction against the retailer defendants in Case Nos.
`6:16-cv-00033-RWS-JDL and 6:16-cv-00034).
`o Note: The above three appeals were consolidated, with No.
`2017-1175 being designated the lead appeal.
`
` Tinnus Enterprises, LLC v. Telebrands Corporation, No. 2017-2194
`(Fed. Cir. January 16, 2018) (Rule 36 judgment affirming the district
`court’s preliminary injunction against Telebrands and denial of
`Telebrands’ motion for reconsideration in Case No. 6:17-cv-00170-
`RWS-JDL).
`
`
`
`
`
`
`
`2
`
`
`
`Date: January 31, 2018
`
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`Case PGR2017-00040
`U.S. Patent 9,682,789
`
`
`Respectfully submitted,
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`/Jonathan Tuminaro/
`
`Jonathan Tuminaro
`Reg. No. 61,327
`Counsel for Patent Owner
`
`3
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`
`
`Case PGR2017-00040
`U.S. Patent 9,682,789
`
`
`
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`UPDATED MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(3)
`
`was served in their entirety electronically via e-mail on January 31, 2018 to the
`
`following counsel of record for Petitioner:
`
`Robert T. Maldonado (Lead Counsel)
`Tonia A. Sayour (Back-up Counsel)
`Elana B. Araj (Back-up Counsel)
`Eric J. Maurer (Back-Up Counsel)
`
`
`Rmaldonado@cooperdunham.com
`tsayour@cooperdunham.com
`earaj@cooperdunham.com
`emaurer@bsfllp.com
`
`
`
`
`Date: January 31, 2018
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Jonathan Tuminaro/
`
`Jonathan Tuminaro
`Reg. No. 61,327
`Counsel for Patent Owner
`
`
`
`
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