UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`GOOGLE INC.,
`
`Petitioner
`
`v.
`
`Patent of AT HOME BONDHOLDERS’ LIQUIDATING TRUST
`
`Patent Owner.
`
`______________________
`
`Case CBM2016-00036
`
`U.S. Patent No. 6,286,045
`______________________
`
`
`
`PATENT OWNER’S SUBMISSION OF
`MANDATORY NOTICE INFORMATION PURSUANT TO
`37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`______________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`GOOGLE INC.,
`
`Petitioner
`
`v.
`
`Patent of AT HOME BONDHOLDERS’ LIQUIDATING TRUST
`
`Patent Owner.
`
`______________________
`
`Case CBM2016-00036
`
`U.S. Patent No. 6,286,045
`______________________
`
`
`
`PATENT OWNER’S SUBMISSION OF
`MANDATORY NOTICE INFORMATION PURSUANT TO
`37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`CBM2016-00036
`Patent 6,286,045
`The Patent Owner hereby submits the following information pursuant to
`
`Section 42.8 of the Code of Federal Regulations.
`
`1.
`
`Real Party-In-Interest
`
`At Home Bondholders’ Liquidating Trust (“AHBLT”) is a liquidating trust
`
`formed under the confirmed plan of reorganization for At Home Corporation in
`
`connection with its bankruptcy filing on September 28, 2001, in the United States
`
`Bankruptcy Court for the Northern District of California. AHBLT’s address is
`
`Richard A. Williamson, Trustee of At Home Bondholders’ Liquidating Trust, c/o
`
`Flemming Zulack Williamson Zauderer LLP, One Liberty Plaza, New York, New
`
`York 10006-1404. AHBLT is the owner by assignment of U.S. Patent No.
`
`6,286,045 (“’045 Patent”) and holds all rights, title, and interest in and to the ’045
`
`Patent.
`
`2.
`
`Related Matters
`
`The following judicial and/or administrative proceedings could affect, or be
`
`affected by, a decision in this proceeding:
`
`The ’045 patent has been asserted in the following litigation, Richard A.
`
`Williamson, On Behalf of and as Trustee for At Home Bondholders’ Liquidating
`
`Trust v. Google Inc., No. 14-cv-00216-GMS (D. Del. February 19, 2014). This
`
`case was transferred to the Northern District of California, where the case number
`
`2
`
`
`
`CBM2016-00036
`Patent 6,286,045
`is 3:15-cv-00966. A motion to stay pending Inter Partes review was granted on
`
`October 8, 2015 in 3:15-cv-00966.
`
`Petitioner Google Inc. filed a petition requesting inter partes review of U.S.
`
`Patent No. 6,286,045 on February 2, 2015. That proceeding was designated Case
`
`IPR2015-00657 and was instituted on August 14, 2015.
`
`Petitioner Google Inc. filed a second petition requesting inter partes review
`
`of U.S. Patent No. 6,286,045 on February 2, 2015. That proceeding was designated
`
`Case IPR2015-00658 and was not instituted on August 14, 2015.
`
`Petitioner Google Inc. filed a third petition requesting inter partes review of
`
`U.S. Patent No. 6,286,045 on February 2, 2015. That proceeding was designated
`
`Case IPR2015-00660 and was instituted and consolidated with IPR2015-00657 on
`
`August 14, 2015.
`
`Petitioner Google Inc. also filed a petition requesting inter partes review of
`
`U.S. Patent No. 6,014,698 on February 2, 2015, which is a continuation-in-part of
`
`U.S. Patent No. 6,286,045. That proceeding was designated Case IPR2015-00662
`
`and instituted and consolidated with IPR2015-00666 on August 14, 2015.
`
`Petitioner Google Inc. also filed a second petition requesting inter partes
`
`review of U.S. Patent No. 6,014,698 on February, 2 2015, which is a continuation-
`
`in-part of U.S. Patent No. 6,286,045. That proceeding was designated Case
`
`3
`
`
`
`CBM2016-00036
`Patent 6,286,045
`IPR2015-00666 and instituted and consolidated with IPR2015-00662 on August
`
`14, 2015.
`
`3.
`
`Lead and Back-Up Counsel
`
`LEAD COUNSEL
`Garland Stephens , Reg. No. 37242
`WEIL, GOTSHAL & MANGES LLP
`700 Louisiana Street, Suite 1700
`Houston, Texas 77002
`Tel: (713) 546-5000
`Fax: (713) 224-9511
`garland.stephens@weil.com
`
`
`4.
`
`Service Information
`
`BACK-UP COUNSEL
`Justin Constant, Reg. No. 66883
`WEIL, GOTSHAL & MANGES LLP
`700 Louisiana Street, Suite 1700
`Houston, Texas 77002
`Tel: (713) 546-5000
`Fax: (713) 224-9511
`justin.constant@weil.com
`
`
`Service information for lead and back-up counsel is provided in the
`
`designation of lead and back-up counsel above. Please address all correspondence
`
`and service to the address of all counsel above. Patent Owner consents to
`
`electronic
`
`
`service
`
`at
`
`the
`
`following
`
`
`address(es):
`
`garland.stephens@weil.com, justin.constant@weil.com, sean.mills@weil.com.
`
`5.
`
`Conclusion
`
`Patent Owner At Home Bondholders’ Liquidating Trust believes this
`
`submission fulfills the requirements of 37 C.F.R. § 42.8. If any additional
`
`information is required, please contact the undersigned counsel at the address
`
`shown below.
`
`
`
`
`
`4
`
`
`
`Dated: March 09, 2016
`
`Respectfully submitted,
`
`CBM2016-00036
`Patent 6,286,045
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Garland T. Stephens
`Garland T. Stephens, Reg. No. 37242
`Justin L. Constant, Reg. No. 66883
`700 Louisiana St.
`Houston, TX 77002
`(713) 546-5000
`(713) 224-9511
`garland.stephens@weil.com
`justin.constant@weil.com
`Attorneys for Patent Owner
`
`5
`
`
`
`CBM2016-00036
`Patent 6,286,045
`
`CERTIFICATE OF SERVICE
`
`I, Justin L. Constant, hereby certify that on March 9, 2016, a copy of
`
`PATENT OWNER’S
`
`SUBMISSION OF MANDATORY NOTICE
`
`INFORMATION was served by filing this document through the Patent Review
`
`Processing System as well as delivering a copy via electronic mail upon the
`
`following:
`
`
`
`
`
`Michelle K. Holoubek (Reg. # 54,179)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`
`mholoubek-PTAB@skgf.com
`
`Michael V. Messinger (Reg. # 37,575)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`
`Mikem-PTAB@skgf.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Justin L. Constant
`Justin L. Constant
`Reg. No. 66883
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