UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`GOOGLE INC.,
`Petitioner,
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`v.
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`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`___________
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`Case IPR2015-00345
`Patent 8,205,237 B2
`___________
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`PATENT OWNER’S UPDATED MANDATORY NOTICE
`PURSUANT TO 37 C.F.R. § 42.8
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`610009.1
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`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`NETWORK-1 TECHNOLOGIES, INC.,
`Patent Owner.
`___________
`
`Case IPR2015-00345
`Patent 8,205,237 B2
`___________
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`
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`PATENT OWNER’S UPDATED MANDATORY NOTICE
`PURSUANT TO 37 C.F.R. § 42.8
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`610009.1
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner Network-1 Technologies, Inc.
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`(“Patent Owner” or “Network-1”) hereby submits the following updated
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`mandatory notice information.
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`Related Matters Under 37 C.F.R. § 42.8(b)(2)
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`The ‘237 Patent is the subject of litigation between Patent Owner and
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`Petitioner in the U.S. District Court for the Southern District of New York, namely,
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`Network-1 Technologies, Inc. v. Google Inc. and YouTube, LLC, Case No. 1:14-cv-
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`02396 (“the Litigation”).
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`U.S. Patent No. 8,640,179 (“the ‘179 Patent”) issued from an application
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`related to the ‘237 Patent family. The ‘179 Patent is also the subject of the
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`Litigation. In addition, the ‘179 Patent is at issue in the inter partes review Case
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`IPR2015-00343, which was requested by the Petitioner. The Board instituted inter
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`partes review in this case on June 23, 2015 (see Google, Inc. v. Network-1
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`Technologies, Inc., IPR2015-00343, Paper 6 (PTAB June 23, 2015)).
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`U.S. Patent No. 8,010,988 (“the ‘988 Patent”) issued from an application
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`related to the ‘237 Patent family. The ‘988 Patent is also the subject of the
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`Litigation. In addition, the ‘988 Patent is at issue in the inter partes review Case
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`IPR2015-00347, which was requested by the Petitioner. The Board instituted inter
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`partes review in this case on June 23, 2015 (see Google, Inc. v. Network-1
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`Technologies, Inc., IPR2015-00347, Paper 6 (PTAB June 23, 2015)).
`2
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`610009.1
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`U.S. Patent No. 8,656,441 (“the ‘441 Patent”) issued from an application
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`related to the ‘237 Patent family. The ‘441 Patent is also the subject of the
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`Litigation. In addition, the ‘441 Patent is at issue in the inter partes review Case
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`IPR2015-00348, which was requested by the Petitioner. The Board instituted inter
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`partes review in this case on June 23, 2015 (see Google, Inc. v. Network-1
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`Technologies, Inc., IPR2015-00348, Paper 6 (PTAB June 23, 2015)).
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`Pursuant to agreement between the parties, on July 2, 2015, the District
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`Court stayed the Litigation until further order of the Court following the issuance
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`of the Board’s final written decisions in IPR2015-00343, IPR2015-00345,
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`IPR2015-00347, and IPR2015-00348. (Dkt. No. 85).
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`U.S. Patent No. 8,904,464 (“the ‘464 Patent”) issued from an application
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`related to the ‘237 Patent family. The ‘464 Patent is the subject of litigation
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`between Patent Owner and Petitioner in the U.S. District Court for the Southern
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`District of New York, namely, Network-1 Technologies, Inc. v. Google Inc. and
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`YouTube, LLC, Case No. 1:14-cv-09558 (“the ‘464 litigation”). The ‘464 Patent is
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`also at issue in the covered business method patent review Case CBM2015-00113,
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`which was requested by the Petitioner. The Board has not decided whether to
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`institute this CBM patent review. Pursuant to agreement between the parties, on
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`July 2, 2015, the District Court stayed the ‘464 litigation until further order of the
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`610009.1
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`Court following the issuance of the Board’s institution decision in CBM2015-
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`00113. (Dkt. No. 35).
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`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
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`The Board has granted Patent Owner’s motion for pro hac vice admission of
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`Mr. Greg Dovel and authorized him to represent Patent Owner as back-up counsel
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`in this proceeding. (Paper 14). Accordingly, the information relating to back-up
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`counsel for Patent Owner is updated as follows. Lead counsel for Patent Owner
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`remains the same.
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`Lead Counsel
`Charles R. Macedo (Reg. No. 32,781)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8074
`Facsimile: (212) 336–8001
`E-mail: cmacedo@arelaw.com
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`Back-Up Counsel
`Brian A. Comack (Reg. No. 45,343)
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York, NY 10016
`Telephone: (212) 336–8098
`Facsimile: (212) 336–8001
`E-mail: N1-Google-IPR@arelaw.com
`Greg Dovel (Admitted pro hac vice)
`Dovel & Luner LLP
`201 Santa Monica Boulevard, Suite 600
`Santa Monica, CA 90941
`Telephone: (310) 656-7066
`E-mail: greg@dovellaw.com
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`
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`Pursuant to 37 C.F.R. § 42.10(b), Patent Owner’s Updated Power of
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`Attorney accompanies this Updated Mandatory Notice.
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`610009.1
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`4
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`Service information (by e-mail, postal mailing, or hand-delivery) for lead
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`and back-up counsel is provided in the above designation of lead and back-up
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`counsel. Patent Owner consents to electronic service by e-mail at N1-Google-
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`IPR@arelaw.com, with cc to cmacedo@arelaw.com and greg@dovellaw.com.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with this submission by Patent Owner to Deposit Account No. 01-1785.
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`Respectfully submitted,
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`AMSTER, ROTHSTEIN & EBENSTEIN
`LLP
`Attorneys for Patent Owner
`90 Park Avenue
`New York, NY 10016
`(212) 336-8000
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`By: /Charles R. Macedo/
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`Charles R. Macedo
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`Registration No. 32,781
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`
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`Dated: August 7, 2015
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`610009.1
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PATENT
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`OWNER’S UPDATED MANDATORY NOTICE PURSUANT TO 37
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`C.F.R. § 42.8, together with PATENT OWNER’S UPDATED POWER OF
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`ATTORNEY, is being served by electronic mail this 7th day of August 2015 on
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`counsel for Petitioner as follows:
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`James J. Elacqua
`Douglas R. Nemec
`Skadden, Arps, Slate, Meagher & Flom LLP
`525 University Avenue
`Suite 1400
`Palo Alto, California 94301
`Telephone: (650) 470-4510
`Facsimile: (650) 798-6564
`DLGOOGLE1N@skadden.com
`James.Elacqua@skadden.com
`Douglas.Nemec@skadden.com
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`Dated: August 7, 2015
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`By: /Charles R. Macedo/
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`Charles R. Macedo
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`Registration No. 32,781
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`610009.1
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`6
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