`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`GOOGLE INC.,
`Petitioner,
`
`v.
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`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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`616780.1
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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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`U.S. Patent No. 8,205,237 (“the ‘237 Patent”) is the subject of litigation
`
`between Patent Owner and Petitioner in the U.S. District Court for the Southern
`
`District of New York, namely, Network-1 Technologies, Inc. v. Google Inc. and
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`YouTube, LLC, Case No. 1:14-cv-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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`616780.1
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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 instituted CBM patent review in
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`this case on October 19, 2015 (see Google Inc. v. Network-1 Technologies, Inc.,
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`CBM2015-00113, Paper 7 (PTAB Oct. 19, 2015)). Pursuant to agreement between
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`616780.1
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`the parties, on November 3, 2015, the District Court stayed the ‘464 litigation
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`pending the Board’s final written decision in CBM2015-00113. (Dkt. No. 39).
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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
`
`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: November 5, 2015
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`616780.1
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`4
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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 is being served by electronic mail this 5th day of November 2015
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`on 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: November 5, 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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`616780.1
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`5
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