`___________
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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
`___________
`
`Case IPR2015-00345
`Patent 8,205,237
`___________
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`
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`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
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`593775.1
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner Network-1 Technologies, Inc.
`
`(“Patent Owner” or “Network-1”) hereby submits the following mandatory notice
`
`information in connection with Petitioner Google Inc.’s Petition for Inter Partes
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`Review of U.S. Patent No. 8,205,237 (Case IPR2015-00345).
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`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
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`The real party-in-interest is Network-1 Technologies, Inc., the assignee of
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`record for U.S. Patent No. 8,205,237 (“the ‘237 Patent”).
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`B. 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 has not decided
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`whether to institute this inter partes review.
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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
`2
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`593775.1
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`IPR2015-00347, which was requested by the Petitioner. The Board has not decided
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`whether to institute this inter partes review.
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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 has not decided
`
`whether to institute this inter partes review.
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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.
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`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Patent Owner provides the
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`following designation of lead and back-up counsel, as well as their respective
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`service information.
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`593775.1
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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
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`The above designated counsel is already counsel of record in the ‘237
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`Patent. Accordingly, no additional power of attorney accompanies this designation
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`of counsel pursuant to 37 C.F.R. § 42.10(b).
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`Service Information Under 37 C.F.R. § 42.8(b)(4)
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`D.
`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.
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`593775.1
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`4
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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: December 22, 2014
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`593775.1
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that on this
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`22nd day of December, 2014, a copy of the foregoing PATENT OWNER’S
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`MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8 was served via
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`EXPRESS MAIL® on counsel for Petitioner at the following correspondence
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`address:
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`
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`James J. Elacqua
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`525 University Avenue - Suite 1400
`Palo Alto, California 94301
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`Douglas R. Nemec
`SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP
`Four Times Square
`New York, New York 10036-6522
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`Dated: December 22, 2014
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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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`593775.1
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`6
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