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Attorney Docket No. EGQ-000BIPR
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ASML NETHERLANDS B.V., EXCELITAS TECHNOLOGIES CORP., AND
`QIOPTIQ PHOTONICS GMBH & CO. KG,
`Petitioners
`
`v.
`
`ENERGETIQ TECHNOLOGY, INC.,
`Patent Owner
`_____________
`
`Case IPR2016-00126
`U.S. Patent No. 9,048,000
`_____________
`
`
`
`MANDATORY NOTICES OF PATENT OWNER PURSUANT TO 37 C.F.R.
`§ 42.8(a)(2)
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), the Patent Owner of U.S. Patent No.
`
`9,048,000 hereby files the following Mandatory Notices. These Mandatory
`
`Notices are filed within 21 days of service of the Petition for Inter Partes Review
`
`for this Case IPR2016-00126, purportedly mailed on November 4, 2015.
`
`
`
`
`
`1
`
`

`
`Attorney Docket No. EGQ-000BIPR
`
`I.
`
`37 C.F.R. § 42.8(b)(1) – Real Party in interest:
`
`The real party in interest for the Patent Owner is:
`
`Energetiq Technology, Inc.
`
`7 Constitution Way
`
`Woburn, Massachusetts 01801
`
`USA
`
`II.
`
`37 C.F.R. § 42.8(b)(2) – Related Matters:
`
`U.S. Patent No. 9,048,000 is currently involved in the following litigation:
`
`Energetiq Technology, Inc. v. ASML Netherlands B.V., Excelitas Technologies
`
`Corp. and Qioptiq Photonics GmbH & Co. KG, 1:15-cv-10240-LTS (D. Mass.),
`
`filed January 30, 2015.
`
`The following patent and pending patent application claim priority under 35
`
`U.S.C. § 120 to application serial no. 13/964,938, which issued as U.S. Patent No.
`
`9,048,000:
`
`(a) U.S. Patent No. 8,969,841
`
`(b) U.S. Patent No. 9,185,786
`
`(c) U.S. Patent Application No. 14/867,159
`
`The following patents do not claim priority to U.S. Patent No. 9,048,000 but
`
`are identified because they may be affected by a decision in this proceeding:
`
`(a) U.S. Patent No. 7,435,982
`
`2
`
`

`
`Attorney Docket No. EGQ-000BIPR
`
`(b) U.S. Patent No. 7,786,455
`
`(c) U.S. Patent No. 7,989,786
`
`(d) U.S. Patent No. 8,309,943
`
`(e) U.S. Patent No. 8,525,138
`
`The following Inter Partes Review petitions have been filed for patents that
`
`relate to U.S. Patent No. 9,048,000:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`(f)
`
`(g)
`
`(h)
`
`(i)
`
`IPR2015-01277 (U.S. Patent No. 8,309,943)
`
`IPR2015-01279 (U.S. Patent No. 7,786,455)
`
`IPR2015-01300 (U.S. Patent No. 7,435,982)
`
`IPR2015-01303 (U.S. Patent No. 7,435,982)
`
`IPR2015-01362 (U.S. Patent No. 8,969,841)
`
`IPR2015-01368 (U.S. Patent No. 8,525,138)
`
`IPR2015-01375 (U.S. Patent No. 9,048,000)
`
`IPR2015-01377 (U.S. Patent No. 7,435,982)
`
`IPR2016-00127 (U.S. Patent No. 8,969,841)
`
`III. 37 C.F.R. § 42.8(b)(3) – Lead and backup counsel:
`(a) Lead counsel: Steven M. Bauer, Registration No. 31,481
`
`(b) Backup counsel: Joseph A. Capraro Jr., Registration No. 36,471
`
`IV. 37 C.F.R. § 42.8(b)(4) – Service information:
`(a) Electronic mail address: PTABMattersBoston@proskauer.com
`
`3
`
`

`
`The Patent Owner hereby consents to electronic service to the electronic
`
`Attorney Docket No. EGQ-000BIPR
`
`email address indicated above.
`
`(b)
`
`Postal mailing address:
`
`PROSKAUER ROSE LLP
`
`One International Place
`
`Boston, Massachusetts 02110
`
`(c) Hand delivery address: same as the postal mailing address
`
`(d) Telephone number:
`
`Lead counsel: (617) 526-9700
`
`Backup counsel: (617) 526-9800
`
`(e)
`
`Facsimile number: (617) 526-9899
`
`Please address all correspondence to both the lead and backup counsel
`
`shown above.
`
`
`
`
`
`4
`
`

`
`Attorney Docket No. EGQ-000BIPR
`
`V.
`
`Power of Attorney:
`
`A power of attorney appointing Proskauer Rose LLP (Customer No. 42,532)
`
`is filed herewith. Lead and backup counsel are partners at Proskauer Rose and are
`
`associated with Customer Number 42,532.
`
`The Patent Trial and Appeal Board is authorized to charge any fees incurred
`
`by the Patent Owner in this Case IPR2016-00126 to Deposit Account No. 50-3081.
`
`Respectfully submitted,
`Proskauer Rose LLP
`
`/ Joseph A. Capraro Jr. /
`Joseph A. Capraro Jr., Reg. No. 36,471
`Attorney for Patent Owner
`
`
`
`
`
`
`
`
`Date: November 11, 2015
`PROSKAUER ROSE LLP
`One International Place
`Boston, Massachusetts 02110
`
`
`
`5
`
`

`
`Attorney Docket No. EGQ-000BIPR
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on November 11, 2015 the MANDATORY
`
`NOTICES OF PATENT OWNER PURSUANT TO 37 C.F.R. § 42.8(a)(2) were
`
`served in their entirety on Petitioner by Priority Mail Express to:
`
`Donald R. Steinberg
`WilmerHale
`60 State St.
`Boston, MA 02109
`
` /
`
` Gregory J. Penoyer /
`Gregory J. Penoyer, Reg. No. 67,193
`
`6

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