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UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`ORACLE AMERICA, INC.
`Petitioner
`
`v.
`
`REALTIME DATA LLC
`Patent Owner
`
`___________________
`
`Case IPR2016-00373
`Patent 7,378,992
`___________________
`
`
`
`
`REALTIME DATA LLC’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`

`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner Realtime Data LLC hereby
`
`
`
`
`
`files its Mandatory Notices.
`
`I.
`
`37 C.F.R. § 42.8(b)(1) – REAL PARTY-IN-INTEREST
`
`The patent owner and real party-in-interest is Realtime Data LLC.
`
`II.
`
`37 C.F.R. § 42.8(b)(2) – RELATED MATTERS
`A.
`Patent Owner notifies the Board of the following proceedings that may
`
`Proceedings Before the USPTO Involving the Patent-at-Issue
`
`affect or be affected by a decision in this proceeding.
`
`This Inter Partes Review is one of five petitions filed against four patents
`
`owned by Patent Owner: U.S. Patent Nos. 7,378,992 (“the ’992 patent”), 7,415,530
`
`(“the ’530 patent”), 8,643,513 (“the ’513 patent”), and 9,116,908 (“the ’908
`
`patent”).
`
`Patent No.
`7,378,992
`
`8,643,513
`
`7,415,530
`
`9,116,908
`
`
`Case Caption
`Oracle America, Inc. v. Realtime Data
`LLC, Case IPR2016-00373
`Oracle America, Inc. v. Realtime Data
`LLC, Case IPR2016-00374
`Oracle America, Inc. v. Realtime Data
`LLC, Case IPR2016-00375
`Oracle America, Inc. v. Realtime Data
`LLC, Case IPR2016-00376
`Oracle America, Inc. v. Realtime Data
`LLC, Case IPR2016-00377
`
`Filing Date
`December 22, 2015
`
`December 22, 2015
`
`December 28, 2015
`
`December 28, 2015
`
`December 28, 2015
`
`1
`
`

`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`The ’992 patent has previously been the subject of two inter partes
`
`
`
`
`
`reexaminations before the USPTO:
`
`• Reexamination No. 95/000,478, filed May 21, 2009 (Reexamination
`Certificate issued October 4, 2012); and
`
`• Reexamination No. 95/001,928, filed March 2, 2012 (Reexamination
`Certificate issued January 7, 2014).
`
`Litigation Involving the Patent-at-Issue
`
`B.
`Patent Owner notifies the Board of the following litigation proceedings that
`
`may affect or be affected by a decision in this proceeding:
`
`• Realtime Data LLC d/b/a IXO v. Teradata Corporation et al., No. 6:15-
`cv-00470 (E.D. Texas), filed May 8, 2015;
`
`• Realtime Data LLC d/b/a IXO v. SAP America, Inc. et al., No. 6:15-cv-
`00469 (E.D. Texas), filed May 8, 2015;
`
`• Realtime Data LLC d/b/a IXO v. Riverbed Technology, Inc. et al., No.
`6:15-cv-00468 (E.D. Texas), filed May 8, 2015;
`
`• Realtime Data LLC d/b/a IXO v. Oracle America, Inc., et al., No. 6:15-
`cv-00467 (E.D. Texas), filed May 8, 2015;
`
`• Realtime Data LLC d/b/a IXO v. Echostar Corporation et al., No. 6:15-
`cv-00466 (E.D. Texas), filed May 8, 2015;
`
`2
`
`

`
`
`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`• Realtime Data LLC d/b/a IXO v. Dropbox Inc., No. 6:15-cv-00465 (E.D.
`Texas), filed May 8, 2015;
`
`• Realtime Data LLC d/b/a IXO v. BMC Software, Inc., No. 6:15-cv-00464
`(E.D. Texas), filed May 8, 2015;
`
`• Realtime Data LLC d/b/a IXO v. Actian Corporation et al., No. 6:15-cv-
`00463 (E.D. Texas), filed May 8, 2015;
`
`• Realtime Data LLC v. MetroPCS Texas, LLC, No. 3:12-cv-01048 (S.D.
`Cal.), filed April 27, 2012, terminated February 11, 2013;
`
`• Realtime Data LLC d/b/a IXO v. MetroPCS Texas, LLC, et. al., No. 6:10-
`cv-00493 (E.D. Texas), filed September 23, 2010, appealed to C.A.F.C.
`as Nos. 13-1379 and 13-1413, terminated March 3, 2014; and
`
`• Realtime Data LLC d/b/a IXO v. Packeteer, Inc. et al., No. 6-08-cv-
`00144 (E.D. Texas), filed April 18, 2008, terminated March 10, 2010.
`
`3
`
`

`
`
`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`C. U.S. Patents and Applications Related to the Patent-at-Issue
`Out of an abundance of caution and in accordance with the Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48760 (Aug. 14, 2012), Patent Owner
`
`notifies the Board of related patents that may affect or be affected by a decision in
`
`this proceeding:
`
`• U.S. Patent Application No. 09/210,491, filed December 11, 1998 (now
`
`U.S. Patent No. 6,195,024, issued February 27, 2001);
`
`• U.S. Patent Application No. 09/705,446, filed November 3, 2000 (now
`
`U.S. Patent No. 6,309,424, issued October 30, 2001);
`
`• U.S. Patent Application No. 10/016,355, filed October 29, 2001 (now
`
`U.S. Patent No. 6,624,761, issued September 23, 2003);
`
`• U.S. Patent Application No. 10/668,768, filed September 22, 2003 (now
`
`U.S. Patent No. 7,161,506, issued January 9, 2007);
`
`• U.S. Patent Application No. 13/154,211, filed June 6, 2011 (now U.S.
`
`Patent No. 8,643,513, issued February 4, 2014);
`
`• U.S. Patent Application No. 11/651,365, filed January 8, 2007 (now U.S.
`
`Patent No. 7,714,747, issued May 11, 2010);
`
`• U.S. Patent Application No. 11/651,366, filed January 8, 2007 (now
`
`abandoned);
`
`4
`
`

`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`• U.S. Patent Application No. 12/703,042, filed February 9, 2010 (now
`
`
`
`U.S. Patent No. 8,502,707, issued August 6, 2013);
`
`• U.S. Patent Application No. 14/035,561, filed September 24, 2013 (now
`
`U.S. Patent No. 8,717,203, issued May 6, 2014);
`
`• U.S. Patent Application No. 14/251,453, filed April 11, 2014 (now U.S.
`
`Patent No. 8,933,825, issued January 13, 2015);
`
`• U.S. Patent Application No. 14/495,574, filed September 24, 2014 (now
`
`U.S. Patent No. 9,054,728, issued June 9, 2015);
`
`• U.S. Patent Application No. 14/727,309, filed June 1, 2015 (now
`
`pending); and
`
`• U.S. Patent Application No. 14/936,312, filed November 9, 2015 (now
`
`pending).
`
`5
`
`

`
`
`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`III. 37 C.F.R. § 42.8(b)(3) – LEAD AND BACK-UP COUNSEL
`
`Patent Owner hereby designates lead and back-up counsel. A Power of
`
`Attorney is concurrently filed herewith.
`
`
`
`
`
`Lead Counsel Jason D. Eisenberg, Reg. No. 43,447
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: jasone-PTAB@skgf.com
`Tel.: 202-371-8645
`Fax: 202-371-2540
`
`Back-up Counsel Donald J. Featherstone, Reg. No. 33,876
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: donf-PTAB@skgf.com
`Tel.: 202-371-8629
`Fax: 202-371-2540
`
`Back-up Counsel Joseph E. Mutschelknaus, Reg. No. 63,285
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`E-mail: jmutsche-PTAB@skgf.com
`Tel.: 202-371-8874
`Fax: 202-371-2540
`
`6
`
`

`
`
`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`IV. 37 C.F.R. § 42.8(b)(4) – SERVICE INFORMATION
`Please address all correspondence to the lead and back-up counsel as shown
`
`above. Patent Owner consents to electronic service by e-mail at ptab@skgf.com
`
`and at all e-mail addresses provided above.
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with IPR2016-00373 to Deposit Account 19-0036.
`
`Respectfully submitted
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Lead Counsel for Patent Owner
`
`Date: January 8, 2016
`
`
`
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
`
`
`
`7
`
`

`
`
`
`
`
`IPR2016-00373
`U.S. Pat. No. 7,378,992
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`
`
`The undersigned hereby certifies that the foregoing REALTIME DATA
`
`LLC’S MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(a)(2) and
`
`the accompanying Power of Attorney were served in their entirety electronically
`
`via e-mail on January 8, 2016 to the following counsel of record for Petitioner:
`
`Monica Grewal (Lead Counsel)
`Donald Steinberg (Back-up Counsel)
`
`Monica.Grewal@wilmerhale.com
`Donald.Steinberg@wilmerhale.com
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
` /Jason D. Eisenberg/
`Jason D. Eisenberg
`Registration No. 43,447
`Lead Counsel for Patent Owner
`
`Date: January 8, 2016

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