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Paper No. 8
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`MICROSOFT CORPORATION.
`Petitioner,
`
`v.
`
`WINDY CITY INNOVATIONS LLC
`Patent Owner
`
`Patent No. 8,694,657
`Issued: April 8, 2014
`Filed: September 20, 1999
`Inventor: Daniel L. Marks
`Title: REAL TIME COMMUNICATIONS SYSTEM
`____________________
`
`Inter Partes Review No. IPR2016-01155
`
`
`
`
`
`
`
`
`UPDATED MANDATORY NOTICES OF
`PETITIONER MICROSOFT CORPORATION
`
`
`
`
`
`
`
`

`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8, Petitioner Microsoft Corporation submits the
`
`following update to its Mandatory Notices. Petitioner is updating its list of other
`
`proceedings. Petitioner is also updating contact information for counsel Raquel
`
`Rodriguez.
`
`Mandatory Notices (37 CFR § 42.8(b))
`
`The real party of interest of this petition is Microsoft Corporation, located at
`
`One Microsoft Way, Redmond, WA 98052. Lead and backup lead counsel are:
`
`Lead Counsel
`Joseph A. Micallef
`Reg. No. 39,772
`iprnotices@sidley.com
`(202) 736-8492
`
`Backup Lead Counsel
`John W. McBride
`pro hac to be requested
`(312) 853-7014
`
`Raquel C. Rodriguez
`Reg. No. 70,787
`(713) 495-4648
`iprnotices@sidley.com
`
`Todd M. Siegel
`Reg. No. 73,232
`todd.siegel@klarquist.com
`(503)595-5300
`
`
`Service on Petitioner may be made by mail or hand delivery to: Sidley
`
`Austin LLP, 1501 K Street, N.W., Washington, D.C. 20005. The fax number is
`
`(202)736-8711.
`
`U.S. Patent No. 8,694,657 is or has been the subject of two district court
`
`proceedings. The 657 Patent has been asserted against Petitioner in case No. 1:15-
`
`2
`
`

`
`
`
`CV-00103-GCM in the U.S. District Court for the Western District of North
`
`Carolina, which was transferred to the Northern District of California (No. 4:16-
`
`cv-1729-YGR). The 245 Patent has also been asserted against Facebook Inc. in the
`
`Western District of North Carolina (No. 1:15-CV-00102-GCM). This case was
`
`transferred to the Northern District of California (now No. 3:16-cv-01730-YGR).
`
`Related U.S. Patent No. 5,956,491 was the subject of Windy City Innovations, LLC
`
`v. America Online, Inc. in the U.S. District Court for the Northern District of
`
`Illinois (No. 04C-4240) filed June 24, 2004.
`
`The 657 Patent and related U.S. Patent Nos. 8,407,356; 8,458,245; and
`
`8,473,552 are the subject of the current litigation against Petitioner and Facebook
`
`Inc., and of the following inter partes reviews:
`
`Patent Number Proceedings
`
`8,407,356
`
`IPR2016-01067 (filed by Petitioner)
`
`IPR2016-01157 (filed by Facebook Inc.)
`
`8,473,552
`
`IPR2016-01137, IPR2016-01138, IPR2016-01146,
`
`IPR2016-01147 (filed by (filed by Petitioner)
`
`IPR2016-01158 (filed by Facebook)
`
`8,458,245
`
`IPR2016-01141 (filed by Petitioner)
`
`IPR2016-01156 (filed by Facebook)
`
`
`
`3
`
`

`
`
`
`8,694,657
`
`IPR2016-01155 (filed by Petitioner)
`
`IPR2016-01159 (filed by Facebook)
`
`
`
`Dated:
`
`June 29, 2016
`
`
`
`
`
`Respectfully submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`Sidley Austin LLP
`1501 K Street, NW
`Washington, DC 20005
`(202) 736-8492
`
`Attorney for Petitioner
`
`
`
`
`
`4
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 29th day of June, 2016, a copy of this Updated
`
`Mandatory Notices of Petitioner Microsoft Corporation has been served in its
`
`entirety by e-mail on the following counsel of record for patent owner:
`
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`Alfred R. Fabricant
`afabricant@brownrudnick.com
`Vincent J. Rubino, III
`vrubino@brownrudnick.com
`
`Brown Rudnick LLP,
`7 Times Square,
`New York,
`NY 10036
`
`Counsel for Windy City Innovations, LLC
`
`Respectfully submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`Dated: June 29, 2016

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