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Case IPR2016-01303
`Patent No. 8,365,742
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`NU MARK LLC,
`Petitioner,
`v.
`FONTEM HOLDINGS 1 B.V.,
`Patent Owner.
`______________
`
`Case IPR2016-01303
`Patent No. 8,365,742
`
`____________________________________________________________
`
`SUBMISSION OF EXHIBIT 2018 AND CURRENT EXHIBIT LIST
`
`
`
`
`
`

`
`Case IPR2016-01303
`Patent No. 8,365,742
`
`
`
`Confidential Exhibit 2018 is submitted herewith and designated as
`
`PARTIES AND BOARD ONLY:
`
`Ex. 2018 CONFIDENTIAL – Settlement Agreement
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.63(e), a current Exhibit List follows.
`
`
`
`-1-
`
`

`
`Case IPR2016-01303
`Patent No. 8,365,742
`
`LIST OF EXHIBITS
`
`Petitioner's Exhibits
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 8,365,742 (“the 742 Patent”)
`
`Ex. 1002
`
`Excerpts from the prosecution history of U.S. Patent No. 8,365,742
`
`Ex. 1003 Declaration of John M. Collins (“Collins Decl.”)
`
`Ex. 1004 U.S. Patent No. 6,155,268 (“Takeuchi”)
`
`Ex. 1005 U.S. Patent No. 2,057,353 (“Whittemore”)
`
`Ex. 1006 U.S. Patent No. 4,947,874 (“Brooks”)
`Ex. 1007 Docket entry #65 from Fontem Ventures, B.V., et al. v. NJOY, Inc.,
`et al., 2:14-cv-01645 (C.D. Cal.) (“Rulings on Claim Construction”)
`
`Ex. 1008 U.S. Patent Application No. 2006/0093977 A1 (“Pellizzari I”)
`
`Ex. 1009 U.S. Patent No. 7,059,307 (“Pellizzari II”)
`
`Ex. 1010 U.S. Patent No. 5,894,841 (“Voges”)
`
`Ex. 1011 U.S. Patent No. 5,743,251 (“Howell”)
`
`Ex. 1012 U.S. Patent No. 2,461,664 (“Smith”)
`
`Ex. 1013 U.S. Patent No. 3,234,357 (“Eberhard”)
`
`Ex. 1014 U.S. Patent No. 5,745,985 (“Ghosh”)
`
`Ex. 1015 U.S. Patent No. 4,676,237 (“Wood”)
`
`Ex. 1016 U.S. Patent No. 4,945,448 (“Bremenour”)
`
`Ex. 1017 U.S. Patent No. 2,442,004 (“Hayward-Butt”)
`
`Ex. 1018 U.S. Patent No. 3,200,819 (“Gilbert”)
`
`-2-
`
`

`
`Case IPR2016-01303
`Patent No. 8,365,742
`
`Ex. 1019 U.S. Patent No. 6,501,052 (“Cox”)
`
`Ex. 1020 U.S. Patent No. 6,491,233 (“Nichols”)
`
`Patent Owner's Exhibits
`
`Exhibit
`
`Description
`
`Ex. 2001
`
`VMR Products LLC v. Fontem Holdings 1 B.V., IPR2015-00859,
`Paper 9, DECISION Denying Institution of Inter Partes Review
`(PTAB Sep. 16, 2015)
`
`Ex. 2002 RESERVED
`
`Ex. 2003 RESERVED
`
`Ex. 2004 Declaration of Richard Meyst (“Meyst Decl.”)
`
`Ex. 2005 RESERVED
`
`Ex. 2006
`
`JT International, S.A., v. Fontem Holdings 1 B.V., IPR 2015-01587,
`Paper 12, Order Dismissing Petitions (PTAB Dec. 14, 2015)
`
`Ex. 2007 U.S. Patent No. 4,735,217 (“Gerth”)
`Ex. 2008 Office Action in U.S. Patent Application No. 14/244,376 dated
`9/4/2014
`Ex. 2009 Office Action in U.S. Patent Application No. 14/244,376 dated
`8/20/2015
`
`Ex. 2010 U.S. Patent No. 4,922,901 (“Brooks ‘901”)
`Ex. 2011 Examiner Interview Summary of 12/1/2015 Interview in U.S. Patent
`Application No. 14/244,376, dated 12/4/2015
`Ex. 2012 Statement of Related Applications in U.S. Patent Application No.
`14/244,376, dated 12/22/2015
`Ex. 2013 Notice of Allowance in U.S. Patent Application No. 14/244,376,
`dated 3/15/2016
`
`-3-
`
`

`
`Case IPR2016-01303
`Patent No. 8,365,742
`Ex. 2014 Statement of Related Applications in U.S. Patent Application No.
`13/740,011, dated 12/22/2015
`Ex. 2015 Notice of Allowance in U.S. Patent Application No. 13/740,011,
`dated 6/21/2016
`
`Ex. 2016
`
`NJOY, Inc. et al. v. Fontem Holdings 1 B.V., IPR2015-01299, Paper
`15, DECISION Denying Institution of Inter Partes Review (PTAB
`Dec. 8, 2015)
`Ex. 2017 Summary of Examiner Interview in U.S. Application No.
`14/244,376, dated 12/22/2015
`
`Ex. 2018 CONFIDENTIAL – Settlement Agreement
`
`
`
`
`-4-
`
`

`
`Case IPR2016-01303
`Patent No. 8,365,742
`
`Respectfully submitted,
`
`Date: January 3, 2017
`
`By:
`
`
`/ Michael J. WISE /
`Michael J. Wise, Reg. No. 34,047
`Perkins Coie LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Phone: 310-788-3210
`Facsimile: 310-788-3399
`MWise@PerkinsCoie.com
`
`Counsel for Patent Owner
`
`-5-
`
`

`
`Case IPR2016-01303
`Patent No. 8,365,742
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that service on Petitioner was made as
`
`follows, in accordance with 37 CFR 42.6(e):
`
`Date of service:
`Manner of service:
`
`Persons served:
`
`January 3, 2017
`1. Electronic submission through the USPTO Patent Trial
`and Appeal Board End-to-End System
`2. Electronic mail
`Document(s) served: SUBMISSION OF EXHIBIT 2018 AND CURRENT
`EXHIBIT LIST
`Elizabeth Stotland Weiswasser, Lead Counsel
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
`elizabeth.weiswasser@weil.com
`Numark.Fontem.WGM.Service@weil.com
`Adrian Percer, Back-up Counsel
`Jeremy Jason Lang, Back-up Counsel
`Brian C. Chang, Back-up Counsel
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`adrian.percer@weil.com
`jason.lang@weil.com
`brian.chang@weil.com
`Anish Desai, Back-up Counsel
`Weil, Gotshal & Manges LLP
`1300 Eye Street NW, Suite 900
`Washington, DC 20005-3314
`anish.desai@weil.com
`
`
`
`
`
`/ Amy Candeloro /
`Amy Candeloro, Paralegal
`Perkins Coie LLP

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