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UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`I.M.L. SLU,
`
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`
`Patent Owner.
`_________________________
`
`Case IPR2016-01656
`Patent 8,122,141
`_________________________
`
`PETITIONER I.M.L. SLU’S AMENDED MANDATORY NOTICES
`INFORMATION UNDER 37 C.F.R. §42.8
`
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`1
`
`

`

`MANDATORY NOTICES FROM I.M.L. SLU
`
`Pursuant to 37 C.F.R. § 42.8, I.M.L. SLU respectfully submits the following
`
`Amended Mandatory Notices.
`
`I. REAL PARTY IN INTEREST
`
`The real party-in-interest for this Petition is I.M.L. SLU.
`
`II. Related Matters
`
`The ’141 Patent is asserted in nine pending federal district court actions in
`
`the United States District Court for the District of New Jersey, listed below.
`
`Petitioner is a defendant in the last listed action.
`
`1. WAG Acquisition, LLC v. Webpower, Inc. et al, Case No. 2-15-cv-03581,
`
`filed on May 27, 2015.
`
`2. WAG Acquisition, LLC v. GameLink Int’l Ltd. et al, Case No. 2-15-cv-
`
`03416, filed on May 18, 2015.
`
`3. WAG Acquisition, LLC v. Vubeology, Inc. et al, Case No. 2-14-cv-04531,
`
`filed on July 17, 2014.
`
`4. WAG Acquisition, LLC v. FriendFinder Networks, Inc. et al, Case No. 2-
`
`14-cv-03456, filed on May 30, 2014.
`
`5. WAG Acquisition, LLC v. Gattyan Group S.à r.l. et al, Case No. 2-14-cv-
`
`02832, filed on May 5, 2014.
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`2
`
`

`

`6. WAG Acquisition, LLC v. Flying Crocodile, Inc. et al, Case No. 2-14-cv-
`
`02674, filed on April 25, 2014.
`
`7. WAG Acquisition, LLC v. Data Conversions, Inc. et al, Case No. 2-14-cv-
`
`02345, filed on April 11, 2014.
`
`8. WAG Acquisition, LLC v. Multi Media, LLC et al, Case No. 2-14-cv-
`
`02340, filed on April 11, 2014.
`
`9. WAG Acquisition, LLC v. Sobonito Investments. Ltd. et al, Case No. 2-14-
`
`cv-01661, filed on March 14, 2014.
`
`U.S. Patent No. 8,122,141 was involved in the below case filed in United
`
`States District Court for the District of New Jersey, which WAG has dismissed:
`
`1. WAG Acquisition, LLC v. MFCXY, Inc. et al, Case No. 2-14-cv-03196,
`
`filed on May 16, 2014.
`
`U.S. Patent No. 8,122,141 is involved in the below administrative matters:
`
`1. Inter Partes Review Case No. 2015-01037, which was not instituted,
`
`involved U.S. Patent No. 8,122,141.
`
`2. Inter Partes Review Case No. 2016-01238, which was instituted on Jan.
`
`4, 2017, involves U.S. Patent No. 8,122,141.
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`3
`
`

`

`a. Inter Partes Review Case No. IPR2017-00786, which was filed on Jan.
`
`27, 2017, involves U.S. Patent No. 8,122,141 and seeks joinder with Inter
`
`Partes Review Case No. IPR2016-01238.
`
`b. Inter Partes Review Case No. IPR2017-00820, which was filed on Jan.
`
`31, 2017, involves U.S. Patent No. 8,122,141 and seeks joinder with Inter
`
`Partes Review Case No. IPR2016-01238.
`
`II. Counsel and Service Information
`
`Lead Counsel
`
`Back-Up Counsel
`
`Steven Yovits (Reg. No. 48,055)
`Kelley Drye & Warren LLP
`333 W Wacker Dr # 2600
`Chicago, IL 60606
`syovits@kelleydrye.com
`Phone: 312-857-7099
`Fax: 312-857-7095
`
`
`
`
`Mark J. Scott (pro hac vice forthcoming)
`Kelley Drye & Warren LLP
`333 W Wacker Dr # 2600
`Chicago, IL 60606
`mascott@kelleydrye.com
`Phone: 312-857-7096
`Fax: 312-857-7095
`
`
`Please send all correspondence to the lead counsel at the address shown above.
`
`Petitioner consents to service by email at: syovits@kelleydrye.com and
`
`mascott@kelleydrye.com.
`
`Dated: January 24, 2018
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`4
`
`
`
`/Steven Yovits/
`Steven Yovits
`Reg. No. 48,055
`
`Lead Counsel for Petitioner
`Kelley Drye & Warren LLP
`
`

`

`333 W Wacker Dr # 2600
`Chicago, IL 60606
`syovits@kelleydrye.com
`Phone: 312-857-7099
`Fax: 312-857-7095
`
`
`
`
`
`
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`5
`
`

`

`CERTIFICATE OF SERVICE
`
`I certify that, on January 24, 2017, I caused to be served true and correct copies
`
`of the foregoing “PETITIONER I.M.L. SLU’S AMENDED MANDATORY
`
`NOTICES INFORMATION UNDER 37 C.F.R. §42.8” on Patent Owner by
`
`filing through the PTAB E2E System and by electronic mail on the following
`
`attorneys, as authorized in Patent Owner’s Mandatory Notices:
`
`Ronald Abramson
`David G. Liston
`Ari J. Jaffess
`M. Michael Lewis
`Lewis Baach PLLC
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`ronald.abramson@LBKMLAW.com
`David.Liston@LBKMLAW.com
`Ari.jaffess@LBKMLAW.com
`Michael.lewis@LBKMLAW.com
`
`
`
`/Steven Yovits/
`Steven Yovits
`Reg. No. 48,055
`
`Lead Counsel for Petitioner
`Kelley Drye & Warren LLP
`333 W Wacker Dr # 2600
`Chicago, IL 60606
`syovits@kelleydrye.com
`Phone: 312-857-7099
`Fax: 312-857-7095
`
`Ernest D. Buff
`Ernest D. Buff & Associates, LLC
`231 Somerville Road
`Bedminster, NJ 07921
`ebuff@edbuff.com
`
`
`
`
`
`
`
`
`
`Dated: January 24, 2018
`
`
`
`IPR2015-01656
`I.M.L. SLU
`
`
`
`6
`
`

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