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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENERAL ELECTRIC CO.
`Petitioner,
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`v.
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`GROUPCHATTER, LLC,
`Patent Owner
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`Patent No. 8,199,740
`Issued: June 12, 2012
`Filed: June 6, 2011
`Inventors: James M. Dabbs, III et al.
`Titled: Method and apparatus for efficient and deterministic group alerting
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`Inter Partes Review No. IPR2017-00313
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`PETITIONER’S UPDATED MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R § 42.8(a)(3), Petitioner General Electric Co. (“GE”)
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`submits the following updated mandatory notices to reflect a new lawsuit brought
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`by Patent Owner on the same day that GE filed its Petition.
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`A. Real Parties-in-Interest (no change from mandatory noticed filed
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`with the Petition on November 22, 2016)
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`B. Related Matters (updated)
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`Patent Owner sued Petitioner in the U.S. District Court for the Eastern
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`District of Texas, alleging infringement of U.S. Patent No. 8,199,740 to James M.
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`Dabbs, III et al (“the ’740 Patent”) (Ex. 1002). See Ex. 1011. Patent Owner also
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`alleged infringement of U.S. Patent Nos. 7,969,959 to Dabbs, III et al. (“the ’959
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`Patent”) (Ex. 1001), 9,014,659 to Dabbs, III et al. (“the ’659 Patent”) (Ex. 1003),
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`and 8,588,207 to Dabbs, III et al. (“the ’207 Patent”) (Ex. 1004). Id. Petitioner and
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`the other GE defendants (GE Energy Management Services, LLC and GE Grid
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`Solutions, LLC) were served with the complaint on November 23, 2015. Ex. 1012.
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`That case, styled as GroupChatter LLC v. General Electric Company et al, E.D.
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`Tex., No. 6:15-cv-00975-RWS, was transferred to the U.S. District Court for the
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`Northern District of Georgia, where it is currently pending as N.D. Ga., No.
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`1:16cv00486-WSD. See Ex. 1013.
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`The ’740 is a continuation of the ’959 Patent. The ’659 Patent is a
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`continuation of the ’207 Patent, which is a continuation of the ’740 Patent. As
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`such, the ’740 Patent, ’959 Patent, ’207 Patent, and ’659 Patent are in the same
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`patent family and each claim priority to the same priority application. Petitioner
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`has filed three other Petitions for Inter Partes Review of the ’959 Patent, ’207
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`Patent, and ’659 Patent, respectively.
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`The ’740 Patent also is presently the subject of a series of patent
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`infringement lawsuits brought by Patent Owner, each of which may affect, or be
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`affected by, a decision in this proceeding:
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`1.
`GroupChatter, LLC v. Rakuten, Inc. et al, N.D. Ga., No. 1:16-cv-
`03567-WSD
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`2.
`GroupChatter, LLC v. Line Corporation et al, N.D. Ga., No. 1:16-cv-
`03701-WSD
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`3.
`GroupChatter, LLC v. Aclara Technologies LLC et al, N.D. Ga., No.
`1:16-cv-04231-WSD
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`The ’207 and ’659 Patents also are presently the subject of a patent
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`infringement lawsuit brought by Patent Owner, which may affect, or be affected
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`by, a decision in this proceeding:
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`4.
`GroupChatter, LLC v. Slack Technologies, Inc., N.D. Ga., No. ___-
`cv-____ (new)
`C. Lead and back-up counsel (no change from mandatory noticed filed
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`with the Petition on November 22, 2016)
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`D.
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`Service Information (no change from mandatory noticed filed with
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`the Petition on November 22, 2016)
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`Dated: November 23, 2016
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`Respectfully submitted,
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`/Marc S. Kaufman, Reg. No. 35,212/
`Marc S. Kaufman
`Registration No. 35,212
`Reed Smith LLP
`1301 K Street NW, Suite 1000
`Washington, DC 20005-3317
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`Counsel for Petitioner
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`CERTIFICATION OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that the
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`above-captioned Petitioner’s Updated Mandatory Notices Under 37 C.F.R §
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`42.8(a) was served on November 23, 2016 via Priority Mail Express upon the
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`following counsel of record for the patent:
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`Atkinson, Holly
`Embert, Amy
`Fahmi, Tarek
`LaBerteaux, Jason
`Tsao, Jonathan
`ASCENDA LAW GROUP, PC
`333 W San Carlos St.
`Suite 200
`San Jose CA 95110
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`Patent Owner’s correspondence address of record for U.S. Patent No. 8,199,740
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`GROUPCHATTER, LLC
`1400 Preston Road
`SUITE 475
`PLANO TX 75093
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`Other address of Patent Owner known to Petitioner as likely to effect service
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`Respectfully submitted,
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`/Marc S. Kaufman, Reg. No. 35,212/
`Marc S. Kaufman
`Registration No. 35,212
`Attorney for Petitioner
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`Date: November 23, 2016
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`- 4 -
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