`ALACRITECH, INC.’S MANDATORY NOTICES
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`DELL INC.
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`Petitioner,
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`v.
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`ALACRITECH INC.,
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`Patent Owner
`________________
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`Case IPR2018-01307
`U.S. Patent 8,805,948
`________________
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`MANDATORY NOTICES OF ALACRITECH, INC.
`IN COMPLIANCE WITH 37 C.F.R. § 42.8
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`Pursuant to 37 C.F.R. § 42.8, Alacritech, Inc. (“Alacritech”) hereby submits
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`the following mandatory notices with the Patent Trial and Appeal Board.
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`I.
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`REAL PARTY IN INTEREST
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`The real party in interest is Alacritech, Inc. Alacritech is the owner of all
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`rights to U.S. Patent No. 8,805,948 (“the ’948 patent”). Evidence supporting
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`Alacritech’s status as the owner of the ’948 patent is found on the face of
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`Petitioner’s Exhibit 1001 and at reel/frame 031611/0780 showing the assignment
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`of the ’948 patent to Alacritech. A-Tech LLC had an ownership interest in the ’205
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`patent that was subsequently assigned to Alacritech as shown at reel/frame
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`039068/0884.
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`II. RELATED MATTERS
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`Alacritech identifies the following district court proceeding involving the
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`’948 patent:
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`• Alacritech, Inc. v. CenturyLink, Inc., 2:16-cv-00693-JRG-RSP (E.D.
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`Tex.)
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`• Alacritech, Inc. v. Wistron Corp., 2:16-cv-00692-JRG-RSP (E.D. Tex.)
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`• Alacritech, Inc. v. Dell Inc., 2:16-cv-00695-RWS-RSP (E.D. Tex.)
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`Alacritech identifies the following administrative proceedings involving the
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`’948 patent, as well as U.S. Patent Nos. 7,237,036; 7,337,241; 7,673,072;
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`8,131,880; 7,945,699; 7,124,205; 9,055,104:
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`1. IPR2017-01391 regarding U.S. Patent 7,237,036
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`2. IPR2017-01392 regarding U.S. Patent 7,337,241
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`3. IPR2017-01393 regarding U.S. Patent 9,055,104
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`4. IPR2017-01395 regarding U.S. Patent 8,805,948
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`5. IPR2017-01402 regarding U.S. Patent 7,124,205
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`6. IPR2017-01405 regarding U.S. Patent 7,124,205
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`7. IPR2017-01406 regarding U.S. Patent 7,673,072
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`8. IPR2017-01409 regarding U.S. Patent 8,131,880
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`9. IPR2017-01410 regarding U.S. Patent 8,131,880
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`10. IPR2017-01559 regarding U.S. Patent 7,945,699
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`11. IPR2017-01705 regarding U.S. Patent 7,673,072
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`12. IPR2017-01707 regarding U.S. Patent 7,673,072
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`13. IPR2017-01711 regarding U.S. Patent 7,945,699
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`14. IPR2017-01713 regarding U.S. Patent 7,337,241
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`15. IPR2017-01714 regarding U.S. Patent 9,055,104
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`16. IPR2017-01718 regarding U.S. Patent 7,237,036
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`17. IPR2017-01728 regarding U.S. Patent 7,337,241
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`18. IPR2017-01729 regarding U.S. Patent 8,805,948
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`19. IPR2017-01732 regarding U.S. Patent 7,673,072
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`20. IPR2017-01733 regarding U.S. Patent 7,337,241
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`21. IPR2017-01734 regarding U.S. Patent 7,124,205
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`22. IPR2017-01735 regarding U.S. Patent 7,124,205
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`23. IPR2017-01736 regarding U.S. Patent 8,131,880
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`24. IPR2017-01737 regarding U.S. Patent 8,131,880
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`25. IPR2018-00226 regarding U.S. Patent 7,124,205
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`26. IPR2018-00234 regarding U.S. Patent 8,805,948
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`27. IPR2018-00327 regarding U.S. Patent 7,237,036
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`28. IPR2018-00328 regarding U.S. Patent 7,337,241
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`29. IPR2018-00329 regarding U.S. Patent 7,673,072
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`30. IPR2018-00336 regarding U.S. Patent 7,124,205
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`31. IPR2018-00338 regarding U.S. Patent 8,131,880
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`32. IPR2018-00339 regarding U.S. Patent 8,131,880
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`33. IPR2018-00371 regarding U.S. Patent 7,237,036
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`34. IPR2018-00372 regarding U.S. Patent 7,337,241
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`35. IPR2018-00374 regarding U.S. Patent 9,055,104
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`36. IPR2018-00375 regarding U.S. Patent 7,673,072
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`37. IPR2018-00400 regarding U.S. Patent 7,124,205
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`38. IPR2018-00401 regarding U.S. Patent 7,945,699
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`39. IPR2018-00403 regarding U.S. Patent 8,805,948
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`40. IPR2018-01306 regarding U.S. Patent 7,124,205
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`41. IPR2018-01352 regarding U.S. Patent 7,945,699
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`The patent family to which the 036 Patent belongs contains 19 additional
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`U.S. patents:
`
`1. U.S. Patent Application No. 11/821,820 (filed Jun. 25, 2007, issued Mar.
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`2, 2010 as 7,673,072 patent);
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`2. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
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`2003 as 6,591,302 patent);
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`3. U.S. Patent Application No. 10/023,240 (filed Dec. 17, 2001, issued Nov.
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`15, 2005 as 6,965,941 patent);
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`4. U.S. Patent Application No. 09/970,124 (filed Oct. 2, 2001, issued Oct.
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`17, 2006 as 7,124,205 patent);
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`5. U.S. Patent Application No. 09/855,979 (filed May 14, 2001, issued Nov.
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`7, 2006 as 7,133,940 patent);
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`6. U.S. Patent Application No. 09/802,426 (filed Mar. 9, 2001, issued May
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`9, 2006 as 7,042,898 patent);
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`7. U.S. Patent Application No. 09/802,550 (filed Mar. 9, 2001, issued Dec.
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`2, 2003 as 6,658,480 patent);
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`8. U.S. Patent Application No. 09/802,551 (filed Mar. 9, 2001, issued Jul.
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`11, 2006 as 7,076,568 patent);
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`9. U.S. Patent Application No. 09/801,488 (filed Mar. 7, 2001, issued Feb. 3,
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`2004 as 6,687,758 patent);
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`10. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun.
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`29, 2004 as 6,757,746 patent);
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`11. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued
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`Dec. 31, 2013 as 8,621,101 patent);
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`12. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued
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`Oct. 19, 2004 as 6,807,581 patent);
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`13. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul.
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`30, 2002 as 6,427,171 patent);
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`14. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul.
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`30, 2002 as 6,427,173 patent);
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`15. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun.
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`12, 2001 as 6,247,060 patent);
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`16. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct.
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`22, 2002 as 6,470,415 patent);
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`17. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued
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`Aug. 13, 2002 as 6,434,620 patent);
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`18. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued
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`May 14, 2002 as 6,389,479 patent);
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`19. U.S. Patent Application No. 60/098,296 (expired);
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`20. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May
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`1, 2001 as 6,226,680 patent);
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`21. U.S. Patent Application No. 60/061,809 (expired).
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`The patent family to which the 205 Patent belongs contains 5 additional U.S.
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`patents:
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`1. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
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`2003 as 6,591,302 patent);
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`2. U.S. Patent Application No. 10/260,112 (filed Sept. 27, 2002, issued Jul.
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`26, 2007 as 7,237,036 patent);
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`3. U.S. Patent Application No. 10/261,051 (filed Sept. 30, 2002, issued Sept.
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`13, 2011 as 8,019,901 patent);
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`4. U.S. Patent Application No. 11/821,820 (filed Jun. 25, 2007, issued Mar.
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`2, 2010 as 7,673,072 patent);
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`5. U.S. Patent Application No. 11/582,199 (filed Oct. 16, 2006, issued Feb.
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`16, 2010 as 7,664,883 patent).
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`The patent family to which the 072 Patent belongs contains 19 additional
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`U.S. patents:
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`1. U.S. Patent Application No. 10/260,112 (filed Sept. 27, 2002, issued Jul.
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`26, 2007 as 7,237,036 patent);
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`2. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`2003 as 6,591,302 patent);
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`3. U.S. Patent Application No. 10/023,240 (filed Dec. 17, 2001, issued Nov.
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`15, 2005 as 6,965,941 patent);
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`4. U.S. Patent Application No. 09/970,124 (filed Oct. 2, 2001, issued Oct.
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`17, 2006 as 7,124,205 patent);
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`5. U.S. Patent Application No. 09/855,979 (filed May 14, 2001, issued Nov.
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`7, 2006 as 7,133,940 patent);
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`6. U.S. Patent Application No. 09/802,426 (filed Mar. 9, 2001, issued May
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`9, 2006 as 7,042,898 patent);
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`7. U.S. Patent Application No. 09/802,550 (filed Mar. 9, 2001, issued Dec.
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`2, 2003 as 6,658,480 patent);
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`8. U.S. Patent Application No. 09/802,551 (filed Mar. 9, 2001, issued Jul.
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`11, 2006 as 7,076,568 patent);
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`9. U.S. Patent Application No. 09/801,488 (filed Mar. 7, 2001, issued Feb. 3,
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`2004 as 6,687,758 patent);
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`10. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun.
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`29, 2004 as 6,757,746 patent);
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`11. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued
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`Dec. 31, 2013 as 8,621,101 patent);
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`12. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`Oct. 19, 2004 as 6,807,581 patent);
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`13. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul.
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`30, 2002 as 6,427,171 patent);
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`14. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul.
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`30, 2002 as 6,427,173 patent);
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`15. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun.
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`12, 2001 as 6,247,060 patent);
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`16. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct.
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`22, 2002 as 6,470,415 patent);
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`17. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued
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`Aug. 13, 2002 as 6,434,620 patent);
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`18. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued
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`May 14, 2002 as 6,389,479 patent);
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`19. U.S. Patent Application No. 60/098,296 (expired);
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`20. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May
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`1, 2001 as 6,226,680 patent);
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`21. U.S. Patent Application No. 60/061,809 (expired).
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`The patent family to which the 948 Patent belongs contains 2 additional U.S.
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`patents:
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`1. U.S. Patent Application No. 09/692,561 (filed Oct. 18, 2000, issued Jan.
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`14, 2014 as 8,631,140 patent);
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`2. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May
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`1, 2001 as 6,226,680 patent);
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`3. U.S. Patent Application No. 60/061,809 (expired).
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`The patent family to which the 699 Patent belongs contains 14 additional
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`U.S. patents:
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`1. U.S. Patent Application No. 10/881,271 (filed Jun. 29, 2004, issued Dec.
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`2, 2008 as 7,461,160 patent);
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`2. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun.
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`29, 2004 as 6,757,746 patent);
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`3. U.S. Patent Application No. 09/748,936 (filed Dec. 26, 2000, issued Dec.
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`25, 2001 as 6,334,153 patent);
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`4. U.S. Patent Application No. 09/692,561 (filed Oct. 18, 2000, issued Jan.
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`14, 2014 as 8,631,140 patent);
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`5. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued Oct.
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`19, 2004 as 6,807,581 patent);
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`6. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued Dec.
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`31, 2013 as 8,621,101 patent);
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`7. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul.
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`30, 2002 as 6,427,171 patent);
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`8. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul.
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`30, 2002 as 6,427,173 patent);
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`9. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun.
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`12, 2001 as 6,247,060 patent);
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`10. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct.
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`22, 2002 as 6,470,415 patent);
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`11. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued
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`Aug. 13, 2002 as 6,434,620 patent);
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`12. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued
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`May 14, 2002 as 6,389,479 patent);
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`13. U.S. Patent Application No. 60/098,296 (expired)
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`14. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May
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`1, 2001 as 6,226,680 patent);
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`15. U.S. Patent Application No. 60/061,809 (expired);
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`16. U.S. Patent Application No. 13/108,729 (filed May 16, 2011, issued
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`Sept. 17, 2003 as 8,539,112 patent).
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`The patent family to which the 880 Patent belongs contains 6 additional U.S.
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`patents:
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`1. U.S. Patent Application No. 10/005,536 (filed Nov. 7, 2001, issued Jan.
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`23, 2007 as 7,167,926 patent);
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`2. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul.
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`30, 2002 as 6,427,171 patent);
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`3. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul.
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`30, 2002 as 6,427,173 patent);
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`4. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued Aug.
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`13, 2002 as 6,434,620 patent);
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`5. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued May
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`14, 2002 as 6,389,479 patent);
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`6. U.S. Patent Application No. 60/098,296 (expired);
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`7. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May
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`1, 2001 as 6,226,680 patent);
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`8. U.S. Patent Application No. 60/061,809 (expired).
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`The patent family to which the 104 Patent belongs contains 1 additional U.S.
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`patent:
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`1. U.S. Patent Application No. 10/413,256 (filed Apr. 22, 2003, issued Jun.
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`2, 2009 as 7,543,087 patent);
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`2. U.S. Patent Application No. 60/374,788 (expired).
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`The patent family to which the 241 Patent belongs contains 19 additional
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`U.S. patents:
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`1. U.S. Patent Application No. 10/092,967 (filed Mar. 6, 2002, issued Jul. 8,
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`2003 as 6,591,302 patent);
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`2. U.S. Patent Application No. 10/023,240 (filed Dec. 17, 2001, issued Nov.
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`15, 2005 as 6,965,941 patent);
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`3. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul.
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`30, 2002 as 6,427,173 patent);
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`4. U.S. Patent Application No. 09/439,603 (filed Nov. 12, 1999, issued Jun.
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`12, 2001 as 6,247,060 patent);
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`5. U.S. Patent Application No. 09/067,544 (filed Apr. 27, 1998, issued May
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`1, 2001 as 6,226,680 patent);
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`6. U.S. Patent Application No. 60/061,809 (expired);
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`7. U.S. Patent Application No. 09/384,792 (filed Aug. 27, 1999, issued Aug.
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`13, 2002 as 6,434,620 patent);
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`8. U.S. Patent Application No. 09/141,713 (filed Aug. 28, 1998, issued May
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`14, 2002 as 6,389,479 patent);
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`9. U.S. Patent Application No. 60/098,296 (expired);
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`10. U.S. Patent Application No. 09/416,925 (filed Oct. 13, 1999, issued Oct.
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`22, 2002 as 6,470,415 patent);
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`11. U.S. Patent Application No. 09/514,425 (filed Feb. 28, 2000, issued Jul.
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`30, 2002 as 6,427,171 patent);
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`12. U.S. Patent Application No. 09/675,484 (filed Sept. 29, 2000, issued
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`Oct. 19, 2004 as 6,807,581 patent);
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`13. U.S. Patent Application No. 09/675,700 (filed Sept. 29, 2000, issued
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`Dec. 31, 2013 as 8,621,101 patent);
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`14. U.S. Patent Application No. 09/789,366 (filed Feb. 20, 2001, issued Jun.
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`29, 2004 as 6,757,746 patent);
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`15. U.S. Patent Application No. 09/801,488 (filed Mar. 7, 2001, issued Feb.
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`3, 2004 as 6,687,758 patent);
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`16. U.S. Patent Application No. 09/802,551 (filed Mar. 9, 2001, issued Jul.
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`11, 2006 as 7,076,568 patent);
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`17. U.S. Patent Application No. 09/802,426 (filed Mar. 9, 2001, issued May
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`9, 2006 as 7,042,898 patent);
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`18. U.S. Patent Application No. 09/802,550 (filed Mar. 9, 2001, issued Dec.
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`2, 2003 as 6,658,480 patent);
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`19. U.S. Patent Application No. 09/855,979 (filed May 14, 2001, issued
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`Nov. 7, 2006 as 7,133,940 patent);
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`20. U.S. Patent Application No. 09/970,124 (filed Oct. 2, 2001, issued Oct.
`
`17, 2006 as 7,124,205 patent);
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`21. U.S. Patent Application No. 09/464,283 (filed Dec. 15, 1999, issued Jul.
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`30, 2002 as 6,427,173 patent).
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`III. LEAD AND BACKUP COUNSEL
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`Alacritech designated James M. Glass as lead counsel, as well as Joseph M.
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`Paunovich, Brian E. Mack, and Mark Lauer as backup counsel. A power of
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`attorney is filed concurrently with this document. Alacritech consents to electronic
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`service.
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`IV. SERVICE INFORMATION
`
`James M. Glass
`Registration No. 46,729
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`Email: jimglass@quinnemanuel.com
`Address: 51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Phone: 212-849-7000
`Fax: 212-849-7100
`
`
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`14
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`Joseph M. Paunovich
`Registration No. 59,033
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`Email:
`joepaunovich@quinnemanuel.com
`Address: 865 S. Figueroa Street, 10th Fl.
`Los Angeles, CA 90017
`Phone: 213-443-3000
`Fax: 213-443-3100
`
`Brian E. Mack
`Registration No. 57,189
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`Email: brianmack@quinnemanuel.com
`Address: 50 California Street, 22nd Fl.
`San Francisco, CA 94111
`Phone: 415-875-6600
`Fax: 415-875-6700
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`Mark Lauer
`Registration No. 36,578
`SILICON EDGE LAW GROUP LLP
`Email: mark@siliconedgelaw.com
`Address: 7901 Stoneridge Dr., Ste. 528
`Pleasanton, CA 94588
`Phone: 925-621-2121
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`Date: July 23, 2018
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`Fax: 925-621-2119
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` Respectfully submitted,
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`By: /James M. Glass/
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`Tel: 212-849-7000
`Fax: 212-849-7100
`Email: jimglass@quinnemanuel.com
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`Attorney for Patent Owner –
`Alacritech, Inc.
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`15
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certify that the foregoing Mandatory Notices were
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`served on July 23, 2018 by filing these documents through the Patent Review
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`Processing System, as well as by e-mailing copies to:
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`Christopher TL Douglas
`Reg. No. 56,950
`Kirk Bradley
`Reg. No. 46,571
`Alston & Bird LLP
`101 South Tryon Street, Suite 4000
`Charlotte, North Carolina 28280
`P 704-444-1318
`F 704-444-1111
`Christopher.douglas@alston.com
`Kirk.bradley@alston.com
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`Derek S. Neilson
`Reg. No. 65,447
`Alston & Bird LLP
`2828 North Harwood Street, Suite
`1800
`Dallas, Texas 75201
`P 214-922-3409
`F 214-922-3839
`Derek.neilson@alston.com
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`Date: July 23, 2018
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` Respectfully submitted,
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`By: /James M. Glass/
` James M. Glass (Reg. No. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Ave., 22nd Fl.
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`Case No. IPR2018-01307
`U.S. Patent No. 8,805,948
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`New York, NY 10010
`Tel: 212-849-7000
`Fax: 212-849-7100
`Email: jimglass@quinnemanuel.com
`
`
`Attorney for Patent Owner –
`Alacritech, Inc.
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