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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`WORLDS INC.,
`Patent Owner.
`
`_______________
`
`Case IPR2021-00277
`Patent 8,082,501
`
`_______________
`
`
`
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`
`
`

`

`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Number
`
`Exhibit Description
`
`
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`Software Publishing and Development Agreement between
`Bungie, Inc. and Activision Publishing, Inc., dated April
`16, 2010
`
`Complaint in Worlds Inc. v. Activision Blizzard, Inc., et al.,
`Case No. 1:12-cv-10576 (D. Mass.)
`
`Proof of Service in Worlds Inc. v. Activision Blizzard, Inc.,
`et al., Case No. 1:12-cv-10576 (D. Mass.)
`
`Discovery Order on Activision’s Admission of Real Party-
`in-Interest Status to IPR petitions filed by Bungie, Inc. in
`Worlds Inc. v. Activision Blizzard, Inc., et al., Case No.
`1:12-cv-10576 (D. Mass.)
`
`Complaint in Worlds Inc. v. Microsoft Corp., Case No.
`6:20-cv-872 (W.D. Tex.)
`
`Plaintiff Worlds Inc.’s Preliminary Infringement
`Contentions in Worlds Inc. v. Microsoft Corp., Case No.
`6:20-cv-872 (W.D. Tex.)
`
`Plaintiff Worlds Inc.’s Opposition to Microsoft’s Motion to
`Stay Pending IPR in Worlds Inc. v. Microsoft Corp., Case
`No. 6:20-cv-872 (W.D. Tex.)
`
`Scheduling Order in Worlds Inc. v. Microsoft Corp., Case
`No. 6:20-cv-872 (W.D. Tex.)
`
`Electronic Scheduling Order in Worlds Inc. v. Activision
`Blizzard, Inc., et al., Case No. 1:12-cv-10576 (D. Mass.)
`
`

`

`Case IPR2021-00277
`Patent 8,082,501
`
`
`Exhibit Number
`
`Exhibit Description
`
`2010
`
`2011
`
`Defendants’ Notice of Narrowed Election of Prior Art in
`Worlds Inc. v. Activision Blizzard, Inc., et al., Case No.
`1:12-cv-10576 (D. Mass.)
`
`Ex. V (Claim Chart) to the Complaint in Worlds Inc. v.
`Microsoft Corp., Case No. 6:20-cv-872 (W.D. Tex.)
`
`2012-2099
`
`Reserved
`
`2100
`
`2101
`
`MEMORANDUM AND ORDER, World, Inc. v. Activision
`Blizzard, Inc., et al, Case No. 1:12-cv-10576 (D. Mass.
`April 30, 2021)
`
`Text Order granting Motion to Stay Case, World Inc. v.
`Microsoft Corporation, Case No. 6:20-cv-00872 (W.D.
`Tex. May 12, 2021)
`
`
`
`
`ii
`
`

`

`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(3), Patent Owner Worlds Inc. submits the
`
`following updated mandatory notices in order to update the status of proceedings
`
`that may affect or be affected by a decision in this proceeding. No other updates are
`
`provided by these notices.
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`On May 12, 2021, the District Court in World Inc. v. Microsoft Corporation,
`
`Case No. 6:20-cv-00872 (W.D. Tex.) issued its Text Order granting Motion to Stay
`
`Case, a copy of which is submitted herewith as Exhibit 2101.
`
`
`
`
`
`Dated: May 28, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` By: /s/ Wayne M. Helge
`
`Registration No. 56,905
`
`Lead Counsel for Patent Owner
`
`
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 28, 2021, a true and correct copy of the foregoing
`
`
`
`Patent Owner’s Updated Mandatory Notices and Exhibit 2101 was served via email,
`
`by consent, to Petitioner by serving the correspondence email addresses of record as
`
`follows:
`
`
`
`
`
`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Email: IPR42342-0086IP1@fr.com
`
`David L. Holt, Reg. No. 65,161
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`PTABInbound@fr.com
`axfptab@fr.com
`holt2@fr.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` By: /s/ Wayne M. Helge
`
`Registration No. 56,905
`
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`

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