`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`NIANTIC, INC.,
`Petitioner,
`v.
`
`NANT HOLDINGS IP, LLC,
`Patent Owner.
`________________
`
`Case IPR 2021 - 01119
`Patent No. 10,664,518
`________________
`
`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`Mail Stop PATENT BOARD
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), the mandatory notices identified in 37
`
`IPR 2021 - 01119
`Patent No. 10,664,518
`
`
`CFR § 42.8(b).
`
`I.
`
`37 C.F.R. § 42.8(b)(1): REAL PARTY IN INTEREST
`
`Nant Holdings IP, LLC is the Patent Owner and is the Real - Party - In -
`
` Interest in this proceeding. NantWorks, LLC is the exclusive licensee of U.S.
`
`Patent No. 10,664,518.
`
`II.
`
`37 C.F.R. § 42.8(b)(2): RELATED MATTERS
`
`The Patent Owner is aware of the following related judicial or administrative
`
`matters:
`
`• NantWorks, LLC and Nant Holdings IP, LLC v. Niantic, Inc., U.S.
`
`District Court for the Northern District of California, Civil Action No.
`
`3:20 - cv - 06262-LB, involving U.S. Patent Nos. 10,664,518 and
`
`10,403,051.
`
`In addition, the following pending U.S. patent application is related to U.S.
`
`Patent No. 10,664,518: 16/864,075, filed April 30, 2020. Patent Owner does not
`
`concede that the identified matters would affect, or be affected by, a decision in the
`
`present post grant review of U.S. Patent No. 10,664,518.
`
`III. 37 C.F.R. § 42.8(b)(3): LEAD AND BACK - UP COUNSEL
`
`Patent Owner identifies the following lead and back - up counsel:
`
`
`
` -1-
`
`
`
`IPR 2021 - 01119
`Patent No. 10,664,518
`
`
`Lead Counsel
`Matthew K. Blackburn
`Reg. No. 47,428
`DIAMOND MCCARTHY LLP
`150 California St., Suite 2200
`San Francisco, CA 94111
`Tel: 415.692.5202
`Fax: 415.263.9200
`Email: mblackburn@
`diamondmccarthy.com
`
`Back - up Counsel
`Evan Boetticher
`Reg. No. 63,184
`DIAMOND MCCARTHY LLP
`150 California St., Suite 2200
`San Francisco, CA 94111
`Tel: 415.692.5204
`Fax: 415.263.9200
`Email: Evan.boetticher@
`diamondmccarthy.com
`
`IV. 37 C.F.R. § 42.8(b)(4): SERVICE INFORMATION
`
`Please direct all correspondence regarding this proceeding to the counsel as
`
`shown above. Patent Owner also consents to electronic service by e - mail at the
`
`email addresses shown above for lead counsel.
`
`V.
`
`37 C.F.R. § 42.10(b): POWER OF ATTORNEY
`
`A power of attorney from Nant Holdings IP, LLC to Diamond McCarthy
`
`LLP is being filed concurrently with this notice.
`
`Respectfully Submitted,
`
`Dated: July 14, 2021
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`/Matthew K. Blackburn/
`Matthew K. Blackburn
`(Reg. No. 47,428)
`Evan E. Boetticher
`(Reg No. 63,184)
`DIAMOND McCARTHY LLP
`150 California Street, Suite 2200
`San Francisco, CA 94111
`Tel: 415.692.5202
`Fax: 415.263.9200
`Attorney for Patent Owner
`Nant Holdings IP, Inc.
`
`
` -2-
`
`
`
`CERTIFICATE OF SERVICE
`
`IPR 2021 - 01119
`Patent No. 10,664,518
`
`
`The undersigned certifies in accordance with 37 C.F.R. § 42.6(e) that on July 14,
`
`2021, a copy of the foregoing PATENT OWNER’S MANDATORY NOTICES
`
`PURSUANT TO 37 C.F.R. § 42.8(a)(2) was served via email on the Petitioner:
`
`Heidi L. Keefe
`Lauren J, Krickl
`Dena Chen
`Alexandra D. Leeper
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC 20004
`Email: hkeefe@cooley.com
`Email: lkrickle@cooley.com
`Email: dchen@cooley.com
`Email: aleeper@cooley.com
`Attorneys for Petitioner Niantic, Inc.
`
`
`
`By:
`
`
`/Matthew K. Blackburn/
`Matthew K. Blackburn
`(Reg. No. 47,428)
`DIAMOND McCARTHY LLP
`150 California Street, Suite 2200
`San Francisco, CA 94111
`Tel: 415.692.5202
`Fax: 415.263.9200
`Attorney for Patent Owner Nant Holdings IP,
`Inc.
`
`Dated: July 14, 2021
`
`
`
`
`
`
`
`
`
`
`
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