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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Google LLC,
`Petitioner,
`
`v.
`
`WAG Acquisition, L.L.C.,
`Patent Owner.
`
`
`
`IPR2022-01413
`
`U.S. Patent No. 9,762,636 B2
`
`
`
`
`
`PETITIONER’S UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
`
`
`Pursuant to 37 C.F.R. § 42.8, Petitioner Google LLC (“Petitioner”) submits
`
`these updated Mandatory Notices. Petitioner reserves its rights to further
`
`supplement or modify these Notices.
`
`A. Real Party-In-Interest under §42.8(b)(1)
`
`Petitioner Google LLC and YouTube, LLC are the real parties-in-interest to
`
`the IPR petition.
`
`B. Related Matters under §42.8(b)(2)
`
`The ’636 patent is asserted in pending litigation involving the Petitioner: WAG
`
`Acquisition, L.L.C. v. Google LLC, No. 3:22-cv-5772 (N.D. Cal.), which was
`
`transferred from the Western District of Texas on October 5, 2022. The complaint
`
`in this related case was first served on August 12, 2021. (EX1065, EX1066.) The
`
`’636 patent is also the subject of two pending litigations listed below:
`
`• WAG Acquisition, LLC v. The Walt Disney Company, No. 2:21-cv-08230
`
`(C.D. Cal., filed Oct. 18, 2021)
`
`• WAG Acquisition, LLC v. Amazon.com, Inc., No. 2:22-cv-01424 (W.D.
`
`Wash.), transferred from the Western District of Texas, complaint filed
`
`Aug. 6, 2021
`
`The ’636 patent is also the subject of two inter partes review proceedings
`
`listed below:
`
`
`
`
`-1-
`
`
`
`

`

`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
`
`
`• The Walt Disney Company et al v. WAG Acquisition, LLC, IPR2022-01227
`
`(filed July 13, 2022)
`
`• Amazon.com, Inc. et al. v. WAG Acquisition, LLC, IPR2022-01433 (filed
`
`August 23, 2022)
`
`C. Lead and Back-Up Counsel under §42.8(b)(3)
`
`Petitioner provides the following designation of counsel:
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Eamonn Gardner (Reg. No. 63,322)
`egardner@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (858) 550-6086
`Fax: (720) 566-4099
`
`
`
`
`
`
`
`Orion Armon (Reg. No. 65,421)
`oarmon@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (720) 566-4119
`Fax: (720) 566-4099
`
`Naina Soni (Admission pro hac vice to be
`requested)
`nsoni@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (202) 728-7153
`Fax: (202) 842-7899
`
`
`-2-
`
`
`
`

`

`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
`
`
`Service Information
`D.
`Please address all correspondence to counsel listed above. Petitioner consents
`
`to electronic service at the email address(s) above.
`
`Respectfully submitted,
`
`
`By:
`/Eamonn Gardner/
`
` Eamonn Gardner
`
` (Reg. No. 63,322)
`
`
`
`
`
`
`
`
`
`
`Dated: November 15, 2023
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (202) 842-7885
`Fax: (202) 842-7899
`
`
`
`
`
`
`
`
`-3-
`
`
`
`

`

`IPR2022-01413
`U.S. Patent No. 9,762,636 B2
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§42.6(e)(4)(i) et seq., a complete copy of the attached
`PETITIONER’S UPDATED MANDATORY NOTICES, is being served via
`email on the 15th day of November, 2023, upon Patent Owner’s appointed attorneys
`of record:
`
`
`Ronald Abramson
`ron.abramson@listonabramson.com
`M. Michael Lewis
`michael.lewis@listonabramson.com
`Ari J. Jaffess
`ari.jaffess@listonabramson.com
`Gina K. Kim
`gina.kim@listonabramson.com
`LISTON ABRAMSON LLP
`405 Lexington Ave, 46th Floor
`New York, NY 10174
`Telephone: (212) 257-1630
`Facsimile: (914) 462-4175
`
`Dated: November 15, 2023
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (202) 842-7885
`Fax: (202) 842-7899
`
`
`
`
`/Eamonn Gardner/
`Eamonn Gardner
`(Reg. No. 63,322)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`-4-
`
`
`
`

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