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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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`AMAZON.COM, INC., AMAZON WEB SERVICES, INC., AND
`AMAZON.COM SERVICES LLC
`Petitioners
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`v.
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`WAG ACQUISITION, L.L.C.
`Patent Owner
`
`U.S. Patent No. 9,762,636
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`
`Inter Partes Review Case No. 2022-01433
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`PATENT OWNER MANDATORY NOTICES
`INFORMATION UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R. § 42.8, WAG ACQUISITION, L.L.C. respectfully
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`submits the following Mandatory Notices.
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`I.
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`REAL PARTY IN INTEREST
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`Patent Owner WAG ACQUISITION, L.L.C. is the real party in interest.
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`II. RELATED MATTERS
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`A.
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`Judicial Matters:
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`U.S. Patent No. 9,762,636 is involved in three pending district court
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`proceedings:
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`1. WAG Acquisition, L.L.C. v. Amazon.com, Inc. et al., Case No. 6:21-cv-
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`00815 (W.D. Tex.), filed on Aug. 6, 2021.
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`2. WAG Acquisition, L.L.C. v. Google LLC et al., Case No. 6:21-cv-00816
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`(W.D. Tex.), filed on Aug. 6, 2021.
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`3. WAG Acquisition, L.L.C. v. The Walt Disney Company et al., Case No.
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`2:21-cv-08230 (C.D. Cal.), filed on Oct. 18, 2021.
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`U.S. Patent Nos. 9,742,824 and 9,729,594 are related to U.S. Patent No.
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`9,762,636 and are or were involved in the below district court proceedings:
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`1. WAG Acquisition, L.L.C. v. Netflix, Inc., Case No. 4:22-cv-05003-KAW
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`(N.D. Cal.), filed on Sept. 1, 2022 (transferred from the Western District
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`of Texas, Case No. 6:21-cv-01083 (W.D. Tex.), filed on Oct. 18, 2021).
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`2. WAG Acquisition, L.L.C. v. Hulu LLC, Case No. 2:21-cv-08230 (C.D.
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`2
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`
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`Cal.), filed on Oct. 18, 2021 (consolidated with WAG Acquisition, L.L.C.
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`v. The Walt Disney Company et al., Case No. 2:21-cv-08230 and closed on
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`Feb. 23, 2022).
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`U.S. Patent Nos. 8,122,141, 8,327,011, 8,185,611, and 8,364,839 are related
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`to U.S. Patent No. 9,762,636 and are involved in the below pending district court
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`proceedings, both of which are currently stayed:
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`1. WAG Acquisition, LLC v. FriendFinder Networks, Inc. et al., Case No.
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`3:19-cv-05036 (N.D. Cal.), originally filed as Case No. 2-14-cv-03456
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`(D.N.J.) on May 30, 2014.
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`2. WAG Acquisition, LLC v. Flying Crocodile, Inc. et al., Case No. 2:19-cv-
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`01278 (W.D. Wash.), originally filed as Case No. 2-14-cv-02674 (D.N.J.)
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`on Apr. 25, 2014.
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`U.S. Patent Nos. 6,766,376, 8,122,141, 8,327,011, 8,185,611, and 8,364,839
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`are related to U.S. Patent No. 9,762,636 and were involved in one or more of the
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`below district court proceedings, which all have been dismissed:
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`1. WAG Acquisition, L.L.C. v. XM Satellite Radio, Inc. et al., Case No.
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`1:08-cv-06357 (S.D.N.Y.), originally filed as Case No. 4:07-cv-00034
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`(N.D. Miss.) on Feb. 27, 2007.
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`2. WAG Acquisition, LLC v. Sobonito Investments, Ltd. et al., Case No. 2-
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`14-cv-01661 (D.N.J.), filed on Mar. 14, 2014.
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`3
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`3. WAG Acquisition, LLC v. Multi Media, LLC et al., Case No. 2:19-cv-
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`07076 (C.D. Cal.), originally filed as Case No. 2-14-cv-02340 (D.N.J.)
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`on Apr. 11, 2014.
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`4. WAG Acquisition, LLC v. Data Conversions, Inc. et al., Case No. 3:19-
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`cv-00489 (D.N.V.), originally filed as Case No. 2-14-cv-02345 (D.N.J.)
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`on Apr. 11, 2014.
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`5. WAG Acquisition, LLC v. Gattyan Group S.à r.l. et al., Case No. 2-14-cv-
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`02832 (D.N.J.), filed on May 5, 2014.
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`6. WAG Acquisition, LLC v. MFCXY, Inc. et al., Case No. 2-14-cv-03196
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`(D.N.J.), filed on May 16, 2014.
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`7. WAG Acquisition, LLC v. Vubeology, Inc. et al., Case No. 1:19-cv-00805
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`(W.D. Tex.), originally filed as Case No. 2-14-cv-04531 (D.N.J.) on July
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`17, 2014.
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`8. WAG Acquisition, LLC v. GameLink Int’l Ltd. et al., Case No. 2-15-cv-
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`03416 (D.N.J.), filed on May 18, 2015.
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`9. WAG Acquisition, LLC v. Webpower, Inc. et al., Case No. 9:19-cv-81155
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`(S.D. Fla.), originally filed as Case No. 2-15-cv-03581 (D.N.J.) on May
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`27, 2015.
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`B. Administrative Matters:
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`U.S. Patent No. 9,762,636 is the subject of the below proceedings, which are
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`4
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`pending:
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`1. Inter Partes Review Case No. IPR2022-01227, filed on July 13, 2022.
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`2. Inter Partes Review Case No. IPR2022-01413, filed on Aug. 12, 2022.
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`U.S. Patent Nos. 9,742,824 and 9,729,594 are related to U.S. Patent No.
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`9,762,636 and are the subject of one or more of the below proceedings, which are
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`pending and certain of which were filed by Petitioners:
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`1. Inter Partes Review Case No. IPR2022-01228, filed on July 8, 2022.
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`2. Inter Partes Review Case No. IPR2022-01346, filed on Aug. 2, 2022.
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`3. Inter Partes Review Case No. IPR2022-01411, filed on Aug. 12, 2022.
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`4. Inter Partes Review Case No. IPR2022-01412, filed on Aug. 12, 2022.
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`5. Inter Partes Review Case No. IPR2022-01429, filed on Aug. 24, 2022 by
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`Petitioners.
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`6. Inter Partes Review Case No. IPR2022-01430, filed on Aug. 23, 2022 by
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`Petitioners.
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`U.S. Patent Nos. 8,122,141, 8,327,011, 8,185,611, and 8,364,839 are related
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`to U.S. Patent No. 9,762,636 and are the subject of one or more of the below
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`reexamination proceedings, which are pending:
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`1. Ex Parte Reexamination Control No. 90/014,833, which is pending.
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`2. Ex Parte Reexamination Control No. 90/014,834, which is pending.
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`3. Ex Parte Reexamination Control No. 90/014,836, which is pending.
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`5
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`4. Ex Parte Reexamination Control No. 90/014,835 was denied on Nov. 12,
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`2021. The requesters filed a petition for review of the denial, which
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`remains pending.
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`U.S. Patent Nos. 8,122,141, 8,327,011, 8,185,611, and 8,364,839 are related
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`to U.S. Patent No. 9,762,636 and are the subject of one or more of the below
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`PTAB proceedings, which have resulted in a final written decision or were
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`terminated:
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`1. Inter Partes Review Case No. IPR2015-01033, in which a decision
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`denying institution of inter partes review issued on Oct. 19, 2015.
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`2. Inter Partes Review Case No. IPR2015-01035, in which a decision
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`denying institution of inter partes review issued on Oct. 23, 2015.
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`3. Inter Partes Review Case No. IPR2015-01036, in which a final written
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`decision issued on Oct. 20, 2016.
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`4. Inter Partes Review Case No. IPR2015-01037, in which a decision
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`denying institution of inter partes review issued on Oct. 19, 2015.
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`5. Inter Partes Review Case No. IPR2016-01161, in which a decision
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`denying institution of inter partes review issued on Dec. 12, 2016.
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`6. Inter Partes Review Case No. IPR2016-01162, in which a decision
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`denying institution of inter partes review issued on Dec. 12, 2016.
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`7. Inter Partes Review Case No. IPR2016-01238, in which a final written
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`6
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`decision issued on Dec. 26, 2017.
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`a. Inter Partes Review Case No. IPR2017-00786, was joined with Inter
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`Partes Review Case No. IPR2016-01238 on June 5, 2017 and was
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`terminated.
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`b. Inter Partes Review Case No. IPR2017-00820, was joined with Inter
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`Partes Review Case No. IPR2016-01238 on June 5, 2017 and was
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`terminated.
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`8. Inter Partes Review Case No. IPR2016-01239, in which a final written
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`decision issued on Dec. 26, 2017.
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`a. Inter Partes Review Case No. IPR2017-00784, was joined with Inter
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`Partes Review Case No. IPR2016-01239 on Mar. 31, 2017 and was
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`terminated.
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`b. Inter Partes Review Case No. IPR2017-00785, was joined with Inter
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`Partes Review Case No. IPR2016-01239 on Apr. 13, 2017 and was
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`terminated.
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`9. Inter Partes Review Case No. IPR2016-01655, in which a decision
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`denying institution of inter partes review issued Feb. 27, 2017.
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`10. Inter Partes Review Case No. IPR2016-01656, in which a termination
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`decision issued on Feb. 26, 2018.
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`11. Inter Partes Review Case No. IPR2016-01657, in which a decision
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`7
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`denying institution of inter partes review issued Feb. 27, 2017.
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`12. Inter Partes Review Case No. IPR2016-01658, in which a termination
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`decision issued on Feb. 27, 2018.
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`a. Inter Partes Review Case No. IPR2017-01179, was joined with Inter
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`Partes Review Case No. IPR2016-01658 on Oct. 5, 2017 and was
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`terminated.
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`III. COUNSEL
`
`Lead Counsel
`Ronald Abramson (Reg. No. 34,762)
`ron.abramson@listonabramson.com
`Liston Abramson LLP
`405 Lexington Ave, 46th Floor
`New York, NY 10174
`Telephone: (212) 257-1630
`Facsimile: (914) 462-4175
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`
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`IV. SERVICE INFORMATION
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`Back-up Counsel
`M. Michael Lewis (Reg. No. 50,478)
`Ari J. Jaffess (Reg. No. 74,558)
`Gina K. Kim (Reg. No. 69,639)
`michael.lewis@listonabramson.com
`ari.jaffess@listonabramson.com
`gina.kim@listonabramson.com
`Liston Abramson LLP
`405 Lexington Ave, 46th Floor
`New York, NY 10174
`Telephone: (212) 257-1630
`Facsimile: (914) 462-4175
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`Electronic mail address:
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`ron.abramson@listonabramson.com
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`michael.lewis@listonabramson.com
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`ari.jaffess@listonabramson.com
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`gina.kim@listonabramson.com
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`8
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`Electronic service on lead and back up counsel is approved and preferred.
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`Any postal mail, courier, or hand delivery regarding this proceeding may be
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`directed to lead and back-up counsel at the addresses listed above.
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`V.
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`PATENT OWNER PRELIMINARY RESPONSE
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`Patent Owner WAG ACQUISITION, L.L.C. reserves the right to file a
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`preliminary response pursuant to the deadline provided by 37 C.F.R. § 42.107.
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`
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`Dated: September 14, 2022
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`Respectfully submitted,
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`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1643
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`9
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner
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`Mandatory Notices Information Under 37 C.F.R. § 42.8, dated September 14,
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`2022, was served on Petitioners by filing through the PTAB E2E System and via
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`email to WAG-IPR@fenwick.com as authorized in Petitioners’ mandatory notices.
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`
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`Dated: September 14, 2022
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`
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`
`
`/Ronald Abramson/
`Ronald Abramson
`(Attorney for Patent Owner)
`Reg. No. 34,762
`212-257-1643
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`
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`10
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