Case 6:20-cv-00272-ADA Document 101-3 Filed 07/14/23 Page 1 of 5
`Case 6:20-cv-00272-ADA Document 101-3 Filed 07/14/23 Page 1of5
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`EXHIBIT 1
`EXHIBIT 1
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`

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`Case 6:20-cv-00272-ADA Document 101-3 Filed 07/14/23 Page 2 of 5
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`PTO/SB/57 (01-18)
`Approved for use tt1mugh ·1 ·1/30/2021. 0MB 0651-0064
`U.S. Patent and Tradermrk Office. U.S. DEPARTMENT OF COMMERCE
`Under tt1e Paperwork Reduction Act of 1 ~1~15. no persons are required to respond to a col!ection of information unless it displays a valid 0MB control number.
`(A!so referred to as FORM PTO-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parle Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Attomey Docket No.: 71994-0099
`
`Date: October 17, 2022
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`~ Tllis is a request for ex parte reexamination pursuant to 37 CFR 1.s-1 0 of patent number 10,218,606
`issued February 26, 2019
`. The request is made by:
`D patent owner.
`[iJ third party requester.
`2. ~ The name and address of the person requesting reexamination is:
`Joseph P. Hamilton, Reg. No. 51,770, Perkins Coie LLP
`
`Seattle, WA 98111-1247
`
`3.
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`4.
`
`Requester D asserts smai! entity status (37 CFR 1.27) or D certifies micro entity status (37 CFR 1.29). Only
`a patent owner requester can certify micro entity status. Form PTO/S8/15A or 8 must be attached to certify
`micro entity status.
`
`This request is accompanied by payment of the reexamination fee as set forth in:
`~ 37 CFR 1.20(c)(2); or
`D 37 CFR 1.20(c)(1 ). In checking this box for payment of the fee set forth in 37 CFR 1.20(c)(1 ), requester
`
`asserts that this request has forty (40) or fewer !lages and complies with all other requirements of
`37 CFR 1.20(c)(1).
`
`Payment of tile reexamination fee is made by the method set forth beiow.
`
`_
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`6. ~ A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`enclosed. 37 CFR 1.51 0(b)(4).
`
`7. D CD-ROM or CD-R in duplicate, Computer Program (Appendix) or iarge table
`D Landscape Tabie on CD
`
`[Page 1 ot 3]
`This oo!lection ol information is required by 37 CFR ·1.510. The !nformation is required to obtain or reta!n a benefit by the publ!c which is to file (and by the USPTO
`to process) a request for reexamination. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This colieclion is estimated to take 18 minutes to
`complete, inciuding gathenng, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon tt,e individual case. Any
`comments on the amount of time you require to compiete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S.
`Patent anrJ Trademark Oftice. U.S. Department of Commerce, P.O. Box 1450. Alexandria, VA 22:31:3-1450. DO NOT SEND FEES OR COMPLETED FORMS TO
`THIS ADDRESS. SEND TO: Mail Stop Ex Parte Reexam, Commissioner
`for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`if you need assistance in completing the form, cal! 1-800-PT0-9199 and select option 2.
`
`is enclosed to cover the reexamination fee;
`
`to Deposit Account No. __________
`
`_
`
`a. D A clleck in the amount of$ _______
`b. D The Director is hereby authorized to charge the reexamination fee
`c D Payment by credit card. Form PTO-2038 is attached; or
`d. ~ Payment made via EFS-Web.
`~ In addition, the Director is hereby authorized to charge any fee deficiencies to
`
`Deposit Account No. _5_0_0_6_6_5 _______
`_
`5. ~ Any refund should be made by D check or [[I credit to Deposit Account No._5_0_0_6_6_5
`____
`37 CFR 1.26(c). If payment is made by credit card, refund rnust be to credit card account.
`
`

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`Case 6:20-cv-00272-ADA Document 101-3 Filed 07/14/23 Page 3 of 5
`
`PTO/SB/57 (0·l-'18)
`ApproverJ for use tiirougll 11/30/2021. 0MB 0651-00134
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE.
`Under the Pa )e1vvork Reduction Act of 1995, no )ersons am re uired to res JOnd to a colieclion of information unless it dis la s a valid 0MB control number.
`
`ff applicable, items a. - c. are required.
`
`b. Specification Sequence Listin~i on:
`
`8. D Nucleotide and/or Amino Acid Sequence Submission
`a. D Computer Readable Form (CRF)
`i D CD-ROM (2 copies) or CD-R (2 copies) or
`ii. D paper
`c. D Statements verifying identity of above copies.
`9. D A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`10. 00 Reexamination ofciaim(s) 1, 3-9, 11, 13-16, 18-24, 26, 27, 29, 30, 32, 35-37, 4·1, 42, 44 is requested.
`11 00 A copy of every patent or printed publication relied upon is submitted herewith inciuding a listing thereof on
`12. D An English language translation of a!I necessary and pertinent non-Engiish language patents and/or printed
`13. 00 The attached detailed request includes at least the following items:
`
`Form PTO/SB/08, PTO-·1449, or equivaient.
`
`publications is attached.
`
`a. A statement identifying each substantiai new question of patentability based on prior patents and printed
`publications. 37 CFR 1.51 0(b)(1 ).
`
`b. An identification of every claim for wllicll reexamination is requested, and a detailed explanation of the
`pertinency and manner of applying the cited art to every claim for wl1icll reexamination is requested.
`37 CFR1 .51 0(b)(2).
`
`14. D A proposed amendment is included (oniy where tile patent owner is the requester). 37 CFR 1.51 0(e).
`15. 00 It is certified that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not
`
`prohibit requester from filing this ex pa1te reexamination request. 37 CFR '! .S-1 0(b)(6).
`
`16.
`
`Service
`
`a. 00 It is certified that a copy of this request (if filed by other than the patent owner) llas been served in its
`
`entirety on the patent owner as provided in 37 CFR 1.33(c).
`
`Tile name and address ofthe party served are:
`THORPE NORTH & WESTERN, LLP
`
`SANDY, UT 84091-1219
`
`Date of Service October 17, 2022
`
`OR
`
`b. D A duplicate copy is enclosed since service on patent owner was not possible. An explanation of the
`
`efforts made to serve patent owner is attached. See MPEP 2220.
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`jPage 2 of 31
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`Case 6:20-cv-00272-ADA Document 101-3 Filed 07/14/23 Page 4 of 5
`
`PTO/SB/57 (01-18)
`Approved for use tt1rough ·1 ·1/30/202·1. 0MB 0651-0064
`U.S. Patent and Tradermrk Office. U.S. DEPARTMENT OF COMMERCE
`Under tt1e Paperwork Reduction Act of 1 ~1~15. no persons are required to respond to a col!ection of information unless it displays a valid 0MB control number.
`
`17.
`
`Correspondence Address: Direct all communication about the reexamination to:
`
`00 The address associated with Customer Number: 125096
`
`I
`
`OR
`
`D Firrn or Individual Name
`
`(at the address identified below)
`
`Address
`
`City
`
`Country
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`State
`
`Zip
`
`Telephone
`
`Ernall
`
`18. 00 The patent is currently the subject of the following concurrent proceeding(s):
`a. D Copending reissue Application No.
`b. D Copending reexamination Control No.
`C. D Copending Interference No.
`d. 00 Copending litigation styled:
`See continuation sheet
`
`Information on this form may become public. Credit card information should not be included on this
`WARNING:
`form. Provide credit card information and authorization on PT0-2038.
`
`/Joseph P. HAMILTON/
`Autllorlzed Signature
`
`Joseph P. Hamilton
`Typed/Printed Narne
`
`October 17, 2022
`Date
`
`51,770
`Registration No.
`
`D For Patent Owner Requester
`
`[i] For Third Party Requester
`
`[Page 3 of 3]
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`

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`Case 6:20-cv-00272-ADA Document 101-3 Filed 07/14/23 Page 5 of 5
`
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Request for ex parte reexamination of Patent Number 10,218,606
`
`Item 18 Continuation sheet - copending litigation styled:
`
`-VoIP-Pal.com, Inc. v. Google LLC f/k/a Google Inc., 3-22-cv-05419 (N.D. Cal.)
`-VOIP-P AL.COM, INC. v. Meta Platforms, Inc. et al, 3-22-cv-04279 (N.D. Cal.)
`-VoIP-Pal.com, Inc. v. Amazon.Com, Inc., 6-20-cv-00272 (W.D. Tex.)
`-VoIP-Pal.com, Inc. v. Verizon Communications, Inc., 6-20-cv-00327 (W.D. Tex.)
`
`154745075.1
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