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Paper No. ___
`
`Date Filed: May 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`ULTRATEC, INC.
`Petitioner
`
`v.
`
`SORENSON IP HOLDINGS,
`Patent Owner
`________________
`
`Case IPR2017-01394
`________________
`
`Patent No. 9,336,689
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2017-01394
`U.S. Patent 9,336,689
`
`
`Patent Owner Sorenson IP Holdings submits the following mandatory
`
`notices pursuant to 37 C.F.R. § 42.8.
`
`
`
`MANDATORY NOTICES (37 C.F.R. § 42.8(a)(3))
`
`
`
`A. Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`Sorenson IP Holdings, CaptionCall, LLC, and Sorenson Communications,
`
`LLC are real parties-in-interest.
`
`
`
`B. Notice of Related Matters (37 C.F.R. § 42.8(b)(2))
`
`United States Patent Application No. 15/096,087, filed on April 11, 2016,
`
`which is currently pending, is a continuation of United States Patent No. 9,336,689
`
`(the ’689 Patent).
`
`The ’689 Patent issued from U.S. Application No. 14/530,407 (the ’407
`
`Application), which is a continuation of abandoned U.S. Application No.
`
`13/768,918. The ’407 Application is also a continuation of U.S. Application No.
`
`12/624,973, which issued as U.S. Patent No. 8,379,801 (the ’801 Patent) on
`
`February 19, 2013.
`
`The ’801 Patent was subject to IPR2013-00288 in which the Patent Trial and
`
`Appeal Board found claims 3-6, 8, and 10-29 unpatentable.
`
`
`
`
`
`1
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`

`

`IPR2017-01394
`U.S. Patent 9,336,689
`
`
`C. Designation of Lead and Backup Counsel (37 C.F.R. § 42.8(b)(3))
`
`Lead Counsel
`
`Backup Counsel
`
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street
`Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1263
`Fax: (215) 965-1210
`rmunoz@akingump.com
`USPTO Registration No. 66,998
`
`John Wittenzellner
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street
`Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1241
`Fax: (215) 965-1210
`jwittenzellner@akingump.com
`USPTO Registration No. 61,662
`
`
`
`
`
`2
`
`
`
`
`
`

`

`IPR2017-01394
`U.S. Patent 9,336,689
`
`
`D. Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service of any documents via hand-delivery may be made at the postal
`
`mailing address of lead and back-up counsel identified above. Patent Owner
`
`consents to service by electronic mail at the below email addresses:
`
`Date: May 30, 2017
`
`
`
`
`
`
`
`
`
`
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`
`
`rmunoz@akingump.com
`jwittenzellner@akingump.com
`SORENSONIPSERVICE@akingump.com
`
`
`
`Respectfully submitted,
`
`
`
`
`
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`
`
`
`
`By: /Ruben H. Munoz/
`Ruben H. Munoz
`Registration No. 66,998
`Counsel for Patent Owner
`Sorenson IP Holdings
`
`
`
`
`
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`3
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`

`

`IPR2017-01394
`U.S. Patent 9,336,689
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Mandatory Notices was served on counsel of record on May 30, 2017 by
`
`filing this document through the End-to-End System, as well as delivering a copy
`
`via electronic mail to counsel of record for the Petitioner at the following
`
`addresses:
`
`Michael Jaskolski - michael.jaskolski@quarles.com
`Louis A. Klapp - louis.klapp@quarles.com
`Nikia L. Gray - nikia.gray@quarles.com
`
`Respectfully submitted,
`
`
`
`
`
`Date: May 30, 2017
`
`
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`By: /Ruben H. Munoz/
`Ruben H. Munoz
`Registration No. 66,998
`Counsel for Patent Owner
`Sorenson IP Holdings
`
`
`4
`
`

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