Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 1 of 8
`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 1of8
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`EXHIBIT 4
`EXHIBIT 4
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`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 2 of 8
`URase 5:21-cv-Q4653-BLF
`Pocument 103-5 Filed 04/18/22 Page 2 of 8
`NITED STATES
`PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`90/014,890
`
`10/22/2021
`
`7031728
`
`4733 1.00004
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`3424
`
`psa
`
`me
`
`Fabri
`Fabricant LLP
`411 Theodore Fremd Road
`Suite 206 South
`Rye, NY 10580
`
`KISS, ERIC B
`
`3992
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`MAIL DATE
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`01/28/2022
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`PAPER NUMBER
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`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

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`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 3 of 8
`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 3of8
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto. gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`January 27, 2022
`
`PAUL HASTINGS LLP (GENERAL
`2050 M STREET NW,
`WASHINGTON,DC 20036
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROLNO. : 90014890
`
`PATENT NO. : 7031728
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`ART UNIT : 3992
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark Office
`in the above-identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the timeforfiling a reply
`has passed, no submission on behalf of the ex parte reexamination requester will be acknowledged
`or considered (37 CFR 1.550(g)).
`
`

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`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 4 of 8
`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 4of8
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`Decision on Petition for Extension
`.
`.
`.
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`|_90/014,890
`Examiner
`
`7,031,728 B2 .
`
`Art Unit
`
`1. THIS IS A DECISION ON THE PETITION FILED 01/27/22.
`
`2. THIS DECISION IS ISSUED PURSUANT TO:
`A.
`KX] 37CFR 1.550(c) — The time for taking any action by a patent ownerin a third party requested ex parte
`reexamination proceeding will be extended only for sufficient cause and for a reasonable time specified.
`B. L] 37CFR 1.550(c) — The time for taking action by a patent ownerin a patent owner requested ex parte
`reexamination proceeding will only be extended for more than two monthsfor sufficient cause and for a
`reasonable time specified.
`[_] 37 CFR 1.956 — The time for taking any action by a patent ownerin an inter partes reexamination proceeding
`will be extended only for sufficient cause and for a reasonable time specified.
`The petition is before the Central Reexamination Unit for consideration.
`
`c.
`
`3.
`
`FORMAL MATTERS: Patent Owner requests that the time period for filing an optional Patent Owner’s Statement,
`after the mailing of the “Order Granting Request for Ex Parte Reexamination’ on 12/06/21, whichis a two (2)
`month period pursuant to 37 CFR 1.530(b) (due 02/06/22), be extended by an additional two (2) months (due
`04/06/22).
`
`A.
`
`Petition fee per 37 CFR § 1.17(g)):
`i.
`[| Petition includes authorization to debit a deposit account.
`ii.
`xX Petition includes authorization to charge a credit card account.
`iii.
`[_] Other:
`.
`xX Propercertificate of service was provided. (Not required in reexamination where patent owneris requester.)
`B.
`c. XX] Petition was timelyfiled.
`D. KX] Petition properly signed.
`
`B.
`
`4. DECISION (See MPEP 2265 and 2665)
`A.
`BX] Granted or L] Granted-in-part for two (2) additional months. (See 37 CFR 1.550(c) and 37 CFR 1.956).
`i.
`xX] Other/comment: See attached explanation and below CONCLUSION.
`[_] Dismissed because:
`i.
`[] Formal matters (See unchecked box(es) (A, B, C and/or D) in section 3 above).
`ii.
`[_] Petitionerfailed to provide a factual accounting of reasonably diligent behaviorby all those
`responsible for preparing a response to the outstanding Office action within the statutory time period.
`[_] Petitionerfailed to explain why,in spite of the action taken thusfar, the requested additionaltime is
`needed.
`iv. [] The statements provided fail to establish sufficient cause to warrant extension ofthe time for taking
`action (See attached).
`[] Thepetition is moot.
`v.
`vi. [] Other/comment:
`
`iii.
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`5. CONCLUSION: The 01/27/22 “PETITION FOR EXTENSION OF TIME UNDER 37 C.F.R.§1.550(c)” is hereb
`ranted for two (2) additional months under the “extraordinary situations” standard which includes a showin
`of “sufficient cause”as per the attached explanation. See MPEP 2265 VI, 15, 3, and 5th paras. Accordingly,
`the time period for Patent Owner to file an optional Patent Owner’s Statement after the mailing of the 12/06/21
`Order is extended for two (2) additional months from 02/06/22 to 04/06/22. Therefore, an optional Patent
`Owner’s Statement after the mailing of the 12/06/21 Order is due by the end of the day on Wednesday,
`04/06/22.
`
`
`Telephone inquiries with regard to this decision should be directed to Gay Ann Spahn at 571-272-7731 in the CRU.
`/Gay Ann Spahn/, Supervisory Patent Reexamination
`Specialist, Central Reexamination Unit
`
`
`U.S. Patent and Trademark Office
`PTO-2293 (Rev. 11-2013)
`
`Decision on Petition for Extension of Time in Reexamination
`
`Part of Paper No. 01282022
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`

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`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 5 of 8
`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page5of8
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`Control No.: 90/014,890
`Art Unit: 3992
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`Page 2
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`In the present ex parte reexamination proceeding for control
`Continuation of 4 Ai:
`number 90/014,890, an “Order Granting Request For Ex Parte Reexamination’ was
`mailed December 6, 2021. Pursuant to 37 CFR 1.530(b), after the mailing of the
`December 6, 2021 “Order Granting Request For Ex Parte Reexamination,” there is a
`two (2) month period within which Patent Owner mayfile an optional Patent Owner's
`statement thereby making the optional Patent Owner’s Statement due February 6,
`2022. On January 27, 2022, Patent Owner filed a “PETITION FOR EXTENSION OF
`TIME PURSUANT TO37 C.F.R. § 1.550(c)” (“Petition”) seeking two (2) additional
`months in whichtofile the optional Patent Owner's Statement. Petition, p. 1. Thus, the
`January 27, 2022 Petition, if granted, would allow Patent Owner to file an optional
`Patent Owner's Statement up until the end of the day on Wednesday, April 6, 2022.
`
`The instant January 27, 2022 Petition indicates, in pertinent part, that:
`
`2. The COVID-19 pandemic and the ongoing spike of the
`Omicron variant have significantly affected Patent Owner's
`ability to prepare and complete its Patent Owner Statement
`before the due date of February 6, 2022.
`
`3. Due to the COVID-19 pandemic and the related travel
`restrictions, Patent Owner and its counsel have experienced
`significant delays in preparing its Patent Owner's Statement.
`
`Petition, p. 2.
`
`These considerations are noted, but must be balanced with the statutory requirement of
`special dispatch under 35 USC 305.
`
`The Manual of Patent Examining Procedure (MPEP) § 2265, Roman Numeral VI,
`entitled “REQUIREMENTS FOR A SHOWING OF SUFFICIENT CAUSE AND AN
`EXTENSION FOR A REASONABLE TIME" indicates, in pertinent part, that:
`
`Requests for any extension of time in third party
`requested recxaminations,..., MUST inchude a showing
`of sufficient cause, and the extension must be for a
`reasonmabie time.
`
`Any request for arn extension of time, ... , must fully state the
`reasons therefor. The reasons MUST include a statement of
`what action the patent owner has taken fo provide 2
`
`
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`response as of the date ihe request for extension is
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`submitted, and why,
`in soffe of the action faken thus far,
`fhe requested additional lime is needed The statement
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`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 6 of 8
`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page6of8
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`Control No.: 90/014,890
`Art Unit: 3992
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`Page 3
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`MUST include a factual accounting of reasonably diligent
`behavior Sy ai those responsible for preparing a
`response to the outstanding Office action within the
`statutory time period.
`
`parte
`ex
`requested
`party
`third
`in
`However,
`reevaminations, a first request for an extension of time
`
`will generally be granted if a sufficient cause is shown,
`
`and for a reasonable time specified — usually one mont.
`The reasons stated in the request will be evaluated by the
`CRU SPRS or TC Director, and the requests will be
`favorably considered where there is a factual accounting
`of reasonably diligent behavior by all Hose responsible
`for preparing a response within the statutory lime period.
`eecond or subsequent requests for an extension of time
`and requests for an extension of more than one month in
`
`third party requested recxaminations will only be granted
`in extraordinary situations.
`
`Emphases added.
`
`Patent Owner’s instant January 27, 2022 Petition, which seeks an extension of time for
`two (2) additional months, must be evaluated under the “extraordinary situations”
`standard according to MPEP § 2265 VI as set forth above(i.e., “requests for an
`extension [or time] of more than one month in third party requested reexaminations will
`only be granted in extraordinary situations”).
`In order to establish “extraordinary
`situations,” Patent Owner mustfirst show sufficient cause. '
`
`With respectto sufficient cause, Patent Owner’s instant January 27, 2022 Petition has a
`factual accounting of reasonably diligent behavior including @ statement of what action
`ihe patent owner nas taker io provide a response as of the date the request for
`axtension is submitied. See Petition, para. spanning pp.1-2 (La, which specifies the
`actions of “diligently reviewing the papers of record, including the 5NQ identified in the
`
`| Ary request for an extension of ime, except for ihe "noe cause” extension in patent owner
`requested or Director ordered reexarnination provided in 37 CFR 1.550(c), must fully state the
`reasons therefor. The reasons musi include a statement of what action the soatent owner has
`taken to provide 4 respanse as af the date the request for extensian is submitted, and
`why, in spite of the action taken thus far, the requested additional time is needed. The
`statement must include a factual accounting of reasonably diligent behavior by all those
`responsible for preparing a response to the outsianding Office action within the statuiory time
`period. Ernphasis acided.
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`

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`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 7 of 8
`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 7 of8
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`Control No.: 90/014,890
`Art Unit: 3992
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`Page 4
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`order” and “beting] in communication with its counsel im connection with the preparation
`of its Patent Owners Statement under 35 U.S.C. 304.”).
`
`Paient Owner's instant January 27, 2022 Petition also sufficiently explains why more
`time is necessary. See Petition, p. 5, namely:
`
`and
`efforts
`substantial
`Despite Patent Owner's
`resources devoted to this reexamination,
`the two-month
`periodfor filing a Patent Owner’s Statement under 35 U.S.C.
`302 in the ’890 Reexam is unduly burdensome. Without a two-
`month extension of time, which is warranted during the
`extraordinary situation arising from the COVID-19 pandemic
`and the spike of the Omicron variant, Patent Owner will be
`significantly prejudiced.
`
`Patent Owner requires the two-month extension to
`overcome substantial delays resulting from the COVID-19
`pandemic and the spike of the Omicron variant. Because of
`the COVID-19 pandemic, Patent Owner’s efforts coordinate
`the drafting and preparing of the Patent Owner’s Statement
`under 35 U.S.C. 304 have been significantly delayed by the
`COVID-19 pandemic. Due to the COVID-19 pandemic, Patent
`Owner's operations have been significantly delayed because
`of the shift to remote work.
`
`Given the need to coordinate input between Patent
`Owner’s counsel, Patent Owner respectfully requests a two-
`month extension of time to allow Patent Owner to coordinate
`schedules and receive such input. The current two-month
`time period to prepare this responseis insufficient due to the
`conflicting schedules and remote locations of all parties
`involved.
`
`Thus, Patent Owner hassatisfied the requirement of showing “sufficient cause.”
`
`With respect to the “extraordinary situations” standard, it is noted that in the past,
`situations that have been interpretedto rise to the level of “extraordinary” were, for
`instance, the death or incapacitation of the Patent Owner and acts of God, such as
`Hurricane Katrina.
`
`However, in a second CARES ACT memorandum published on April 28, 2020, the
`United States Patent and Trademark Office issued a “Notice of Extended Waiver of
`Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and
`Economic Security Act and Other Relief Available to Patent Applicants and
`
`

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`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 8 of 8
`Case 5:21-cv-04653-BLF Document 103-5 Filed 04/18/22 Page 8 of8
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`Control No.: 90/014,890
`Art Unit: 3992
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`Page 5
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`Patentees’ (hereinafter “Notice”) in which the COVID-19 outbreak was deemedto be
`an extraordinary situation. The Notice indicates that “a person who is unable to meet
`patent-related timing deadlines due to the COVID-19 outbreak maybeeligible for a
`waiver of certain deadlines.” Notice, p. 2. The Notice defines that “[a] delayin filing. .
`is due to the COVID-19 outbreak for the purposesofthis notice if a practitioner,
`applicant, patent owner, petitioner, third-party requester, inventor, or other person
`associated with the filing .
`.
`. was personally affected by the COVID-19 outbreak,
`including, without limitation, through office closures, cash flow interruptions,
`inaccessibility of files or other materials, travel delays, personal or family illness, or
`similar circumstances, such that the outbreak materially interfered with timely filing .
`Notice, pp. 2-3.
`
`.
`
`.
`
`.
`
`.”
`
`In the instant January 27, 2022 Petition, Petitioner has indicated that Patent Owner’s
`representative’s efforts to prepare an optional Patent Owner’s Statement in response to
`the December 6, 2021 mailing of the “Order Granting Request For Ex Parte
`Reexamination’ have been hampered and thus, they have been personally affected, by
`the COVID-19 outbreak. Hence, the circumstances presented in the instant January 27,
`2022 Petition are deemedto rise to the level of the “extraordinary situations” standard.
`
`Therefore, it is agreed that Patent Owner needs to be given ample opportunity to
`complete all aspects of investigation prior to filing an optional Patent Owner’s Statement
`after the mailing of the December 6, 2021 “Order Granting Request For Ex Parte
`Reexamination’ in an ex parte reexamination proceeding.
`
`In view of the foregoing, the instant January 27, 2022 Petition is hereby granted for two
`(2) additional months since Patent Owner has met the “extraordinary situations”
`standard including showing “sufficient cause” for the reasons stated above. Thus, the
`time period for filing an optional Patent Owner's Statement, after the mailing of the
`December 6, 2021 “Order Granting Request For Ex Parte Reexamination,” will be
`extended by two (2) additional months from February 6, 2022 to April 6, 2022.
`Accordingly, the optional Patent Owner’s Statement after the December6, 2021
`mailing of the “Order Granting Request For Ex Parte Reexamination’ will be due
`by the end of the day on Wednesday, April 6, 2022.
`
`2 See the top of page 4 of the “Notice of Extended Waiver of Patent-Related Timing
`Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief
`Available to Patent Applicants and Patentees,” which indicates that “[t]he USPTO considers
`the effects of the COVID-19 outbreak to be an ‘extraordinary situation’ within the meaning of 37
`C.F.R. § 1.183 for affected patent applicants and patentees.”
`
`