`
`Docket No. PMC-004
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`ZYNGA INC.
`Petitioner
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`Patent Owner
`
`_________________________
`
`
`Case IPR2013-00156
`Patent 7,860,131 B1
`
`
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 et seq.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`
`
`
`REAL PARTY-IN-INTEREST
`
`The real party-in-interest is Personalized Media Communications, LLC.
`
`RELATED MATTERS
`
`The involved patent is asserted in:
`
`Personalized Media Communications, LLC v. Zynga, Inc., U.S. District
`
`Court for the Eastern District of Texas, CA No. 2:12-cv-68-JRG.
`
`Patent Owner’s related U.S. Patents 7,908,638; 7,734,251 and 7,797,717
`
`are also asserted in this litigation. The Petitioner has also petitioned for inter
`
`partes review of each of these patents.
`
`The involved patent is not before the Office in any other pending
`
`proceedings. No other patent or pending application claims the benefit of the
`
`actual filing date of the involved patent. The involved patent sets forth following
`
`Related U.S. Application Data:
`
`Continuation of application No. 08/113,329, filed on Aug. 30, 1993,
`[now U.S. Patent 7,856,650] which is a continuation of application No.
`08/056,501, filed on May 3, 1993, now Pat. No. 5,335,277, which is a
`continuation of application No. 07/849,226, filed on Mar. 10, 1992, Now
`Pat. No. 5,233,654, which is a continuation of application No.
`07/588,126, filed on Sep. 25, 1990, now Pat. No. 5,109,414, which is a
`continuation of application No. 07/096,096, filed Sep. 11, 1987, now Pat.
`No. 4,965,825, which is a continuation-in-part of application No.
`06/829,531, filed on Feb. 14, 1986, now Pat. No. 4,704,725, which is a
`continuation of application No. 06/317,510, filed on Nov. 3, 1981, now
`Pat. No. 4,694,490.
`
`
`There are a number of issued patents and pending applications which,
`
`like the involved patent, were filed as continuations of application No. 08/113,329.
`
`2
`
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`
`
`
`These issued patents and pending applications are listed in Appendix A attached
`
`hereto.
`
`Other patents from the same family (specifically: U.S. Pat. Nos. 4,694,490;
`
`4,704,725; 4,965,825; 5,109,414; 5,233,654; 5,335,277; and 5,887,243) as the
`
`involved patent have been involved in several judicial and administrative
`
`proceedings. These proceedings are listed in Appendix B attached hereto.
`
`
`
`LEAD AND BACK-UP COUNSEL
`
`
`
`
`
`Lead Counsel
`
`
`Thomas J. Scott, Jr.
`
`Goodwin Procter LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Phone: (202) 346-4000
`
`Fax: (202) 346-4444
`
`tscott@goodwinprocter.com
`
`Registration No. 27,836
`
`
`
`
`
`Back-up Counsel
`
`Stephen Schreiner
`Goodwin Procter LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Phone: (202) 346-4000
`Fax: (202) 346-4444
`sschreiner@goodwinprocter.com
`
`Registration No. 43,097
`
`
`
`
`
`
`
`
`
`
`
`
`
`SERVICE INFORMATION
`
`Please address all correspondence to the Lead Counsel:
`
`Thomas J. Scott, Jr.
`Goodwin Procter LLP
`901 New York Avenue, NW
`Washington, DC 20001
`
`Pursuant to 37 C.F.R. § 42.6(e), Patent Owner consents to electronic service
`by email at the email addresses listed above.
`
`3
`
`
`
`
`
`
`
`
`Dated: March 15, 2013
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`
`Respectfully submitted,
`
`By /Thomas J. Scott, Jr./
`Thomas J. Scott, Jr.
` Registration No.: 27,836
`GOODWIN PROCTER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 346-4000
`Attorney for Patent Owner
`
`4
`
`
`
`
`Appendix A
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`
`
`
`
`
`
`
`
`
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 et seq.
`
`APPENDIX A
`
`The following patents and pending applications are continuations of
`
`Application No. 08/113,329. Abandoned continuation applications are omitted
`
`from this list.
`
`
`
`PATENTS
`
`SERIAL NO.
`
`ISSUE DATE
`
`PATENT NO.
`
`08/480,060
`
`March 23, 1999
`
`5,887,243
`
`Asserted in Personalized Media
`Communications, L.L.C. v. Motorola, Inc. et
`al., U.S. District Court, Eastern District of
`Texas, Doc. No. 2:08-CV-00070
`
`Subject to ex parte reexamination certificate
`issued October 13, 2009
`
`08/486,258
`
`January 11, 2011
`
`7,780,581
`
`08/446,431
`
`August 3, 2010
`
` 7,769,170
`
`08/447,712
`
`November 23, 2010
`
`7,840,976
`
`08/511,491
`
`December 28, 2010
`
`7,861,263
`
`08/477,547
`
`March 15, 2011
`
`08/488,383
`
`January 4, 2011
`
`08/459,521
`
`November 2, 2010
`
`
`
`
`
`7,908,638 Subject to IPR2013-00162 filed by
`Petitioner
`7,864,248
`
`7,827,587
`
`
`
`
`
`Appendix A
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`08/441,701
`
`December 28, 2010
`
`7,860,249
`
`08/473,484
`
`October 19, 2010
`
`7,818,776
`
`08/446,553
`
`December 7, 2010
`
`7,849,493
`
`08/482,857
`
`November 30, 2010
`
`7,844,995
`
`08/479,374
`
`October 19, 2010
`
`7,818,778
`
`08/466,894
`
`September 28, 2010
`
`08/397,636
`
`November 9, 2010
`
`
`
`
`
`7,805,738
`
`7,831,204
`
`08449,263
`
`September 21, 2010
`
`7,801,304
`
`08/474,145
`
`August 2, 2011
`
` 7,992,169
`
`08/485,507
`
`May 29, 2012
`
`08/460,711
`
`July 6, 2010
`
`
`
`08/470,051
`
`October 26, 2010
`
`08/460,770
`
`October 25, 2011
`
`08/477,711
`
`June 7, 2011
`
`
`
`
`
`
`
`
`
`8,191,091
`
`7,752,650
`
`7,823,175
`
`8,046,791
`
`7,958,527
`
`08/459,788
`
`April 12, 2011
`
`7,926,084
`
`08/487,411
`
`May 10, 2011
`
`7,940,931
`
`08/478,544
`
`October 19, 2010
`
`7,817,208
`
`08/460,081
`
`March 12, 2013
`
`8,395,707
`
`08/470,571
`
`June 8, 2010
`
`
`
`08/452,395
`
`December 7, 2010
`
`08/449,097
`
`July 6, 2010
`
`
`
`08/474,964
`
`February 15, 2011
`
`7,734,251 Subject to IPR2013-00171 filed by
`Petitioner
`7,849,480
`
`
`
`
`
`7,752,649
`
`7,889,865
`
`08/459,522
`
`July 27, 2010
`
`7,764,685
`
`
`
`
`
`Appendix A
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`08/487,526
`
`June 29, 2010
`
`7,747,217
`
`08/477,805
`
`July 20, 2010
`
`7,761,890
`
`08/444,758
`
`January 4, 2011
`
` 7,865,920
`
`08/459,216
`
`October 5, 2010
`
` 7,810,115
`
`08/487,397
`
`August 10, 2010
`
` 7,774,809
`
`08/447,447
`
`December 7, 2010
`
`7,849,479
`
`08/442,383
`
`August 3, 2010
`
` 7,769,344
`
`08/447,908
`
`August 24, 2010
`
` 7,783,252
`
`08/448,251
`
`May 31, 2011
`
`7,953,223
`
`08/483,169
`
`January 4, 2011
`
` 7,864,956
`
`08/447,496
`
`September 14, 2010
`
`08/498,002
`
`September 7, 2010
`
`7,797,717 Subject to IPR2013-00164 filed by
`Petitioner
`7,793,332
`
`08/447,974
`
`August 24, 2010
`
` 7,784,082
`
`08/449,523
`
`December 21, 2010
`
`7,856,649
`
`08/487,410
`
`June 21, 2011
`
`7,966,640
`
`08/474,146
`
`November 16, 2010
`
`7,836,480
`
`08/469,612
`
`October 12, 2010
`
`7,814,526
`
`08/448,644
`
`November 9, 2010
`
`08/472,066
`
`November 2, 2010
`
`
`
`
`
`7,830,925
`
`7,827,586
`
`08/487,536
`
`October 19, 2010
`
`7,818,761
`
`08/445,328
`
`November 15, 2011
`
`8,060,903
`
`08/444,788
`
`December 28, 2010
`
`7,861,278
`
`08/448,326
`
`September 28, 2010
`
`
`
`7,805,748
`
`
`
`
`
`Appendix A
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`08/485,283
`
`September 28, 2010
`
`08/479,215
`
`October 19, 2010
`
`
`
`
`
`7,805,749
`
`7,818,777
`
`PENDING APPLICATIONS
`
`
`
`
`SERIAL NO.
`
`08/475,341
`08/445,054
`08/441,027
`08/440,837
`08/445,296
`08/473,997
`08/441,996
`08/487,155
`08/449,413
`08/485,507
`08/469,106
`08/460,793
`08/451,377
`08/474,674
`08/442,165
`08/447,621
`08/438,659
`08/487,556
`08/459,218
`08/460,081
`08/483,980
`08/480,059
`08/458,760
`08/483,269
`08/447,611
`08/480,383
`08/460,592
`08/449,901
`08/446,124
`08/488,620
`08/460,394
`08/444,787
`08/486,266
`08/487,649
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`Appendix A
`
`
`
`08/478,908
`08/483,054
`08/459,507
`08/482,573
`08/447,724
`08/470,476
`08/487,428
`
`
`
`
`
`Appendix B
`
`
`
`
`
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 et seq.
`
`APPENDIX B
`
`The following patents from the same family as the involved patent have
`
`been involved in the following proceedings:
`
`U.S. Patent 4,94,490 was subject to an ex parte reexamination proceeding
`
`in which the certificate issued June 23, 2009.
`
`U.S. Patent 4,704,725 was subject to an ex parte reexamination
`
`proceeding in which the certificate issued June 16, 2009.
`
`U.S. Patent 4,965,825 has been subject to several ex parte reexamination
`
`proceedings with certificates issuing on November 10, 2009; October 26, 2010 and
`
`December 6, 2011.
`
`U.S. Patent 5,109,414 has been subject to several ex parte reexamination
`
`proceedings with certificates issuing on August 4, 2009; June 7, 2011 and July 10,
`
`2012.
`
`U.S. Patent 5,233,654 was subject to an ex parte reexamination
`
`proceeding in which the certificate issued February 17, 2009.
`
`U.S. Patent 5,335,277 is under ex parte reexamination in proceeding
`
`90/011,992 ordered on August 15, 2012, on a petition filed November 1, 2011.
`
`This patent was previously subject to several additional, concluded ex parte
`
`
`
`
`
`Appendix B
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`reexamination proceedings with certificates issuing on August 28, 2012 and
`
`September 25, 2012.
`
`U.S. Patent 5,887,243 was subject to an ex parte reexamination in in
`
`which a certificate issued on October 13, 2009.
`
`U.S. Patents 4,965,825; 5,109,414 and 5,335,277 were asserted in the
`
`U.S. District Court, Eastern District of Virginia in Personalized Mass Media Corp.
`
`v. The Weather Channel, Inc. et al., Doc. No. 2:95cv242 (“Virginia Action”). The
`
`case was settled prior to any substantive decision by the Court although one
`
`procedural decision was published at 899 F.Supp. 239 (E.D. Va. 1995).
`
`U.S. Patent 5,335,277 was involved in the matter of Certain Digital
`
`Satellite System (DDS) Receivers and Components Thereof before the United
`
`States International Trade Commission (“Commission”), Investigation No. 337-
`
`TA-392 (“ITC Investigation”). The Administrative Law Judge (“ALJ”) issued an
`
`“Initial Determination Granting Motion for Summary Determination of Invalidity
`
`of Claim 35 of the ’277 Patent” on May 16, 1997. This determination was
`
`appealed to the Federal Circuit, which affirmed the Commission decision in a
`
`decision decided January 7, 1999. The ALJ issued “Initial and Recommended
`
`Determinations” on October 31, 1997. The Commission adopted certain of the
`
`ALJ’s findings and took no position on certain other issues in a “Notice of Final
`
`Commission Determination Of No Violation Of Section 337 Of The Tariff Act Of
`
`1930,” dated December 4, 1997. The determination was appealed to the Federal
`
`Circuit, which affirmed-in-part, reversed-in-part, vacated-in-part, and remanded in
`
`a decision decided November 24, 1998, and published at 161 F.3d 696, 48
`
`
`
`
`
`Appendix B
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`U.S.P.Q.2d 1180. On remand, the complainant moved to terminate the
`
`investigation. The Commission issued a “Notice of Commission Decision To
`
`Terminate The Investigation And To Vacate Portions Of The Initial
`
`Determination” on May 13, 1999.
`
`U.S. Patents 4,965,825; 5,109,414 and 5,335,277 were asserted in the
`
`U.S. District Court, Northern District of California in Personalized Media
`
`Communications, LLC v. Thomson Consumer Electronics et al., Doc No. C-96
`
`20957 SW (EAI). The case was stayed during the above ITC Investigation and
`
`was thereafter voluntarily dismissed by plaintiff. The Court issued no substantive
`
`decisions.
`
`U.S. Patents 4,494,490; 4,965,825; 5,109,414; 5,233,654; and 5,335,277
`
`were asserted in the U.S. District Court, District of Delaware in Pegasus
`
`Development Corp. v. DIRECTV Inc., Doc. No. CA 00-1020 (“Delaware Action”).
`
`Special Master Robert L. Harmon issued a “Report And Recommendation Of
`
`Special Master Regarding Claim Construction” on March 24, 2003. On March 29,
`
`2003, Special Master Harmon issued a letter clarifying his report. After a stay
`
`lasting over eight years, the district court in Delaware has recently lifted the stay
`
`and is proceeding with that litigation.
`
`U.S. Patents 4,494,490; 4,704,725; 4,965,825; 5,109,414; 5,233,654;and
`
`5,335,277 were asserted in the U.S. District Court, Northern District of Georgia in
`
`the case styled Personalized Media Communications, LLC v. Scientific-Atlanta,
`
`Inc. et al., Doc. No. 1:02-CV-824 (CAP) (“Atlanta Action”). Special Master Gale
`
`Peterson issued his “Report and Recommendation on Claim Construction” on
`
`
`
`
`
`Appendix B
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`March 1, 2005. The Court issued an order on June 6, 2005 construing the claims at
`
`issue that adopted the report of Special Master Peterson with minor modifications.
`
`The Court has since dismissed this case. The dismissal has been affirmed by the
`
`Court of Appeals for the Federal Circuit.
`
`U.S. Patents 4,965,825; 5,109,414; 5,233,654; 5,335,277 and 5,887,243
`
`are asserted in the U.S. District Court, Eastern District of Texas, in Personalized
`
`Media Communications, L.L.C. v. Motorola, Inc. et al., Doc. No. 2:08-CV-00070.
`
`The Court issued a September 30, 2011, Memorandum Opinion and Order. This
`
`Order construes various claim terms from the patents. Defendant Motorola has
`
`been dismissed from this suit, which remains pending as to Dish
`
`Network/EchoStar.
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of the:
`
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 et seq.
`
`
`
`with Appendices A & B
`
`
`filed herewith was served on:
`
`
`
`David B. Cochran at dcochran@jonesday.com
`and
`Joseph M. Sauer at jmsauer@jonesday.com
`
`
`pursuant to 37 C.F.R. § 42.8(e)(1) and the consent found in Section VI.C of the
`Petition (Paper No. 1).
`
`
`Dated: March 15, 2013
`
`
`
`
`
`
`
`
`By:
`
` /Thomas J. Scott, Jr./
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
