`
`Docket No. PMC-004
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`
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`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.
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`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
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`
`
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`REAL PARTY-IN-INTEREST
`
`The real party-in-interest is Personalized Media Communications, LLC.
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`RELATED MATTERS
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`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.
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`Patent Owner’s related U.S. Patents 7,908,638; 7,734,251 and 7,797,717
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`are also asserted in this litigation. The Petitioner has also petitioned for inter
`
`partes review of each of these patents.
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`The involved patent is not before the Office in any other pending
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`proceedings. No other patent or pending application claims the benefit of the
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`actual filing date of the involved patent. The involved patent sets forth following
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`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,
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`like the involved patent, were filed as continuations of application No. 08/113,329.
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`2
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`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.
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`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.
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`
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`LEAD AND BACK-UP COUNSEL
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`
`
`
`
`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
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`tscott@goodwinprocter.com
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`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
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`
`
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`
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`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
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`Dated: March 15, 2013
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`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
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`
`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
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`
`
`
`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
`
`
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`
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`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
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`May 29, 2012
`
`08/460,711
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`July 6, 2010
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`
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`08/470,051
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`October 26, 2010
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`08/460,770
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`October 25, 2011
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`08/477,711
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`June 7, 2011
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`
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`8,191,091
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`7,752,650
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`7,823,175
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`8,046,791
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`7,958,527
`
`08/459,788
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`April 12, 2011
`
`7,926,084
`
`08/487,411
`
`May 10, 2011
`
`7,940,931
`
`08/478,544
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`October 19, 2010
`
`7,817,208
`
`08/460,081
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`March 12, 2013
`
`8,395,707
`
`08/470,571
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`June 8, 2010
`
`
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`08/452,395
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`December 7, 2010
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`08/449,097
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`July 6, 2010
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`
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`08/474,964
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`February 15, 2011
`
`7,734,251 Subject to IPR2013-00171 filed by
`Petitioner
`7,849,480
`
`
`
`
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`7,752,649
`
`7,889,865
`
`08/459,522
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`July 27, 2010
`
`7,764,685
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`
`
`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
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`August 3, 2010
`
` 7,769,344
`
`08/447,908
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`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
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`08/487,410
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`June 21, 2011
`
`7,966,640
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`08/474,146
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`November 16, 2010
`
`7,836,480
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`08/469,612
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`October 12, 2010
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`7,814,526
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`08/448,644
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`November 9, 2010
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`08/472,066
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`November 2, 2010
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`
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`
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`7,830,925
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`7,827,586
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`08/487,536
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`October 19, 2010
`
`7,818,761
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`08/445,328
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`November 15, 2011
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`8,060,903
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`08/444,788
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`December 28, 2010
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`7,861,278
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`08/448,326
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`September 28, 2010
`
`
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`7,805,748
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`
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`
`
`Appendix A
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`08/485,283
`
`September 28, 2010
`
`08/479,215
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`October 19, 2010
`
`
`
`
`
`7,805,749
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`7,818,777
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`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
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`
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`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
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`
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`
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`Appendix B
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`
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`
`
`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
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`
`
`
`
`Appendix B
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
`
`reexamination proceedings with certificates issuing on August 28, 2012 and
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`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
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`States International Trade Commission (“Commission”), Investigation No. 337-
`
`TA-392 (“ITC Investigation”). The Administrative Law Judge (“ALJ”) issued an
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`“Initial Determination Granting Motion for Summary Determination of Invalidity
`
`of Claim 35 of the ’277 Patent” on May 16, 1997. This determination was
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`appealed to the Federal Circuit, which affirmed the Commission decision in a
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`decision decided January 7, 1999. The ALJ issued “Initial and Recommended
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`Determinations” on October 31, 1997. The Commission adopted certain of the
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`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
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`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
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`a decision decided November 24, 1998, and published at 161 F.3d 696, 48
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`
`
`
`
`Appendix B
`
`
`
`IPR2013-00156
`Patent No. 7,860,131 B1
`Atty. Docket: PMC-004
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`U.S.P.Q.2d 1180. On remand, the complainant moved to terminate the
`
`investigation. The Commission issued a “Notice of Commission Decision To
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`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
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`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
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`lasting over eight years, the district court in Delaware has recently lifted the stay
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`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
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`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
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`Peterson issued his “Report and Recommendation on Claim Construction” on
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`
`
`
`
`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.
`
`
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`
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`
`
`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./
`
`
`
`