UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`OPENTV, INC.
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`Petitioner
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`v.
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`CISCO SYSTEMS, INC., CISCO TECHNOLOGY INC., SCIENTIFIC-
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`ATLANTA, LLC, SCIENTIFIC-ATLANTA, INC. AND NDS AMERICAS INC.
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`Patent Owner
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`CASE: Unassigned
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`Patent No. 6,744,892 B2
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`TRANSMITTAL LETTER FOR PETITION FOR INTER PARTES REVIEW
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`Patent Trial and Appeal Board,
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`Petitioner and Real Party in Interest OpenTV, Inc. hereby submits the
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`following documents for filing a petition for inter partes review of U.S. Patent No.
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`6,744,892 B2 entitled “Method and Apparatus for Geographically Limiting Service
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`in a Conditional Access System” which issued June 1, 2004.
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`1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`OPENTV, INC.
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`Petitioner
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`v.
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`CISCO SYSTEMS, INC., CISCO TECHNOLOGY INC., SCIENTIFIC-
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`ATLANTA, LLC, SCIENTIFIC-ATLANTA, INC. AND NDS AMERICAS INC.
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`Patent Owner
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`CASE: Unassigned
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`Patent No. 6,744,892 B2
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`TRANSMITTAL LETTER FOR PETITION FOR INTER PARTES REVIEW
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`Patent Trial and Appeal Board,
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`Petitioner and Real Party in Interest OpenTV, Inc. hereby submits the
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`following documents for filing a petition for inter partes review of U.S. Patent No.
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`6,744,892 B2 entitled “Method and Apparatus for Geographically Limiting Service
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`in a Conditional Access System” which issued June 1, 2004.
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`1
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`Petitioner requests review and rejection of all claims, claims 1-38, of the
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`U.S. Patent No. 6,744,892 B2 and cancellation of U.S. Patent No. 6,744,892 B2.
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`I. List of Documents Filed with This Petition
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`1. Transmittal Letter for Petition for Inter Partes Review (5 pages);
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`2. Petition for Inter Partes Review of U.S. Patent No. 6,744,892 B2
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`2.1. Table of Contents (2 pages)
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`2.1. Exhibit List (1 page)
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`2.3. Main Body of Petition (60 pages)
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`2.4. Certificate of Service (1 page)
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`2.5. Eight (8) Exhibits in Support of the Petition:
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`Ex. 1001: U.S. Patent No. 6,744,892 B2 to Akins, III et al. (“the
`892 Patent”) (50 pages)
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`Ex. 1002: Wasilewski, A. J., “ISO/IEC JTC1/SC20/WG11,
`Requirements and Method for High-Level Multiplexing of
`MPEG and Other Digital Service Bitstreams with Universal
`Transport Layer", Nov. 1992 (“Wasilewski ’92”) (29 pages)
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`Ex. 1003: U.S. Patent No. 5,506,904 to Sheldrick et al.
`(“Sheldrick”) (24 pages)
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`Ex. 1004: U.S. Patent No. 5,432,542 to Thibadeau et al.
`(“Thibadeau”) (17 pages)
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`Ex. 1005: Portions of the prosecution file history of related U.S.
`Patent No. 6,252,964 B1 (69 pages)
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`Ex. 1006: Declaration of Alan Young (92 pages)
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`Ex. 1007: Claim charts identifying specific sections of prior art
`references that support invalidity of claims 1, 12, 20 and 26 of
`the 892 Patent (12 pages)
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`Ex. 1008: U.S. Patent No. 5,870,474 to Wasilewski et al. (“the
`474 Patent”) (34 pages)
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`3. Power of Attorney Executed by Petitioner OpenTV, Inc. (2 pages)
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`2
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`II. Citation Convention in This Petition
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`Exhibits are sequentially numbered in the 1001-1999 range and labeled in
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`the lower right hand corner with the petitioner’s name, exhibit number and page
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`number, as required.
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`References to Exhibits made within this Petition follow the following
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`formats:
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`• References to Exhibits 1001 and 1003 to 1005: XX:yy-zz; where XX
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`is the column number, and yy and zz are line numbers; for example, 4:
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`23-25 refers to Col. 4, lines 23-25;
`• References to Exhibit 1002: Sec. X, par. Y, where X is the section
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`number and Y is the paragraph number;
`• References to Exhibit 1006 are made using paragraph numbers;
`• References to Exhibit 1007 are made using Table numbers.
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`III. Payment of Fees
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`The Office is authorized to charge $35,800.00 to Deposit Account No. 50-
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`5252 as required under 37 C.F.R. § 42.15(a) and pursuant to the official fee
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`schedule effective on March 19, 2013. The above total fee of $35,800.00 includes
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`$9,000.00 in inter partes review request fee for up to 20 claims, $3,600.00 excess
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`claim fees for the inter partes review request, $14,000.00 post-institution fee for up
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`to 15 claims and $9,200.00 post-institution excess claim fees.
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`The Office is further authorized to charge any other fees, or apply any credit
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`in connection with this Petition, to the Deposit Account No. 50-5252.
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`3
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`IV. Counsel for Petitioner
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`Petitioner appoints the following counsel and information for service:
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`LEAD COUNSEL
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`BACK-UP COUNSEL
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`Nicholas T. Bauz
`USPTO Reg. No. 41,604
`Perkins Coie LLP
`11988 EL Camino Real, Suite 200
`San Diego, CA 92130
`Phone: 858-720-5706
`Fax: 858-720-5799
`opentv-cisco-ipr@perkinscoie.com
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`Bing Ai
`USPTO Reg. No. 43,312
`Perkins Coie LLP
`11988 EL Camino Real, Suite 200
`San Diego, CA 92130
`Phone: 858-720-5707
`Fax: 858-720-5799
`opentv-cisco-ipr@perkinscoie.com
`Amy E. Simpson
`USPTO Reg. No. 54,688
`Perkins Coie LLP
`11988 EL Camino Real, Suite 200
`San Diego, CA 92130
`Phone: 858-720-5702
`Fax: 858-720-5799
`opentv-cisco-ipr@perkinscoie.com
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for appointing the
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`above designated counsel for this Petition by OpenTV, Inc. is concurrently filed.
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`V. Compliance Statements
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`This submission meets statutory requirements under 35 U.S.C. §§ 311 and
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`312 and complies with requirements under relevant patent rules, inter alia, 35
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`C.F.R. §§ 42.6, 42.8, 42.22 and 42.100 through 42.106. In addition, this
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`submission complies with requirements under The Office Patent Trial Practice
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`Guide issued on August 12, 2012.
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`Dated: June 4, 2013
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`Respectfully submitted,
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`/Nicholas T. Bauz/
`Nicholas T. Bauz , Reg. No. 41,604
`Bing Ai, Reg. No. 43,312
`Amy E. Simpson, Reg. No. 54,688
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`Attorneys for Petitioner OpenTV, Inc.
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`PERKINS COIE LLP
`11988 El Camino Real, Suite 200
`San Diego, CA 92130
`(858) 720-5700
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