`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria. Virginia 22313-1450
`www.usplo.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,263
`
`.
`
`1 1/13/2009
`
`7486926
`
`AFF.000486US
`
`6721
`
`EXAMINER
`mp, pRUNER&Hu,p.c. _
`1616 S. VOSS ROAD, SUITE 750
`’
`LAROSE. COLIN M
`HOUSTON, TX 77057-2631
`PAPER NUMBER
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`04/11/2014
`
`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)
`
`Samsung EX 1321 p 1
`
`Samsung Ex. 1321 p. 1
`
`

`

`\
`
`
`
`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
`NOVAK DRUCE & QUIGG, LLC
`(NDQ REEXAMINATION GROUP)
`1000 LOUISIANA STREET, FIFTY-THIRD FLOOR
`
`Date:
`
`MAILED
`APR 1 1 2014
`
`HOUSTON’ TX 77002
`
`‘
`
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95001263
`
`PATENT NO. : 7486926
`
`ART UNIT : 3992
`
`Enclosedis a copy of the latest communication from the United— States Patent and
`Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once
`file written comments within a period of 30 days from the date of service of the
`patent owner's response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)),
`'and, as such, it cannot be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no
`responsive submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed
`to the Central Reexamination Unit at the mail, FAX, or hand—carry addresses given at the end
`of the communication enclosed with this transmittal.
`
`
`
`Samsung Ex. 1321 p. 2
`
`Samsung Ex. 1321 p. 2
`
`

`

`
`
`United States Patent and Trademark Office
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto. gov
`
`Trop, Pruner, & Hu, PC.
`1616 S. Voss Road, Suite 750
`Houston, TX 77057 — 2631
`
`Novak, Druce, & Quigg, LLP
`(NDQ Reexamination Group)
`1000 Louisiana Street
`
`Fifty-Third Floor
`Houston, TX 77002
`
`(For Patent Owner)
`
`MAILED
`
`.
`
`APR 1 1 20111
`
`(For Third Party Requester) CENTRAL REEXAMINATION UNIT
`
`Inter Partes Reexamination Proceeding
`Control No: 95/001,263
`Filing Date: November 13, 2009
`For: US. Patent No.: 7,486,926
`
`3
`:
`:
`:
`
`DECISION DISMISSING
`PETITION TO
`TERMINATE INTER PAR TES
`REEXAMINATION PROCEEDING
`
`This is a decision on patent owner’s December 7, 2012 petition entitled “Patent Owner’s Petition
`to Terminate Inter Partes Reexamination Proceeding under 35 U.S.C. §317(b) & 37 C.F.R.
`§1.182” (patent owner’s December 7, 2012 petition).
`
`Patent Owner’s December 7, 2012 petition, and the record as a whole, are before the Office of
`Patent Legal Administration for consideration.
`
`SUMMARY
`
`Patent owner’s December 7,2012 petition to terminate the present inter partes reexamination
`proceeding18 dismissed.
`
`DECISION
`
`Jurisdiction
`
`The Office has jurisdiction over the present proceeding, as evidenced by the mandate issued on
`March 3, 2014 by the United States Court of Appeals for the Federal Circuit (CAFC), which18
`attached to the present decision.
`
`Samsung EX. 1321 p. 3
`
`Samsung Ex. 1321 p. 3
`
`

`

`Reexamination Control No. 95/001,263
`
`2
`
`Analysis
`
`The patent owner argues that termination of inter partes reexamination proceeding control
`number 95/001,263 (the ‘1263 proceeding) is required by pre-AIA 35 U.S.C. § 317(b),l which
`provides, in pertinent part (emphasis added):
`
`Once a final decision has been entered against a party in a civil action arising in
`whole or in part under section 1338 of title 28, that the party has not sustained its
`burden of proving the invalidity of any patent claim in suit .
`.
`. then neither that
`party nor its privies may thereafter request an inter partes reexamination of any
`such patent claim on the basis of issues which that party or its privies raised or
`could have raised in such civil action or inter partes reexamination proceeding,
`and an inter partes reexamination requested by that party or its privies on the basis
`of such issues may not thereafter be maintained by the Office .
`.
`. This subsection
`does not prevent the assertion of invalidity based on newly discovered prior art
`unavailable to the third-party requester and the Patent and Trademark Office at
`the time of the inter partes reexamination proceedings.
`
`The Office analyzes whether a reexamination proceeding must be terminated pursuant to
`pre-AIA 35 U.S.C. 317(b) by determining whether: i
`
`1. The third party requester was a party to the litigation;
`2. The decision is final,-i.e., after all appeals;
`3. The court decided that the requester/party had not sustained its burden of proving the
`invalidity of any claim of the patent in suit, which claim is also under reexamination; and
`4. The issue(s) raised in the reexamination proceeding are the same issue(s) that were
`raised or could have been raised by the requester in the civil action.
`
`The patent owner informs the Office that the patent under reexamination, US. Patent
`No. 7,486,926 (the ‘926 patent), was the subject of a civil action styled Affinity Labs of Texas,
`LLC, v. Apple Inc, Civil Action No. 4:09-cv-04436-cw (ND. Cal.) (the litigation). The patent
`owner submits a copy of an order by the district court dated September 23, 201 1 and entitled
`“Stipulation and Joint Motion‘Dismiss; Order” (order), which lists, as a defendant in the
`litigation, the requester and real party in interest in the instant proceeding, Apple, Inc. (Apple).
`The patent owner has provided sufficient evidence that the third party requester Was a party to
`the litigation. For this reason, element 1 has been shown to have been satisfied.
`
`Elements 2, 3, and 4, however, have not been shown to have been' satisfied.
`
`' Congress, when enacting the America Invents Act (AlA), replaced the provisions for inter partes reexamination
`with provisions for a new procedure, interpartes review. Congress amended the provisions of 35 U.S.C. 317 to
`only apply to inter partes review proceedings, which, by definition, are filed on or afier September 16, 2012 (post-
`AIA 35 U.S.C. 317). Congress also specified that the provisions ofthe interpartes reexamination statute which
`were in effect prior to September 16, 2012, including the provisions of35 U.S.C. 317(b) (pre-AIA 35 U.S.C.
`317(b)), remain applicable to inter partes reexamination proceedings, which were only permitted to be filed before
`September 16, 2012.
`
`Samsung Ex. 1321 p. 4
`
`Samsung Ex. 1321 p. 4
`
`

`

`Reexamination Control No. 95/001,263
`
`3
`
`'
`
`Regarding element 2, the district court, in its order, dismissed all counterclaims by the
`defendant/requester Apple without prejudice.2 The patent owner argues that the requester
`“counterclaimed that the claims of the ‘926 Patent were invalid”, and provided a copy of
`requester’s invalidity contentions as supporting evidence.3 However, because the court
`dismissed all of requester’s counterclaims, which would include requester’s counterclaims of
`invalidity, without prejudice, the court’s order does not bar the requester from raising its
`invalidity assertions against the patent owner in future litigation. Thus, the court’s order is not a
`final decision within the meaning of pre-AIA 35 U.S.C. 317(b). For this reason, the patent
`owner has not shown that element 2 has been satisfied.
`.
`
`Regarding element 3, the patent owner has not provided any evidence of a decision by the court ‘
`that the requester Apple did not sustain its burden of proving the invalidity of the ‘926 patent
`claims in suit.
`In addition, the patent owner has not provided evidence that all of the ‘926 patent
`claims under reexamination were in suit, i.e., were before the court at the time of the court’s
`
`judgment.
`
`Pre-AIA 35 U.S.C. 317(b) specifically requires a decision on the issue of “the invalidity of any
`patent claim in suit” (emphasis added). It is not clear which claims of the ‘926 patent subject to
`reexamination were in suit at the time ofthe court ’s judgment. Office records reveal that original
`claims 1-20 and newly added claims 21-37 are under reexamination in the present proceeding.
`The patent owner, however, has provided evidence that not all of the claims under reexamination
`were ultimately-asserted in the litigation. See, for example, page 2 of requester’s invalidity
`contentions, which refers to ‘9‘926 Patent: Claims 1-6, 8, and 10-20” as the “Asserted Claims”.
`Thus, dependent claims 7, 9, and 21-37, which are under reexamination, may not have been in
`suit at the time of the court’s judgment. The patent owner has not provided evidence of which
`claims were in suit at the time of the court’s order. 4 In fact, the patent owner has provided
`evidence that not all of the ‘926 patent claims under reexamination were ultimately litigated in
`the civil action.
`'
`
`If a claim under reexamination was not the subject of the litigation at the time of the judgment,
`then the estoppel provisions of pre-AIA 35 U.S.C. 317(b) do not apply to the final outcome of
`the litigation as to that patent claim, because there is no “final decision that the party has not
`sustained its burden of proving the invalidity” of that patent claim. Thus, prosecution of the non-
`litigated claims would not be “terminated” in the reexamination proceeding.
`
`2 See 1] 2 of the court’s order.
`3 See the court document dated January 5, 20] l and entitled “Apple l'nc.’s First Amended Invalidity Contentions
`Pursuant to Patent Local Rule 3-3” (requester’s invalidity contentions).
`4 For example, ifthe civil suit proceeded to trial, the patent owner must provide evidence of which claims were
`before the court at the time of trial, such as a copy ofthe jury verdict form.
`lfno trial was held, a copy ofthe court’s
`docket, and any court document providing evidence of which claims were asserted at the time. of thejudgment,
`should be submitted. Furthermore, the patent owner should also submit, in addition to a copy of the court’s docket,
`an explanation, for each court document (such as requester’s invalidity contentions) Submitted as evidence to show
`that the provisions of pre-AIA 35 U.S.C. 317(b) have been met, showing where in the court’s docket the document
`appears. The court’s docket would provide evidence of the stage of the litigation at which the document was
`submitted, the stage of the litigation at which the court’s “Order of Dismissal” was rendered, whether a trial was
`held (and when), whether the court’s judgment had been appealed, etc.
`
`Samsung EX. 1321 p. 5
`
`Samsung Ex. 1321 p. 5
`
`

`

`Reexamination Control No. 95/001,263
`
`4
`
`The patent owner essentially argues that the court’s dismissal with prejudice operates as a final
`determination on the merits of requester’ s counterclaim of invalidity The patent owner further
`states that the parties have entered into an agreement and that the requester Apple has withdrawn
`from participating in the present proceedings
`
`. that the party has
`.
`However, pre-AIA 35 U.S.C. 317(b) specifically requires a “final decision .
`not sustained its burden of proving the invalidity of any patent claim in suit” (emphasis added).
`Congress, when enacting the provisions ofpost-AIA 35 U.S.C. 317(a), amended the statute to
`permit the termination of an inter partes review proceeding upon joint request of the petitioner
`and the patent owner. Congress, however, did not similarly amend the inter partes
`reexamination statute to permit the termination of an inter partes reexamination proceeding
`under the same conditions. In fact, Congress specified that the provisions of the pre-AIA inter
`partes reexamination statute, which includes pre-AIA 35 U.S.C. 317(b), remain applicable to
`inter partes reexamination proceedings. Thus, Congress did not intend to permit a mere
`settlement between the parties to trigger the estoppel provisions of pre-AIA 35 U.S.C. 317(b).
`Pre-AIA 35 U.S.C. 317(b), however, requires more.
`It specifically requires a final decision by
`the court that the requester/party failed to sustain its burden of proving the invalidity of any
`patent claim in suit.
`
`There is no language in the court’s order that suggests that the court decided any invalidity issue,
`' let alone the issue that defendant/requester Apple failed to sustain its burden of proving the
`invalidity of the ‘926 patent claims in suit. In fact, the litigation appears to have been dismissed
`without there ever being an assessment by the court of whether the defendant/requester Apple
`sustained its burden of proving claim invalidity. The patent owner has not provided any
`evidence of any decision by the court that Apple failed to sustain its burden of proving the
`invalidity of the ‘926 patent claims in suit, as the patent owner asserts.
`
`If the invalidity issue had been litigated, i.e., asserted at trial, prior to the issuance of the court’s
`order, which does not appear to be the case here, then the court’s dismissal could have been
`interpreted by the Office in light of the court’s holding on the invalidity issue. If the invalidity
`issue has not been litigated (i.e., if no trial was held), which appears to be the case here, the
`patent owner must provide evidence to show that the provisions of pre-AIA 35 U.S.C. 317(b)
`have been met, including a showing that the court rendered a decision by the court that the
`requester did not sustain its burden of proving the invalidity of the patent claims. The patent
`owner has not done so.
`
`In summary, the court’s order merely provides evidence that the litigation was dismissed due to
`the parties’ settlement. Thus, the patent owner has not provided sufficient evidence of a decision
`by the court that the requester Apple did not sustain its burden of proving the invalidity of the
`‘926 patent claims1n suit. Furthermore, the patent owner has not provided evidence of that all of
`
`5 Requester’s October 3, 2011 paper, notifying the Office that it will no longer participate in the present
`reexamination proceeding, is appreciated. However, the agreement of the parties, while appreciated, does not
`mandate termination. Evidence, which shows that the above-identified four elements have been satisfied, is
`required.
`
`Samsung EX. 1321 p. 6
`
`Samsung Ex. 1321 p. 6
`
`

`

`Reexamination Control No. 95/001,263
`
`5
`
`the ‘926 patent claims under reexamination were before the court at the time of the court’s
`judgment.
`
`For these reasons, element 3 has not been shown to have been satisfied.
`
`Regarding element 4, the patent owner asserts that the requester was aware of all prior art at
`issue in the present proceeding, and could have raised any issue with respect to this prior art in
`the litigation. The patent owner points to requester’s invalidity contentions as supporting
`evidence.
`
`As an initial matter, note that the issue of which claims were in suit is separate and distinct from
`the issue of whether any issues with respect to the claims in suit could have been raised by the
`requester in the litigation. Pre-AIA 35 U.S.C. 317(b) specifies that its estoppel applies where a
`party has not sustained its burden of proving the invalidity of “any patent claim in suit”
`(emphasis added). The statute does not refer, for example, to any patent claim that “could have
`been” in suit. Pursuant to the statute, the patent claims that were actually in suit must initially be
`determined. Further, each claim in suit must have a corresponding final decision of non-
`invalidity. Then, once the claims in suit have been identified and once the “final decision has
`been entered .
`. .,” the statute then prohibits the Office from maintaining an inter partes
`reexamination “of any such patent claim” (i.e., the patent claim in suit)‘, “on the basis of issues
`which .
`.
`. [the requester] raised or could have raised” in the litigation. (Emphasis added).
`Accordingly, the phrase “raised or could have raised” applies only to patent claims that were in
`suit and for which a final decision has been entered. The issue is not whether the requester
`“could have raised” claims that were not in suit. Rather, once the claims that were actually
`litigated are determined, the issue is whether any issues raised in the reexamination proceeding
`with respect to the litigated claims either were raised or could have been raised by the requester
`in the litigation.
`
`Until it is clear which claims of the ‘926 patent were before the court at the time of the court’s
`judgment, a determination cannot be made whether the issues raised in the reexamination
`proceeding were raised or could have been raised by the requester in the civil action. For
`example, if certain claims, which are under reexamination, were not before the court at the time
`of the court’s judgment,
`then any issues regarding those claims which were raised in the
`reexamination proceeding could not have been raised by the requester in the litigation.
`
`Furthermore, the patent owner has not provided evidence that all of the issues raised in the
`present reexamination proceeding could have been raised by the requester in the litigation at the
`time of the court’s judgment.
`
`The last sentence of pre-AIA 35 U.S.C. 317(b) permits “the assertion of invalidity [in an inter
`partes reexamination] based on newly discovered prior art unavailable to the third party
`requester”. See the legislative history of pre--AIA 35 U. S.C. 3 17(b), which provides the meaning
`of the word‘ ‘unavailable”, as it appears in the statute (emphasis added1n bold):6
`
`6 106 Cong. Rec. $14720, Nov. 17, 1999. See also 106 Cong. Rec. Hl 1805, Nov. 9, 1999.
`
`Samsung EX. 1321 p. 7
`
`Samsung Ex. 1321 p. 7
`
`

`

`Reexamination Control No. 95/001,263
`
`'
`
`i
`
`6
`
`Further, if a third—party requester asserts patent invalidity in a civil action and a final decision
`is entered that the party failed to prove the assertion of invalidity .
`.
`. after any appeals, that
`third-party requester cannot thereafter request inter partes reexamination on the basis of issues
`which were or which could have been raised. However, the third-party requester may assert
`invalidity based on newly discovered prior art unavailable at the time of the civil action or
`inter partes reexamination. Prior art was unavailable at the time if it was not known to
`the individuals who were involved in the civil action or inter partes reexamination
`proceeding on behalf of the third-party requester and the USPTO.
`
`Thus, to show that a reference is “available”, the patent owner must provide evidence that the
`reference was known to the requester at a time when it could have been raised in the civil action.
`In the present case, it is not clear whether a trial was held and Whether there was a time, before
`the court’s order, when the requester could not have raised, at that stage of the litigation, issues
`that were raised in the reexamination proceeding. For example, it is not clear whether many of
`the references which were raised in the present reexamination proceeding, such as, for example,
`the references cited in the August 17, 201 1 action closing prosecution (ACP) (e.g., Leeke,
`Kumar, Rhoads, Kaplan, Naim, Dwyer, Gioscia, Naughton, etc.),7 but which do not appear to be
`included in requester’s invalidity contentions, could have been raised by the requester in the
`litigation. The patent owner has not, for example, shown that at the time Of the court’s judgment,
`the civil action was at an early stage, such that all of the issues raised in the reexamination
`proceeding could have been raised in the litigation. Thus, the patent owner has not provided
`sufficient evidence that the requester was aware of all of the issues raised in the reexamination
`proceeding at a time when those issues could have been raised in the litigation.8
`
`Thus, element 4 has not been shown to have been satisfied because the patent owner has not
`provided sufficient evidence that 1) all of the claims under reexamination were in suit at the time
`of the district court’s order; and 2) all of the issues raised in the present reexamination
`proceeding either were raised or could have been raised in the litigation.
`
`In summary, the present inter partes reexamination proceeding will not be terminated, because
`patent owner has failed to provide a sufficient showing that all of the requirements of pre-AIA 35
`U.S.C. 317(b) have been met. In the absence of such a showing, the Office is required by statute
`to continue prosecution of the ‘1263 reexamination proceeding. See 35 U.S.C. 313 (requiring
`reexamination “for resolution of the question” of patentability). Even if the patent owner later
`provides sufficient evidence of which patent claims were in suit, and sufficient evidence that all
`of the issues raised in the reexamination proceeding could have been raised in the litigation, the
`patent owner must also provide specific evidence of a final decision by the court that the
`requester Apple did not sustain its burden of providing the invalidity of the ‘926 patent claims in
`suit.
`
`7 This list is merely a sample list, and is not all-inclusive. The patent owner should review the entire proceeding to
`determine all of the prior art raised in the proceeding (and not merely which references were used in adopted
`rejections).
`8 For example, if no trial was held, the patent owner may provide evidence, such as a copy of the court’s docket, and
`an explanation discussing the court’s docket, requester’s invalidity contentions, and the other prior art cited in the
`present proceeding, showing that the requester was aware of all of the issues raised in the reexamination proceeding
`prior to trial, at a time when the requester could have raised, in the litigation, any ofthe issues raised in the
`reexamination proceeding.
`
`Samsung EX. 1321 p. 8
`
`Samsung Ex. 1321 p. 8
`
`

`

`Reexamination Control No. 95/001,263
`
`7
`
`Accordingly, patent owner’s December 7, 2012 petition under 37 CFR 1.182 to terminate the
`present inter partes reexamination proceeding is dismissed.
`
`CONCLUSION
`
`0 Patent owner’s December 7, 2012 petition under 37 CFR 1.182 to terminate the present
`inter partes reexamination is dismissed.
`
`0 Any inquiry concerning this communication should be directed to the undersigned at
`(571) 272-7724.
`’
`
` Cynth a L. Nessler
`
`.
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`Attachments: Two court documents in In re Affinity Labs of Texas, LLC, Appeal No. 2013-1393
`(CAFC 2014), entitled:
`
`1) “Judgment”, dated January 9, 2014; and
`2) “Mandate”, dated March 3, 2014.
`‘
`
`4/11/2014
`
`Samsung EX. 1321 p. 9
`
`Samsung Ex. 1321 p. 9
`
`

`

`Case: 13-1393
`
`Document: 45-2
`
`Page:1
`
`Filed: 01/09/2014
`
`NOTE: This disposition is nonprecedential.
`
`Uflntteh States Qtuurt ut‘gppealg
`for the jfeheral QEirtuit
`
`IN RE AFFINITY LABS OF TEXAS, LLC
`
`2013-1393
`
`Appeal from the United States Patent andTrademark
`Office, Patent Trial and Appeal Board in Reexamination
`No. 95/001,263.
`
`JUDGMENT
`
`CYRUS A. MORTON, Robins, Kaplan, Miller, and Ciresi,
`L L. P., of Minneapolis, Minnesota argued for appellant.
`Of counsel on the brief was TIMOTHY G. NEWMAN, Larson
`Newman, LLP, of Austin Texas.
`
`SCOTT C. WEIDENFELLER, Associate Solicitor, Office of
`the Solicitor, United States Patent and Trademark Office,
`of Alexandria, Virginia, argued for intervenor Commis-
`sioner for Patents. With him on the brief were NATHAN K.
`
`KELLEY, Acting Solicitor, and STACY B. MARGOLIES, Asso-
`ciate Solicitor.
`
`THIS CAUSE having been heard and considered, it is
`
`ORDERED and ADJUDGED:
`
`Samsung Ex. 1321 p. 10
`
`Samsung Ex. 1321 p. 10
`
`

`

`Case: 13-1393- Documentz45-2
`
`Page:2
`
`Filed: 01/09/2014
`
`PER CURIAM (LOURIE, DYK, and WALLACH, Circuit
`Judges).
`
`AFFIRMED. See Fed. Cir. R. 36.
`
`ENTERED BY ORDER OF THE COURT
`
`January 9,‘ 2014
`Date
`
`‘ /s/. Daniel E. O’Toole
`Daniel E. O’Toole
`
`Clerk of Court
`
`Samsung EX. 1321 p. 11
`
`Samsung Ex. 1321 p. 11
`
`

`

`Case: 13-1393
`
`Document: 46
`
`Page: 1
`
`Filed: 03/03/2014
`
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`13-1393
`
`IN RE AFFINITY LABS OF TEXAS, LLC
`
`Appeal from the United States Patent and Trademark Office in case no. 95/001,263
`
`MANDATE
`
`In accordance with the judgment of this Court, entered January 09, 2014, and pursuant to Rule 41(a)
`of the Federal Rules of Appellate Procedure, the formal mandate is hereby issued.
`
`FOR THE COURT
`
`/s/ Daniel E. O'Toole
`
`Daniel E. O'Toole
`
`Clerk of Court
`
`cc: Nathan K. Kelley
`Stacy Beth Margolies
`Cyrus Alcorn Morton
`Timothy G. Newman
`United States Patent and Trademark Office
`
`Scott Weidenfeller
`
`Samsung Ex. 1321 p. 12
`
`Samsung Ex. 1321 p. 12
`
`

`

`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`and
`THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`§ §
`
`§ §
`
`§ §
`
`Affinity Labs of Texas, LLC,
`
`Appellant,
`
`v.
`
`§
`§ NOTICE OF APPEAL
`
`§ §
`
`Theresa Stanek Rea,
`Acting Director,
`United States Patent and Trademark Office,
`
`and
`
`Apple, Inc.,
`
`Appellee,
`
`Appellee.
`
`In re US. Patent No. 7,486,926
`§
`Inter Partes Reexamination No.: 95/001 ,263
`§
`§ PTAB Appeal No.: 2012—010420
`§
`§
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`Notice is hereby given that Affinity Labs of Texas, LLC appeals to the United States
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`Court of Appeals for the Federal Circuit from the Decision on Appeal of the Patent Trial and
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`Appeal Board, United States Patent and Trademark Office entered on November 1, 2012, and
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`from the Decision on Request for Reconsideration of the Patent Trial and Appeal Board, United
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`States Patent and Trademark Office entered on February 15, 2013.
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`No fees are believed to be due to the United States Patent and Trademark Office in
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`connection with this filing, but authorization is hereby given for any required fees to be charged
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`to Deposit Account 08-1394.
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`Respectfully submitted this 25‘h day of March, 2013.
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`CERTlFICATE OF TRANSMISSION UNDER 37 CFR §l.8
`l hereby certify that this correspon -nce and any attachments are
`beim
`:
`‘
`'
`.
`ne Electronic Filing System (EFS) Web with
`» United States Patent an
`‘ den 'rk Office on March 25, 2013.
`
`Lytia Epps—Hilliard '
`
`quLNQ§
`
`David L. McCombs
`
`USPTO Reg. No. 32,271
`HAYNES AND BOONE, LLP
`3
`2323 VlCtOI'y Avenue 811116 700
`Dallas: Texas 75219
`Telephone: 214/651-5533
`Facsimile 214/200-0853
`
`Samsung Ex. 1321 p. 13
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`Samsung Ex. 1321 p. 13
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`

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`CERTIFICATE OF SERVICE
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`Pursuant to M.P.E.P. § 2683 and 37 C.F.R. §§ 1.248 and l.983(b)(3), the undersigned attorney
`for Appellants certifies that a copy of the NOTICE OF APPEAL was served, via United States
`Postal Service First Class Mail, on March 25th, 2013 on the counsel for Third Party Requester at
`the following address:
`
`Novak Druce & Quigg, LLP
`NDQ Reexamination Grou
`1000 Louisiana Street, 53r Floor
`Houston, TX 77002
`
`grime;
`David L. McCombs
`
`Samsung Ex. 1321 p. 14
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`Samsung Ex. 1321 p. 14
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`

`

`PTO/SB/84 (1108)
`Approved for use through 11/30/2011. OMB 0651-0035
`US. Patent and Trademark Office: US DEPARTMENT OF COMMERCE
`Under the Papenivork Reduction Act of 1995, no persons are required to respond to a collection of information unless it contains a valid OMB control number.
`
`AUTHORIZATION TO ACT IN A REPRESENTATIVE CAPACITY
`
`in T9 Application 01‘? Inter Partes Reexamination of United States Patent No. 7,486,926
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`Application No.
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`1
`Proceeding No. 95/001,263
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`I
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`
`
`
`
`
`
`F'l
`'ed
`November 13, 2009
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`““93 CONTENT DELIVERY SYSTEM AND METHOD
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`
`
`
`
`Attorney Docket No.
`8157022926
`
`Art Unit:
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`_
`
`3992
`
`The practitioner named below is authorized to conduct interviews and has the authority to bind the principal
`concerned.
`(Note: pursuant to 37 CFR 10.57(c), a practitioner cannot authorize other registered
`practitioners to conduct interviews without consent of the client after full disclosure.) Furthermore, the
`practitioner is authorized to file correspondence in the above-identified application pursuant to 37 CFR
`1.34:
`
`
`
`
`David L. McCombs
`
`
`
`Theodore M. Foster
`
`Gregory Huh
`
`
` This is not a Power of Attorney to the above-named practitioner. Accordingly, the practitioner named above
`
`
`does not have authority to sign a request to change the correspondence address, a request for an express
`
`
`abandonment, a disclaimer, a power of attorney, or other document requiring the signature of the applicant,
`assignee of the entire interest or an attorney of record.
`If appropriate, a separate Power of Attorney to the above-
`named practitioner should be executed and filed in the United States Patent and Trademark Office.
`
`
`SIGNATURE of Practitioner of Record
`
`~
`
`'*
`.
`'W’é z 2/”\
`
`Name
`
`Mark J. Rozman
`
`Telephm 512-418-9944
`
`
`
`Date
`
`03/14/2013
`
`Registration No., if applicable
`42.117
`
`
`
`
`This collection of information is required by 1.31, 1.32 and 1.34. The information is required to obtain or retain a benefit by the public which is to file (and by the
`USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 3 minutes to
`complete, including gathering, preparing. and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`, commentson.thenamountottimeoyou,require to completathisfonnandlor suggestions.tor,.reduclng thisnburden,shouldbesentflto.the"Chletriniormationvofficer.7w.
`US. Patent and Trademark Office, US. Department of Commerce. PO. Box 1450, Alexandria, VA 223134450. DO NOT SEND FEES OR COMPLETED FORMS
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`
`Samsung Ex. 1321 p. 15
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`Samsung Ex. 1321 p. 15
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`

`

`Electronic Acknowledgement Receipt
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`15345513
`
`Application Number:
`
`95001263
`
`International Application Number:
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`Confirmation Number:
`
`Title of Invention:
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`CONTENT DELIVERY SYSTEM AND METHOD
`
`
`
`First Named Inventor/Applicant Name:
`
`7486926
`
`Customer Number:
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`21906
`
`David L. McCombs/Lydia Epps-Hilliard
`
`Filer Authorized By:
`
`David L. McCombs
`
`Attorney Docket Number:
`
`AFF.0004B6US
`
`Receipt Date:
`
`25-MAR-2013
`
`Filing Date:
`
`13-Nov-2009
`
`Time Stamp:
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`16:03:25
`
`Application Type:
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`inter partes reexam
`
`Payment information:
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`Submitted with Payment
`
`File Listing:
`
`Document
`Number
`
`Document Descri
`
`tion
`
`p
`
`e88a
`
`File Size(Bytes)/
`Message Digest
`113614
`
`Pages
`Multi
`Part /.zip (if appl.)
`
`NOA_COS_Authorization.pdf
`
`7ef568ff4d6ace3fe98279b2db25891d544a
`
`Samsung Ex. 1321 p. 16
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`Samsung Ex. 1321 p. 16
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`

`

`Multipart Description/PDF files in .zip description
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`Document Description
`
`Requester Appeal to the Federal Circuit
`
`Reexam Certificate of Service
`
`
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`Total Files Size (in bytes)
`
`113614
`
`New Applications Under 35 U.S.C. 111
`lfa new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)—(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`lfa timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`lfa new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/RO/105) will be issued in due course, subject to prescriptions concerning
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`
`Samsung Ex. 1321 p. 17
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`Samsung Ex. 1321 p. 17
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`

`

`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: