Page 1 of 445
`
`NOVATEL EXHIBIT 1009
`
`
`
`NOVATEL EXHIBIT 1009
`
`
`
`Case 1:12—cv-23876-FAM Document 4 Entered on FLSD Docket 10/25/2012 Page 1 of 1
`
`TRADEMARK
`
`TO.
`'
`
`Man stop 3
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`Southern District of Florida
`on the following
`D Trademarks or
`|ZPatents.
`( E] the patent action involves 35 U.S.C. § 292.):
`
`
`
`
`
`
`U.S. DISTRICT COURT
`Southern District of Florida
`
`DATE FILED
`10/24/2012
`
`DOCKET NO.
`12-cv-23876-Moreno
`PLAINTIFF
`DEFENDANT
`
`ArrivalStar S.A. et al
`
`Groupon, inc.
`
`
`
`PATENT OR
`TRADEMARK NO.
`16~952i645B'
`
`
`
`DATE OF PATENT
`HOLDER OF PATENT OR TRADEMARK
`OR TRADEMARK
`to/4/2005
` —
`
`
`
`
`__ D
`
`INCLUDED BY
`
`El Amendment
`%’;TERCfD%AI$/RE:
`
`
`
`
`El Answer
`E] Cross Bill
`I] Other Pleading
`HOLDER OF PATENT 0R TRADEMARK
`
`
`
`
`
`ATE INCLUDED
`
`TRESEAIKTRERNO
`
`l
`
`
`
`
`
`In the above——entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`Steven M. Larlmore
`
`(BY) DEPUTY CLERK
`Valerie Kemp
`
`DATE
`
`10/24/2012
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—~Upon termination of action, mail this copy to Director
`Copy 2—U on filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`Page 2 o 445
`
`Page 2 of 445
`
`
`
`Case 2:12—cv—OO333-DBH Document 5 Filed 10/31/12 Page 1 of 1 Page|D #: 419
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`Portland, Maine
`on the following
`[:1 Trademarks or
`MPatents.
`I:] the patent action involves 35 U.S.C. § 292.):
`
`(
`
`DOCKET NO.
`2:12-CV—333-DBH
`DEFENDANT
`PLAINTIFF
`Microsoft Corporation
`Surfcast Inc
`
`
`U.S. DISTRICT COURT
`
`Portland, Maine
`
`
`
`
`
`
`
`
`
`
`DATE FILED
`10/30/2012
`
`
`
`
`
`INCLUDED BY
`
`I] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`[I Answer
`El Cross Bill
`C] Other Pleading
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`PATENT OR
`TRADEMARK NO.
`
`1
`
`In the above~—entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`CLERK
`Christa K. Berry
`
`(BY) DEPUTY CLERK
`/s/ Robert Allen
`
`DATE
`
`10/31/2012
`
`Copy 1—-Upon initiation of action, mail this copy to Director Copy 3——Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4———Case file copy
`
`Page 3 of 445
`
`
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`HOLDER OF PATENT OR TRADEMARK
`OR TRADEMARK
`1 Us 6724-403 B1
`4/20/2004
`2 US 7,933,632 B2
`4/26/2011
`Microsoft Corporation
`
`
`3
`
`Page 3 of 445
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CERTIFICATE OF CORRECTION
`
`PATENT NO.
`APPLICATION NO.
`DATED
`
`1NVENTOR(S)
`
`: 8,094,010 B2
`: 12/538603
`
`: January 10, 2012
`: Eveline Wesby—van Swaay
`
`Page 1 ofl
`
`It is certified that error appears in the above—identified patent and that said Letters Patent is hereby corrected as shown below:
`
`In Col. 14, line 7
`
`replace “claim 10”
`with “claim 22”
`
`In Col. 14, line 22
`
`replace “claim 1”
`with “claim 26”
`
`In Col. 19, line 4
`
`replace “claim 52”
`with “claim 96”
`
`In Col. 26, line 33
`
`replace “claim 193”
`with “claim 151”
`
`Signed and Sealed this
`
`Thirteenth Day of March, 2012
`
`.
`
`David J. Kappos
`Director ofthe United States Patent and Trademark Oflice
`
`Page 4 of 445
`
`Page 4 of 445
`
`
`
`Case 1:12-cv-00030-UNA Document 3
`A0 120 Rev. 08/10)
`
`Filed 01/13/12 Page 1 of1 PagelD #: 53
`
`
`
`TO
`'
`
`Mail Stop 3
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 223l3—1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`T“ T W
`
`
`
`DEFENDANT
`
`
`
`PLAINTIFF
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1] 16 you are hereby advised that a court action has been
`filed in the U.S. District Court
`for the District of Delaware
`on the following
`I] Trademarks or
`[ZPatents.
`( [I the patent action involves 35
`§ 2792.’):
`DOCKET NO.
`DATE FILED
`1/13/2012
`
`U.S. DISTRICT COURT
`
`
`
`for the District of Delaware
`
`
`M2M SOLUTIONS, LLC
`
`SIERRA WIRELESS AMERICA, INC., SIERRA
`WIRELESS, INC.
`
`
`
`
`PATENT OR
`
`DATE OF PATENT
`
`..
`
`
`
`
`
`
`
`
`
`
`
`
`
`In the above—£ntitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`3
`
`DATE INCLUDED
`
`PATENT OR
`TRADEMARK NO.
`
`U Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`[I Answer
`
`[I Cross Bill
`
`I] Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`
`
`
`
`—
`
`In the above~entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3——Upon termination of action, mail this copy to Director
`Copy 2-—Upon filing document adding patent(s), mail this copy to Director Copy 4-—Case file copy
`
`Page 5 of 445
`
`Page 5 of 445
`
`
`
`Case 1:12-cv-00052-LMB-TRJ Document 3
`A0 120 (Rev, (léifiéii
`
`Filed 01/17/12 Page 1 of1 PagelD# 162
`
`Mi‘/(‘)'
`1
`‘
`
`Director of the
`
`Mail Stop 8
`Patient and ‘Trademark ()ffice
`P.0. Box I450
`Alexandria, VA 22313-1450
`
`
`
`()a’\’ Tlfli
`RI€POR’I‘
`FIEANCC OR i)I7.'TERi\’IlNATI()N OF AN
`AC'I‘I(')%\’ 1'{f2‘.(jARi)Ii\'(; A l’A'l‘I§{\”l‘ OR
`’f'}{A_]){§_V1A]{|{
`
`In Cmnplimicc with 35 l?.$.(J. § 29!) zimlihr I5 U,.‘s'.(.7. § 1 I 16 you are ilcrcby :vJ\'i:<cs.l that it court action has been
`lilcd in the Us. I)i,<irie.~1 Court
`for the Eastern Disirici of Virginia
`__
`mé1iic1hii0x\i1i§_~
`[:3 l‘rzuic:x1ui'ks or
`{:2} i’awnts.
`( (3 ii§';%'”.mm ;{$i'i'}$;§ ’é.ma1§?;~;’3's i":.s.<:)'V"§"éi2z.;;
`
`I‘)()(‘Ki€T NO.
`
`i-’i..~\i?~;i'1H*‘
`
`i).«\Ti£ FlLi~:[)
`
`{L8, DiS'i‘{i(."i' C0\.}R'i'
`_
`’
`for the Eastern District of Virinia
`Dlii‘i~1Z\ii):\:‘\"i‘
`
`Automated Tracking Solutions, LLC
`
`Simp|yRFiD. Inc.
`
`
`
`l’,»\I”"l‘.?xl DR
`;.RM.mM;,mK NO‘
`
`DA'l'ii(V)l’l"/\'l'I{?\§’l"
`OR ‘RADEMARK
`
`i
`,
`Ii0l.i)i.R Oi
`
`,
`
`.
`7
`,
`.. 5,.
`i’x‘.|i,?\l (JR iR:\i)I.?\l.-\Rl\
`
`-—
`
`DA! Ii L\'(.')l.U1.)i{l)
`
`In 111: zibmc -cmitiL'd cam‘. thc {ulimx mg; p1iiclIi{1«)' 1maia:m:::'i».(:») hm. c la-can inciudcii:
`lNCI.l3l')i*’,l) HY
`
`C} (Tmsa mu
`
`[:1 ()r.iu:ri‘ic;1dir2g
`
`l’z\l'ii;\‘I UR
`I l{.«\!')ii,\1.v\RK N0.
`
`i.'}.>\Tli OF i’.»‘\’lVi€N I’
`
`(JR l‘i(AI,)l:‘.:\1z\RK
` C‘L1’.RK
`
`In the uhuvc mcmitlci! case. the fnllmving dccisimi has been rcndcrccl nrjudgcum-n1 ismuxit
`1\)i{(}.'i§i()X~‘.Ii.Ei.)(il§MIi?‘5'l‘
`
`(BY) 1)]-L!’l£'i‘Y (,‘.l(i<‘.l(K
`
`Cupy I---Ugwu initiation ufaciinn. mail this copy to Director Copy 3-Upon termination ofzmion. muii ihis mm’ to lliirecmr
`("om 2~~-Upon filing document adding pment(s), mail this copy to Director
`(Tony 4m-(Jase file copy
`
`Page 6 of 445
`
`Page 6 of 445
`
`
`
`Case 1:12-cv-00031-UNA Document 3
`
`Filed 01/13/12 Page 1 of1 Page|D #: 53
`
`A0 120 Rev. OS/I0)
`
`TO‘
`
`Mai] stop 3
`Director ofthe U.S. Patent and Trademark Office
`P.o. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.SrC. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`for the District of Delaware
`on the following
`E] Trademarks or
`MPatents.
`( [I the patent action involves 35 U.S.C. § 292-."):
`
`
`
`DOCKET NO.
`
`PLAINTIFF
`
`
`
`DATE FILED
`1/13/2012
`
`U.S. DISTRICT COURT
`for the District of Delaware
`
`DEFENDANT
`
`
`
`
`
`CINTERION WIRELESS MODULES GMBH, ClNTER|ON
`
`M2M SOLUTIONS, LLC
`WIRELESS MODULES NAFTA LLC, GEMALTO N.V.
`
`
`
`
`
`.
`
`W
`
`M2M Solutions, LLC
`
`PATENT OR
`
`DATE OF PATENT
`
`1 7,583,197
`
`9/1/2009
`
`2 8,094,010
`
`1/10/2012
`
`M2M Solutions, LLC
`
`3——
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`
`
`Ci Amendment
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`OR TRADEMARK
`l--
`
`E] Answer
`
`[I Cross Bill
`
`Ij Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`_——_ I
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`
`
`
`n the abOve—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`Copy l———Upon initiation of action, mail this copy to Director Copy 3--Upon termination of action, mail this copy to Director
`Copy 2——-Upon filing document adding patent(s), mail this copy to Director Copy 4-—-Case file copy
`
`Page 7 of 445
`
`Page 7 of 445
`
`
`
`Case 1:12-cv-00032-UNA Document 3
`
`Filed 01/13/12 Page 1 of1 Page|D #: 53
`
`A0 120 Rev. 08/10)
`
`TO:
`
`Mail Stop 3
`Director of the U.S. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`for the District of Delaware
`on the following
`
`[:I Trademarks or
`
`MPatents.
`
`( E! the patent action involves 35 U.S.C. § 292.):
`
`DATE FILED
`1/13/2012
`
`U.S. DISTRICT COURT
`for the District of Delaware
`
`DEFENDANT
`
`DOCKET NO.
`
`PLAINTIFF
`
`M2M SOLUTIONS, LLC
`
`
`
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS,
`INC., NOVATEL WIRELESS, INC.
`
`
`
`PATENT OR
`
`DATE OF PATENT
`
`1 7,583,197
`
`9/1/2009
`
`
`
`'
`
`M2M Solutions, LLC
`
`2 8,094,010
`
`1/1o/2012
`
`M2M Solutions, LLC
`
`3——
`
`DATE INCLUDED
`
`In the above——entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`
`
`___— I
`
`El Amendment
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`OR TRADEMARK
`I--
`
`I] Answer
`
`El Cross Bill
`
`E] Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`n the aboVe—£ntitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`
`
`(BY) DEPUTY CLERK
`
`DATE
`
`CLERK
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3——-Upon termination of action, mail this copy to Director
`Copy 2-—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`Page 8 of 445
`
`Page 8 of 445
`
`
`
`Case 3:11-cv-O1060—HZ Document 18
`
`Filed 01/13/12 Page 1 of 1 Page ID#: 94
`
`A0120 Rev. 08/10
`
`TRADEMARK
`
`TO:
`
`Mai] stop 3
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`Oregon
`on the following
`I] Trademarks or
`[:1 Patents.
`( I:]The patent action in:/olves 35 U.S.C. §
`
`DOCKET NO.
`
`3:11—cv—1060
`
`PLAINTIFF
`
`St. Ives Laboratories, Inc.
`Metabolic Maintenance Products, Inc.
`
`
`U.S. DISTRICT COURT
`
`DEFENDANT
`
`Oreon
`
`DATE FILED
`8/31/2011
`
`
`
`%*;TfRiFD:’3§E£
`8/3/2°04
`8/18/1998 —
`3 —
`
`
`
`
`
`
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`[I Answer
`
`I] Cross Bill
`
`C] Other Pleading
`
`I:] Amendment
`PATENT OR
`DATE OF PATENT
`TRADEMARK NO.
`OR TRADEMARK
`HOLDER OF PATENT OR TRADEMARK
`———
`——
`——
`_—
`
`1
`
`——
`
`In the above-~entitled case, the following decision has been rendered or judgement issued:
`DECISION/IUDGEMENT
`
`
`
`
`
`CLERK
`
`Mary L Moran
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2——Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`Page 9 of 445
`
`Page 9 of 445
`
`
`
`Case 1:12-cv-00033-UNA Document 3
`A0120 Rev. 08/10
`
`
`
`Filed 01/13/12 Page 1 of 1 Page|D #: 56
`
`T0:
`
`Mail Stop 3
`Director of the U.S. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1 I 16 you are hereby advised that a court action has been
`filed in the U.S. District Court
`for the District Of Delaware
`on the following
`El Trademarks or M Patents.
`( El the patent action involves 35 U.S.C, § 292.):
`
`U.S. DISTRICT COURT
`for the District of Delaware
`
`DEFENDANT
`
`MOTOROLA SOLUTIONS, INC., TELIT
`COMMUNICATIONS PLC, TELIT WIRELESS
`SOLUTIONS INC.
`
`
`
`
`
`
`DATE FILED
`1/13 /2012
`
`DOCKET NO.
`
`PLAINTIFF
`
`
`
`M2M SOLUTIONS, LLC
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`1 7,583,197
`
`9/1/2009
`
`M2M Solutions, LLC
`
`
`
`
`3—
`
`—
`
`
`——
`
`DATE INCLUDED
`
`In the above~entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`
`
`PATENT OR
`TRADEMARK NO.
`
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`D Answer
`
`El Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2-—Upon filing document adding patent(s), mail this copy to Director Copy 4——Case file copy
`
`Page 10 of 445
`
`
`
`
`
`Page 10 of 445
`
`
`
`Case 1:12—cv-00034-UNA Document3
`A0 120 (Rev. 08/10
`
`Filed 01/13/12 Page1 oft Page|D #: 52
`
` TO.
`
`'
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 11 I6 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`E] Trademarks or
`IZPatents.
`
`for the District Of Delaware
`[:1 the patent action involves 35 U.S.C. § 292.):
`
`(
`
`on the following
`
`DOCKET NO.
`
`PLAINTIFF
`
`DATE FILED
`1/13/2012
`
`U.S. DISTRICT COURT
`for the District of Delaware
`
`DEFENDANT
`
`M2M SOLUTIONS, LLC
`
`SIMCOM WIRELESS SOLUTIONS CO., LTD., SIM
`TECHNOLOGY GROUP LTD.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 7,583,197
`
`9/1/2009
`
`M2M Solutions, LLC
`
`3 4 I
`
`DATE INCLUDED
`
`
`
`PATENT OR
`TRADEMARK NO.
`
`
`(BY) DEPUTY CLERK
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`Page 11 of 445
`
`n the above~entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`El Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`[:1 Answer
`
`B Cross Bill
`
`[I Other Pleading
`.
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`Page 11 of 445
`
`
`
`Case 1:12-cv-00031-UNA Document 3
`A0 I20 Rev. 08/10)
`
`Filed 01/13/12 Page 1 of1 Page|D #: 53
`
`TRADEMARK
`
`To
`'
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`filed in the U.S. District Court
`for the District of Delaware
`on the following
`I] Trademarks or
`MPatents.
`[:1 the patent actionT1Tvolves 35 U.S.C. § 292.‘):
`
`(
`
`
`
`PLAINTIFF
`
`DOCKET NO.
`
`
`
`DATE FILED
`1/13/2012
`
`U.S. DISTRICT COURT
`for the District of Delaware
`
`DEFENDANT
`
`
`
`M2M SOLUTIONS, LLC
`
`CINTERION WIRELESS MODULES GMBH, CINTERION
`WIRELESS MODULES NAFTA LLC, GEMALTO N.V.
`
`PATENT OR
`
`DATE OF PATENT
`
`.
`
`V.
`
`
`
`
`
`
`
`
`
`
`——
`——
`—
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`
`
`DATE INCLUDED
`
`INCLUDED BY
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`PATENT OR
`TRADEMARK NO.
`
`I
`
`[:I Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`El Answer
`
`[I Cross Bill
`
`[:1 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`in the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`(BY) DEPUTY CLERK
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—-Case file copy
`
`Page 12 of 445
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`Page 12 of 445
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`
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`Case 1:12-cv-00032-UNA Document 3
`A0 120 Rev. 08/10)
`
`Filed 01/13/12 Page 1 of1 Page|D #: 53
`
`
`
`T0:
`
`Mai] stop 3
`Director of the U.S. Patent and Trademark Office
`P.0. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1 I 16 you are hereby advised that a court action has been
`
`for the District Of Delaware
`filed in the US. District Court
`[I Trademarks or
`MPatents. I ( [I the patent action involves 35 U.S.C.A§ 292.):
`
`mm
`
`on the following
`
`"L
`
`DOCKET NO.
`
`PLAINTIFF
`
`
`
`DATE FILED
`1/13/2012
`
`U.S. DISTRICT COURT
`for the District of Delaware
`
`DEFENDANT
`
`
`
`
`
`ENFORA, INC., NOVATEL WIRELESS SOLUTIONS,
`
`INC., NOVATEL WIRELESS, INC.
`
`MZM SOLUTIONS, LLC
`
`
`
`PATENT OR
`
`DATE OF PATENT
`
`I
`
`.
`
`1 7,583,197
`
`2 8,094,010
`
`9/1/2009
`
`M2M Solutions, LLC
`
`1/10/2012
`
`M2M Solutions, LLC
`
`
`
`
`
`
`
`3——
`
`DATE INCLUDED
`
`INCLUDED BY
`
`
`I--
`
`PATENT OR
`TRADEMARK NO.
`
`El Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`I:] Answer
`
`I] Cross Bill
`
`[3 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`————
`
`In the above—~entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`
`(BY) DEPUTY CLERK
`
`Copy l—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—~Case file copy
`
`Page 13 of 445
`
`Page 13 of 445
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`
`
`Practitioner's Docket No. 1503/113
`
`PA TENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Patent Number:
`
`8,094,010
`
`Issued:
`Name of Patentee:
`
`January 10, 2012
`Eveline Wesby—van Swaay
`
`Title of Invention:
`
`Programmable Communicator
`
`Attn: Certificate of Correction Branch
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`REQUEST FOR EXPEDITED ISSUANCE OF CERTIFICATE OF CORRECTION
`OF PATENT FOR PTO MISTAKE (37 C.F.R. § 1.322(a))
`
`1. Attached is PTO/SB/44 (also Form PTO—l050) in a form suitable for printing.
`
`2. The exact places Where the error is shown correctly in the application file are:
`
`Amendment filed October 21, 2011; claims 234, 246, 317, and 415.
`
`3.
`
`In compliance with the requirements for expedited issuance of the certificate of correction,
`attached are copies of:
`
`1)
`
`2)
`
`Amendment filed October 21, 201 1; and
`
`Index of Claims, showing how the claims were renumbered.
`
`4. Please send the Certificate to:
`
`Name:
`Address:
`
`Jonathan C. Lovely
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`
`Boston, MA 02110
`
`/Jonathan C. Lovely, #60,821/
`Jonathan C. Lovely
`Attorney of Record
`
`01503/00113 l587348.l
`
`Page 14 of 445
`
`Request for Certificate of Correction of Patent For PTO Mistake——page l of l
`
`Page 14 of 445
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`
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`Practitioner's Docket No. 1503/113
`
`PA TENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of:
`
`Eveline Wesby—van Swaay
`
`Application No.: 12/538,603
`Filed: 08/10/2009
`For: Programmable Communicator
`
`Group No.: 2612
`Examiner: Nguyen, Nam V.
`
`RESPONSE UNDER
`
`37 C.F.R. § 1.116
`EXPEDITED PR OCED URE
`
`EXAMINING GROUP
`
`26 1 2
`
`Mail Stop AF
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`AMENDMENT OR RESPONSE AFTER FINAL REJECTION--TRANSMITTAL
`
`1.
`
`Transmitted herewith is an amendment after final rejection (37 C.F.R. 1.116) for this application.
`
`STATUS
`
`2.
`
`Applicant is a small entity A statement Was already filed.
`
`EXTENSION OF TERM
`
`3.
`
`The proceedings herein are for a patent application and the provisions of 37 C.F.R. 1.136 apply.
`Applicant believes that no extension of term is required. However, this conditional petition is being
`made to provide for the possibility that applicant has inadvertently overlooked the need for a
`petition for extension of time.
`
`Page 15 of 445
`
`Amendment or Response After Final Rejection——page l of 2
`
`Page 15 of 445
`
`
`
`FEE FOR CLAIMS
`
`4.
`
`The fee for claims (37 C.F.R. 1.16(b)-(d)) has been calculated as shown below:
`
`(Col.1)
`CLAIMS
`REMAINING
`AFTER
`AMENDMENT
`
`(Col. 2)
`
`(Col. 3)
`
`SMALL ENTITY
`
`HIGHEST NO
`PREVIOUSLY PRESENT
`PAID FOR
`EXTRA
`
`RATE
`
`ADDIT.
`FEE
`
`TOTAL
`
`INDEP
`
`197
`
`4
`
`MINUS
`
`MINUS
`
`197
`
`7
`
`= 0
`
`= 0
`
`x $
`
`30.00
`
`x $
`
`125.00
`
`= $
`
`= $
`
`FIRST PRESENTATION OF MULTIPLE DEPENDENT CLAIM
`
`+ $
`
`0.00
`
`= $
`
`TOTAL
`ADDIT. FEE
`
`$
`
`0.00
`
`0
`
`0.00
`
`0.00
`
`*
`**
`***
`
`If the entry in Col. 1 is less than the entry in Col. 2, Write “O” in Col. 3,
`If the “Highest No. Previously Paid For” IN THIS SPACE (Column 2, Row 1) is less than 20, enter “20”.
`If the “Highest No. Previously Paid For” IN THIS SPACE (Column 2, Row 2) is less than 3, enter “3”.
`The “Highest No. Previously Paid For” (Total or Indep.) is the highest number found in the appropriate box in Col. 1 of a
`prior amendment or the number of claims originally filed.
`
`No additional fee for claims is required.
`
`Date: October 21, 2011
`
`01503/00113 l533554.l
`
`/Jonathan C. Lovely, #60,821/
`Jonathan C. Lovely
`Registration No. 60,821
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`
`Boston, MA 02110-1618
`617-443-9292
`Customer No. 02101
`
`Page 16 of 445
`
`Amendment or Response After Final Rejection ——page 2 of 2
`
`Page 16 of 445
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Appln. No.:
`Customer No.:
`
`Wesby-Van Swaay
`12/538,603
`02101
`
`Att’y Docket:
`Filing Date:
`Conf. No.:
`
`Examiner:
`Invention:
`
`Art Unit:
`Nguyen, Nam V.
`PROGRAMMABLE COMMUNICATOR
`
`1503/ 1 13
`August 10, 2009
`7693
`
`2612
`
`FILED BY USPTO ELECTRONIC FILING SYSTEM
`
`Mail Stop AF
`Commissioner for Patents
`
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`RESPONSE UNDER 37 C.F.R. §1.116-EXPEDITED PROCEDURE
`EXAMINING GROUP 2612
`
`Dear Sir:
`
`Applicants respectfully submit this Response to the Final Office Action dated
`
`October 14, 2011 and request that the following remarks be considered.
`
`Listing of the Claims are reflected in the listing of claims which begins on page 2 of this
`
`paper.
`
`Remarks/Arguments begin on page 35 of this paper
`
`Page 17 of 445
`
`Page 17 of 445
`
`
`
`Appl. No. 12/538,603
`Amendment dated October 21, 2011
`Reply to office action dated October 14, 2011
`
`LISTING OF THE CLAIMS
`
`1 — 220 (Cancelled)
`
`221. (Currently Amended) A programmable communicator device comprising:
`
`a wireless communications circuit for communicating through an antenna over a
`
`communications network;
`
`an identity module for storing a unique identifier that is unique to the
`
`programmable communicator device;
`
`a programmable interface for establishing a communication link with at
`
`least one monitored technical device;
`
`a processing module for authenticating an at least one transmission sent from a
`
`programming transmitter and received by the programmable communicator device, the at
`
`least one transmission including a coded number and at least one telephone number or
`
`Internet Protocol gIP1}P address corresponding to an at least one monitoring device,
`
`wherein the processing module authenticates the at least one transmission by determining
`
`if the at least one transmission contains the coded number, the processing module
`
`authenticating the at least one transmission if the transmission includes the coded
`
`number;
`
`a memory module for storing the at least one telephone number or IP
`
`address from the authenticated transmission as one of one or more permitted
`
`callers if the processing module authenticates the at least one transmission by
`
`determining that the at least one transmission includes the coded number; and
`
`wherein the at least one transmission from a programming transmitter
`
`comprises a Short Message Service gSMS1 an—S«MS data message, or a General
`
`Packet Radio Service gGPRS1G41PcS or other packet switched data message.
`
`222. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein the programmable interface is programmable via wireless
`
`transmissions.
`
`Page 18 of 445
`
`Page 18 of 445
`
`
`
`Appl. No. 12/538,603
`Amendment dated October 21, 2011
`Reply to office action dated October 14, 2011
`
`223. (Currently Amended) A programmable communicator device according to
`
`Claim 221 wherein the at least E on transmission from a programming
`
`transmitter comprises an SMS data message.
`
`224. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein the at least one transmission from a programming transmitter
`
`comprises a GPRS data message.
`
`225. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein each permitted caller has a corresponding stored telephone
`
`number or IP address from which the programmable communicator device is
`
`permitted to receive incoming transmissions for processing.
`
`226. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein each permitted caller has a corresponding stored telephone
`
`number or IP address to which the programmable communicator device is
`
`permitted to send outgoing transmissions.
`
`227. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein each permitted caller has a corresponding stored telephone
`
`number or IP address from which the programmable communicator device is
`
`permitted to receive incoming transmissions for processing, and to which the
`
`programmable communicator device is permitted to send outgoing transmissions.
`
`228. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein storing the at least one telephone number or IP address from
`
`the authenticated transmission as one of one or more permitted callers further
`
`entails changing, replacing, or reprioritizing one or more previously stored
`
`telephone numbers or IP addresses corresponding to one or more other permitted
`
`callers.
`
`Page 19 of 445
`
`Page 19 of 445
`
`
`
`Appl. No. 12/538,603
`Amendment dated October 21, 2011
`Reply to office action dated October 14, 2011
`
`229. (Previously Presented) A programmable communicator device according to
`
`Claim 221 configured to receive data through the programmable interface from an
`
`at least one monitored technical device.
`
`230. (Previously Presented) A programmable communicator device according to
`
`Claim 229 configured to process the data received through the programmable
`
`interface from the at least one monitored technical device.
`
`231. (Previously Presented) A programmable communicator device according to
`
`Claim 230, wherein the processing module processes the received data.
`
`232. (Previously Presented) A programmable communicator device according to
`
`Claim 229 further configured to request that an at least one monitored technical
`
`device send data through the programmable interface for receipt by the
`
`programmable communicator device.
`
`233. (Previously Presented) A programmable communicator device according to
`
`Claim 229 further configured to transmit the received data to an at least one
`
`monitoring device either periodically or in response to a request initiated by the at
`
`least one monitoring device.
`
`234. (Previously Presented) A programmable communicator device according to
`
`Claim 233, wherein the processing module causes the received data to be
`
`transmitted to the at least one monitoring device.
`
`235. (Previously Presented) A programmable communicator device according to
`
`Claim 233 further configured to determine Whether the data request initiated by
`
`the monitoring device includes a required access code.
`
`Page 20 of 445
`
`Page 20 of 445
`
`
`
`Appl. No. 12/538,603
`Amendment dated October 21, 2011
`Reply to office action dated October 14, 2011
`
`236. (Previously Presented) A programmable communicator device according to
`
`Claim 235, wherein the processing module determines whether the data request
`
`includes the required access code.
`
`237. (Previously Presented) A programmable communicator device according to
`
`Claim 230 further configured to request that an at least one monitored technical
`
`device send data through the programmable interface for processing by the
`
`programmable communicator device.
`
`238. (Previously Presented) A programmable communicator device according to
`
`Claim 230 further configured to transmit the processed data to an at least one
`
`monitoring device either periodically or in response to a request initiated by the at
`
`least one monitoring device.
`
`239. (Previously Presented) A programmable communicator device according to
`
`Claim 238, wherein the processing module causes the processed data to be
`
`transmitted to the at least one monitoring device.
`
`240. (Previously Presented) A programmable communicator device according to
`
`Claim 238 further configured to determine whether the data request initiated by
`
`the monitoring device includes a required access code.
`
`241. (Previously Presented) A programmable communicator device according to
`
`Claim 240, wherein the processing module determines whether the data request
`
`includes the required access code.
`
`242. (Previously Presented) A programmable communicator device according to
`
`Claim 230 wherein the received data is processed to determine whether it
`
`Page 21 of 445
`
`Page 21 of 445
`
`
`
`Appl. No. 12/538,603
`Amendment dated October 21, 2011
`Reply to office action dated October 14, 2011
`
`indicates a change in status of the at least one monitored technical device that
`
`crosses a threshold parameter, or that otherwise indicates an alarm condition.
`
`243. (Previously Presented) A programmable communicator device according to
`
`Claim 242 further configured to send an at least one transmission for alerting an at
`
`least one monitoring device of said change in status or other alarm condition.
`
`244. (Previously Presented) A programmable communicator device according to
`
`Claim 243, further comprising an alarm module for sending the at least one
`
`transmission for alerting the at least one monitoring device of said change in
`
`status or other alarm condition.
`
`245. (Previously Presented) A programmable communicator device according to
`
`Claim 221 configured to process an at least one data monitoring or data collection
`
`request contained in an at least one transmission received from an at least one
`
`monitoring device.
`
`246. (Previously Presented) A programmable communicator device according to
`
`Claim 245, wherein the processing module processes the at least one data
`
`monitoring or data collection request.
`
`247. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein the communications network is a cellular mobile
`
`telecommunications network.
`
`248. (Previously Presented) A programmable communicator device according to
`
`Claim 247 wherein the cellular mobile telecommunications network utilizes GSM
`
`air interface standards.
`
`Page 22 of 445
`
`Page 22 of 445
`
`
`
`Appl. No. 12/538,603
`Amendment dated October 21, 2011
`Reply to office action dated October 14, 2011
`
`249. (Previously Presented) A programmable communicator device according to
`
`Claim 247 wherein the cellular mobile telecommunications network utilizes
`
`CDMA air interface standards.
`
`250. (Previously Presented) A programmable communicator device according to
`
`Claim 222 wherein the wireless transmissions comprise transmissions compliant
`
`with Bluetooth wireless air interface standards.
`
`251. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein the coded number included in the at least one transmission is a
`
`unique identifier that is unique to the programmable communicator device.
`
`252. (Previously Presented) A programmable communicator device according to
`
`Claim 251 wherein the coded number that is unique to the programmable
`
`communicator device is associated with a user identity card utilized by the
`
`programmable communicator device to access a cellular mobile
`
`telecommunications network.
`
`253. (Previously Presented) A programmable communicator device according to
`
`Claim 221 wherein a user identity card utilized by the programmable
`
`communicator device to access a cellular mobile telecommunications network
`
`comprises the identity module for storing a unique identifier.
`
`254. (Currently Amended) A programmable communicator device according to
`
`Claim el-aim 253, wherein the user identity card is a Subscriber Identity Module
`
`(SIM) SJ-M card.
`
`255. (Currently Amended) A programmable communicator device according to
`
`Claim el-aim 221 wherein a user identity card utilized by the programmable
`
`communicator device to access a cellular mobile telecommunications network
`
`Page 23 of 445
`
`Page 23 of 445
`
`
`
`Appl. No. 12/538,603
`Amendment dated October 21, 2011
`Reply to office action dated October 14, 2011
`
`comprises the memory module for storing the at least one telephone number or IP
`
`address from the authenticated transmission.
`
`256. (Currently Amended) A programmable communicator device accordin
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