Page 1 of 133
`
`Unified Patents Exhibit 1004
`
`

`
`A0 121 (6/90)
`
`(TOMMISSIONICR OF PATENTS AND TRADF..\/IARKS
`(USPTO)
`P'O- B0-I‘ 1450
`Alexandria, VA 22313-1450
`
`RI‘:I’0R'I‘ ON TIIE
`FILING OF I)ICTER.VlINATION OF AN ACTION OR AI’I’I‘1AI.
`RICGARI)ING A COPYRIGHT
`
`In compliance with the Act ol'July 19, 1952 (66 Stat. 814; 35 U.S.C. 290) you are hereby advised
`that at court action has been filed on the following patent(s) in the US. District Court:
`DATE FILED
`UNITED STATES DISTRICT COURT,
`NORTHERN DISTRICT OF ILLINOIS,
`
`DOCKET
`
`14 CV 7502
`
`9/26/14
`
`EASTERN DIVISION
`
`PLAINTIFF
`
`Qurio Holdings, Inc.
`
`DEFENDANT
`
`Di1'ecTV er a1
`
`INCLUDI-JD BY
`[
`] Amendment
`
`] Answer
`
`[
`
`] Cross Bill
`
`[
`
`1 Other Pleading
`PATFNT
`
`(‘,l.I-{RK
`
`Tliomtts (I. Bruton
`
`(BY) DEPUTY CLERK
`
`Marla“ Cowan
`
`Page 2 of 133
`
`

`
`UNITED STATES PATENT AND TRADEMARK OEEICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COM1\/IISS IONER FOR PATENTS
`P.O Box 1450
`Alexandria. Virginia 22313-1450
`www.uspto gov
`
`APPLICATION NO.
`
`11/270.293
`
`ISSUE DATE
`
`08/31/2010
`
`PATENT NO.
`
`7787904
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`1104-012
`
`8355
`
`74548
`
`7590
`
`08/11/2010
`
`Flasl1l’oint Technology and Withrow & Terranova
`100 Regency Forest Drive
`Suite 160
`Cary, NC 27518
`
`The projected patent number and issue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 1033 day(s). Any patent to issue from the above-identified application will
`include an indication of the adjustment on the front page.
`
`If a Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information
`Retrieval (PAIR) WEB site (http://pair.uspto. gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the
`Office of Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee
`payments should be directed to the Application Assistance Unit (AAU) of the Office of Data Management
`(ODM) at (571)-272-4200.
`
`APPLICANT(S) (Please see PAIR WEB site http://pair.uspto. gov for additional applicants):
`
`Alfredo C. lssa, Apex, NC;
`
`IR103 (Rev. 10/09)
`
`Page 3 of 133
`
`

`
`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mjjl Mail Stop ISSUE I-‘E1-I
`Commissioner for Parents
`P.0. Box 1450
`Alexandria, Virginia 22313-1450
`or Ea;
`(571)-273-2885
`through 5 should be completed when:
`INSTRUCTIONS: This form should be_used_t‘or transmitting the ISSUE FEE and _PUB_LlCA'l‘IOl~l FEE (if I'¢q|IIl:¢dL.eBIO(}I(S I
`current c
`cnec address as
`ilgsroprlllc. All further correspondence including the Patent advance orders and notification of maintenance REG will
`mailed to
`maintenance fee notifications.
`‘cared unless conecteg below or directed otherwise in Block I. by (a) specifying a new correspondence address; and/or (b) indicating it separate " El;-2 ADDRESS“ for
`
`=°ee'°~e=~e~°°ie=em-= W M ' e W we em»
`
`.
`,
`04/29/2010
`7590
`745‘!
`FlashPoint Technology and Withrow & Tcrranova
`109 Regency Forest Drive
`Suite I60
`Cary. NC 27518
`
`..."*°.....*;.:. ..';°::t.°..".:*.....''"*;.‘:.,:..;
`
`.::::.=, .«.::'.‘;.::.°.'.° %...:':;:.'.-' .3:
`pipers. Each additional paper such as an assignment or fomtal drawing. must
`ve its own certificate ofmailtng or transmission.
`9|’! Gill 0
`I
`1'1
`Ill‘
`flllilll I8 011
`C m
`{hi m
`T
`i
`'
`that this Fe
`s Transmiiial is being deposited with the United
`I hereby coi1il'
`§.‘i‘2t‘.°..-‘ssc‘2i“t‘.'» .§?‘§fai"'s‘1§§ i‘§.§.‘i5"a"‘r"i:“‘-
`..i'.‘i.'=§'s"‘.§i“v‘.§ "r1i‘5i.‘.‘i..“" i;'c‘£?.'.‘.’Ii§
`transmitted to the USl’TO( Tl) 273-2885. on the date indicated he ow.
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVBVITOII
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`1104-012
`Alfredo C. lssa
`I I/09/2005
`I I/270.29]
`TITLE OF INVENTION: PERSONAL AREA NETWORK HAVING MEDIA PLAYER AND MOBILE DEVICE CONTROLLING THE SAME
`
`8355
`
`APPLN. TYPE
`
`niinprovisioniil
`
`SMALL ENTITV
`N0
`
`ISSUE FEE IJUE
`SISIO
`
`PUBLICATION FEE DUE
`5300
`
`PREV. PAID ISSUE FEE
`$0
`
`TOTAL I-‘EI:'(S) DUE
`SI8I0
`
`DATE DUE
`
`O1I29.'20ltl
`
` We-S"BC'-ASS
`SMITH. SHEILA 1!
`26I7
`455-414 I00
`
`I. Chan
`ofeorrcspondence address or indication of "Fee Address" (37
`Cm U363)‘
`ndcnce address (or Change ofCorrespondence
`D Chan e ofcorrc
`EH22) muhcd‘
`Adams om PT
`El "l-‘cc Address‘ indication (or "Fee Address“ Indication rorm
`PTOISB/47: Rev 03-02 oririore recent) attached. Use of a Customer
`Number 1: required.
`
`2. For printing on the patent front page. list
`(l) the names of up to 3 registered patent attorneys
`or agents OR. altemattvely.
`(2).lhe name oh! single him (having as a member a
`registered altomey or agent) and the names ofup to
`2 re
`tered patent attomeys or agents. if no name is
`list
`. no name will be printed.
`
`| Withrow & Terranova, PLLC
`
`2
`3
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`PLEASE NOTE: Unless an assifnee is identified below, no assignec data will appear on the patent. If an assignee is identified below. the document has been filed for
`rccorilation as set forth in 37 CF 1| l. Completion ofihts foriii is NOT ii substitute for filing an assignment.
`t/t) NAM Ii OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`Qurio Holdings,
`Raleigh, North Carolina
`
`Inc,
`
`______:__
`Please check the appropriate assignee category or categories (will not be printed on the patent) 2 D Individual a Corporation or other private group entity D Government
`
`4a. The following l'ee(s) are submitted:
`Issue Fee
`Publication Fee (No small entity discount pcnnittcd)
`'3 "“""‘°° °"'“' " °'°°"‘°‘j——-—-
`5. Change in Entity Status (from status indicated above)
`D b. Applicant is no longer claiming SMALL ENTITY status. See 37 CFR l.27(g)(2).
`CI a. Applicant claims SMALL ENTITY status. Sc: 37 CFR L27.
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; ii registered attorney or agent; or the asaigtiec or other pony in
`interest as shown b the records oft United States P
`I and Trademark Office.
`
`4b. Payment of Foe(s): (Please first reapply any previously paid Issue fee shown above)
`D A check is enclosed.
`D Payment by credit card. Form PTO-2038 is attached.
`I5'§.1’3§§°n$§%i,‘fo“i:'°epos.”’'-'.".‘«"c"c'£',i.'}.‘i iéi’u‘i.."i.2’%°_=."c‘»°-"i“i“3"2" '°°E‘el:aiI‘.¥e‘i’.'.“é'}ft'r’§’e'o‘.’.’y°.t'i‘t'i$aé‘“i%nn).
`
`Authorized Signature
`
`Date ____‘_TulY 2 9 I
`
`2 0 1 0
`
`Typed or printed name
`R - Chad Bevins
`5 1 ' 4 6 8
`Registration No.
`‘lhis co_Icction ofinfonnatiqn is required It 37 CPR l.3l l. The infomtation is
`public which is to file (and by the I_JSP'l'O to proctfifl
`uircd to obtain or retain a benefit b t
`an application. Conlidentinlity is
`vemedizy 35 U.S.C. l22‘and 37 CFR Ltd.
`is collection is estimated to take I minutes to complete. including glIh¢I'ln§,J)l'q)aI’ll'lg,
`ndin upon the individual case. Any comments on the amount of time you require to com
`submitting the completed applicat on form to the USPTO. Time will v
`_
`pier:
`this fonn aiidlor su
`sttoris for reducing this burden. should be sent to t c
`ief In ormation Officer, U.S. Patent and Ti-ndci-iiarlt Ollice, US. Department ofcommcrce.
`.0.
`Box I450. Alex
`C. Vi
`inia 22313-I450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents. I’.O. Box 1450.
`Alexandria. Virginia 223i
`-1450.
`Under the Paperwork Reduction Act of I995. no persons are required to respond to it collection of infomiation unless it displays a valid OMB control number.
`
`PTOI.-85 (Rev. 08/07) Approved for use through 08/31/2010.
`
`OMB 065i-0033
`
`US. Patent and Trademark Office: U.S. DEPAIITMENT OF COMMERCE
`
`Page 4 of 133
`
`

`
`Electronic Patent Application Fee Transmittal
`
`Filing Date:
`
`09-Nov-2005
`
`ml‘ °f l""°"l'°"‘
`
`PERSONAL AREA NETWORK HAVING MEDIA PLAYER AND MOBILE DEVICE
`CONTROLLING THE SAME
`
`First Named Inventor/Applicant Name:
`
`Alfredo C. lssa
`
`Filer:
`
`R. Chad Bevins/Julie Smith
`
`Filed as Large Entity
`
`Utility under 35 USC 11 1 (a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`USD($)
`
`Basic Filing:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-lssuance:
`
`Utility Appl issue fee
`Publ. Fee— early,voluntary, or normal
`
`1501
`1504
`
`I
`
`l
`
`1
`
`l
`
`510
`
`300
`
`1
`
`1510
`
`300
`
`Page 5 of 133
`
`

`
`Description
`
`Extension-of-Time:
`
`Miscellaneous:
`
`Sub-Total in
`USD($)
`
`Total in USD ($)
`
`Page 6 of 133
`
`

`
`Electronic Acknowledgement Receipt
`
`8115421
`
`Confirmation Number:
`
`1-"le °f l'“’e""°"‘
`
`PERSONAL AREA NETWORK HAVING MEDIA PLAYER AND MOBILE DEVICE
`CONTROLLING THE SAME
`
`First Named Inventor/Applicant Name:
`
`Alfredo C. lssa
`
`Customer Number:
`
`74548
`
`Filer Authorized By:
`
`R. Chad Bevins
`
`Attorney Docket Number:
`
`1104-012
`
`Filing Date:
`
`09-NOV-2005
`
`Time Stamp:
`
`13:40:45
`
`Application Type:
`
`Utility under 35 USC 111(a)
`
`Payment information:
`
`Submitted with Payment
`
`PaymentType
`
`Payment was successfully received in RAM
`
`Deposit Account
`
`Authorized User
`
`yes
`
`Credit Card
`
`$1810
`
`501732
`
`BEV|NS,R. CHAD
`
`The Director ofthe USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
`
`Page 7 of 133
`
`

`
`Document
`Number
`
`Document Description
`
`Issue Fee Payment (PTO-85B)
`
`1104-012_|ssue_Fee_Transmitt
`a I .pdf
`
`Pages
`Multi
`Part l.zip (ifappl.)
`
`File Size(Bytes)/
`Message Digest
`100186
`
`85‘a2389a9ff95S9:-’l-I5-l8d538d-ICS1ac307
`c74f
`
`Warnings:
`
`Fee Worksheet (PTO-875)
`
`fee-info.pdf
`
`a7dI62e55I30103adc0602I06IeI2ea36ac16
`baa
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the 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.
`
`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/E0/903 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 of the International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Page 8 of 133
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CO)/Il\/[ERCE
`Uujleil States Patent and T["<ILIt‘]lI.d['k Office
`Address: COl\/I.\/IISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria. Virginia 22313-1430
`www usptn gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`74548
`
`7590
`
`04/29/2010
`
`FlashP0int Technology and Withrow & Terranova
`100 Regency Forest Drive
`Suite 160
`Cary’ NC 27518
`
`EXAIVIINER
`
`SMITH’ SHEILAB
`PAPER NIMBFR
`
`ART INT
`2617
`DATE MAILED: 04/29/2010
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAIVIED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`1104-012
`Alfredo C. Issa
`11/09/2005
`11/270,293
`TITLE OF INVENTION: PERSONAL AREA NETWORK HAVING MEDIA PLAYER AND MOBILE DEVICE CONTROLLING THE SAME
`
`8355
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PA ) ISSLJ: FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`NO
`
`$1510
`
`$300
`
`$0
`
`$1 8 10
`
`07/29/2010
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOVVED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAVVAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID VVITHIN THREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STATUTORY PERIOD CANNOT BE EXTENDED.
`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`VVILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOVV
`DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the SMALL ENTITY status shown above.
`
`If the SMALL ENTITY is shown as YES, verify your current
`SMALL ENTITY status:
`
`If the SMALL ENTITY is shown as NO:
`
`A. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`A. Pay TOTAL FEE(S) DUE shown above, or
`
`B. If the status above is to be removed, check box 5b on Part B -
`Fee(s) Transmittal and pay the PUBLICATION FEE (if required)
`and twice the amount of the ISSUE FEE shown above, or
`
`B. If applicant claimed SMALL ENTITY status before, or is now
`claiming SMALL ENTITY status, check box 5a on Part B - Fee(s)
`Transmittal and pay the PUBLICATION FEE (if required) and 1/2
`the ISSUE FEE shown above.
`
`II. PART B — FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USFTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee 1nust be clearly made, and delays in processing may occur due to the difficulty in recognizing
`the paper as an equivalent of Part B.
`
`III. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL—85 (Rev. 08/07) Approved for use Lhrough 08/31/2010.
`
`Page 1 of 3
`
`Page 9 of 133
`
`

`
`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.0. Box 1450
`Alexandria, Virginia 22313-1450
`or 1 (571)-273-2885
`through 5 should be completed where
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks 1
`ap ropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`in icated unless corrected below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "1-EE Al)l_)RESS" for
`maintenance fee notifications.
`CURRENT CORRESPONDENCE ADDRESS (No,e;USeE1oCk iforanyehangeofaddrgsg)
`
`_
`_
`04/29/2010
`7590
`74548
`Flf;lShPOlI1[ T6Cl’ll’lOlOgy and WIIHTOW & TBTFHUOV3
`100 Regency Forest Dnve
`Slllté 160
`
`Cary,’
`
`Note: A certificate of mailing can only be used for domestic mailings of the
`Fce(s) Transmittal. 1'his certificate cannot be used for any other accompanying
`ave its own certificate of mailing or transmission.
`papers. Each additional paper. such as an assignment or formal drawing, must
`.erti icate 0
`ai ing or
`ransmission
`C
`F
`I
`T
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`§é?if§s§ei’f‘?é iiizvaarr:§::;fia%:.:P::se:;3:,:::Sgee: ’2?‘iJJi$§‘f§1.-Vsilfiiii
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`
`(Deposilofs name)
`(Signature)
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAIVIED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`1104-012
`Alfredo C. Issa
`11/09/2005
`11/270,293
`TITLE OF INVENTION: PERSONAL AREA NETWORK HAVING MEDIA PLAYER AND MOBILE DEVICE CONTROLLING THE SAME
`
`8355
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PA ) ISSL1: FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`EXAMINER
`
`NO
`
`SMITH, SHEILA B
`
`$1510
`ART UNIT
`
`$300
`CLASS-SUBCLASS
`
`455—414100
`
`$0
`
`$1810
`
`07/29/2010
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CF 1 1.363).
`
`3 Change of correspondence address (or Change of Correspondence
`Address Orm PTO/SB/122) attached‘
`:1 "Fee Address" indication (or "Fee Address" Indication form
`’TO/SB/47; Rev 03-02 or more recent) attached. Use ofa Customer
`Number is required,
`
`2. For printing on the patent front page, list
`.
`.
`(l) the names of up to 3 registered patent attorneys
`or agents OR, alternatively.
`(2) the name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2_ registered patent attorneys or agents. If no name Is
`listed, no name will be prnited.
`
`2
`
`3. ASSIGNE3 NAVIE AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`If an assignee is identified below, the document has been filed for
`DLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent.
`rccordation as set forth in 37 CFR 3.11. Completion of this form is NOT a substitute for filing an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`Please check the appropriate as signee category or categories (will not be printed on the patent) : D lndividua D Corporation or other private group entity D Government
`
`4a. The following fee(s) are submitted:
`3 Issue Fee
`3 Publication Fee (No small entity discount permitted)
`3 Advance Order _ # of Copies
`
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`3 A check is enclosed.
`:1 Payment by credit card. Eorm P"O-2038 is attached.
`\
`:IThe Director is hereby authorized to charge the required fee(s), any deficiency, or credit any
`overpayment, to Deposit Account Number
`(enclose an extra copy of this form).
`
`5. Change in Entity Status (from status indicated above)
`:l b. Applicant is no longer claiming SMALL ENTITY status. See 37 CFR 1.27(g)(2).
`3 a. Applicant claims SMALL ENTITY status. See 37 CFR 1.27.
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown by the records of the United States Patent and Trademark Office.
`
`Authorized Signature
`
`Typed or printed name
`
`Date
`
`Registration No.
`
`This collection of information is required by 37 CFR 1.311. The information is re uircd 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 1.14. T is collection is estimated to take 12 minutes to complete, including gathering, preparing, and
`submitting the completed application form to the USPTO. Time will varv de endin upon the individual case. Any comments on the amount of time you require to com lete
`this form and/or suggestions for reducing this burden, should be sent to the C ief ln ormation Officer, U.S. Patent and Trademark Office, US. Department of Commerce, EP.O.
`Box 1450, Alexandria, Virginia 22313—1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450,
`Alexandria, Virginia 22313-1450.
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection ofinformation unless it displays a valid OMB control number.
`
`PTOI.-85 (Rev. 08/07) Approved for use through 08/31/2010.
`
`O\/[B 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 10 of 133
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CO)/IIVEERCE
`Uujletl States Patent and T["<lLlt‘]lI.d['k Office
`Address: COl\/13/IISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria‘ Virginia 22313-1430
`www usptn gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`11/270,293
`
`11/09/2005
`
`Alfredo C. lssa
`
`1104-012
`
`8355
`
`FlashPoint Technology and Withrow & Terranova
`100 Regency Forest Drive
`Suite 160
`Cary’ NC 27518
`
`EXAIVIINER
`
`SMITH’ SHEILAB
`PAPER NIMBFR
`
`ART INT
`2617
`DATE MAILED: 04/29/2010
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment to date is 793 day(s). If the issue fee is paid on the date that is three months after the
`mailing date of this notice and the patent issues on the Tuesday before the date that is 28 weeks (six and a half
`months) after the mailing date of this notice, the Patent Term Adjustment will be 793 day (s).
`
`If a Continued Prosecution Application (CPA) was filed in the above—identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information Retrieval
`(PAIR) WEB site (http://pair.uspto. gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of
`the Office of Patent Publication at
`l—(888)—786—0l01
`or
`(571)-272-4200.
`
`PTOL—85 (Rev. 08/07) Approved for use Lhrough 08/31/2010.
`
`Page 3 of 3
`
`Page 11 of 133
`
`

`
`_
`
`_
`
`_
`
`Application No.
`
`App|icant(s)
`
`11/270,293
`Examiner
`
`SHEILA B. SMITH
`
`ISSA, ALFREDO C.
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL—85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1. E This communication is responsive to amendment of 11/5/2008 .
`
`2. [XI The allowed claim(s) is/are 1-20.
`
`3. El Acknowledgment is made ofa claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`a) El All
`b) E] Some*
`c) D None
`of the:
`1. El Certified copies of the priority documents have been received.
`2. El Certified copies of the priority documents have been received in Application No. j
`3. El Copies ofthe certified copies ofthe priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`* Certified copies not received:
`
`Applicant has THREE MONTHS FROM THE “MAILING DATE” ofthis communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`4. D A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAM|NER'S AMENDMENT or NOTICE OF
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the oath or declaration is deficient.
`
`5. El CORRECTED DRAWINGS (as “replacement sheets”) must be submitted.
`(a) El including changes required by the Notice of Draftsperson’s Patent Drawing Review ( PTO-948) attached
`1) El hereto or 2) D to Paper No./Mail Date
`(b) I:I including changes required by the attached Examiner's Amendment / Comment or in the Office action of
`Paper No./Mail Date
`Identifying indicia such as the application number (see 37 CFR 1.84(c)) should be written on the drawings in the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).
`
`6. I:I DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. E Notice of References Cited (PTO-892)
`2. I:I Notice of Draftperson's Patent Drawing Review (PTO-948)
`
`3. El Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date
`4. El Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`5. El Notice of Informal Patent Application
`6. El Interview Summary (PTO-413),
`Paper No./Mail Date
`.
`7. El Examiner's Amendment/Comment
`
`8. El Examiner's Statement of Reasons for Allowance
`
`9. D Other
`
`/Dwayne D. Bostl
`Supervisory Patent Examiner, Art Unit 2617
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-06)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 2009051 1
`
`Page 12 of 133
`
`

`
`Notice of References Cited
`
`Document Number
`Country Code-Number-Kind Code
`
`Date
`MM.YYYY
`
`Application/Control No.
`
`11/270293
`Examiner
`
`App|icant(s)/Patent Under
`Reexamination
`ISSA ALFREDO C.
`Art Unit
`
`SHEILA B. SMITH
`
`2617
`
`Page 1 of1
`
`U.S. PATENT DOCUMENTS
`
`01-2009
`07-2007
`
`11-2004
`
`01-2005
`
`01-2007
`
`03-2007
`
`Elabbady et al.
`
`Van Rossum, Cedric
`Fadell et al.
`
`Hollstrom et al.
`
`Jung, Soon-ho
`Plastina et al.
`
`Document Number
`Country Code-Number-Kind Code
`
`FOREIGN PATENT DOCUMENTS
`
`_
`_
`,
`C|aSS'f'C3t'0n
`
`709/217
`709/229
`
`455/066.1
`
`455/556.1
`
`455/41.2
`
`434/308
`
`_
`_
`.
`C|aSS'f'cat'On
`
`‘A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademark Office
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20090511
`
`Page 13 of 133
`
`

`
`Index Of Claims
`
`Application/Control No.
`
`11270293
`
`Examiner
`
`SHEILA B SMITH
`
`App|icant(s)lPatent Under
`Reexamination
`
`ISSA, ALFREDO C.
`
`Art Unit
`
`2617
`
`I Cancelled
`Restricted
`
`Non-Elected
`
`Objected
`
`I:I Claims renumbered in the same order as presented by applicant
`
`0 '0>
`
`El
`
`El
`
`CLAIM
`
`——
`
`Final
`
`«/
`\
`
`
`Original 06/22/2008I1
` J'I-l>-Q)N
`
`\/
`
`J \
`
`/
`\/
`
`00)
`A O
`A A
`
`AAA01wk)
`
`2—
`2—
`14 2—J
`\/
`A 0')
`\/
`A N
`/V
`A 00
`
`OH
`
`2—
`2—
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. : 20080616
`
`Page 14 of 133
`
`

`
`Seafch NOTES
`
`Application/Control No.
`
`11270293
`
`Examiner
`
`SHEILA B SMITH
`
`App|icant(s)/Patent Under
`Reexamination
`
`ISSA, ALFREDO C.
`
`Art Unit
`
`2617
`
`SEARCHED
`
`455
`
`Subclass
`
`414, 556.1, 41.2
`updated search of class and subclass
`updated search of class and subclass
`
`Dwayne Bost
`
`Search Notes
`
`SEARCH NOTES
`
`Examiner
`S.S
`SS
`
`Examiner
`
`SS
`
`6/08
`7/9/08
`5/9/09
`
`Date
`
`7/8/08
`5/07/09
`
`INTERFERENCE SEARCH
`
`-
`414, 556-1, 41-2
`5/09/2009
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. : 20090511
`
`Page 15 of 133
`
`

`
`Issue Classification 11270293
`
`ISSA, ALFREDO c.
`
`Application/Control No.
`
`App|icant(s)/Patent Under Reexamination
`
`Examiner
`
`SHEILA B SMITH
`
`Art Unit
`
`2617
`
`ORIGINAL
`
`556.1
`
`SUBCLASS
`
`CLAIMED
`
`NON-CLAIMED
`
`INTERNATIONAL CLASSIFICATION
`
`1 /oo (2006.01.01)
`
`CROSS REFERENCE(S)
`
`SUBCLASS (ONE SUBCLASS PER BLOCK)
`41.3
`03on
`
`E
`
`Claims renumbered in the same order as presented by applicant
`
`CPA
`
`|:I
`
`T.D.
`
`R.1.47
`
`Final
`
`Original
`
`Final
`
`Original
`
`Final
`
`Original
`
`Final
`
`Original
`
`Final
`
`Original
`
`Final
`
`Original
`
`Final
`
`Original
`17
`18
`19
`20
`
`tOO0\l0>U1J>b>N
`
`G _
`
`k
`i\:
`(.2
`
`E O
`
`1
`O3
`
`/SHEILA B SMITHI
`
`Examiner.Art Unit 2617
`
`(Assistant Examiner)
`/Dwayne Bostl
`Supervisory Patent Examiner.Art Unit 2617
`
`(Primary Examiner)
`U.S. Patent and Trademark Office
`
`5/11/2009
`
`(Date)
`
`Total Claims Allowed:
`20
`
`05/13/2009
`
`O.G. Print C|aim(s)
`
`O.G. Print Figure
`
`(Date)
`
`1
`
`4
`Part of Paper No. 20090511
`
`Page 16 of 133
`
`

`
`PLUS Search Results for S/N 11270293, Searched Wed Apr 29 10:17:23 EDT 2009
`The Patent Linguistics Utility System (PLUS) is a USPTO automated search system
`for U.S. Patents from 1971 to the present PLUS is a query-by-example search system which
`produces a list of patents that are most closely related linguistically to the application
`searched. This search was prepared by the staff of the Scientific and Technical Information
`Center, SIRA.
`
`1 1270293
`
`5682075 79
`
`20070105588 99
`20080259043 99
`20070121545 81
`20090022120 81
`20090046677 81
`7120126 80
`7447180 80
`20030137966 80
`20050180385 80
`20050288069 80
`20060198353 80
`20070183360 80
`20080137600 80
`5652789 79
`5675567 79
`5828642 79
`5835588 79
`6047053 79
`4270698 79
`4387452 79
`4401871 79
`4412585 79
`4420277 79
`4519222 79
`4558731 79
`4612950 79
`4614091 79
`4757004 79
`4774905 79
`4856791 79
`4883688 79
`4957655 79
`5181 194 79
`5185968 79
`5269424 79
`5290330 79
`5310107 79
`5319621 79
`5331487 79
`5401945 79
`5420840 79
`5442706 79
`5448569 79
`5476172 79
`5513905 79
`5539658 79
`5581594 79
`5593352 79
`5682302 79
`
`Page 17 of 133
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of: Alfredo C. Issa
`Serial No. 11/270,293
`Filed: 11/09/2005
`For:
`PERSONAL AREA NETWORK HAVING MEDIA PLAYER AND MOBILE
`DEVICE CONTROLLING THE SAME
`
`Examiner: Sheila B. Smith
`Art Unit: 2617
`
`Mail Stop Amendment
`Commissioner for Patents
`PO Box 1450
`
`Alexandria, VA 22313-1450
`
`Sir:
`
`RESPONSE TO THE OFFICE ACTION MAILED AUGUST 5, 2008
`
`In response to the Office Action mailed August 5, 2008, the Applicant offers the
`
`following remarks. If any fees are required in association with this response, the Director is
`
`hereby authorized to charge them to Deposit Account 50-1732, and consider this a petition
`
`therefor.
`
`Page 18 of 133
`
`

`
`REMARKS
`
`The Applicant has carefully reviewed the Office Action mailed August 5, 2008
`
`(hereinafter “Office Action”) and offers the following remarks.
`
`Claims 1-20 were previously pending. No claims have been amended or cancelled. As
`
`Status ofthe Claims
`
`such, claims 1-20 remain pending.
`
`Rejection under § 103(a) — Lipasanen and Knox
`
`Claims 1-3, 10, 11, and 13-20 were rejected under 35 U.S.C. § 103(a) as being
`
`unpatentable over U.S. Patent Application Publication No. 2005/0097595 A1 to Lipsanen et al.
`
`(hereinafter “Lipsanen”) in View of U.S. Patent No. 6,757,913 B2 to Knox (hereinafter “Kn0x”).
`
`The Applicant respectfully traverses the rejection. According to Chapter M.P.E.P. § 2143.03, in
`
`order to “establish primafacie obviousness of a claimed invention, all the claim limitations must
`
`be taught or suggested by the prior art.” The Applicant submits that neither Lipsanen nor Knox,
`
`either alone or in combination, teaches every element recited in claims 1-3, 10, 11, and 13-20.
`
`Prior to addressing the rejection, a brief summary of one embodiment of the present
`
`invention as well as a brief summary of the primary reference, Lipsanen, may be beneficial. In
`
`general, in one embodiment of the present invention, a mobile device controls playback of
`
`content at a number of media devices. The mobile device includes a wireless communication
`
`interface for communicating with the media devices, a media database, and a control system
`
`including a media client. When the mobile device enters a Wireless Personal Area Network
`
`(WPAN) associated with a media device, the‘ media client of the mobile device communicates
`
`with the media device to obtain information describing the content residing at the media device
`
`and stores the information in the media database at the mobile device. Thereafter, when the
`
`mobile device is within the WPAN associated with the media device, the media database is used
`
`to select content to be played at the media device.
`
`In contrast, Lipsanen teaches a system (100) including a content receiver (1 10) and a
`
`number of wireless communication devices (WCDS) (120) located within a region (112) within
`
`which content played by the content receiver (110) can be consumed (e.g., viewed, heard, etc.)
`
`by users of the WCDS (120). When the users of the WCDS (120) enter the region (112), the
`
`Page 19 of 133
`
`

`
`WCDs (120) provide access rights (e. g., ages) of the users of the WCDs (120) to the content
`
`receiver (110) via a wireless communication interface such as a Bluetooth or radio frequency
`
`identification (RFID) interface. The content receiver (110) then controls access to con