PTO/SB/57 (01-18)
`Approved for use through 09/3012018. 0MB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Papeiwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid 0MB control number.
`(Also referred to as FORM PTO-1465)
`REQUEST FOR EX PARTE REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Ex Parle Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.: 122905.174511
`
`Date: August 27, 2018
`
`issued April 29, 2014
`
`1. 00 This is a request for ex parte reexamination pursuant to 37 CFR 1.51 o of patent number 8,713,624 81
`D third party requester.
`ri:J patent owner.
`2. 00 The name and address of the person requesting reexamination is:
`Thomas J . Scott, Jr.
`Personalized Media Communications. LLC
`
`. The request is made by:
`
`3.
`
`4.
`
`11491 Sunset Hills Road, Suite 340, Reston. VA 20190
`
`Requester D asserts small entity status (37 CFR 1.27) or D certifies micro entity status (37 CFR 1.29). Only
`a patent owner requester can certify micro entity status. Form PTO/SB/1 SA or B must be attached to certify
`micro entity status.
`
`This request is accompanied by payment of the reexamination fee as set forth in:
`
`D 37 CFR 1.20(c)(2); or
`00 37 CFR 1.20(c)(1 ). In checking this box for payment of the fee set forth in 37 CFR 1.20(c)(1 ), requester
`
`asserts that this request has forty (40) or fewer pages and complies with all other requirements of
`37 CFR 1.20(c)(1 ).
`
`Payment of the reexamination fee is made by the method set forth below.
`
`a. D A check in the amount of$ _______ is enclosed to cover the reexamination fee;
`b. 00 The Director is hereby authorized to charge the reexamination fee
`c. D Payment by credit card. Form PTO-2038 is attached; or
`d. D Payment made via EFS-Web.
`00 In addition, the Director is hereby authorized to charge any fee deficiencies to
`
`to Deposit Account No. _5_0_-4_4_9_4 _______ _
`
`Deposit Account No. _S_0_-_44_9_4 _______ _
`
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`5. 00 Any refund should be made by Ocheck or [!]credit to Deposit Account No._5_0_-_44_9_4 ____ _
`6. 00 A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`7. D CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`D Landscape Table on CD
`
`enclosed. 37 CFR 1.510(b)(4).
`
`[Page 1 of 3]
`This collection of information is required by 37 CFR 1.510. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) a request for reexamination. Confidentiamy is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 18 minutes to
`complete. including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any
`comments on the amount of time you require to complete this form and/or suggestions for reducing this burden. should be sent to the Chief Information Officer, U.S.
`Patent and Trademark Office, U.S. Department of Commerce, P .O. Box 1450, Alexandria, VA 2.2313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO
`THIS ADDRESS. SEND TO: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`Jfyou need assistance in completing the form, ca/11-800-PTO-9199 and select option 2.
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 1
`
`

`

`PTO/SB/57 (01-18)
`Approved for use through 09/30/2018. 0MB 0651-0064
`U.S. Patent and Trademarll Office; U.S. DEPARTMENT OF COMMERCE
`Under the Pa eiwork Reduction Act of 1995, no ersons are re uired to res nd to a collection of information unless it dis la s a valid 0MB control number.
`
`If applicable, items a. - c. are required.
`
`b. Specification Sequence Listing on:
`
`8. D Nucleotide and/or Amino Acid Sequence Submission
`a. D Computer Readable Form (CRF)
`i. D CD-ROM (2 copies) or CD-R (2 copies) or
`ii. D paper
`c. D Statements verifying identity of above copies.
`9. D A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`10. [!] Reexamination of claim(s) _4 ________________________ is requested.
`11. [!] A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/SB/08, PTO-1449, or equivalent.
`12. D An English language translation of all necessary and pertinent non-English language patents and/or printed
`
`publications is attached.
`13. [!] The attached detailed request includes at least the following items:
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR 1.51 0(b)(1 ).
`
`b. An identification of every claim for which reexamination is requested , and a detailed explanation of the
`pertinency and manner of applying the cited art to every claim for which reexamination is requested.
`37 CFR1 .51 0(b)(2).
`
`14. ~ A proposed amendment is included (only where the patent owner is the requester). 37 CFR 1.51 0(e).
`15. D It is certified that the statutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do not
`
`prohibit requester from filing this ex parte reexamination request. 37 CFR 1.51 0(b)(6).
`
`16.
`
`Service
`
`a. D It is certified that a copy of this request (if filed by other than the patent owner) has been served in its
`
`entirety on the patent owner as provided in 37 CFR 1.33(c).
`
`The name and address of the party served are:
`
`Date of Service: ____________________________ _
`
`OR
`
`b. D A duplicate copy is enclosed since service on patent owner was not possible. An explanation of the
`
`efforts made to serve patent owner is attached. See MPEP 2220.
`
`[Page 2 of 3]
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 2
`
`

`

`. d
`f 995
`. A
`k R d
`U d
`h P
`n ert e
`apeiwor
`e uctton ct o 1
`, no persons are require
`
`PTO/SB/57 (01-18)
`Approved for use through 09/3012018. 0MB 0651 -0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`cl
`II
`.
`f ' f
`.
`I
`. d'
`I
`I'd 0MB
`I
`b
`to respon to a co ectIon o in onnatIon un ess it IspIays a va 1
`contro num er.
`
`17.
`
`Correspondence Address: Direct all communication about the reexamination to:
`
`~ The address associated with Customer Number: iso-4494
`
`I
`
`OR
`
`D Firm or Individual Name
`
`(at the address identified below)
`
`Address
`
`City
`
`Country
`
`State
`
`Zip
`
`Telephone
`
`Email
`
`18. D The patent is currently the subject of the following concurrent proceeding(s):
`a. D Copending reissue Application No.
`b. D Copending reexamination Control No.
`C. D Copending Interference No.
`d. D Copending litigation styled:
`
`WARNING : Informat ion on this form may become public. Credit card information should not be included on this
`form. Provide credit card information and authorization on PTO-2038.
`
`/Thomas J. Scott, Jr./
`Authorized Signature
`
`Thomas J. Scott, Jr.
`Typed/Printed Name
`
`August 27, 2018
`Date
`
`27,836
`Registration No.
`
`[j] For Patent owner Requester
`
`D For Third Party Requester
`
`[Page 3 of 3]
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 3
`
`

`

`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission
`of the attached form related to a patent application or patent. Accordingly, pursuant to the requirements of the Act, please
`be advised that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the
`information solicited is voluntary; and (3) the principal purpose for which the information is used by the U.S. Patent and
`Trademark Office is to process and/or examine your submission related to a patent application or patent. If you do not
`furnish the requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine your
`submission, which may result in termination of proceedings or abandonment of the application or expiration of the patent.
`
`The information provided by you in this form will be subject to the following routine uses:
`
`1 . The information on this form will be treated confidentially to the extent allowed under the Freedom of Information
`Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records may be disclosed
`to the Department of Justice to determine whether disclosure of these records is required by the Freedom of
`Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence to
`a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of
`settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a
`request involving an individual, to whom the record pertains, when the individual has requested assistance from
`the Member with respect to the subject matter of the record .
`4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having need
`for the information in order to perform a contract. Recipients of information shall be required to comply with the
`requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).
`5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of records
`may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property Organization ,
`pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of
`National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services,
`or his/her designee, during an inspection of records conducted by GSA as part of that agency's responsibility to
`recommend improvements in records management practices and programs, under authority of 44 U.S.C. 2904
`and 2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection of
`records for this purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not be
`used to make determinations about individuals.
`8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of
`the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record
`may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed
`in an application which became abandoned or in which the proceedings were terminated and which application
`is referenced by either a published application, an application open to public inspection or an issued patent.
`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
`enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulat ion.
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 4
`
`

`

`J 22905.1 745 l l
`
`page 1
`
`IN THE UNITED STATES PATENT AND TRADEMARK (}FF'J.CE
`
`Patent: 8,713,624 Bl
`
`Date of Issue: April 29, 2014
`
`Name of Patentee: John Christopher Harvey and. James \V1l1iam Cuddihy
`
`Title of lnvention: SIGNAL PROCESSING .t\.PP ARATUS AND METHODS
`
`August 27, 2018
`
`Mail Stop Ex parte REEXAI\,1
`Commissioner for Patents
`P.O. Box '1450
`Alexandria, VA 22313-1450
`
`lNFO.RMATION DISCLOSURE CERTfFTCA TION STATE.MENT
`
`Dear Sir:
`
`The attached Information Disclosure Statement ("IDS") Form PTO-SB-08A is submitted.
`
`with the concunent filing of a Request for Reexamination of-United States Patent number
`
`8,7B,624 Bl, which issued on April 29, 2014, to John Christopher Harvey and James
`
`William Cuddihy. This IDS is properly submitted under 37 C.F.R. § l.510(b)(3) and 37
`C·, 1~· R S 1 ~6
`. ~ ·-
`.
`.
`.
`
`The IDS lists prior art cited during Inter Partes Review of different family members of
`
`the instant patent. While some of these references are duplicative of a1t already listed on
`the face of U.S. Patent 8,713,624 Bl, this listing narrows the prior an to the references
`actually used in inter J>artes Review. Specifically, the following inter Par/es Review
`
`case numbers were used as a basis for collection of the prior mt listed on attached Form
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 5
`
`

`

`J 22905.1 745 l l
`
`page 2
`
`PTO-SB-08A: IPR2014-01527, 1PR2014-01528, IPR20 l.4-01530, IPR20J4-0 l.531,
`
`IPR2014-01532, 1PR2014-0:1533, TPR2014-01534, IPR20 l 6-00751, IPR2016-00753,
`
`IPR2016-00754, 1PR2016-00755, IPR2016-01520, lPR.2017-00288, 1PR2017-00289,
`
`1PR2017-00290, IPR2017-00291, IPR2017-00292, 1PR2017-00293, IPR2017-00294, and
`
`JPR20l7-00295. The 1983 aiiicle by Ea.r1y is provided solely for its historicaJ and
`
`technical description. Also, U.S. Patent No. 4,454,577 to Costantini et al. was brought to
`
`the Patent Owner' s attention dmi.ng licensing negotiations. The amended and newly
`
`added claims for wh.ich reexamination is requested ail have a Nov. 3, 1.981. priority date,
`
`and are supported by both U.S. Patent No. 4,694,490, and the instant continuation-in-part,
`
`U.S. Patent No. 8,713,624 Bl.
`
`Furtherrnore, family member patents oflJ S. Patent No. 8,713,624 Bl have been jnvolved
`
`in reexaminations. Specifically, the reexamination certificates (i.e., Cl ce1ti.ficates) may
`
`be found at the end of each of the fo11owing patent files listed on attached Form PTO-SB-
`
`08A: lJ.S. Patent No. 4,694,490; U.S. Patent No. 4,704,725; U.S. Patent No. 4,965,825;
`
`U.S. Patent No. 5,109,414; U.S. Patent No. 5,233,654; U.S. Patent No. 5,335,277; and
`
`U.S. Patent No. 5,887,243 .
`
`Also, family member patents of U.S. Patent No. 8,713,624 B1 have been involved. in
`
`Board of Patent Appeals and Interferences ("BPAI") decisions, Patent Trial and Appeal
`
`Board ("PTAB") decisions, dishi.ct court litigations and .Markman decisions, and
`
`1nterna6onaJ Trade Commission decisions. These references are listed ou attached Form
`
`PTO-SB-08A and detailed below.
`
`On June 30, 2008, the Board issued a Decision on Appeal in Appeal 2007-4004 regaJding
`
`U.S. Pat App. No. 06/829,531 merged with Appeal 2008-0334 regarding 1JS. Pat App.
`
`No. 06/3"17,510 in which the Boanl affinned the Examiner's rejection of claims 1.-5 of
`
`U.S. patent No. 4,704,725 and affirmed the Examiner's rejection of cl.aims 1-9 and 11 of
`
`U.S. patent No. 4,690,490. On December 19, 2008, the Board issued a Decision on
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 6
`
`

`

`J 22905.1 745 l l
`
`page 3
`
`Appeal in Appeal 2008-4228 regarding U.S. Pat App. No. 07/096,096 111 which the Board
`
`affirmed the Examiner's rejection of claims 14 and 18-25, and reversed the Examiner's
`
`rejections of claims 1, 2, and 15-17. On Januru-y 13, 2009, the Board issued a Decision
`
`on Appeal for related U.S. Pat App. No. 08/487526 (issued as U.S. Patent No.
`
`7,747,217), in Appeal 2007-2115. On. lvfarch 20, 2009, the Board issued a Decision on
`
`Appeal for related U.S. Pat App. No. 08/470,571 (issned as U.S. Patent No. 7,734,251),
`
`in Appeal 2007-l 837. On June 24, 2009, the Board issued a Decision on Request for
`
`Rehearing in Appeal 2007-1837. On January 1.9, 2010, the Board issued a Decision on
`
`Appeal in Appeal 2009-6825 regru·ding U.S. Pat App. No. 08/056,501 in which the Board
`
`affinned the Examiner's rejection of claims 2, 4, 6, 7, 10, 12, 13, 15, 17, 18, 30, 32-35,
`
`38, 44-52, and 56, and reversed the Examiner's rejections of claims 11, 14, 19, 20, 22,
`
`23, 27, 28, 41 , 42, and 55. On December :15, 2016, the Board issued a Decision on
`
`Appeal in Appeal 2016-002347 regarding lJ.S. Pat App. No. 08/447,611 in which the
`
`Board affirmed the Examiner's rejection. of clajms 41-58, 62-64, 66-88 and 95-136 and
`
`reversed the Examiner's rejections of claims 59-61, 65, and 89-94. On August 2, 2016,
`
`the Board issued a Decision on Appeal in Appeal 2015-005947 regarding U.S. Pat. App.
`
`No. 08i482,573 in which the Examiner's r~jectio.ns of claims 42-52 was affirmed. On
`
`January 4, 2017, the Board issued a Decision on Request for Rehearing of which denied
`
`modifying the August 2, 20] 6 Decision. On January 26, 2018, the Bo~u·d issued a
`
`Decision on Appeal in Appeal 2016-005574 regarding U.S. Pat App. No. 08/447,724 in
`
`which the Board affirmed the Examiner's rejection of claims 52-6 l, reversed the
`
`Examiner's rejections of claims 13-51, 62-74, 76-133, and newly rejected claims 13, 34,
`
`62, 77, 82, ll5, 126, and 133.
`
`U .S. Patent Nos. 4,965,825; 5,109,414; and 5,335,277 were asse1ted in the l.J.S. District
`
`Court, Eastern District of Virginia in the case styled Personalized lviass A1edia Corp. v.
`
`The Weather Channel, Inc. et al., Doc. No. 2:95cv242. The case was settled p1ior to any
`
`substantive decision by the Comt, although one procedural decision \Vas published at 899
`
`F .Supp. 239 (E.D. Va. 1995).
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 7
`
`

`

`J 22905.1745 l l
`
`page4
`
`U.S. Patent No. 5,335,277 ·was involved in the matter of Certain Digital Satellite System
`
`(DDS) Receivers and Components Thereof before the United States International Trade
`
`Commission ("Commission"), Investigation No. 337-TA-392. The Adminjstrative Law
`
`Judge ("AU")
`
`issued an "Initial Determination Granting .Motion for Summruy
`
`Determination of Invalidily of Claim 35 of the '277 Patent" on I\.1ay 16, 1997. This
`
`determination was appea1ed to the U.S. Court of Appeals for the Federal Circuit
`
`("Federal Circuit"), which affinned the Commission decision on Janum.y 7, 1999. The
`
`AU issued "Initial and Recommended Determinations" on October 31, 1997. The
`
`Commission adopted certain of the AU's findings and took no position on certain other
`
`issues in a "Notice Of Fina] Commission Determination Of No Violation. Of Section 337
`
`Of The Tariff Act Of 1930," dated December 4, ]997. This detennination was appealed
`
`to the Federal Circuit, ·wh.ich affinned-in-part, reversed-in-part, vacated-in-part, and
`
`remanded in a dec.ision decided November 24, J 998 published at 161 F.3d 696. On
`
`remand, the complainant moved to tem1inate the investigation. The Commission issued a
`
`"Notice Of Commission Decision To Te1minate The Investigation And To Vacate
`
`Portions Of The Initial Determination" on I\fay 13, 1999.
`
`U.S. Patent Nos. 4,965,825; 5,109,414 and 5,335,277 were asserted in the U.S. District
`
`Court, Northern DistTict of California in the case styled Personalized A1edia
`
`Communicaiiom, LLC v. Thomson Consumer l!,'iectronics et al. , Doc. No. C-96 20957
`
`S\V (EAI). The case was stayed during the Commission proceedings and was thereafter
`
`voluntarily dismissed by the plaintiffs. The Comt issued no substantive decisions.
`
`U.S. Patent Nos. 4,694,490, 4,965,825, 5,109,414, 5,233,654, 5335,277 and 5,887,243
`
`were asserted in the lJ.S. District Court~ District of Delaware in the case styled Pegasus
`Development Cotp. v. DIRECTV Inc., Doc. No. CA 00-1020 ("Delaware Action").
`
`Special Ivfaster Robe1t L. Harmon has issued a "Repo1t and Recommendation of Special
`
`Master Regarding Claim Construction." On March 29, 2003, Special Master Hannon
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 8
`
`

`

`J 22905.1 745 l l
`
`page 5
`
`issued a letter clarifying his report. The parties have settled this dispute and the Court
`
`has dismissed the suit.
`
`U.S. Patent Nos. 4,694,490, 4,704,725, 4,965,825, 5,109,414, 5,233,654, 5335,277 and
`
`5,887,243 were asserted in a suit in the U.S. District Court, No1tbem District of Georgia
`
`in the case styled Personalized A1edia Communications, LLC v. Scient({lc-Atlanta, Inc. et
`
`al., Doc. No. l:02-CV-824 (CAP) (''Atlanta Action"). The Court issued an order
`
`construing the claims at issue that adopts, with minor modifications, the Spedal lvfaster's
`
`Report and Recommendation construing the claim tenns disputed in that litigation. No
`
`fUither substantive ru.Jing were made by the Comi in this litigation as the Cowi has
`
`dismissed tbe case between the primmy paJties. A third-party has lost its appeal of the
`
`CoUit's dismissal of the third party's claim regarding a licensing issue w1related to
`
`patentability or infringement.
`
`U.S. Patent 5,335,277 is also asse1ted in the U.S. District Court, Eastern District of
`
`Texas, in Personalized A1edia Communications, L.L.C. v. Afotorofa, Inc. el al., Doc. No.
`
`2:08-CV-00070 (" Texas Action").
`
`The Court issued a September 30, 2011,
`
`i\.llemora.ndum Opinion and Order. This Order construes various claim tenns from the
`
`patents. This litigation was terminated with regard lvfotorola in 2011. The parties filed a
`
`stipulation of dismal with regard to EchoStar on i\1ay 27, 2015 and this case has been
`
`dismissed.
`
`Related U.S. Patents Numbers 7,734,251 ; 7,797,717; 7,860,131 and 7,908,638 were
`
`asserted in the Eastern District of Texas in Personalized Afedia Communications, LLC v.
`
`Zynga, Inc. (Case No. 2:12-CV-68-JRG- RSP). The Court construed. the claims at issue.
`
`Patents 7,734,25 l. and 7,908,638 vvere dismissed from the litigation prior to judgment. A
`
`directed verdict of no invalidi~v was entered with regard to tl1e claims at issue of the
`
`7,797,717 and 7,908,638 patents.
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 9
`
`

`

`J 22905.1 745 l l
`
`page6
`
`Related U.S. Patent Numbers 5,887,243; 7,783,252; 7,801,304; 7,805,749; 7,864,959;
`
`7,827,587 and 8,046,791 have been asserted in the District of Delaware in Persona/;zed
`
`lvfedia Communications, LLC v. Amazon.com inc.
`
`(Case No. l:13-CV-01608-RGA).
`
`The court dismissed this case on August 10, 2015, fi11ding all the claims of the asse1ted
`
`patents invalid under Section 101. The United. States Comt of Appeals for the Federal
`
`Circuit affinned tl1e district court wiiliout opinion on December 5, 2016.
`
`Personalized ,Vedia Communications, LLC v. Funai Electric Co., Ltd, Civil Action No.
`
`2:16-cv-00105-JR.G-RSP, was originally filed Februru.y 1, 2016 in the Eastern District of
`
`Texas. Magistrate Judge Roy Payne issued a Repmt and Recommendation on Febmary
`
`21, 2017, concluding that tbe asse1ied. claims of U.S. Patent Nos. 7,747,217, 7,752,649,
`
`7,752,650, 7,856,649, 8,675,775 and 8,711,885 recite patentable subject matter under 35
`
`U .S.C. § 101. The Texas District Court adopted Magistrate Judge Payne's Repmt and
`
`Recommendation on 1\tfarch JO, 2017, denying Funai's Motion to Dismiss. The case has
`
`been dismissed by agreement of the pruties.
`
`Personalized .1.\1edia Communications, LLC v. Apple, Inc., Civil Action No. 2: 15-cv-
`
`01366-JRG-RSP, filed July 30, 2015, vvith amended complaint filed October 14, 2015, is
`
`a patent infrjngement case pend.il1g in the Eastern District of Texas in which PMC asserts
`
`US Patent Nos. 7,752,649, 8,191,091, 8,559,635 and 8,752,088 against Apple's Digital
`
`Rights Management (DRM) technology. This action was consolidated with Civil Action
`
`No. 2:15-cv-01206-JRG-RSP ("Vizio case" discussed belovv) for pretrial pUJposes. On
`
`December 2, 2015, Apple moved to dismiss the case on grounds that the asserted patents
`
`did not claim patent eligible subject matter as required. by 35 USC § 101. On September
`
`13, 2016, the magistrate judge denied Apple's Motion. On September 28, 2016, the
`
`District Comt adopted the magistrate judge's report and recommendation. Two claim
`
`construction orders have been issued by Magistrate Judge Roy Payne. The claim
`
`co11strnction process was conducted in two phases. An Order issued October 25, 2016,
`
`addresses Phase I including issues regarding defendant Apple and those issues respecting
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 10
`
`

`

`J 22905.1 745 l l
`
`page 7
`
`defendant Vizio in the consolidate case common to the Apple case. The October 25,
`
`2016, order found claim t4 of U.S. Patent No. 8,752,088 to be definite under 35 U.S.C. §
`
`112. The case has been stayed pending the outcome of the IPR proceedings discussed
`be!m,v.
`
`Personalized 1vledia Communications, LlC v. Top Victory Electronics (J'aiwan) Co.,
`
`("Vizio Case") Civil Action No. 2:15-cv-1206-JRG-RSP, originally filed July 3, 2015,
`
`with amended complaint filed October 23, 2015, is a patent infringement case pending in
`
`the Eastern District of Texas in which P1,1C asserts U.S. Patent Nos. 7,747,217;
`
`7,752,649; 7,752,650; 7,856,649; 8,675,775 and 8,71:1,885 against High Definition
`
`Televisions (HDTVs) manufactured by the several manufacturing defend.ants, includjng
`
`Top Vict01y, for co-defendant, Vizio, Inc., which market the HDTV's in the United
`
`States. As discussed above, this case was consolidated with Civil Action No. 2: l.5-cv-
`
`01366-JRG-RSP for pre-tria1 purposes. An Order issued October 26, 2016, addressing
`
`claim construction issues exclusively related to defendants this case. This case against
`
`Vizio has been dismissed by agreement of the paiiies.
`
`Personalized ]vfedia Communications, LLC v. Samsung Electronics America, Inc., Civil
`
`Action No. 2:15-cv-o-1754-JRG-RSP, filed November 10, 2015, is a patent 1nfri11gement
`
`case pending in the Eastern District of Texas in ,vhich PMC asserts U.S. Patent Nos.
`
`7,747,217; 7,752,649; 7,752,650; 7,856,649; 8,675,775 and 8,71 l,885 against High
`
`Definition Televisions (HDTVs) and Sma.rtphones manufactured by Samsung and its
`
`affiliates. Ou, February 16, 2016, Samsung moved to dismiss the case on grounds that
`
`the asserted patents did not claim patent ehgible subject matter as required by 35 USC§
`
`101. On September 21, 2016, the magistrate judge recommended denial of Samsung's
`
`~1otion.
`
`On September 29, 2016,
`
`the Court adopted
`
`the magistrate judge's
`
`recommendation. The case has been dismissed by agreement of the paiiies.
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 11
`
`

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`J 22905.1 745 l l
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`page 8
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`The Defendants in the Delaware Action and the Atlanta Action submitted requests for
`
`reexamination for each of tlle following issued patents. The granted reexamination
`
`proceedings are as follows:
`
`U.S. Patent No. 4,694,490
`
`Control No. 90/006,800 in which the claims 10, 12 and 13 were confirmed and claims 1-9
`
`and 11 were cancelled. This proceeding ·was appealed to the Board of Patent Appeals and
`
`Interferences.
`
`U.S. Patent No. 4,704,725
`
`Control Nos. 90/006,697 a11d 90/006,841 merged proceeding 1n which all claims (1-5)
`
`were cancelled. This proceeding was appealed to the Board of Patent Appeals and
`
`Interferences.
`
`U.S. Patent No. 4,965,825
`
`Control No. 90i006,536 in which the patentability of claims 1-13 and 15-l.7 were
`
`confirmed and claims 14 and 18-25 were cancelled. This proceeding was appealed to the
`
`Board of Patent Appeals and Interferences.
`
`Control No. 90i010,709 in which the patentability of claim 17 was confirmed and claim
`
`15 was cancelled.
`
`Control No. 90/01 .1 ,274 in vvhich the patentability of daim 17 was confirmed.
`
`U.S. Patent No. 5,109,414
`
`ContTol No. 90i00G,838 i.n which the patentability of all claims ( l-26) were confirn1ed.
`
`This proceeding was appealed to the Board of Patent A ppeals and lnte1ferences.
`
`Contro] No. 90/0 l 1,016 in whjd1 the patentability of claims 1-7 \Vere confirmed.
`
`Control No. 90/01.1 ,744 in which the patentability of claims l , 2 and 5-l0 were
`
`confinned.
`
`Control No. 90/012,795 in wbjd1 the patentability of claims 23 and 24 were confirmed.
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 12
`
`

`

`J 22905.1 745 l l
`
`page 9
`
`U.S. Patent No. 5,233,654
`
`ContToJ Nos. 90/006,606, 90/006,703 and 90/006,839 merged proceedings in which the
`
`patentability of a1l cJaims (l-71) were confirmed.
`
`U.S. Patent No. 5,335,277
`
`Con1To1 Nos. 90/006,563, 90/006,698 in whjch the patentability of claims l, 3, 5, 8, 9, 11,
`
`12, 14, 16, 1-29, 31 , 36, 39-43 and 53-55 were confirmed and claims 2, 4, 6, 7, JO, 13,
`
`15, 17, 18, 30, 32-35, 38, 44-52 and 56 were cancelled. This proceeding was appealed to
`
`the Board of Patent Appeals and Interferences. On October t3, 2011, the United States
`
`Court of Appeals for the Federal Circuit affirmed the decision of the Boards without
`
`opinion in Appeal No. 2011-1158.
`
`Control No.90/01.1 ,904 in which the patentability of claim l.2 was confirmed.
`
`Control No. 90/0lJ ,992 in which the patentabiJity of claim 12 was confirmed.
`Control No. 90/012,830 in which the patentability of daim 11 was confirmed.
`
`U.S. Patent No. 5,887,243
`
`Control No. 90/006,688 in which the patentability of claims 1-13, 15, 16, 18-20, 37 and
`
`40 were confirmed and. claims 14, 17, 21-36, 38, 39 and 41-45 were cancelled. This
`
`proceeding was appealed to the Board of Patent Appeals and lnterferences.
`
`The Defendants in Personalized Af edia Communications, LLC v. Zynga, lnc. petitioned.
`
`for Inter Paries Review for issued patents 7,734,251; 7,797,717; 7,860,131 and
`
`7,908,638. The Patent Trial and Appeal Board issued decisions to institute an inter
`
`Panes Review proceediJ1g for each of these patents. The parties settled their dispute and.
`
`each of these proceedings were tenninated before the Board issued any further
`
`substantive decisions regarding claim interpretation.
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 13
`
`

`

`J 22905.1 745 l l
`
`page 10
`
`The defendant in Personalized lvfedia Communications, LLC v. Amazon.com inc.
`
`petitioned for !nter Partes Review of several related issued patents on September 22,
`
`2014. Decisions for lnstitntion of inter Partes Review of U.S. Patent Nos. 5,887,243
`
`(1PR2014-0l527); 7,783,252
`
`(IPR20 l4-01528\ 7,805,749
`
`(IPR2014-01533) and
`
`7,864,956 (IPR2014-0l530) were entered on March 26, 2015. Decisions for Institution
`
`of Inter Panes Review of U.S. Patent Nos. 7,801,304 (IPR2014-01532) and 7,827,587
`
`(lPR2014-01534) were entered on March 31, 2015. Decision for Institution of inter
`
`Partes Review of U.S. Patent No. 8,046,791 (JPR201.4-01531) was entered on April 2,
`
`2015. On May 4, 2015, the Board denied a Request for Rehearing on in 1PR2014-01528.
`
`On March 8, 2016, the Board issued a Final \,Vritten Decision in 1PR2014-01533 ordering
`
`tbat claims 2, '.3, 9- l'.3, 1.8, 24, 49, 52 and 53 of U.S. Patent No. 7,805,749 are
`
`tmpatentable. On March 22, 2016, the Board issued a Final Wdtten Decision in
`
`1PR2014-01534 order1ng that claim 9 of U.S. Patent No 7,827,587 .is unpatentable. On
`
`lvfarch 23, 20]6, the Board issued a Final \\Tritten Dec.ision in JPR2014-01527 ordering
`
`that claim 13 of lJ.S. Patent No. 5,887,243 is unpatentable. On March 23, 2016, the
`
`Boa.rd issued a Final \1/ritten Decision in IPR2014-0 l.528 ordering that claims 1-3, 5, 9-
`
`14, 18-23, 27-32, 36-41, 45, 46 and 50-52 of U.S. Patent No. 7,783,252 are unpatentable.
`
`On March 24, 20 l6, the Boa.rd issued a Final \,\Tritten Decision in IPR2014- 01530
`
`ordering that claim 6 of U.S. Patent No. 7,864,956 is unpatentable. On Nlarch 29, 2016,
`
`the Board issued a Final Written Decision in IPR2014-01532 ordering that claims 1, 11,
`
`16, 18, 22, 23 and 24 of U.S. Patent No. 7,801,304 are unpatentable. On April 1, 2016,
`
`the Board issued a Final \,\·ritten Decision in IPR20J4-01531 ordering that claims 18-20
`
`of U.S. Patent No. 8,046,791 are unpatentable. On Jnly 1, 2016, the Board denied
`
`rehearing of its decision in IPR2014-0l533 of related U.S. Patent No. 7,827,587. On July
`
`22, 2016, the Board denjed rehearing of its decision in IPR2014-01534 of related U.S.
`
`Patent No. 7,805,749. On August 31, 2016, the Board denjed rehearing of its decision in
`
`IPR2014-01527 of related U.S. Patent No. 5,887,243. On October 25, 20 ·16, the BoaJd
`
`issued a Decision denying the Patent Owner' s Rehearing Request with respect to the
`
`Final Written Decision in Inter Partes Revie\v 1PR2014-01528 regarding U.S. Patent No.
`
`PMC Exhibit 2146
`Apple v. PMC
`IPR2016-00754
`Page 14
`
`

`

`J 22905.1 745 l l
`
`page 1 J
`
`7,783,252. On November 25, 2016, the Board issued a Decision denying the Patent
`
`Owner' s Rehearing Request with respect to the Final \.Vritten Decision in Inter Partes
`
`Review IPR.2014-01532 regarding U.S. Patent No. 7,801,304. On December 5, 2016, the
`
`Board issued a Decision denying the Patent Owner's Rehearing Request v.rith respect to
`
`the Final \Vritten Decision in Inter Partes Review IPR2014-0l531 regarding U.S. Patent
`
`No. 8,046,791. On December 9, 201