IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`
`—————
`
`Case No.: IPR-2016-00755
`
`Patent No.: 8,191,091
`
`—————
`
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 ET SEQ.
`
`
`
`
`
`
`
`
`
`

`
`
`
`
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`
`REAL PARTY-IN-INTEREST
`The real party-in-interest is Personalized Media Communications, LLC.
`
`RELATED MATTERS
`The involved patent is asserted in:
` Personalized Media Communications, LLC v. Apple, Inc., U.S. District
`Court for the Eastern District of Texas, No. 2:15-cv-01366-JRG-RSP. Patent
`Owner’s related U.S. Patents 7,752,649; 8,559,635; and 8,752,088 are also asserted
`in this litigation. The Petitioner has petitioned for inter partes review of each of
`these patents.
`The involved patent is not before the Office in any other pending
`proceedings. No other patent or pending application claims the benefit of the
`actual filing date of the involved patent. The involved patent sets forth following
`Related U.S. Application Data:
`This is a continuation of application Ser. No. 08/113,329, filed Aug. 30,
`1993, now U.S. Pat. No. 7,856,650, herein incorporated by reference in its
`entirety, which is a continuation of application Ser. No. 08/056,501, filed
`May 3, 1993, now U.S. Pat. No. 5,335,277, which was a continuation of
`application Ser. No. 07/849,226, filed Mar. 10, 1992, now U.S. Pat. No.
`5,233,654, which was a continuation of application Ser. No. 07/588,126,
`filed Sep. 25, 1990, now U.S. Pat. No. 5,109,414, which was a continuation
`of application Ser. No. 07/096,096, filed Sep. 11, 1987, now U.S. Pat. No.
`4,965,825, which was a continuation-in-part of application Ser. No.
`06/829,531, filed Feb. 14, 1986, now U.S. Pat. No. 4,704,725, which was a
`continuation of application Ser. No. 06/317,510, filed Nov. 3, 1981, now
`U.S. Pat. No. 4,694,490.
`
`There are a number of issued patents and pending applications which, like
`the involved patent, were filed as continuations of application No. 08/113,329.
`These issued patents and pending applications are listed in Appendix A attached
`hereto.
`
`
`
`

`
`
`
`
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`Other patents from the same family as the involved patent have been
`involved in several judicial and administrative proceedings. These proceedings are
`listed in Appendix B attached hereto.
`LEAD AND BACK-UP COUNSEL
`Lead Counsel
`Backup Counsel
`
`Douglas J. Kline
`Registration No. 35574
`Goodwin Procter LLP
`53 State Street
`Boston, MA 02109
`Email: dkline@goodwinprocter.com
`Phone: 617-570-1209
`Fax: 617-649-1466
`
`Thomas J. Scott, Jr.
`Registration No. 27,836
`Vice President & General Counsel
`Personalized Media Communications,
`LLC
`11491 Sunset Hills Road, Suite 340
`Reston, Virginia 20190
`Email: tscott@pmcip.com
`Phone: (281) 201-2213
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`
`
`
`
`SERVICE INFORMATION
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`
`
`
`
`
`
`
`Respectfully submitted,
`By /Douglas J. Kline /
`Douglas J. Kline
`Registration No. 35574
`GOODWIN PROCTER LLP
`53 State Street
`Boston, MA 02109
`617-570-1000
`Attorney for Patent Owner
`
`Please address all correspondence to the Lead Counsel:
`
`Douglas J. Kline
`Goodwin Procter LLP
`53 State Street
`Boston, MA 02109
`Email: dkline@goodwinprocter.com
`Phone: 617-570-1209
`Fax: 617-649-1466
`
`Pursuant to 37 C.F.R. § 42.6(e), Patent Owner consents to electronic service
`by email at the email addresses listed above.
`
`Dated: April 4, 2016
`
`
`
`
`
`

`
`Appendix A
`
`
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 et seq.
`
`APPENDIX A
`The following patents and pending applications are continuations of
`Application No. 08/113,329. Abandoned continuation applications are omitted
`from this list.
`
`PATENTS
`ISSUE DATE
`March 23, 1999
`January 11, 2011
`August 3, 2010
`November 23, 2010
`December 28, 2010
`March 15, 2011
`January 4, 2011
`November 2, 2010
`December 28, 2010
`October 19, 2010
`December 7, 2010
`November 30, 2010
`October 19, 2010
`September 28, 2010
`November 9, 2010
`December 28, 2010
`September 21, 2010
`
`PATENT NO.
`5,887,243
`7,780,581
`7,769,170
`7,840,976
`7,861,263
`7,908,638
`7,864,248
`7,827,587
`7,860,249
`7,818,776
`7,849,493
`7,844,995
`7,818,778
`7,805,738
`7,831,204
`7,860,131
`7,801,304
`
`SERIAL NO.
`1. 08/480,060
`2. 08/486,258
`3. 08/446,431
`4. 08/447,712
`5. 08/511,491
`6. 08/477,547
`7. 08/488,383
`8. 08/459,521
`9. 08/441,701
`10. 08/473,484
`11. 08/446,553
`12. 08/482,857
`13. 08/479,374
`14. 08/466,894
`15. 08/397,636
`16. 08/480,392
`17. 08449,263
`
`
`
`

`
`Appendix A
`
`
`
`August 2, 2011
`May 29, 2012
`July 6, 2010
`October 26, 2010
`October 25, 2011
`June 7, 2011
`April 12, 2011
`May 10, 2011
`October 19, 2010
`March 12, 2013
`June 8, 2010
`December 7, 2010
`July 6, 2010
`February 15, 2011
`July 27, 2010
`June 29, 2010
`July 20, 2010
`January 4, 2011
`October 5, 2010
`August 10, 2010
`December 7, 2010
`August 3, 2010
`August 24, 2010
`May 31, 2011
`January 4, 2011
`September 7, 2010
`
`18. 08/474,145
`19. 08/485,507
`20. 08/460,711
`21. 08/470,051
`22. 08/460,770
`23. 08/477,711
`24. 08/459,788
`25. 08/487,411
`26. 08/478,544
`27. 08/460,081
`28. 08/470,571
`29. 08/452,395
`30. 08/449,097
`31. 08/474,964
`32. 08/459,522
`33. 08/487,526
`34. 08/477,805
`35. 08/444,758
`36. 08/459,216
`37. 08/487,397
`38. 08/447,447
`39. 08/442,383
`40. 08/447,908
`41. 08/448,251
`42. 08/483,169
`43. 08/498,002
`
`
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`7,992,169
`8,191,091
`7,752,650
`7,823,175
`8,046,791
`7,958,527
`7,926,084
`7,940,931
`7,817,208
`8,395,707
`7,734,251
`7,849,480
`7,752,649
`7,889,865
`7,764,685
`7,747,217
`7,761,890
`7,865,920
`7,810,115
`7,774,809
`7,849,479
`7,769,344
`7,783,252
`7,953,223
`7,864,956
`7,793,332
`
`

`
`Appendix A
`
`
`
`August 24, 2010
`December 21, 2010
`June 21, 2011
`November 16, 2010
`October 12, 2010
`November 9, 2010
`November 2, 2010
`October 19, 2010
`November 15, 2011
`December 28, 2010
`September 28, 2010
`September 28, 2010
`October 19, 2010
`October 15, 2013
`November 19, 2013
`November 12, 2013
`October 29, 2013
`December 3, 2013
`October 22, 2013
`October 15, 2013
`October 8, 2013
`December 17, 2013
`December 10, 2013
`December 31, 2013
`March 25, 2014
`January 28, 2014
`
`44. 08/447,974
`45. 08/449,523
`46. 08/487,410
`47. 08/474,146
`48. 08/469,612
`49. 08/448,644
`50. 08/472,066
`51. 08/487,536
`52. 08/445,328
`53. 08/444,788
`54. 08/448,326
`55. 08/485,283
`56. 08/479,215
`57. 08/441,027
`58. 08/480,059
`59. 08/449,901
`60. 08/445,296
`61. 08/478,908
`62. 08/460,793
`63. 08/449,413
`64. 08/487,556
`65. 08/474,674
`66. 08/475,341
`67. 08/442,165
`68. 08/487,649
`69. 08/487,428
`
`
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`7,784,082
`7,856,649
`7,966,640
`7,836,480
`7,814,526
`7,830,925
`7,827,586
`7,818,761
`8,060,903
`7,861,278
`7,805,748
`7,805,749
`7,818,777
`8,558,950
`8,587,720
`8,572,162
`8,572,671
`8,601,528
`8,566,868
`8,559,635
`8,555,310
`8,613,034
`8,607,296
`8,621,547
`8,683,539
`8,640,184
`
`

`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`8,635,644
`8,675,775
`8,646,001
`8,713,624
`8,739,241
`8,752,088
`8,711,885
`8,804,727
`8,869,229
`8,884,988
`8,839,293
`8,869,228
`8,914,825
`9,294,205
`9,038,124
`8,893,177
`8,973,034
`9,210,370
`9,043,859
`
`Appendix A
`
`
`
`70. 08/469,106
`71. 08/473,997
`72. 08/446,124
`73. 08/488,620
`74. 08/483,269
`75. 08/483,980
`76. 08/459,507
`77. 08/458,760
`78. 08/486,266
`79. 08/440,837
`80. 08/444,787
`81. 08/459,218
`82. 08/445,054
`83. 08/487,155
`84. 08/451,377
`85. 08/447,621
`86. 08/438,659
`87. 08/460,394
`88. 08/483,054
`
`January 21, 2014
`March 18, 2014
`February 4, 2014
`April 29, 2014
`May 27, 2014
`June 10, 2014
`April 29, 2014
`August 12, 2014
`October 21, 2014
`September 23, 2014
`September 14, 2014
`October 21, 2014
`December 16, 2014
`March 22, 2016
`May 19, 2015
`November 18, 2014
`March 3, 2015
`December 8, 2015
`May 26, 2015
`
`
`
`
`
`
`
`

`
`Appendix A
`
`
`
`PENDING APPLICATIONS
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`
`1. 08/441,996
`2. 08/447,611
`3. 08/480,383
`4. 08/460,592
`5. 08/482,573
`6. 08/447,724
`7. 08/470,476
`8. 08/437,937
`9. 08/442,507
`10. 08/449,110
`11. 08/449,702
`12. 08/469,078
`13. 08/472,980
`
`
`
`

`
`Appendix B
`
`
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 et seq.
`
`APPENDIX B
`The following patents from the same family as the involved patent have
`been involved in the following proceedings:
`U.S. Patent 4,94,490 was subject to an ex parte reexamination proceeding in
`which the certificate issued June 23, 2009.
`U.S. Patent 4,704,725 was subject to an ex parte reexamination proceeding
`in which the certificate issued June 16, 2009.
`U.S. Patent 4,965,825 has been subject to several ex parte reexamination
`proceedings with certificates issuing on November 10, 2009; October 26, 2010 and
`December 6, 2011.
`U.S. Patent 5,109,414 has been subject to several ex parte reexamination
`proceedings with certificates issuing on August 4, 2009; June 7, 2011 and July 10,
`2012, and June 3, 2014.
`U.S. Patent 5,233,654 was subject to an ex parte reexamination proceeding
`in which the certificate issued February 17, 2009.
`U.S. Patent 5,335,277 has been subject to several ex parte reexamination
`proceedings with certificates issuing on August 28, 2012; September 25, 2012;
`August 14, 2013; and October 23, 2013.
` U.S. Patent 5,887,243 was subject to an ex parte reexamination in in which
`a certificate issued on October 13, 2009.
`U.S. Patents 4,965,825; 5,109,414 and 5,335,277 were asserted in the
`U.S. District Court, Eastern District of Virginia in Personalized Mass Media Corp.
`v. The Weather Channel, Inc. et al., Doc. No. 2:95cv242 (“Virginia Action”). The
`
`
`
`

`
`
`
`Appendix B
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`case was settled prior to any substantive decision by the Court although one
`procedural decision was published at 899 F. Supp. 239 (E.D. Va. 1995).
`U.S. Patent 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
`(“ITC Investigation”). The Administrative Law Judge (“ALJ”) issued an “Initial
`Determination Granting Motion for Summary Determination of Invalidity of
`Claim 35 of the ’277 Patent” on May 16, 1997. This determination was appealed
`to the Federal Circuit, which affirmed the Commission decision in a decision
`decided January 7, 1999. The ALJ issued “Initial and Recommended
`Determinations” on October 31, 1997 that included various claim constructions.
`The Commission adopted certain of the ALJ’s findings and took no position on
`certain other issues in a “Notice of Final Commission Determination Of No
`Violation Of Section 337 Of The Tariff Act Of 1930,” dated December 4, 1997.
`The determination was appealed to the Federal Circuit, which affirmed-in-part,
`reversed-in-part, vacated-in-part, and remanded in a decision decided November
`24, 1998, and published at 161 F.3d 696, 48 U.S.P.Q.2d 1180. In that decision, the
`Federal Circuit held that the term “digital detector” was not subject to § 112(6).
`On remand, the complainant moved to terminate the investigation. The
`Commission issued a “Notice of Commission Decision To Terminate The
`Investigation And To Vacate Portions Of The Initial Determination” on May 13,
`1999.
`
`U.S. Patents 4,965,825; 5,109,414 and 5,335,277 were asserted in the U.S.
`District Court, Northern District of California in Personalized Media
`Communications, LLC v. Thomson Consumer Electronics et al., Doc No. C-96
`20957 SW (EAI). The case was stayed during the above ITC Investigation and was
`
`
`
`

`
`
`
`Appendix B
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`thereafter voluntarily dismissed by plaintiff. The Court issued no substantive
`decisions.
`U.S. Patents 4,494,490; 4,965,825; 5,109,414; 5,233,654; and 5,335,277
`were asserted in the U.S. District Court, District of Delaware in Pegasus
`Development Corp. v. DIRECTV Inc., Doc. No. CA 00-1020 (“Delaware Action”).
`Special Master Robert L. Harmon issued a “Report And Recommendation Of
`Special Master Regarding Claim Construction” on March 24, 2003. On March 29,
`2003, Special Master Harmon issued a letter clarifying his report. The suit was
`stayed in 2003 due to ex parte reexaminations filed against the patents. Following
`the issuance of reexamination certificates, the stay was lifted in 2011. The parties
`settled this dispute in 2013 and the Court dismissed the action.
`U.S. Patents 4,494,490; 4,704,725; 4,965,825; 5,109,414; 5,233,654; and
`5,335,277 were asserted in the U.S. District Court, Northern District of Georgia in
`the case styled Personalized Media Communications, LLC v. Scientific-Atlanta,
`Inc. et al., Doc. No. 1:02-CV-824 (CAP) (“Atlanta Action”). Special Master Gale
`Peterson issued his “Report and Recommendation on Claim Construction” on
`March 1, 2005. The Court issued an order on June 6, 2005, construing the claims at
`issue that adopted the report of Special Master Peterson with minor modifications.
`The case was stayed in 2009 based on pending ex parte reexaminations.
`Certificates later issued from each of the reexaminations. The Court dismissed a
`cross-claim filed by Gemstar in a decision later affirmed by the Court of Appeals
`for the Federal Circuit. PMC and Scientific-Atlanta settled the infringement suit in
`2011 and all claims between them were dismissed.
`U.S. Patents 4,965,825; 5,109,414; 5,233,654; 5,335,277 and 5,887,243
`are asserted in the U.S. District Court, Eastern District of Texas, in Personalized
`Media Communications, L.L.C. v. Motorola, Inc. et al., Doc. No. 2:08-CV-00070.
`The Court issued a September 30, 2011, Memorandum Opinion and Order. This
`
`
`
`

`
`
`
`Appendix B
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`Order construes various claim terms from the patents. PMC and Defendant
`Motorola settled in 2011, leading to Motorola’s dismissal from the suit. PMC and
`Dish Network/EchoStar settled in May of 2015.
`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 Media
`Communications, LLC v. Zynga, Inc., Case No. 2:12-CV-68-JRG- RSP. The Court
`construed the claims at issue in an order dated August 28, 2013. Patents 7,734,251
`and 7,860,131 were voluntarily dismissed from the litigation by PMC prior to
`judgment. A directed verdict of validity was entered with regard to the claims at
`issue of the 7,797,717 and 7,908,638 patents. A jury verdict issued on November
`19, 2013, with a finding of no infringement. The parties later dismissed the suit
`with prejudice. U.S. Patents Numbers 7,734,251; 7,797,717; 7,860,131 and
`7,908,638 were also subject to inter partes review as a result of petitions filed by
`Zynga, Inc.. IPR Case Nos. IPR2013-00156, IPR2013-00162, IPR2013-00164, and
`IPR2013-00171 were terminated prior to a decision on the merits by the Patent
`Trial and Appeal Board, in response to the parties’ joint request for termination
`due to settlement.
`Related US. Patent Numbers 5,887,243; 7,769,170; 7,801,304; 7,805,749;
`7,827,587; 7,864,956; 7,883,252; 7,940,931; and 8,046,791were asserted in
`Personalized Media Communications, LLC v. Amazon.com Inc., No. 1:13-cv-1608-
`RGA (D. Del. filed Sep. 23, 2013). On August 10, 2015, the Court granted
`Amazon’s motion to dismiss based on 35 U.S.C. § 101. PMC is currently
`appealing that decision to the Federal Circuit. U.S. Patent Numbers 5,887,243;
`7,783,252; 7,864,956; 8,046,791; 7,801,304; 7,805,749; and 7,827,587 were also
`subject to inter partes review as result of petitions filed by Amazon. Final
`decisions have been issued in IPR Case Nos. IPR2014-01527; IPR2014-01528;
`IPR2014-01530; IPR2014-01531; IPR2014-01532; IPR2014-01533; and IPR2014-
`
`
`
`

`
`
`
`Appendix B
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`01534, holding certain claims of U.S. Patent Numbers 5,887,243; 7,783,252;
`7,864,956; 8,046,791; 7,801,304; 7,805,749; and 7,827,587 to be unpatentable.
`
`Related United States Patent Numbers 7,747,217; 7,752,649; and 7,752,650
`were challenged in the District of Delaware in Funai Electric Co., Ltd. v.
`Personalized Media Communications, LLC, No. 1:15-cv-558-RGA (D. Del. filed
`June 29, 2015). The Court granted PMC’s motion to dismiss based on lack of
`personal jurisdiction on January 29, 2016.
`Related United States Patent Numbers 7,747,217; 7,752,649; 7,752,650;
`7,856,649; 8,675,775; and 8,711,885 are being asserted in the Eastern District of
`Texas in Personalized Media Communications, LLC v. Funai Electric Co., Ltd.,
`No. 2:16-cv-00105 (E.D. Tex. filed February 1, 2016). The matter is still pending.
`
`Related United States Patent Numbers 7,747,217; 7,752,649; 7,752,650;
`7,856,649; 8,675,775; and U.S. Patent No. 8,711,885 are being asserted against
`Top Victory Electronics (Taiwan) Co. Ltd.; TPV International (USA) Inc.;
`Envision Peripherals, Inc.; Top Victory Electronics (Fujian) Co., Ltd.; TPV
`Electronics (Fujian) Co. Ltd.; TPV Technology Ltd.; Hon Hai Precision Industry
`(Taiwan) Co., Ltd.; Wistron Corp.; Wistron Infocomm Technology (Texas) Corp.;
`Wistron Infocomm Technology (America) Corp.; and Vizio, Inc. in the Eastern
`District of Texas in Personalized Media Communications, LLC v. Top Victory
`Electronics (Taiwan) Co. Ltd., No. 2:15-cv-1206-JRG-RSP (E.D. Tex. filed July 1,
`2015). The matter is still pending.
`Related United States Patent Numbers 7,747,217; 7,752,649; 7,752,650;
`7,764,685; 7,769,344; 7,783,252; and 7,856,649 were challenged in the District of
`Delaware in LG Electronics, Inc. v. Personalized Media Communications, LLC,
`No. 1:15-cv-1096-RGA (D. Del. filed November 26, 2015). LG voluntarily
`dismissed the case on February 25, 2016.
`
`
`
`

`
`
`
`Appendix B
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`Related United States Patent Numbers7,747,217; 7,752,649; 7,752,650;
`
`7,856,649; 8,675,775; and U.S. Patent No. 8,711,885 are being asserted in the
`Eastern District of Texas, in Personalized Media Communications, LLC v.
`Samsung Electronics America, Inc., No. 2:15-cv-1754-JRG-RSP (E.D. Tex. filed
`November 10, 2015). The matter is still pending.
`
`
`
`
`

`
`
`
`
`
`IPR-2016-00755
`Patent No. 8,191,091
`Atty. Docket: 5634.304
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the:
`MANDATORY NOTICE BY
`PERSONALIZED MEDIA COMMUNICATIONS, LLC.
`UNDER 35 U.S.C. §§ 311-319; 37 C.F.R. §§42.8, 42.100 et seq.
`
`with Appendices A & B
`
`
`filed herewith was served on:
`Marcus E. Sernel & Joel R. Merkin
`KIRKLAND & ELLIS LLP
`300 North LaSalle Street
`Chicago, Illinois 60654
`P: 312.862.2000; F: 312.862.2200
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`
`
`pursuant to 37 C.F.R. § 42.8(b)(4) and the consent found in Section I.D of the
`Petition.
`
`
`
`Dated: April 4, 2016
`
`
`
`
`
`
`
`By:
`
`/Douglas J. Kline/