IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Patent Application of:
`John C. Harvey et al.
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`Application No.: 08/485,507
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`Confirmation No.: 5691
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`Filed: June 7, 1995
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`Art Unit: 2467
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`For: SIGNAL PROCESSING APPARATUS AND
`METHODS
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`Examiner: Michael J. Moore, Jr.
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`INFORMATION DISCLOSURE STATEMENT (IDS)
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`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Dear Sir:
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`Prosecution of this application has been continued after being suspended since 2005.
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`This application was held in abeyance from examination by the Office pending final action in a
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`corresponding so-called "A" application, U.S. Patent Application Serial No. 08/474,145 (issued as
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`U.S. Patent 7,992,169 on August 2, 2011) as explained in the Supplemental Amendment filed April
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`11, 2011, in this application and in the Comments on Statement of Reasons for Allowance and
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`Amendment under 37 CPR§ 1.312 filed November 2, 2010 in the 08/474,145 application. During
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`the suspension, applicant filed no additional Information Disclosure Statements in this application.
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`However, additional Information Disclosure Statement were filed in Application Serial No.
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`08/474,145 and Applicants other copending "A" applications. This Information Disclosure
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`Statement cites the references of record in Application Serial No. 08/474,145 and Applicants other
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`"A" application, but are not yet of record in this application.
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`This application is a continuation of Application Serial No. 08/113,329 (issued as U.S.
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`Patent 7,856,650 on December 21, 2010), which is a continuation of Application Serial No.
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`08/056,501 (which issued as U.S. Patent 5,335,277 on August 2, 1994), which is a continuation of
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`Application Serial No. 07/849,226 (which issued as U.S. Patent 5,233,654 on August 3, 1993) with
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`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00755
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`Application No.: 08/485,507
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`Docket No.: PMC-Cl80
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`is a continuation of Application Serial No. 07 /096,096 (which issued as U.S. Patent 4,965,825 on
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`October 23, 1990), which is a continuation-in-part of Application Serial No. 06/829,531 (which
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`issued as U.S. Patent 7,704,725 on November 3, 1987), which in turn is a continuation of
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`Application Serial No. 06/317,510 (which issued as U.S. Patent 4,694,490 on September 15, 1987).
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`Numerous of Applicants' copending applications having the above priority claim (including this
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`application) share a specification with application 07 /096,096 and each of its descendent
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`applications. Of these copending applications, Application Serial No. 08/480,060 issued as U.S.
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`Patent 5,887,243 on March 23, 1999. On or subsequent to June 8, 2010, 53 of these co-pending
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`patents have issued, including applications 08/113,329 and 08/487 ,397 discussed above. Another
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`three applications have been allowed and the issue fee has been paid. Of note applications
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`008/470,571 (issued as U.S. Patent 7,734,251 on June 8, 2010) and 08/487,526 (issued as U.S.
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`Patent 7,747,217 on June 29, 2010) each issued as patent after appeal to the Board of Patent
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`Appeals and Interferences ("Board"). The decision in the '251 Application was issued on March
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`23, 2009, in Appeal 2007-1837 and a decision on rehearing was issued on June 24, 2009. The
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`decision in the '526 Application was issued January 13, 2009, in Appeal 2007-2115.
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`Each of the seven patents issued prior to June 8, 2010 have been subject to one or more
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`reexamination proceedings. These reexamination proceedings are summarized below and in the
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`chart attached as Appendix A. U.S. Patent 4,694,490 underwent reexamination in Reexamination
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`Control No. 90/006,800. The Examiner's rejections were appealed to the Board in Appeal 2008-
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`0334. The Board issued a decision on June 30, 2008. A decision on rehearing was issued on
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`December 18, 2008. Reexamination Certificate No. 4,694,490 Cl issued by the Board on June 23,
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`2009.
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`U.S. Patent 4,704,725 underwent reexamination in a merged proceeding of
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`Reexamination Control Nos. 90/006,697 and 90/006,841. The Examiner's rejections were appealed
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`to the Board in Appeal 2007-4044. The Board issued a decision on June 30, 2008. A decision on
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`rehearing was issued by the Board on December 18, 2008. Reexamination Certificate No.
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`4,704,725 Cl issued on June 16, 2009.
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`PMC Exhibit 2016
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`IPR2016-00755
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`Application No.: 08/485,507
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`Docket No.: PMC-Cl80
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`U.S. Patent 4,965,825 underwent reexamination in Reexamination Control No.
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`90/006,536. The Examiner's rejections were appealed to the Board in Appeal 2008-4228. The
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`Board issued a decision on December 19, 2008. A decision on rehearing was issued by the Board
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`on May 22, 2009. Reexamination Certificate No. 4,965,825 Cl issued on November 10, 2009.
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`Reexamination Certificate No. 4,965825 C2 issued on October 26, 2010 as result of a second
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`reexamination in Reexamination Control No. 90/010,709. A Notice of Intent to Issue
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`Reexamination Certificate confirming the patentability of the claim under reexamination has been
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`mailed in a third reexamination proceeding, Reexamination Control No. 90/011,274, regarding the
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`'825 Patent.
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`U.S. Patent 5,109,414 underwent reexamination in Reexamination Control No.
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`90/006,838. The Examiner's rejections were appealed to the Board in Appeal 2008-4864. The
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`Board issued a decision on January 7, 2009. Reexamination Certificate 5,109,414 Cl issued on
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`August 4, 2009. Reexamination Certificate 5,109,414 C2 issued on June 7, 2010, as a result of a
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`second reexamination in Reexamination Control No. 90/011,016. A third reexamination request for
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`reexamination assigned Reexamination Control No. 90/011,744 was granted on September 2, 2011
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`and is currently pending.
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`U.S. Patent 5,233,654 underwent reexamination in a merged proceeding of
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`Reexamination Control Nos. 90/006,606, 90/006,703 and 90/006,839. Reexamination Certificate
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`5,233,654 Cl issued February 17, 2009, as result of this proceeding.
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`U.S. Patent 5,335,277 is undergoing reexamination in a merged proceeding of
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`Reexamination Control Nos. 90/006,563 and 90/006,698. The Examiner's rejections were appealed
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`to the Board in Appeal 2009-6825. The Board issued a decision on January 19, 2010. A decision
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`on rehearing was issued on September 27, 2010. An appeal of the Board's decision was taken to the
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`U.S. Court of Appeals for the Federal Circuit ("Federal Circuit"). The Court affirmed the Board's
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`decision without opinion on October 13, 2011. A further reexamination request for reexamination
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`assigned Reexamination Control No. 901011,904 was granted on November 7, 2011, and is
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`currently pending. Yet another request for reexamination of the '277 Patent, filed November 1,
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`IPR2016-00755
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`Application No.: 08/485,507
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`Docket No.: PMC-Cl80
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`2011, has been assigned Reexamination Control No. 90/011,992 but no determination on the request
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`has yet been made.
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`U.S. Patent 5,887,243 underwent reexamination in Reexamination Control No.
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`90/006,688. The Examiner's rejections were appealed to the Board in Appeal 2008-4816. The
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`Board issued a decision on March 5, 2009. A decision on rehearing was issued on June 1, 2009.
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`Reexamination Certificate 5,887,243 Cl issued on October 13, 2009.
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`Applicants' issued patent have been asserted in several proceedings. U.S. Patents
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`4,965,825, 5,109,414 and 5,335,277 were asserted in the U.S. District Court, Eastern District of
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`Virginia in Personalized Mass Media Corp. v. The Weather Channel, Inc. et al., Doc. No.
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`2:95cv242 ("Virginia Action"). The case was settled prior to any substantive decision by the Court
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`although one procedural decision was published at 899 F.Supp. 239 (E.D. Va. 1995). The
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`procedural decision can be found in the Related Proceedings Appendices filed in each of the appeals
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`to the Board listed above, for example, with the Appeal Brief filed February 22, 2007, in
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`Reexamination Control No. 90/006,838.
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`U.S. Patent 5,335,277 was involved in the matter of Certain Digital Satellite System
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`(DDS) Receivers and Components Thereofbefore the United States International Trade Commission
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`("Commission"), Investigation No. 337-TA-392 ("ITC Investigation"). The Administrative Law
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`Judge ("ALJ") issued an "Initial Determination Granting Motion for Summary Determination of
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`Invalidity of Claim 35 of the '277 Patent" on May 16, 1997. This determination was appealed to
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`the Federal Circuit, which affirmed the Commission decision in a decision decided January 7, 1999.
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`The ALJ issued "Initial and Recommended Determinations" on October 31, 1997, The Commission
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`adopted certain of the ALJ' s findings and took no position on certain other issues in a "Notice of
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`Final Commission Determination Of No Violation Of Section 337 Of The Tariff Act Of 1930,"
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`dated December 4, 1997. The determination was appealed to the Federal Circuit, which affirmed(cid:173)
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`in-part, reversed-in-part, vacated-in-part, and remanded in a decision decided November 24, 1998,
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`and published at 161F.3d696, 48 U.S.P.Q.2d 1180. On remand, the complainant moved to
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`terminate the investigation. The Commission issued a "Notice of Commission Decision To
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`Application No.: 08/485,507
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`Docket No.: PMC-Cl80
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`Terminate The Investigation And To Vacate Portions Of The Initial Determination" on May 13,
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`1999. ). The ITC and Federal Circuit decisions can be found in the Related Proceedings
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`Appendices filed in each of the appeals to the Board listed above, for example, with the Appeal
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`Brief filed February 22, 2007, in Reexamination Control No. 90/006,838.
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`U.S. Patents 4,965,825, 5,109,414 and 5,335,277 were asserted in the U.S. District
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`Court, Northern District of California in Personalized Media Communications, LLC v. Thomson
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`Consumer Electronics et al., Doc No. C-96 20957 SW (EAi). The case was stayed during the
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`Commission proceeding and was thereafter voluntarily dismissed by the plaintiffs. The Court
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`issued no substantive decisions.
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`U.S. Patents 4,694,490, 4,965,825, 5,109,414, 5233,654, 5335,277 and 5,887,243 are
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`asserted in the U.S. District Court, District of Delaware in Pegasus Development Corp. v. DIRECTV
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`Inc., Doc. No. CA 00-1020 ("Delaware Action"). Special Master Robert L. Harmon issued a
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`"Report And Recommendation Of Special Master Regarding Claim Construction." On March 29,
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`2003, Special Master Harmon issued a letter clarifying his report. The Court has taken no further
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`action in this case as it has been stayed pending resolution of the reexamination proceedings. The
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`Harmon Report can be found in the Related Proceedings Appendices filed in each of the appeals to
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`the Board listed above, for example, with the Appeal Brief filed February 22, 2007, in
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`Reexamination Control No. 90/006,838. Materials that are not prior art, but reflect the parties
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`arguments related to the patents, can be found in the Information Disclosure Statement filed in the
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`reexamination proceedings on October 28, 2005.
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`Each of the patents issued prior to June 8, 2010 were asserted in the U.S. District Court,
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`Northern District of Georgia in the case styled Personalized Media Communications, LLC v.
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`Scientific-Atlanta, Inc. et al., Doc. No. 1 :02-CV-824 (CAP) ("Atlanta Action"). The Court issued
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`an order construing the claims at issue that adopts with minor modifications the Special Master's
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`Report and Recommendation construing the claim terms disputed in that litigation. The court has
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`dismissed this case. The defendants have appealed the dismissal. A third-party has appealed a
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`licensing issued unrelated to patentability or infringement The Markman Decisions can be found in
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`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00755
`Page 5
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`Application No.: 08/485,507
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`6
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`Docket No.: PMC-Cl80
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`the Related Proceedings Appendices filed in each of the appeals to the Board listed above, for
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`example, with the Appeal Brief filed February 22, 2007, in Reexamination Control No. 90/006,838.
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`Materials that are not prior art, but reflect the parties arguments related to the patents, can be found
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`in the Information Disclosure Statement filed in the reexamination proceedings on October 28,
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`2005.
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`U.S. Patents 4,694,490, 4,965,825, 5,109,414, 5233,654, 5335,277 and 5,887,243 are
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`also asserted in the U.S. District Court, Eastern District of Texas, in Personalized Media
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`Communications, L.L.C. v. Motorola, Inc. et al., Doc. No. 2:08-CV-00070 ("Texas Action"). The
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`Court issued the attached September 30, 2011, Memorandum Opinion and Order. This Order
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`construes various claim terms from the patents.
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`Prior art cited in the above proceeding prior to the suspension of this application have
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`previously been included in previously filed Information Disclosure Statements. This Information
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`Disclosure Statement includes the materials cited in the copending applications and reexamination
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`proceedings after the suspension of this application. In addition, materials recently cited in the
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`Texas Action are including in this Information Disclosure Statement.
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`Pursuant to 37 CPR 1.56, 1.97 and 1.98, the attention of the Patent and Trademark
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`Office is hereby directed to the references listed on the attached PTO/SB/08. The U.S. materials
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`listed from pages 1-21 (ending with RE 34,034 ), the foreign materials listed from pages 22-29
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`(ending with JP 61-267474) and the other documents listed from pages 25-62 (ending with the
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`memo to Bernie Kotten)are cited in applicants' related patents, either during the original
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`prosecution or during the reexamination proceedings. The U.S. materials listed on page 21 (starting
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`with U.S. Patent No. 3,982,062), the foreign materials listed on pages 24-25 (starting with JP 50-
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`091215) and the other documents listed on pages 62-70 (starting with "A Proposal to Construct a
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`Broadband Cable Communications System for Saint Paul) have been recently cited in the Texas
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`Action. It is respectfully requested that the information be expressly considered during the
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`prosecution of this application, and that the references be made of record therein and appear among
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`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00755
`Page 6
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`Application No.: 08/485,507
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`Docket No.: PMC-Cl80
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`the "References Cited" on any patent to issue therefrom. This Information Disclosure Statement is
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`filed before the mailing date of a Final Office Action or Notice of Allowance.
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`In accordance with 37 CPR l.98(a)(2)(ii), Applicant has not submitted copies of U.S.
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`patents and U.S. patent applications. Applicant submits herewith copies of foreign patents and non(cid:173)
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`patent literature in accordance with 37 CPR l.98(a)(2). A concise explanation of relevance of the
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`items listed on form PTO/SB/08 is given for foreign language references based the assertions made
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`in prior prosecution and litigation. Applicant has not fully reviewed all the statements made by
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`third parties when asserting art against related patents and, thus, provides these summaries for the
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`convenience of the Examiner's searches. Applicant will fully address the content of any reference
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`should it be applied in a rejection.
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`In accordance with 37 CPR l.97(g), the filing of this Information Disclosure Statement
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`shall not be construed to mean that a search has been made or that no other material information as
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`defined in 37 CPR l.56(a) exists. In accordance with 37 CPR l.97(h), the filing of this Information
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`Disclosure Statement shall not be construed to be an admission that any patent, publication or other
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`information referred to therein is "prior art" for this invention unless specifically designated as such.
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`It is submitted that the Information Disclosure Statement is in compliance with 37 CPR
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`1.98 and the Examiner is respectfully requested to consider the listed references.
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`Please charge our Credit Card in the amount of $180.00 covering the fee set forth in 37
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`CPR l. l 7(p ). The Director is hereby authorized to charge any deficiency in the fees filed, asserted
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`PMC Exhibit 2016
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`IPR2016-00755
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`Application No.: 08/485,507
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`Docket No.: PMC-Cl80
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`to be filed or which should have been filed herewith (or with any paper hereafter filed in
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`this application by this firm) to our Deposit Account No. 50-4494, under Order No. PMC-003Cl80.
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`Dated: December 22, 2011
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`Respectfully submitted,
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`By /Thomas J. Scott, Jr.I
`Thomas J. Scott, Jr.
`Registration No.: 27,836
`GOODWIN PROCTER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 346-4000
`Attorney for Applicant
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`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00755
`Page 8