`
`US 5,954,781 K1
`(10) Number:
`United States Patent
`Slepian et al.
`(45) Certificate Issued:
`May 13, 2016
`
`(54) METHOD AND APPARATUS FOR
`OPTIMIZING VEHICLE OPERATION
`
`(75)
`
`Inventors: Harvey Slepian; Loran Sutton
`
`(73) Assignee: VELOCITY PATENT LLC
`
`Trial Number:
`
`IPR2014-01247 filed Aug. 4, 2014
`
`Petitioners:
`
`Mercedes-Benz USA, LLC;
`Mercedes-Benz US. International, Inc.
`
`Patent Owner: Velocity Patent, LCC
`
`Inter Partes Review Certificate for:
`
`Patent No.:
`Issued:
`Appl. No.:
`Filed:
`
`5,954,781
`Sep. 21, 1999
`08/813,270
`Mar. 10, 1997
`
`The results of IPR2014-01247 are reflected in this inter
`
`partes review certificate under 35 U.S.C. 318(b).
`
`UNIFIED 1009
`
`1
`
`UNIFIED 1009
`
`
`
`INTER PARTES REVIEW CERTIFICATE
`
`U.S. Patent 5,954,781 K1
`Trial No. IPR2014-01247
`
`Certificate Issued May 13, 2016
`
`1
`
`AS A RESULT OF THE IN'I'ER PARTES REVIEW
`PROCEEDING, IT HAS BEEN DETERMINED
`"HAT:
`
`
`
`Claims 31 and 32 are disclaimed.
`
`2
`
`
`
`Disclaimer
`
`5.954.781—Hurve Sle inn, Peoria lLéUbl); boran Sullon, East Peoria. IL (U87). METHOD AND APP/\-
`RATUS FOR OPT] 112]; G VEHJCLE
`PtRATlON. Patent dalcd September .1, 1999. Disclmmcr filed
`Dcccmhcr 10,2014. by the invcnlqrs.
`Hereby disclaim complete claims 31 and_32. of said patent.
`(Oficml Gazelle. Fem-111113124. 20/5)
`
`3
`
`
`
`Control No. 90/013252
`
`Docket No. 1089-001
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Confirmation No.
`
`:
`
`9999
`
`Control No.
`
`Patent No.
`
`:
`
`:
`
`90013252
`
`5,954,781
`
`: Harvey Slepian
`Applicant
`Reexam Filed: May 22, 2014
`Art Unit.
`:
`3992
`
`: David E. England
`Examiner
`Customer No.:
`88360
`
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`STATUTORY DISCLAIMER IN PATENT UNDER 37 C.F.R. 1.321(a)
`
`Sir:
`
`The Applicant hereby disclaims all of Applicant's rights in entirety of Claims
`
`31 and 32 in the above-identified patent.
`
`The present Statutory Disclaimer does not constitute any acquiescence by
`
`the Applicant with regard to the outstanding rejections
`
`in the pending
`
`Reexamination of the above-identified patent [Control No. 90/013252). Rather, the
`
`Applicant respectfully disagrees with all of the outstanding rejections and makes the
`
`present disclaimer without prejudice to Applicant's positions regarding the cited art
`
`references cited in those rejections.
`
`The undersigned is
`
`the attorney of
`
`record in the above-identified
`
`Reexamination and is thus authorized to sign the Statutory Disclaimer.
`
`4
`
`
`
`Control No. 90/013252
`
`Please charge the fee for this Disclaimer and any additional fees or credit to
`
`Deposit Account No. 505178.
`
`Respectfully subrraitted,
`
`RECHARDS PATENT LAW PC
`
`9mwe {3, KW%
`
`Patrick D. Richards
`
`Registration. M14890?)
`
`Please recegnize Custemer N9. 883%}
`as the correspondence address‘
`
`Richards Patent Law RC.
`
`233 S. Wacker 31"., 84““ Floor
`
`Chicago, ll. 60606
`Phone: (312) 2838555
`Bate: Beeember 10, 2014
`
`5
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`
`
`Electronic Acknowledgement Receipt
`
`20919583
`
`Confirmation Number:
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR OPTIMIZING VEHICLE OPERATION
`
`
`
`
`
`First Named Inventor/Applicant Name:
`
`HARVEY SLEPIAN
`
`——
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`TASD—B8542
`
`13:55:53
`Time Stamp:
`
`
`
`
`Application Type: Utility under 35 USC 111(a)
`
`Payment information:
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`Information:
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`Statutory disclaimers per MPEP 1490.
`
`1089-001StatutoryDisclaimer.
`
`chaAgbZAbebBSSS57e2008léan0ldd80
`aD47d
`
`6
`
`
`
`
`
`Total Files Size (in bytes) 61655
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`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
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`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
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`7
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`
`
`A0121 (6/90)
`
`Case: 1:13—cv—08416 Document #: 41 Filed: 10/21/14 Page 1 of 2 PagelD #2372
`
`
`
`COMMISSIONER OF PATENTS AND TRADEMARKS
`(USP'I'O)
`P-0- Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OF DETERMINATION OF AN ACTION 0R APPEAL
`REGARDING A COPYRIGHT
`
`In compliance with the Act of July 19, 1952 (66 Stat. 814; 35 U.S.C. 290) you are hereby advised
`that a court action has been filed on the following patenl(s) in the US, District Court:
`
`DOCKET
`13_cv_08416
`
`DATE FILED
`11/21/2013
`
`UNITED STATES DISTRICT COURT,
`NORTHERN DISTRICT OF ILLINOIS,
`EASTERN DIVISION
`
`PLAINTIFF
`
`DEFENDANT
`
`Velocity Patent LLC
`
`BMW of North America, LLC et al.
`
`DATE INCLUDED
`
`
`
`[
`
`]Cross Bill
`
`[
`
`PATENT
`
`
`
`
`In the above-entitled case, the following patent(s) have been included:
`
`INCLUDED BY
`'
`
`[
`]Amendment
`]Other Pleading
`[
`]Answer
`
`
`DATE OF PATENT
`PATENT NO.
`
`
`
`
`October 2] , 2014
`
`Thomas G. Bruton
`
`Maria G. Hernandez
`
`DEPUTY CLERK:
`
`8
`
`
`
`Case: 1:13-cv—08421 Document #: 45 Filed: 08/27/14 Page 2 of 2 PageID #:109
`
`A0 121 (6/90)
`
`COMMISSIONER OF PATENTS AND TRADEMARKS
`(VSPTO)
`
`REPORT ON THE
`
`REGARDING A COPYRIGHT
`
`,
`P-Q- Bf“ ”50
`Alexandrla. VA 22313—1450
`
`FILING OF DETERMINATION OF AN ACTION OR APPEAL
`
`In compliance with the Act ofJuly 19, 1952 (66 Stat. 814; 35 U.S.C. 290) you are hereby advised
`that a court action has been filed on the following patent(s) in the US. District Court:
`
`DOCKET NO.
`
`
`DATE FILED
`
`
`
`UNITED STATES DISTRICT COURT,
`NORTHERN DISTRICT OF ILLINOIS,
`
`EASTERN DIVISION
`
`
` 13 C 8421
`
`11/21/2013
`
`PLAIN'l'lFFS
`
`
`DEFENDANTS
`
`
`
`
`
`
`
`
`Velocity Patent LLC
`
`Jaguar Land Rover North America, LLC
`
`PATENT NUMBER
`
`DATE OF PATENT
`
`HOLDER OF PATENT OR TRADEMARK
`
`5,954,781
`
`9/21/1999
`
`Harvey Slepian
`
`
`
`
`
`in the above-entitled case, the following trademarks(s) have been included:
`
`
`
`
`
`DATE iNCLUDED
`
`PATENT NUMBER
`
`[
`
`JAmendment
`
`[
`
`JAnswer
`
`
`
`DATE OF PATENT
`
`
`
`INCLUDED BY
`
`
`
`
`[ eross Bill
`
`[
`
`JOther Pleading
`
`HOLDER OF PATENT OR
`TRADEMARK
`
`
`
`
`
`___
`
`
`__—
`
`
`
`ln the above—entitled case, the following decision has been rendered orjudgment ASEGRUE SCQRY:ATTEST
`‘
`THOMAS'GZ; UTQ _ CLERK
`
`
`
`DECISION/JUDGMENT
`
`CLERK
`(BY) DEPUTY CLERK
`
`THOMAS G. BRU'I'ON
`/s/ Thelma Murry-Sykes
`
`No‘biékfibér‘ 2232013
`
`9
`
`
`
`lndar {he Pa-rsrwm" Rfin‘uciinn Act (of 1995 no
`
`Rammmmow OR SiJWLEMENTAL
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`AWORNEY m REVGCATSGN or: 510ng OF
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`5,954.781
`7
`‘
`
`
`‘ Examiner Name
`
`
`David F. England
`
`“..“.~w~h.~»»wm‘mw»
`
`1089001
`Aitorney Docket No{s)r
`
`
`
`EXAMWATWN ANS PATENT
`
`
`
`
`
`
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`’
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`i
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`i. Power of Niamey. This form may be med to change the Power 0? Attamey in a reexamination or
`suppiememai examination pruceeding {0r muitipie pmceedings where merged}. This farm may aisu be used to
`change the Power of Attorney in the patent file; in such a case, a copy of ihis form wii‘i be Named in bath tin: patent
`fife and the» reexaminaiinn m suppiementai examination praceeding.
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`A. Revocation of Previous ine‘r 0f Atmmey.
`any‘ given:
`in the abavenidenfified reexamination or supplanemai examination premeding contra! mimiseris} [mare than
`(me may be changed oniy‘ ifthe praceedings are merged}.
`in the fiie of the ahowg-idm‘tified patent.
`
`i here-by remake aii previous patent owner aow9r5 oi'attomey‘ if
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`{mack 89TH bakes i5 change in BOTH the patent fiie anti the reexamina‘tian at supptementai examinatian
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`
`B. Designafim of vaer oi Niamey.
`B A Pawer of Attorney is submitted. herewith.
`DR
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`i hereby appciim Practitianeris) assaciamd with the Customer Number identified in the box at
`right 35 nay/bur arttorneyisi or agentis} in prosecute the praceedingisflpatent identified abwe
`and seiected in section IiAi, and to transact 351 business in the Umted States Patent and
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`
` 88360
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`t
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`3
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`0R
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`{3 I hereby appoint Practitioneris} named beiaw as myjour atmmevisi m agentis) ta prosecute the prO-ceeding{s}
`identified above. and to transact an business in the United States Patent and Trademark. Office connected
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`complete this form aadg‘or suggésstiu
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`Electronic Acknowledgement Receipt
`
`1 9499100
`
`Confirmation Number:
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR OPTIMIZING VEHICLE OPERATION
`
`
`
`
`
`First Named Inventor/Applicant Name:
`
`HARVEY SLEPIAN
`
`——
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`TASD—B8542
`
`08:54:14
`Time Stamp:
`
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`
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`Application Type: Utility under 35 USC 111(a)
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`Payment information:
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`Document Descri
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`13
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`hOQ3an§nnfi7hfidn§n§3drr47er937Prf'
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`
`STATEMENT UNDER 37 CFR 3.7316)
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`Applicant/Patent Owner: veIOCity Patent LLC
`
`Application No./Patent No.: 519541781
`Filed/Issue Date: September 21: 1999
`
`Titled: Method and Apparatus for Optimizing Vehicle Operation
`
`Velocity Patent LLC
`’ a limited liability company
`(Name of Assignee)
`(Type of Assignee, e.g.. corporation, partnership, university, government agency, etc.)
`
`states that, for the patent application/patent identified above, it is (choose one of options 1, 2, 3 or 4 below):
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`1.
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`The assignee of the entire right, title, and interest.
`
`2. D An assignee of less than the entire right, title, and interest (check applicable box):
`
`%. Additional Statement(s) by the owners
`|_| The extent (by percentage) of its ownership interest is
`holding the balance of the interest must be submitted to account for 100% of the ownership interest.
`
`I:] There are unspecified percentages of ownership. The other parties, including inventors, who together own the entire
`right, title and interest are:
`
`
`
`Additional Statement(s) by the owner(s) holding the balance of the interest must be submitted to account for the entire
`right, title, and interest.
`
`3. I: The assignee of an undivided interest in the entirety (a complete assignment from one of the joint inventors was made).
`The other parties, including inventors, who together own the entire right, title, and interest are:
`
`Additional Statement(s) by the owner(s) holding the balance of the interest must be submitted to account for the entire
`right, title, and interest.
`
`4. I: The recipient, via a court proceeding or the like (6.9., bankruptcy, probate), of an undivided interest in the entirety (a
`complete transfer of ownership interest was made). The certified document(s) showing the transfer is attached.
`
`The interest identified in option 1, 2 or 3 above (not option 4) is evidenced by either (choose m of options A or B below):
`
`A. D An assignment from the inventor(s) of the patent application/patent identified above. The assignment was recorded in
`the United States Patent and Trademark Office at Reel
`, Frame
`, or for which a copy
`thereof is attached.
`
`B.
`
`A chain of title from the inventor(s), of the patent application/patent identified above, to the current assignee as follows:
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`1. From; Harvey Slepian and Loran Sutton
`To: TAS Distributing Co., Inc.
`The document was recorded in the United States Patent and Trademark Office at
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`. or for which a copy thereof is attached.
`, Frame 0064
`Reel 008435
`
`2_ From. TAS Distributing Co., Inc.
`To: Velocity Patents LLC
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel 031635
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`, Frame 0364
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`, or for which a copy thereof is attached.
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`[Page 1 of 2]
`This collection of information is required by37 CFR3.78(b). The information is required toobtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentialityis governed by35 U.S.C. 122and 37 CFR1.11 and1.14. Thiscollection is estimated to take 12 minutes to complete, including
`gathering, preparing, and submittingthe 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 tothe Chief Information Officer, US. Patent and Trademark
`Office, US. Department of Commerce, PO. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESSSEND
`TO: Commissioner ior Patents, P.O. Box 1450, Alexandria, VA 22313-1450
`
`Ifyon need assistance in completing lheform, call I-800-PTO-9199 and select option 2.
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`
`PTO/AlA/QB (08-12)
`Approved for use through 01/31/2013. OMB 0651-0031
`US. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995. no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`STATEMENT UNDER 37 CFR 3.7316!
`
`To; Velocity Patent LLC
`3_ From; Velocity Patents LLC
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel 031635
`
`, Frame 0376
`
`, or for which a copy thereof is attached.
`To:
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`, Frame
`
`, or for which a copy thereof is attached.
`
`To:
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`, Frame
`
`, or for which a copy thereof is attached.
`
`To:
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`, Frame
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`, or for which a copy thereof is attached.
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`
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`Additional documents in the chain of title are listed on a supplemental sheet( ).
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`As required by 37 CFR 3.73(c)(1)(i). the documentary evidence of the chain of title from the original owner to the
`assignee was, or concurrently is being, submitted for recordation pursuant to 37 CFR 3.11.
`
`[NOTE: A separate copy (Le, a true copy of the original assignment document(s)) must be submitted to Assignment
`Division in accordance with 37 CFR Part 3, to record the assignment in the records of the USPTO. See MPEP 302.08]
`
`
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`The undersigned (whose title is supplied below) is authorized to act on behalf of the assignee.
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`/Patrick D. Richards/
`
`Signature
`
`Patrick Richards
`Printed or Typed Name
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`June 26, 2014
`
`Date
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`48905
`Title or Registration Number
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`[Page 2 of 2]
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`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that yoube given certain informationin connection with your
`submission of the attached form related to a patent application or patent. Accordingly, pursuant to the
`requirements of the Act, pleasebe advised that: (1)
`the general authority forthe collection of thisinformation is 35
`U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and(3) the principal purpose fonNhich the
`information isused by the US. Patent and Trademark Office is to process and/or examine your submission related
`to a patent applicationor patent.
`If you do not furnish the requested information,the US. Patent and Trademark
`Office may not be able to process and/or examineyour submission,which may result in termination of proceedings
`or abandonment of the applicationor expiration of the patent.
`
`The informationprovided by you in this form will be subject to the following routine uses:
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`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
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`A record from this system of records may be disclosed, as a routine use, to the public after either
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`151. Further, arecord 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
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`A record from thissystem of records may be disclosed, as a routine use, to a Federal, State, or local law
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`88360
`Richards Patent Law PC.
`233 s. Wacker W, 84th Floor
`Chicago, IL 60606
`
`UVTTET‘I STATES DEPARTMENT OF COM'MERCF}
`United States Patent and Trademark Office
`Addless. COMMISSTOWR FOR PATENTS
`PO Box 1450
`Alexandtiay‘hjgnia 22313-1450
`wwwusptogov
`
`
`
` APPLICATION NUMBER FILING OR 371(C) DATE FIRST NAVED APPLICANT ATTY. DOCKET NOJTITLE
`08/813,270
`03/ 10/ 1997
`HARVEY SLEPIAN
`TASD-BSS42
`CONFIRMATION NO. 3242
`POA ACCEPTANCE LETTER
`
`
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`l|lll|||||||||||||l|||Illllllllllllllllll|||l|||l|||||l|||||Ill||l||l|l||||||l||l|lll|
`00000006936 302
`Date Mailed: 07/02/2014
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`NOTICE OF ACCEPTANCE OF POWER OF ATTORNEY
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`This is in response to the Power of Attorney filed 06/27/2014.
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`The Power of Attorney in this application is accepted. Correspondence in this application will be mailed to the
`above address as provided by 37 CFR 1.33.
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`/j awhitfield/
`
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888—786-01 01
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`page 1 of 1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`MICHAEL S BUSH
`HAYNES AND BOONE LLP
`3100 NATIONSBANK PLAZA
`901 MAIN STREET
`DALLAS, TX 752023789
`
`UVTTED STATES DEPARTVIF‘NT 0F COM—MERGE
`United States Patent and Trademark Office
`Addl'ESS. COMMTSSTOVFIR FOR PATENTS
`P O Box 1450
`Alexandria) Yngnia 22313-1450
`wwwuspto.gov
`
`
`
` APPLICATION NUMBER FILING OR 371(C) DATE FIRST NAVED APPLICANT ATTY. DOCKET No./TITLE
`08/813,270
`03/10/1997
`HARVEY SLEPIAN
`TASD-BSS42
`CONFIRMATION NO. 3242
`POWER OF ATTORNEY NOTICE
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`
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`l|||l|||||||||||||||||IIHLIIIII|||II|||II|H|||l|||l|||||II||||||||U|||l||l||||||||l|||l|||
`00000006936 277
`
`Date Mailed: 07/02/2014
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`NOTICE REGARDING CHANGE OF POWER OF ATTORNEY
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`This is in response to the Power of Attorney filed 06/27/2014.
`
`- The Power of Attorney to you in this application has been revoked by the assignee who has intervened as
`provided by 37 CFR 3.71. Future correspondence will be mailed to the new address of record(37 CFR 1.33).
`
`/j awhitfield/
`
`
`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
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`page 1 of 1
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` AND CHANGE OF CDRRESPGN DEEQCE aDBRESS 5 Patent Numrser 5,954,781
`___________
`FGR REEXAMIMATEGN QR SfiPFLEMENTAL
`g Esca- miner Name
`David F.. England
`i
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`EXAMWA‘HSN AM) PfiTiNT 1089801 Atmrney Dmket Nags)
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`l. Fewer all Amara-key. This form may be used to the rigs: the Power {if Attarney in a reexamination gr
`supplemental eraminatien proceeding {or multiple proceedings when? marged}. This farm may arise: be used to
`change the Power 03‘ Attorney in the patent file; in such a case, a copy oi this form wili be placed in both tiw patent
`file and the» reexaminatian 9r supplemental examination procemfing.
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`A, Revocatian of Previous. Power 6f Attorney.
`any, given:
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`3 hereby remake all previous- patent nwner pnwem Glaucoma-y. if
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