a2) INTER PARTES REVIEW CERTIFICATE (133rd)
`United States Patent
`(10) Number:
`US 5,954,781 K1
`
`Slepianetal. (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 U.S. 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).
`
`1
`
`UNIFIED 1009
`
`1
`
`UNIFIED 1009
`
`

`

`INTER PARTES REVIEW CERTIFICATE
`US. Patent 5,954,781 K1
`Trial No. IPR2014-01247
`Certificate Issued May 13, 2016
`
`1
`
`AS A RESULTOFTHE INTER PARTES REVIEW
`PROCEEDING, IT HAS BEEN DETERMINED
`THAT:
`
`
`
`Claims 31 and 32 are disclaimed.
`
`2
`
`

`

`Disclaimer
`
`IL US), Loran Sutton, East Peoria, IL (US), METHOD AND APPA-
`5,954,781—Harvey Slepian, Peoria,
`RATUS FOR OPTIMIZING VEHICLE
`OPERATION.Patent dated September 21, 1999. Disclaimer filed
`December10, 2014, by the inventors.
`Hereby disclaim complete claims 31 and 32, ofsaid patent.
`(Official Gazerte, February 24, 20/5)
`
`3
`
`

`

`Control No. 90/013252
`
`Docket No. 1089-001
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARKOFFICE
`
`Confirmation No.
`
`:
`
`9999
`
`90013252
`:
`Control No.
`5,954,781
`:
`PatentNo.
`: Harvey Slepian
`Applicant
`Reexam Filed: May 22,2014
`Art Unit.
`:
`3992
`Examiner
`: David E. England
`Customer No.:
`88360
`
`Commissionerfor Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`STATUTORY DISCLAIMER IN PATENT UNDER37 C.F.R. 1.321(a)
`
`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 andis 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 submitted,
`
`RICHARDS PATENT LAW PC
`
`Rank O Biba
`
`Patrick D. Richards
`Registration. No. 48,905
`
`Please recopnize Customer No. 88360
`as the correspondence address.
`
`Richards Patent LawP.C.
`233 5. Wacker Dr,, 64" Floor
`Chicago, IL 60606
`Phone: (312) 283-8555
`Date: December 16, 2014
`
`5
`
`

`

`Electronic Acknowledgement Receipt
`
`20919583
`
`Confirmation Number:
`
`
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR OPTIMIZING VEHICLE OPERATION
`
`
`
`First Named Inventor/Applicant Name:
`
`HARVEY SLEPIAN
`
`a F
`
`iler Authorized By:
`
`Attorney Docket Number:
`
`TASD-B8542
`
`13:55:53
`Time Stamp:
`
`
`
`
`Application Type: Utility under 35 USC 111(a)
`
`Paymentinformation:
`
`Pages
`Multi
`File Size(Bytes)/
`DocumentDescription
`Document
`
`
`
`Number Message Digest|Part/.zip|P (if appl.)
`
`Statutory disclaimers per MPEP 1490.
`
`1089-001StatutoryDisclaimer.
`pdf
`
`bc0a49b24b2bba58557e2008f6a9dOfdd80}
`al47d
`
`Information:
`
`6
`
`

`

`
`
`Total Files Size (in bytes) 61655
`
`This AcknowledgementReceipt evidences receipt on the noted date by the USPTOof the indicated documents,
`characterized by the applicant, and including page counts, where applicable.It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`
`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfor a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shownon this
`Acknowledgement Receiptwill establish thefiling date of the application.
`
`National Stage of an International Application under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT/DO/EO/903indicating acceptance of the application asa
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary componentsfor
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
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`
`7
`
`

`

`Case: 1:13-cv-08416 Document#: 41 Filed: 10/21/14 Page 1 of 2 PagelD #:372
`
`COMMISSIONER OF PATENTS AND TRADEMARKS
`(USPTO)
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORTON THE
`FILING OF DETERMINATION OF AN ACTION OR APPEAL
`REGARDING A COPYRIGHT
`
`In compliance with the Act of July 19, 1952 (66 Stat. 814; 35 U.S.C. 290) you arc hereby advised
`that a court action has been filed on the following patent(s) in the U.S, District Court:
`
`DOCKET
`13-cv-08416
`
`DATE FILED
`11/21/2013
`
`UNITED STATES DISTRICT COURT,
`NORTHERN DISTRICT OF ILLINOIS,
`EASTERN DIVISION
`
`PLAINTIFF
`
`Velocity Patent LLC
`
`DEFENDANT
`BMWofNorth America, LLC et al.
`
`EE
`
`5,954,781
`
`Sept. 21,1999
`
`Harvey Slepian and Loran Sutton
`
`AO 121(6/90)
`
`
`PATENT
`
`In the above-entitled case, the following patent(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`[
`] Amendment
`
`[
`
`] Answer
`
`[
`
`] CrossBill
`
`[
`
`] Other Pleading
`
`PATENT NO.
`
`DATE OF PATENT
`
`In the above-entitled case, the following decision has been rendered or judgment issued:
`
`DECISION/JUDGMENT:
`
`October 21, 2014
`
`DEPUTY CLERK:
`
`DATE:
`
`Thomas G. Bruton
`
`Maria G. Hernandez
`
`8
`
`

`

`Case: 1:13-cv-08421 Document#: 45 Filed: 08/27/14 Page 2 of 2 PagelD #:109
`
`AO 121 (6/90)
`
`REGARDING A COPYRIGHT
`
`COMMISSIONER OFPATENTS AND TRADEMARKS
`(USPTO)
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORI ON THE
`FILING OF DETERMINATION OF AN ACTION OR APPEAL
`
`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 patent(s) in the U.S. District Court:
`
`
`
` DOCKET NO.
`UNITED STATES DISTRICT COURT,
`DATE FILED
`NORTHERN DISTRICT OF ILLINOIS,
`
`
` 13 C 8421
`
`EASTERNDIVISION
`
`11/21/2013
`
`
`
`
`
`
`
`
`
`
`PLAINTIFFS
`Velocity Patent LLC
`
`DEFENDANTS
`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:
`
`
`
`
`
`[| ] Amendment=[| J Answer [ } Cross Bill [ J] Other Pleading
`
`
`
`
`
`
`
`
`
`
`
`DATE INCLUDED
`INCLUDED BY
`
`
`
`
`
`
`
`
`
`
`PATENT NUMBER
`
`DATE OF PATENT
`
`HOLDER OF PATENT OR
`TRADEMARK
`
`
`po
`
`
`ER
`
`
`
`In theabove-entitled case, the following decision has been rendered or judgment AsiaUE COPY-ATTEST
`THOMAS'G..
`
`
`
`DECISION/JJUDGMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`THOMAS G. BRUTON
`
`/s/ Thelma Murry-Sykes
`
`9
`
`

`

`33}
`PROSAUYPER LOF:
`
`
`
`Approved for. use through £1.
`SOTA, OMB 05
`1-80!
`RIMENT OF COMMERCE
`Offee: WS. OG
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`Sisplays 9 vals QMI8
`consred mumber
`Rosher the Paperwork Seduction ict of S895 a0
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`
`Control Number(s}
`REEXAMINATION OR SUPPLEMENTAL
`
`
`
`
`
`
`O6-22-20147
`EXAMINATION ~ PATENT OWNER POWER OF
`
`
`
`ATTORNEY O8 REVOCATION OF POWER OF
`
`Harvey Slepian
`Mathad. ang Apparatus tor Oploniang Vehinie Operate
`ATTORNEY WEER A NEW POWER OF ATTORNEY
`
`
`
`
`Patent Number
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`AND CHANGE OF CORRESPONDENCE ADDRESS
`5,954 78t
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`FOR REEXAMINATION OR SUPPLEMENTAL
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`Davie B. England
`Examiner Name
`4089-004
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`EXAMINATION AND PATENT
`89-0
`Attorney Docket No{s}
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`‘
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`i. Power of Atorney. This form may be used to change the Powerof Attorney ina reexamination of
`supplemental examination proceeding {or multiple proceedings where merged), This formumnay also be used to
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`PEO838 (7-23)
`Abprteud for dar ttivgugh 21/30/2628. OMS O882-0038
`Patent art Trademark. Ofte: US, GEARERE NE OF-COMMERCE
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`pay Patent owrier,
`Se ecotementunder37CER&.73{ch {Fartn PTOSAIA/96)submittedherewith oFfiledan
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`{ Signature of laventor or
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`Name
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`NOTE: Signatures of all the inventors or patent owners af the entire interest arir their representatives! are
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`11
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`11
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`12
`
`12
`
`

`

`
`
`Title of Invention:
`
`METHOD AND APPARATUS FOR OPTIMIZING VEHICLE OPERATION
`
`
`
`First Named Inventor/Applicant Name:
`
`HARVEY SLEPIAN
`
`a F
`
`iler Authorized By:
`
`Attorney Docket Number:
`
`TASD-B8542
`
`Electronic Acknowledgement Receipt
`
`19499100
`
`Confirmation Number:
`
`08:54:14
`Time Stamp:
`
`
`
`
`Application Type: Utility under 35 USC 111(a)
`
`Paymentinformation:
`
`
`
`Pages
`Multi
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`DocumentDescription
`Document
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`Number Message Digest|Part/.zip|P (if appl.)
`121575
`
`Assignee showing of ownership per 37
`CFR 3.73.
`
`Statement.pdf
`
`£486680a0cfSa85be8c081 dasbc7a4959104|
`dice
`
`Information:
`
`13
`
`13
`
`

`

`Power of Attorney
`
`POA.pdf
`
`890967
`
`be293deN50N37hHdN5N53dcc4Fice937ecfy
`18c1
`
`Information:
`
`the application.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary componentsfor
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
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`This AcknowledgementReceipt evidences receipt on the noted date by the USPTO ofthe indicated documents,
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`U.S. Patent and Trademark Office:'U.S, DEPARTMENT OF COMMERCE
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`STATEMENT UNDER 37 CER 3.73(c)
`
`Applicant/Patent Owner: Velocity Patent LLC
`
`Application No./Patent No.; 0:994,781
`Filed/Issue Date: September 21, 1999
`
`Titleg. 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.
`
`The assignee of the entire right,title, and interest.
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`3. LC] The assignee of an undivided interest in the entirety (a complete assignment from one of the joint inventors was made).
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`, Frame
`, or for which a copy
`thereofis attached.
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`B.
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`A chain oftitle from the inventor(s), of the patent application/patent identified above, to the current assignee as follows:
`1. From: Harvey Slepian and Loran Sutton To: TAS Distributing Co., Inc.
`
`The documentwasrecordedin the United States Patent and Trademark Office at
`Ree| 008435
`, Frame 0064
`. or for which a copythereofis attached.
`
`2. From: !AS Distributing Co., Inc. To: Velocity Patents LLC
`The document was recorded in the United States Patent and Trademark Office at
`Reel 031635
`, Frame 0364
`, or for which a copythereofis attached.
`
`[Page 1 of 2]
`This collection of information is required by37 GFR3.73(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
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`Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS.SEND
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`PTO/AIA/96 (08-12)
`Approved for use through 01/31/2013. OMB 0651-0031
`U.S. 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 unlessit displays a valid OMB control number.
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`STATEMENT UNDER 37 CER 3.73(c)
`
`To: Velocity Patent LLC
`Velocity Patents LLC
`The document wasrecordedin the United States Patent and Trademark Office at
`
`Reel 031635
`Frame 0376
`
`, or for which a copy thereofis attached.
`
`To:
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`, Frame
`
`, or for which a copythereofis attached.
`
`To:
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`, Frame
`
`, of for which a copy thereofis attached.
`
`To:
`
`The document was recorded in the United States Patent and Trademark Office at
`
`Reel
`
`, Frame
`
`, or for which a copy thereofis attached.
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`Additional documents in the chain oftitle are listed on a supplemental sheet(s).
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`As required by 37 CFR 3.73(c)(1)(i), the documentary evidence of the chain oftitle from the original owner to the
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`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.
`/Patrick D. Richards/
`June 26, 2014
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`Signature
`Date
`Patrick Richards
`48905
`Printed or Typed Name
`Title or Registration Number
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and ‘Trademark Office
`Address: COMMTSSIONER, FOR PATENTS
`Alexandria, Virznia 22313-1450
`Wwww.uspto.gov
`
`
`
` APPLICATION NUMBER FILING OR 371(C) DATE FIRST NAMED APPLICANT ATTY. DOCKET NO./TITLE
`08/813,270
`03/10/1997
`HARVEY SLEPLAN
`TASD-B8542
`CONFIRMATION NO. 3242
`POA ACCEPTANCE LETTER
`
`88360
`Richards Patent Law P.C.
`
`233 S. Wacker Dr., 84th Floor
`
`Chicago, IL 60606
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`MAA000000069364302
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`Date Mailed: 07/02/2014
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`NOTICE OF ACCEPTANCE OF POWER OF ATTORNEY
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`Office of Data Management, Application Assistance Unit (571) 272-4000, or (571) 272-4200, or 1-888-786-0101
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and ‘Trademark Office
`Address: COMMTSSIONER, FOR PATENTS
`Alexandria, Virznia 22313-1450
`Wwww.uspto.gov
`
`
`
` APPLICATION NUMBER FILING OR 371(C) DATE FIRST NAMED APPLICANT ATTY. DOCKET NO/TTILE
`08/813,270
`03/10/1997
`HARVEY SLEPIAN
`TASD-B8542
`CONFIRMATION NO. 3242
`POWER OF ATTORNEYNOTICE
`
`MICHAEL S BUSH
`HAYNES AND BOONE LLP
`
`3100 NATIONSBANK PLAZA
`901 MAIN STREET
`DALLAS, TX 752023789
`
`
`
`MATA
`000000069364277/
`
`Date Mailed: 07/02/2014
`
`NOTICE REGARDING CHANGE OF POWER OF ATTORNEY
`
`This is in response to the Power of Attorney filed 06/27/2014.
`
`«The Power of Attorney to youin this application has been revoked by the assignee whohasintervened as
`provided by 37 CFR 3.71. Future correspondencewill be mailed to the new addressof record(37 CFR 1.33).
`
`/jawhitfield/
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`Office of Data Management, Application Assistance Unit (671) 272-4000, or (671) 272-4200, or 1-883-786-0101
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`GME controd number
`Roger the Saperwory Seduction Act of 2895 ao
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`REEXAMINATION OR SUPPLEMENTAL
`_Cantroi Number(s}
`EXAMINATION — PATENT OAAWER BOWER OF
`| Filing Date(s)
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`|First Ni
`Harvey Slepiat
`ATIORNEY OR REVOCATION OF POWER OF
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`5,954,781
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`comnplete this form and/or suggestions
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