UNITED STATES p A TENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addms: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-14S0
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
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`95/001,912
`
`02/29/2012
`
`7868912
`
`14342/IOC
`
`1028
`
`02/13/2013
`7590
`6449
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W.
`SUITE 800
`WASHINGTON, DC 20005
`
`EXAMINER
`
`CAMPBELL, JOSHUA D
`
`ART UNIT
`
`3992
`
`MAIL DATE
`
`02/13/2013
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`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`Clifford A. Ulrich
`KENYON & KENYON LLP
`One Broadway
`New York, NY 10004
`
`,
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`Date:
`
`MAILED
`FEB 1 ·3 2013
`
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO.: 95001912
`PATENT NO.: 7868912
`ART UNIT: 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to t~is
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`

`

`United States Patent and Trademark Office
`
`Rothwell, Figg, Ernst & M·anbeck, P.C.
`607 14th Street, N.W.
`Suite 800
`Washington, D.C. 20005
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`In re Venetianer et al
`Inter Partes Reexamination Proceeding
`Control No. 95/001,912
`Filed: February 29, 2012
`For: U.S. Patent No.: 7,868,912
`
`(For Patent Owner)
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 14S0
`Alexandria, VA 22313-14S0
`www.uspto.gov
`MAILED
`
`FEB 13 2013
`
`(For Requester)
`
`CENTRAL REEXAMINATION UNIT
`
`DECISION GRANTING
`PETITION TO TERMINATE
`INTER PARTES REEXAMINATION
`PROCEEDING
`
`This is a decision on patent owner's December 3, 2012 petition entitled "Petition to Terminate
`Reexamination Proceeding under 35 U.S.C. § 317(b) and 37 CFR §§ 1.182, l.907(b)", which is
`taken as a petition und.er 3 7 CFR 1.182 to terminate the present inter partes reexamination
`proceeding (patent owner's December 3, 2012 petition to terminate).
`
`Patent owner's December 3, 2012 petition to terminate, and the record as a whole, are before the
`Office of Patent Legal Administration for consideration.
`
`SUMMARY
`
`Patent owner's petition under 37 CFR 1.182 to terminate inter partes reexamination proceeding
`control number 95/001,912 is granted.
`
`Prosecution of inter partes reexamination proceeding 95/001,912 is hereby terminated.
`
`DECISION
`
`The patent owner argues that termination of inter partes reexamination proceeding control
`number 95/001,912 (the '1912 proceeding) is required by 35 U.S.C. 317(b), which provides, in
`pertinent part (emphasis added):
`
`Once a final decision has been entered against a party in a civil action arising in whole or in
`part under section 1338 oftitle 28, that the party has not sustained its burden of proving the
`invalidity of any patent claim in suit ... then ... an inter partes reexamination requested by
`that party or its privies on the basis of ... issues [which that party or its privies raised or could
`have raised in such civil action] may not thereafter be maintained by the Office ...
`
`The Office analyzes whether a reexamination proceeding must be terminated pursuant to 35
`U.S.C. 3 l 7(b) by determining:
`
`1. Whether the third party requester was a party to the litigation;
`
`

`

`Inter Par/es Reexamination Control No. 951001, 912
`
`2
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`2. Whether the decision is final, i.e., after all appeals;
`3. Whether the court decided that the requester/party had not sustained its burden of
`proving the invalidity of any claim in suit of the patent, which claim is also under
`reexamination; and
`4. Whether the issues raised in the reexamination proceeding are the same as issues that
`were raised, or are issues that c?uld have been raised, by the_ requester in the civil action.
`
`The patent owner informs the Office that the patent under reexamination, U.S. Patent No.
`7,868,912 (the '912 patent), was the subject of a civil action in district court, i.e., Object Video,
`Inc., v. Robert Bosch GmbH, et al, Civil Action No. 3:l lcv217 (E.D. Va.) (the litigation). The
`patent owner submits, with the present petition, a copy of the district court's "Stipulation and
`Order of Dismissal". The order, which was signed by the court on November 13, 2012, states
`that "[t]he parties further stipulate and request that the Court order that the Bosch Defendants,
`namely Robert Bosch GmbH and Bosch Security Systems, Inc., have not sustained their burden
`of proving the invalidity of ... any of the claims 1-22 of U.S. Patent No. 7,868,912", and that
`"[t]his Order is a final and non-appealable decision". Office records reveal that Bosch Security
`Systems, Inc., is the requester of the present inter partes reexamination proceeding. Thus, the
`patent owner has provided sufficient evidence that ( 1) the requester was a party to the litigation,
`(2) the district court's decision was final, and (3) the court determined that the
`requester/defendant had not sustained its burden of proving the invalidity of any claim of the
`'912 patent, i.e., any of claims 1-22, which include all of the claims under reexamination. For
`these reasons, elements 1-3 have been shown to have been satisfied.
`
`The patent owner also submits, with the present petition, a copy of the district court's docket for
`the litigation. The court's docket provide_s evidence that the litigation, at the time of the court's
`November 13, 2012 order, was at a sufficiently early stage that the requester could have raised in
`the civil action any issues that have been raised in the present reexamination proceeding. For
`this reason, element 4 has been shown to have been satisfied.
`
`· For the reasons given above, patent owner's December 3, 2012 petition under 37 CFR 1.182 to
`terminate the present inter partes reexamination proceeding is granted.
`
`Prosecution of inter partes reexamination proceeding control no. 95/001,912 (the '1912
`proceeding) is hereby terminated.
`
`The ' 1912 inter partes reexamination proceeding is being referred to the Central Reexamination
`Unit (CRU) for conclusion of that proceeding. The CRU will mail the present decision, and
`process the reexamination file to update the Image File Wrapper (IFW) records for this
`proceeding. The file will be assigned an 822 status. A copy of the PALM "Application Number
`Information" screen and the "Contents" screen will be printed, the printed copy will be annotated
`by adding the comment "PROCEEDING CONCLUDED," and the annotated copy will then be
`scanned into Image File Wrapper (IFW) using the miscellaneous letter document code.
`
`CONCLUSION
`
`• Patent owner's December 3, 2012 petition under 37 CFR 1.182 to terminate inter partes
`reexamination proceeding control number 95/001, 912 is granted.
`
`

`

`Inter Partes Reexamination Control No. 95/00/,912
`
`3
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`• The prosecution of the '1912 inter part es reexamination proceeding is hereby
`terminated and will be concluded.
`
`• The '1912 inter partes reexamination proceeding is being referred to the Central
`Reexamination Unit (CRU) for further processing to conclude the '1912 proceeding, as
`set forth in this decision.
`
`• Any inquiry concerning this communication should be directed to the undersigned at
`(571) 272-7724.
`
`/Cynthia L. Nessler/
`Cynthia L. Nessler
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`2 12 2013
`
`