`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/001,914
`
`02/29/2012
`
`7,932,923
`
`4079-0101 RXM
`
`1269
`
`02/13/2013
`7590
`6449
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W.
`SUITE 800
`WASHINGTON,DC 20005
`
`HUGHES, DEANDRA M
`
`R
`
`3992
`
`MAIL DATE
`
`02/13/2013
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time periodforreply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`Canon Ex. 1012 Page 1 of 5
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`Canon Ex. 1012 Page 1 of 5
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`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissionerfor Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`KENYON & KENYON LLP
`ONE BROADWAY
`NEW YORK, NY 10004
`
`Date:
`
`MAILED
`
`FEB 43 2013
`
`CENTRAL REEXAMINATION UNIT
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROLNO. : 95001914
`
`PATENT NO. : 7932923
`
`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 this
`communication, the third party requester of the inter partes reexamination may oncefile
`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 correspondencerelating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses givenat the end ofthe
`communication enclosed with this transmittal.
`
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`

`
`
`Rothwell, Figg, Ernst & Manbeck,P.C.
`607 14"Street, N.W.
`Suite 800
`Washington, D.C. 20005
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`United States Patent and Trademark Office
`
`(For Patent Owner)
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`WwWw.uspto.gov
`
`MAILED
`
`FEB 43 2013
`
`(For Requester)
`
`CENTRAL REEXAMINATIONUNIT
`
`In re Lipton et al
`Inter Partes Reexamination Proceeding
`Control No. 95/001,914
`Filed: February 29, 2012
`For: U.S. Patent No.: 7,932,923
`
`:
`:
`:
`:
`
`DECISION GRANTING
`PETITION TO TERMINATE
`INTER PARTES REEXAMINATION
`PROCEEDING
`
`This is a decision on patent owner’s December3, 2012 petition entitled “Petition to Terminate
`Reexamination Proceeding under 35 U.S.C. § 317(b) and 37 CFR §§ 1.182, 1.907(b)”, whichis
`taken as a petition under 37 CFR 1.182 to terminate the present inter partes reexamination
`proceeding (patent owner’s December3, 2012 petition to terminate).
`
`Patent owner’s December3, 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 95/001,914 is granted.
`
`Prosecution of inter partes reexamination proceeding 95/001,914 is hereby terminated.
`
`DECISION
`
`The patent ownerarguesthat termination of inter partes reexamination proceeding control
`number 95/001,914 (the ‘1914 proceeding) is required by 35 U.S.C. 317(b), which provides,in
`pertinent part (emphasis added):
`
`Onceafinal decision has been entered againsta party in a civil action arising in whole orin
`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 orits privies on the basis of .
`.
`. issues [whichthatpartyor 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. 317(b) by determining:
`
`1. Whetherthe third party requester wasa party to the litigation;
`
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`Inter Partes Reexamination Control No. 95/001,914
`
`2
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`2. Whetherthe decisionis final, i.e., after all appeals;
`3. Whether the court decided that the requester/party had not sustainedits burden of
`proving the invalidity of any claim in suit of the patent, which claim is also under
`reexamination; and
`4. Whethertheissues raised in the reexamination proceeding are the sameas issuesthat
`wereraised, or are issues that could have beenraised, by the requesterin the civil action.
`
`The patent ownerinformsthe Office that the patent under reexamination, U.S. Patent No.
`7,932,923 (the ‘923 patent), was the subject ofa civil action in district court, i.e., ObjectVideo,
`Inc., v. Robert Bosch GmbH, et al, Civil Action No. 3:11cv217 (E.D. Va.) (the litigation). The
`patent owner submits, with the presentpetition, a copy ofthe district court’s “Stipulation and
`Order of Dismissal”. The order, which was signed by the court on November13, 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 1-41 of U.S. Patent No. 7,932,923”, and that
`“(this Orderis 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 ownerhas providedsufficient evidencethat (1) the requester wasa partyto the litigation,
`(2) the district court’s decision wasfinal, and (3) the court determined that the
`requester/defendant had notsustained its burdenof proving the invalidity of any claim ofthe
`‘923 patent, i.e., any of claims 1-41, which include all of the claims under reexamination. For
`these reasons, elements 1-3 have been shownto havebeensatisfied.
`
`The patent owneralso submits, with the present petition, a copy ofthe district court’s docket for
`the litigation. The court’s docket provides evidencethatthelitigation, at the time of the court’s
`November13, 2012 order, wasat a sufficiently early stage that the requester could have raised in
`the civil action any issues that have beenraised in the present reexamination proceeding. For
`this reason, element 4 has been shown to have beensatisfied.
`.
`
`For the reasons given above, patent owner’s December3, 2012 petition under 37 CFR 1.182 to
`terminate the present infer partes reexamination proceedingis granted.
`
`Prosecution of inter partes reexamination proceeding control no. 95/001,914 (the “1914
`proceeding) is hereby terminated.
`
`The ‘1914 inter partes reexamination proceedingis 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 forthis
`proceeding. Thefile 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
`
`e
`
`Patent owner’s December3, 2012 petition under 37 CFR 1.182 to terminate infer partes
`reexamination proceeding control number95/001,914 is granted.
`
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`Inter Partes Reexamination Control No. 95/001,914
`
`,
`
`3
`
`e The prosecutionofthe ‘1914 inter partes reexamination proceeding is hereby
`terminated and will be concluded.
`
`e The ‘1914 inter partes reexamination proceedingis being referred to the Central
`Reexamination Unit (CRU) for further processing to conclude the ‘1914 proceeding, as
`set forth in this decision.
`
`e Any inquiry concerning this communication should be directed to the undersignedat
`(571) 272-7724.
`
`/Cynthia L. Nessler/
`Cynthia L. Nessler
`Senior Legal Advisor
`Office of Patent Legal Administration
`
`2 12 2013
`
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