`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 22313-I450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO,
`
`CONFIRMATION N0.
`
`95/001,914
`
`02/29/2012
`
`7,932,923
`
`4079-0101 RXM
`
`1269
`
`6449
`
`7590
`
`02/l3/2013
`
`ROTHWELL,FIGG, ERNsmMANBecm.
`607 14th Street, NW.
`SUITE 800
`WASHINGTON, DC 20005
`
`HUGHES, DEANDRAM
`
`3992
`
`MAIL DATE
`
`02/ 1 3/201 3
`
`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)
`
`Canon EX. 1012 Page 1 0f 5
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`Canon Ex. 1012 Page 1 of 5
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA 22313—1450
`www.uspto.gov
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`
`Date:
`
`KENYON & KENYON LLP
`ONE BROADWAY
`
`NEW YORK, NY 10004
`
`MAILED
`
`FEB t 3 2013
`
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 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 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.
`
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`Canon Ex. 1012 Page 2 of 5
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`United States Patent and Trademark Office
`
`Rothwell, Figg, Ernst & Manbeck, PC.
`607 14‘h Street, NW.
`Suite 800
`Washington, DC. 20005
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`(For Patent Owner)
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`MAILED
`
`FEB 13 2013
`
`(For Requester)
`
`CENTRAL REEXAMINATION umr
`
`In re Lipton et al
`Inter Partes Reexamination Proceeding
`Control No. 95/001 ,914
`Filed: February 29, 2012
`For: US. Patent No.: 7,932,923
`
`:
`:
`:
`:
`
`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, 1.907(b)”, which is
`taken as a petition under 37 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 ,914 is granted.
`
`Prosecution of inter partes reexamination proceeding 95/001,914 is hereby terminated.
`
`DECISION
`
`The patent owner argues that 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):
`‘
`
`Once a final decision has been entered against a party in a civil action arising in whole or in
`part under section 1338 of title 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. 317(b) by determining:
`
`1. Whether the third party requester was a party to the litigation;
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`Inter Partes Reexamination Control No. 95/00],9l 4
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`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 could have been raised, by the requester in the civil action.
`
`The patent owner informs the Office that the patent under reexamination, US. Patent No.
`7,932,923 (the ‘923 patent), was the subject of a civil action in district court, i.e., Object Video,
`Inc., v. Robert Bosch GmbH, et a], Civil Action No. 3:1 lcv217 (ED. 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 1-41 of US. Patent No. 7,932,923”, 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
`‘923 patent, i.e., any of claims 1-41, which include all of the claims under reexamination. For
`these reasons, elements l-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 provides 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 ,914 (the ‘ 1914
`proceeding) is hereby terminated.
`
`The ‘1914 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
`
`0
`
`Patent owner’s December 3, 2012 petition under 37 CFR 1.182 to terminate inter partes
`reexamination proceeding control number 95/001,914 is granted.
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`Inter Partes Reexamination Control No. 95/001,914
`
`‘
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`3
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`o The prosecution of the ‘ 1914 inter partes reexamination proceeding is hereby
`terminated and will be concluded.
`
`o The ‘ 1914 inter partes' reexamination proceeding is being referred to the Central
`Reexamination Unit (CRU) for further processing to conclude the ‘1914 proceeding, as
`set forth in this decision.
`
`0 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
`
`2122013
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