PTO/A IA/26 (04-14)
`Approved for use through 07/31/2016. 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 unless it displays a valid OMB control number.
`Docket Number (Optional)
`TERMINAL DISCLAIMER TO OBVIATE A DOUBLE PATENTING
`1004294.014US
`REJECTION OVER A "PRIOR" PATENT
`
`In re Application of: Scott McNulty
`
`Application No.: 14/721,540
`
`Filed: May 26, 2015
`
`For: APPARATUS, METHOD AND SYSTEM FOR A TUNNELING CLIENT ACCESS POINT
`
` percent interest in the instant application hereby
` owner of
`The applicant, IOENGINE, LLC
`100
`disclaims, except as provided below, the terminal part of the statutory term of any patent granted on the instant application which would extend
`beyond the expiration date of the full statutory term of prior patent No. 8,539,047
` as the term of said prior patent is presently
`shortened by any terminal disclaimer. The applicant hereby agrees that any patent so granted on the instant application shall be enforceable
`only for and during such period that it and the prior patent are commonly owned. This agreement runs with any patent granted on the instant
`application and is binding upon the grantee, its successors or assigns.
`
`In making the above disclaimer, the applicant does not disclaim the terminal part of the term of any patent granted on the instant application
`that would extend to the expiration date of the full statutory term of the prior patent, "as the term of said prior patent is presently shortened by
`any terminal disclaimer," in the event that said prior patent later:
`expires for failure to pay a maintenance fee;
`is held unenforceable;
`is found invalid by a court of competent jurisdiction;
`is statutorily disclaimed in whole or terminally disclaimed under 37 CFR 1.321;
`has all claims canceled by a reexamination certificate;
`is reissued; or
`is in any manner terminated prior to the expiration of its full statutory term as presently shortened by any terminal disclaimer.
`
`Check either box 1 or 2 below, if appropriate.
`1. q The undersigned is the applicant. If the applicant is an assignee, the undersigned is authorized to act on behalf of the assignee.
`
`I hereby acknowledge that any willful false statements made are punishable under 18 U.S.C. 1001 by fine or imprisonment of not more
`than five (5) years, or both.
`
`2. q3
`
`The undersigned is an attorney or agent of record. Reg. No. 36813
`
`/Robert K. Goethals/
`Signature
`
`July 27, 2017
`Date
`
`Robert K. Goethals
`Typed or printed name
`
`Attorney
`Title
`
`Telephone Number
`
`Terminal disclaimer fee under 37 CFR 1.20(d) included.
`
`WARNING: Information on this form may become public. Credit card information should not
`be included on this form. Provide credit card information and authorization on PTO-2038.
`
`This collection of information is required by 37 CFR 1.321. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO
`to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 12 minutes to complete,
`including gathering, preparing, and submitting the 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 th is form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent
`and Trademark 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 TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`
`If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`PayPal Inc. v. IOENGINE, LLC
`IPR2019-00884 (US 8,539,047)
`Exhibit 2042
`
`