Case 2:19-cv-00126—JRG Document 2 Filed 04/16/19 Page 1 of 1 PagelD #: 17
`
`
`REPORT ON THE
`
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`FILING OR DETERMINATION OF AN
`
`
`PO. Box 1450
`ACTION REGARDING A PATENT OR
`
`
`TRADEMARK
`
`
`
`Alexandria, VA 22313-1450
`
`QQL.
`
`
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § l [16 you are hereby advised that a court action has been
`APR 3 II 2819 T
`on the following
`filed in the us District Court
`Eastern District of Texas. Marshall Division
`
`
`( E] the patent action involves 35 U.S.C. §292.):
`EPatents.
`DATE FILED
`U.S. DISTRICT COURT
`4116/2019
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`[I Trademarks or
`DOCKET NO.
`2:19—cv-00126
`PLAINTIFF
`
`UNILOC 201T LLC
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO. LTD.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`0R TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`l 7,136,999
`1111412006
`2 _
`
`Uniloc 2017 LLC
`
`4 —
`
`s —
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)l' trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`El Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`
`
`Cross Bill
`
`El Other Pleading
`
`In the above—entitled case, the following decisiml has been rendered orjudgement issued:
`DECISION/JUDGEMENT
`
`
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy lu-Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy z—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
`
`Page 1 of 195
`
`SAMSUNG EXHIBIT 1004
`
`Page 1 of 195
`
`SAMSUNG EXHIBIT 1004
`
`

`

`A0 120 Rev. 08f10
`
` Mail Stop 8
`
`T0:
`
`Director of the US. Patent and Trademark Office
`P.O. Box 1450 ‘
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT 0R
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § l 116 you are hereby advised that a court action has been
`filed in the us. District Court
`Western District of Texas, Austin Division
`on the following
`El Trademarks or
`MPatents.
`( [I the patent action involves 35 U.S.C. § 292,):
`DOCKET NO.
`DATE FILED
`U.S. DISTRICT COURT
`1:18-cv-990-LY
`11/17/2018
`Western District 01 Texas, Austin Division
`PLAINTIFF
`DEFENDANT
`
`‘
`
`UNILOC 2017 LLC
`
`APPLE INC.
`
`DATE OF PATENT
`DATE OF PATENT
`
`PATENT OR
`
`DATE INCLUDED
`
`PATENT OR
`
`in the above—entitled case, the following patent(s)l trademark(s) have been included:
`INCLUDED BY
`'
`
`I] Amendment
`
`I] Answer
`
`I] Cross Bill
`
`I] Other Pleading
`
`In the above—entitled case, the following decision has been rendered orjudgement issued:
`DECISION/IUD GEMENT
`
`
` CLERK
`
`JEANNETI'E J. CLACK
`
`yZTY CLERK
`I
`’1 4‘" U/Lm/
`
`if
`
`‘/
`
`DATE
`NOV 192618
`
`Copy l—Upon initiation ofaction. maiI this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Upon filing document adding patcnt(s), mail this copy to Director Copy 4—Casc file copy
`
`Page 2 of 195
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`Page 2 of 195
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`

`
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`- _____/LARRYLIBERCHUK/
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`
`OCTOBER 10, 2006
`
`
`3133;...
`
`LARRY LIHBERCHUK
`
`\\K'11‘1'55‘11'1 ('2
`
`
`Page 3 of 195
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`Page 3 of 195
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Application of
`
`Serial No.
`
`Filed
`
`Atty. Docket
`
`Examiner
`
`Group Art Unit
`
`Confirmation No.
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`:
`
`GRIFFITHS, Jonathan C.
`
`09/597,198
`
`June 20, 2000
`
`U3000136
`
`KAMBIZ ZAND
`
`2132
`
`6017
`
`Mail Stop Issue Fee
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`COMMENTS ON STATEMENT OF REASONS FOR ALLOWANCE
`
`Sir:
`
`In the Notice of Allowability, the Examiner set forth various reasons for allowance and
`
`made certain allegations pertaining to claims and/or references.
`
`It is hereby submitted that Applicant does not concede, acquiesce or admit the positions
`
`taken in the examiner’s statement of reasons for allowance.
`
`It is further submitted that the record of the prosecution as a whole makes clear the
`
`reasons for allowing a claim or claims. Namely, the examiner's actions and the applicant's
`
`replies during the prosecution made evident the reasons for allowance, satisfying the "record as a
`
`whole" proviso of the rule. The examiner's actions clearly pointed out the reasons for rejection
`
`and the applicant's reply explicitly presented reasons why claims are patentablc over the
`
`reference. Hence, it is believed that the reasons for allowance were evident from the record, and
`
`no statement was necessary.
`
`Page 4 of 195
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`Page 4 of 195
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`

`

`Serial No. 09/597,198
`
`As further explicitly stated in MPEP 1302.14, it is improper to use a statement of reasons
`
`for allowance to attempt to narrow a claim by providing a special definition to a claim limitation
`
`which is argued by Applicant, but not supported by a special definition in the description in
`
`cases where the ordinary meaning of the term in the prior art demonstrates that the claim remains
`
`unpatentable for the reasons of record, and where such claim narrowing is only tangential to
`
`patentability. Cf. Festo Corp. v. Shoketsu Kinzoku Kagyo Kabushiki (70., 535 US. 722, 74l, 62
`
`USPQ2d 1705, 1714 (2002).
`
`Still further according to MPEP 1302.14, the examiner's statement of reasons for
`
`allowance is the personal opinion of the examiner as to why the claims are allowable. In
`
`accordance with the Festo court, the examiner's statement should not create an estoppel, and only
`
`applicant's statements can create an estoppel. The failure of applicant to comment on the
`
`examiner's statement of reasons for allowance should not be treated as acquiescence to the
`
`examiner's statement. Any inferences or presumption are to be determined on a case-by—case
`
`basis by a court reviewing the patent, the USPTO examining the patent in a reissue application
`
`or a reexamination proceeding, the Board of Patent Appeals and Interferences reviewing the
`
`patent in an interference proceeding, etc.
`
`October 10, 2006
`
`Respectfully submitted,
`
`/LARRY LIBERCHUK/
`By
`Larry Liberchuk, Reg. No. 40,352
`Senior 1P Counsel
`
`Philips Electronics N.A. Corporation
`914-333-9602
`
`Page 5 of 195
`
`Page 5 of 195
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`

`

`
`
`First Named Inventor:
`Jonathan C. Griffiths
`
`
`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`09597198
`
`20-Jun-2000
`
`Title Of Invention'
`
`METHOD AND SYSTEM FOR ELECTRONIC DEVICE
`AUTHENTICATION
`
`Filer:
`
`Michael E. Marion/NOEMI CHAPA
`
`Attorney Docket Number:
`
`US 000136
`
`"m 51:31:"
`
`Filed as Large Entity
`
`Utility
`
`Filing Fees
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals—and-Interference:
`
`Post—AI|owance—and—Post—Issuance:
`
`
`
`
`
`
`
`
`
`
`
`
`
`1501 1 1400Utility Appl issue fee 1400
`
`Extension-ol-Time:
`
`
`Page 6 of 195
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`Page 6 of 195
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`

`

`
`
`Description
`
`|
`
`Fee Code
`
`
`
`Quantity
`
`
`
`Amount
`
`Suflggg "1
`
`
`
`
`
`Miscellaneous:
`
`Total in USD ($)
`
`1400
`
`Page 7 of 195
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`Page 7 of 195
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`

`
`
`Electronic Acknowledgement Receipt
`
`EFS ID:
`
`1243553
`
`Application Number:
`09597198
`
`
`Confirmation Number:
`
`6017
`
`Title of Invention:
`
`METHOD AND SYSTEM FOR ELECTRONIC DEVICE
`AUTHENTICATION
`
`First Named Inventor:
`
`Jonathan C. Griffiths
`
`Philips Intellectual Property & Standards
`
`PO BOX 3001
`
`Correspondence Address:
`
`Briarcliff Manor
`
`NY
`
`10610
`
`US
`
`
`
`Filer Authorized By:
`
`Michael E. Marion
`
`Attorney Docket Number:
`
`US 000136
`
`Receipt Date:
`10—OCT-2006
`
`
`Filing Date:
`
`20-JUN-2000
`
`Time Stamp:
`
`Application Type:
`
`09:39:45
`
`Utility
`
`International Application Number:
`
`Payment information:
`
`
`Submitted with Payment
`yes
`Payment was successfully received in RAM $1400
`
`
`
`Page 8 of 195
`
`
`
`- F
`
`iler:
`
`Michael E. Marion/NOEMI CHAPA
`
`Page 8 of 195
`
`

`

`
`
`
`
`RAM confirmation Number 1682
`
`
`
`Deposit Account 141270
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`Charge any Additional Fees required under 37 CFR. Section 1.16 and 1.17
`
`File Listing:
`Document
`Number
`
`
`
`_
`_
`Document Description
`
`_
`File Name
`
`.
`_
`FIle Size(Bytes)
`
`Pages
`
`
`
`
`
`
`
`
`
`1
`Issue Fee Payment Recorded
`USOOO136_IF.pdf
`727425
`no
`1
`
`
`Warnings:
`Information:
`
`2
`
`Post Allowance Communication —
`Incoming
`
`USOOO136_reason—for—allow
`ance.pdf
`
`111334
`
`no
`
`2
`
`
`Warnings:
`Information:
`
`3
`
`Fee Worksheet (PTO-875)
`
`fee-info.pdf
`
`8168
`
`no
`
`2 W
`
`arnings:
`Information:
`
`
`Total Files Size (in bytes):
`
`846927
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of 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 components for 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
`shown on this Acknowledgement Receipt will establish the filing 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/903 indicating acceptance of the
`application as a national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt,
`in due course.
`
`
`
`Page 9 of 195
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`Page 9 of 195
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`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Ol'fice
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria. Virginia 22313-1450
`www.usp|c.gov
`
`APPLICATION NO.
`
`09/597,198
`
`FILING DATE
`
`06/20/2000
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Jonathan c. Griffiths
`
`us 000136
`
`6017
`
`Philips Intellectual Property & Standards
`PO BOX 3001
`Briarcliff Manor, NY 10610
`
`_
`
`ZAND, KAMBIZ
`
`2132
`
`DATE MAILED: 09/21/2006
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. l0/03)
`
`Page 10 of 195
`
`Page 10 of 195
`
`

`

`APPLICATTON NO.I
`CONTROL No.
`
`0 ‘i g 07 7.
`
`l ”I 8/
`
`
`
`
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`US. Patent and Trademark Office
`Addm: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`
`.
`
`FILING DATE
`
`FIRST NAMED INVENTORI
`PATENT IN REEXAMINATTON
`
`‘
`
`
`
`ATTORNEY DOCKET No.
`
`
`
`'
`
`ART UNIT
`
`PAPER
`
`20060915
`
`DATE MAILED:
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`IDS filed on 06/20/2000 was considered on 02/26/2006 and it is being re-rnailed in order to complete the records.
`
`Commissioner for Patents
`
`KAMBiZ ZAND
`PRiMARY EXAMlNER
`
`Kambiz Zand
`Examiner
`Art Unit: 2132
`
`PTO-90C (Rev.04-03)
`
`Page 11 of 195
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`

`

`Sheet
`
`1
`
`of 1
`
`flllfllllll
`
`
`
`
`°:;.
`
`
`Form PTO-1449
`(REV. 7‘80)
`
`U.s. DEPARTMENT OF COMMERCE Atty. Docket No.
`PATENT AND TRADEMARK OFFICE
`US 000136
`
`Serial No.
`
`Applicant
`JONATHAN C. GRIFFITHS
`
`A
`INFORMATION DISCLOSURE CITATION
`(Use several sheets if necessary)
`
`Filing Date
`mummy
`
`U.S. PATENT DOCUMENTS
`
`Sub-
`class
`
`Filing Date
`If Approp.
`
`FOREIGN PATENT DOCUMENTS
`
`Docunent
`Nurber
`
`‘
`
`Date
`
`Country
`
`Sub-
`class
`
`om (Including Author, Title, Date, Pertinent Pages, Etc.)
`,
`"SPECIFICATION OF BLUETWTII SYSTEM - CORE" v. 1. CA, July 26
`1999, pp. 10-19, 95, 149-156,
`
`169-170, 196-200, 226, 319, ‘537, 1029 and 1031.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`.
`,
`Mam»-
`EXAMINER:
`Initial if reference considered, whether or not citation is in conformance with MPEP 609,- Drau li
`
`
`through citation if not
`in conformance and not considered.
`Include a copy of this forthwith next
`
`
`coinmni cation to applicant.
`
`
`“SERVERO\SYS2\W'PDOCS\MK\mischns\mfl0mkc0.ma0.doc
`
`Page 12 of 195
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`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`(51/
`
`UNITED STATES DEPARTMENT OF COMMERCE
`UnIted States Patent and Trademark Ofl'ice
`Address: COMMISSIONER FOR PATENTS
`PD. 8011 I450
`Alexandria, Virginia 223 [3-1450
`www.mptagov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`07,25,200.
`
`Philips Intellectual Property & Standards
`PO BOX 3001
`
`Briarcliff Manor, NY 10610
`
`“ND W312
`
`ART um
`
`2132
`DATE MAILED: 07/25/2006
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Jonathan C. Griffiths
`06/20/2000
`09/597,198
`TITLE OF INVENTION: METHOD AND SYSTEM FOR ELECTRONIC DEVICE AUTHENTICATION
`
`US 000 [36
`
`6017
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonprovisional
`
`$1400
`
`3 I400
`
`DATE DUE
`
`10/25/2006
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`W QN [HE @115 IS 21412515.]; THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN II-HLEE MES FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`W PERIOD CANNLLI BEW. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`PREVIOUSLY BEEN PAID IN THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM
`WILL BE CONSIDERED A REQUEST TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`1. Review the SMALL ENTITY status shown above.
`
`If the SMALL ENTITY is shown as YES, verify your current
`SMALL ENTITY status:
`
`If the SMALL ENTITY is shown as NO:
`
`A. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`A. Pay TOTAL FEE(S) DUE shown above, or
`
`B, If the status above is to be removed, check box 5b on Part B -
`Fee(s) Transmittal and pay the PUBLICATION FEE (if required)
`and twice the amount of the ISSUE FEE shown above, or
`
`B. If applicant claimed SMALL ENTITY status before, or is now
`claiming SMALL ENTITY status, check box Sa on Part B - Fee(s)
`Transmittal and pay the PUBLICATION FEE (if required) and 1/2
`the ISSUE FEE shown above.
`
`H. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "41)"
`of Part B- Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B15 filed, a
`request to reapply a previously paidissue fee must be clearly made, and delays1n processing may occur due to the difficultyin recognizing
`the paper as an equivalent of Part B.
`
`111. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL—85 (Rev. 07/06) Approved for use through 04/30/2007.
`
`Page 13 of 195
`
`Page 1 of 3
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`%
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`Page 13 of 195
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`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`or Fax (571)-273-2885
`through 5 should be completed where
`INSTRUCTIONS: This form should he used for transmitting the ISSUE FEE and PUBLICATION FEE (if required. Blocks 1
`ap ropn'ate. All further correspondence including the Pat-t, advance orders and notification of maintenance fees Wlll
`e mailed to the current corr
`ndence address as
`in 'cated unless corrected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate "
`E ADDRESS" for
`maintenance fee notifications.
`CURRENT CORRESPONDENCEADDRESS (Note: Use Block I forany change offlddrem)
`
`'
`
`can only he used for domestic mailings of the
`Note: A certificate almatli,
`Fee(s) Transmittal. This cert: icate cannot be used for any other accompanying
`apers. Each additional paper, such as an assignment or formal drawmg, must
`have its own certificate ofmailing or transmissmn.
`Certificate of Mailing or Transmission
`that this Fee 5 Transmittal is being deposited with the United
`1 hereb certi
`ervice With
`cient postage for first class mail in an envelo e
`States ostal
`addressed to the Mail Stop ISSUE FEE address above, or bei
`facstmi e
`transmitted to the USPTO ( 71) 273-2885, on the date indicated be ow.
`
`7590
`
`07/25/2006
`
`.
`.
`Philips Intellectual Property & Standards
`PO BOX 3001
`‘
`_
`Bnarcliff Manor, NY 10610
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED 1NVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Jonathan C. Griffiths
`06/20/2000
`09/597,198
`TITLE OF INVENTION: METHOD AND SYSTEM FOR ELECTRONIC DEVICE AUTHENTICATION
`
`US 000136
`
`6017
`
`
`
`
`
`
`APPLN. TYPE
`
`nonprovisional
`
`SMALL ENTITY
`NO
`
`ZAND, KAMBlZ
`
`ISSUE FEE DUE
`
`$1400
`
`2132
`
`PUBLICATION FEE nus
`50
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`$0
`
`$1400
`
`10/25/2006
`
`713-163000
`
`2. For printing on the patent front page, list
`1. Chan e of correspondence address or indication of "Fee Address" (37
`
`
`CFR l.§63).
`(1) the names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`Cl Chan e ofcaries ondence address (or Change of Correspondemce
`Address Form PTO/ B/122) attached
`
`(2) the name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`D "Fee Address" indication (or "Fee Address" Indication form
`
`PTO/SB/47; Rev 03-02 or more rec-t) attached. Use of a Customer
`2 registered patent attorneys or agents. If no name is
`3
`
`Number is required. listed, no name will be printed.
`
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`If an assignee is identified below, the document has been filed for
`PLEASE NOTE: Unless an assi
`ee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CF 3.11. Completion of this form IS NOT a substitute for filing an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
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`
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`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : El Individual El Corporation or other private group entity Cl Government
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`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`4a. The following fee(s) are submitted:
`El A check is enclosed.
`Cl Issue Fee
`Cl Payment by credit card. Form PTO-2038 is attached.
`D Publication Fee (No small entity discount permitted)
`El Advance Order - # ofCopies
`CI The Director is hereby authorized to charge the required fee(s), any deficiency, or creditaniy
`
`overpayment, to Deposrt Account Number enclose an extra copy of this orm).
`5. Change in Entity Status (from status indicated above)
`D 13. Applicant is no longer claiming SMALL ENTITY status. See 37 CFR l.27(g)(2).
`D a. Applicant claims SMALL ENTITY status. See 37 CFR [.27.
`.D
`v
`NOTE: The Issue Fee and Publication Fee if re uired will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
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`Authorized Signature
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`Typed or printed name
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`Date
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`Registration No.
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`This collection of information is reqtured by 37 CFR 1.31]. The information is re uired to obtain or retam a benefit b the puhhc which is to file (and by the USPTO to process)
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`submittlng the completed application form to the USPTO. Time Will v
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`US. Patent and Trademark Office; US DEPARTMENT OF COMMERCE
`
`Page 14 of 195
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`Page 14 of 195
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`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United Statm Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria. Virginia 223 lit-1450
`www.usp¢o.guv
`
`APPLICATION NO.
`
`09/5911 98
`
`FILING DATE
`
`06/20/2000
`
`FIRST NAMED lNVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`Jonathan c. Griffiths
`
`us 000136
`
`6017
`
`Philips Intellectual Property & Standards
`PO BOX 3001
`
`Briarcliff Manor, NY 10610
`
`WD- W512
`
`ART um
`
`2132
`DATE MAILED: 07/25/2006
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment to date is 588 day(s). If the issue fee is paid on the date that is three months after the
`mailing date of this notice and the patent issues on the Tuesday before the date that is 28 weeks (six and a half
`months) after the mailing date of this notice, the Patent Term Adjustment will be 588 day(s).
`
`If 3 Continued Prosecution Application (CPA) was filed in the above-identified application, the filing date that
`determines Patent Term Adjustment is the filing date of the most recent CPA.
`
`Applicant will be able to obtain more detailed information by accessing the Patent Application Information Retrieval
`(PAIR) WEB site (http://pair.uspto.gov).
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of the Office of Patent Publication at
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`or
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`
`PTOL-85 (Rev. 07/06) Approved for use through 04/30/2007.
`
`Page 3 of 3
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`Page 15 of 195
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`Page 15 of 195
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`

`

`Notice of Allowability
`
`Application No.
`
`Applicant(s)
`
`09/597,198
`Examiner
`
`Kambiz Zand
`
`GRIFFITHS, JONATHAN C.
`Art Unit
`
`2132
`
`
`
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`
`herewith (or previously mailed), a Notice of Allowance (PTOL—85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
` 1. E This communication is responsive to Appeal bn'ef filed on 05/15/2006.
`
`2.
`The allowed claim(s) is/are 1-17.
`
`
`
`3. I] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a) I] All
`b) [I Some‘
`c) D None
`of the:
`1. [:1 Certified copies of the priority documents have been received.
`2. El Certified copies of the priority documents have been received in Application No. _
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3. [:1 Copies of the certified copies of the priority documents have been received in this national stage application from the
`
`
`International Bureau (PCT Rule 17.2(a)).
`
`
`* Certified copies not received: _
`
` Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements
`
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
` 4. E] A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENT or NOTICE OF
`
`
`INFORMAL PATENT APPLICATION (PTO—152) which gives reason(s) why the oath or declaration is deficient.
`
`
`
`
`
`
`
`
`5. CI CORRECTED DRAWINGS ( as "replacement sheets") must be submitted.
`(a) I] including changes required by the Notice of Draftsperson’s Patent Drawing Review ( PTO-948) attached
`1) El hereto or 2) CI
`to Paper No./Mail Date
`.
`(b) C] including changes required by the attached Examiner‘s Amendment / Comment or in the Office action of
`Paper No./Mail Date
`.
`ldentlfylng Indlcle such as the application number (see 37 CFR 1.84(c)) should be written on the drawings In the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as such In the header according to 37 CFR 1.121(d).
`
`
`
`
`
`
`
`6. D DEPOSIT OF and/or INFORMATION about the deposit Of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`
`
`
`Attachment(s)
`
`1. l3 Notice of References Cited (PTO-892)
`2. C] Notice of Draftperson's Patent Drawing Review (PTO-948)
`
`3. El Information Disclosure Statements (PTO-1449 or PTO/SB/OB),
`Paper No./MaiI Date
`4. C] Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`
`
`
`
`
`
`
`9. D Other
`.
`IE 2
`
`PRIMARY EXAMINER
`
`5. [:1 Notice of Informal Patent Application (PTO-152)
`6. E] Interview Summary (PTO-413),
`Paper No./Mail Date
`.
`7. U Examiner's Amendment/Comment
`
`8. IX Examiner's Statement of Reasons for Allowance
`
`KAMBIZ ZAND
`
`
`
`
`
`
`
` US. Patent and Trademark Office
`PTOL-37 (Rev. 7-05)
`Notice of Allowablllty
`Part of Paper No./Mai| Date 20060720
`
`Page 16 of 195
`
`Page 16 of 195
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`

`

`Application/Control Number: 09/597,198
`Art Unit: 2132
`
`Page 2
`
`DETAILED ACTION
`
`. The text of those sections of Title 35,U.S.Code not included in this section can be
`
`found in the prior office action.
`
`The prior office actions are incorporated herein by reference. In particular, the
`
`observations with respect to claim language, and response to previously
`
`presented arguments.
`
`Applicant's request for reconsideration of the finality of the rejection of the last
`
`Office action is persuasive and, therefore, the finality of that action is withdrawn.
`
`. Claims 1-17 are pending.
`
`Response to Arguments
`
`Applicant's Appeal Brief arguments filed 05/15/2006 have been fully considered
`
`in an Appeal conference and they are persuasive.
`
`Allowable Subject Matter
`
`Claims 1-17 are allowed.
`
`. The following is an examiner’s statement of reasons for allowance:
`
`Applicant’s arguments in appeal brief filed on 05/12/2006 on pages 10-13 have
`
`been found persuasive since the prior art method and system and apparatus
`
`single or in combination are in contrast with specific steps of applicant’s invention
`
`Page 17 of 195
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`Page 17 of 195
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`

`

`Application/Control Number: 09/597,198
`Art Unit: 2132
`
`Page 3
`
`limitation " when the first and second electronic devices are beyond the short-
`
`range wireless link, executing the authentication protocol by exchanging the
`
`authentication information between the first and second electronic devices over
`
`an alternate communication link. then only allowing communication between the
`
`first and second devices if the first and second devices had initially been
`
`successfully authenticated" in light of other limitation in claim 1; and the same
`
`reasons for allowance for other independent claims that contain similar limitations
`
`and in view of the specification.
`
`Conclusion
`
`Any comments considered necessary by the applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should
`
`preferably accompany the issue fee. Such submission should be clearly labeled
`
`“comments on statement of reasons for allowance.”
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Kambiz Zand whose telephone number is 571-
`
`272-3811. The examiner can normally reached on Monday-Thursday (8:00-5:00).
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Gilberto Barron can be reached on 571-272-3799. The fax phone
`
`numbers for the organization where this application or proceeding is assigned as
`
`571-273-8300. information regarding the status of an application may be
`
`Page 18 of 195
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`Page 18 of 195
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`

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`Application/Control Number: 09/597,198
`Art Unit: 2132
`
`Page 4
`
`obtained from the Patent Application Information Retrieval (PAIR) system. Status
`
`information for published applications may be obtained from either Private PAIR
`
`or Public PAIR. Status information for unpublished applications is available
`
`through Private PAIR only. For more information about the PAIR system, see
`
`http://pair-direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`iMBIZZAND
`
`PRIMARY EXAMINER
`
`07/20/2006
`
`AU 2132
`
`Page 19 of 195
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`Page 19 of 195
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`

`

`,
`_
`Issue Classm'catlon
`
`Application/Control No.
`09/591198
`
`Examiner
`Kambiz Zand
`
`Applicant(s)lPatent under
`Reexamination
`GRIFFITHS, JONATHAN C.
`Art Unit
`2132
`
`ORIGINAL
`
`ISSUE CLASSIFICATION
`INTERNATIONAL CLASSIFICATION
`
`——m
`_-E-IIIII s
`Ill—
`CROSS REFERENCES
`
`
`
`
`KAMBIZ ZAN
`PRIMARY EXAMIIIE’EO/Oe
`(Primary Examiner)
`(Date)
`
`Claims renum bered in the same order as presented by applicant EICPA ‘
`
`-DR.1.47
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`US. Patent and Trademark Office
`
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`
`Part of Paper No. 20060720
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`Page 20 of 195
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`Search NOtes
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`Application/Control No.
`
`09/597,198
`Examiner
`
`Applicant(s)lPatent under
`Reexamination
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`GRIFFITHS, JONATHAN C.
`Art Unit
`
`Kambiz Zand
`
`2132
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`WW SeMQbM/W W
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`May 15 ‘06 04:43p
`
`THLLP
`.
`
`t
`
`5315555101
`
`p.1
`RECEIVED
`CENTRAL FAX CENTER
`
`MAY 1 5 2006
`PATENT
`Serial No. 09/597, 198
`
`Appeal Brief in Reply to Advisory Action of March 6. 2006
`
`TO THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`(571)273~8300
`
`I certify that this document consisting of 26 pages (including 23 sheets of Appeal Brief and 1 sheet of
`Authorization to charge credit card) is being transmitted via facsimile to the United States Patent and Trademark
`Office at the telephone number set forth above on May 15, 2006.
`
`alajian
`(Signature) Dicra
`
`
`By
`
`i kw 2Q ’f‘"
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`JONATHAN C. GRIFFITHS
`
`US 000136
`Confirmation No. 6017
`
`Serial No. 09/597,198
`
`‘
`
`Group Art Unit: 2132
`
`Filed:
`
`JUNE 20, 2000
`
`Examiner: ZAND, KAMBIZ
`
`Title:
`
`METHOD AND SYSTEM FOR ELECTRONIC DEVICE AUTHENTICATION
`
`Mail Stop Appeal Brief-Patents
`Board of Patent Appeals and Interferences
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, VA 22313—1450
`
`Sir:
`
`Enclosed is an Appeal Brief in the above—identified patent
`
`application.
`
`Please charge the Appeal Brief fee of $500 to the credit card
`
`as noted in the enclosed authorization to charge credit card form.
`
`It is believed that no additional fees or charges are
`
`U5000136-appeal cove:-05-15-06.DOC
`
`1
`
`.
`a
`1
`PAGE 1/26 RCVD AT 5/1512006 4.43.11 PM [Eastern Dayllght 'I'lmel’ SVR:USPTO-EFXRF-‘