Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Date: December 17, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC.,
`Petitioner,
`
`V.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`
`IPR2019-01438
`
`Patent 8,416,862 B2
`
`Before BRYAN F. MOORE, MELISSA A. HAAPALA, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`MARGOLIES, Administrative Patent Judge.
`
`DECISION
`
`Settlement Prior to Institution of Trial
`
`37 C.F.R. § 42. 74
`
`Page 1 of 226
`
`SAMSUNG EXHIBIT 1004
`
`Page 1 of 226
`
`SAMSUNG EXHIBIT 1004
`
`

`

`IPR2019-01438
`
`Patent 8,416,862 B2
`
`Pursuant to our authorization, on December 12, 2019, the parties filed a Joint
`Motion to Terminate the above-captioned proceeding. Paper 9. Along with the
`
`motion, the parties filed a settlement agreement (Exhibit 2001) and a Joint Request
`
`to Keep Separate (Paper 8), in which the parties request the settlement agreement
`
`be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and
`
`37 C.F.R. § 42.74(c).
`
`The parties state that they have settled their dispute regarding the challenged
`
`patent, the settlement agreement has been made in writing, and a true and correct
`
`copy of the agreement is filed as Exhibit 2001. Paper 9, 1, 3. The parties further
`
`state that the district court has dismissed the claims relating to the challenged
`
`patent. Id. at 2. The parties also assert that there are no public interest or other
`
`factors that weigh against termination of this proceeding. Id. at 1—2.
`
`This proceeding is in its preliminary stages and we have not yet decided
`
`whether to institute an inter partes review. Under the circumstances, we determine
`
`it is appropriate to terminate this proceeding. We further determine it is
`
`appropriate to treat the settlement agreement as business confidential information,
`
`and, therefore, grant the request. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`
`It is
`
`ORDERED that the joint Motion to Terminate this proceeding is
`
`GRANTED and the proceeding is hereby terminated; and
`
`FURTHER ORDERED that the Joint Request that the settlement agreement
`
`(Exhibit 2001) be treated as business confidential information pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is GRANTED.
`
`Page 2 of 226
`
`Page 2 of 226
`
`

`

`IPR2019-01438
`
`' Patent 8,416,862 B2
`
`For PETITIONER:
`
`Amol A. Parikh
`
`Charles M. McMahon
`
`Thomas M. DaMario
`
`Jiaxiao Zhang
`McDERMOTT WILL & EMERY
`
`amparikh@mwe.com
`cmcmahon@mwe.com
`tdamario@mwe.com
`jiazhang@mwe.com
`
`For PATENT OWNER:
`
`Steven W. Hartsell
`
`Alexander B. Gasser
`
`SKIERMONT DERBY LLP
`
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`
`Page 3 of 226
`
`Page 3 of 226
`
`

`

`Case3:18~cvum?84-CA8_BLM Doctja‘m-mtz
`
`Fified (EB/DZHE Pageiflfiiafi
`
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`
`REPORT ON THE
`Mail Stop 8
`FILING OR DETERMINATION OF AN
`Director of the US. Patent and Trademark Office
`DING A PATENT OR
`PO. Box 1450
`
`A
`1
`t
`—‘
`.IIQ
`
`
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has
`been filed in the US. District Court Southern District of California on the following: _X_ Patents or _
`Trademarks:
`
`DATE FILED
`
` DOCKET NO.
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`{5.UATIK.
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`In the above—entitled case, the following patents(s)/ trademark(s) have been included:
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`DATE INCLUDED
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`PATENT OR
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`In the above—entitled case, the following decision has been rendered or judgment issued:
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`DECISION/JUDGMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`II ATE
`
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`
`Page 4 of 226
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`Page 4 of 226
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`

`

`C338 321.8""miC1785 {3112153 131.. M Bowman 2
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`Fitted 0810.11.18 Pageifl 1.30 Page=...
`
`(111.1.
`
`ACTION REGARDING A PATENT OR
`
`Mail Stop 8
`Director of the U. S. Patent and Trademark Office
`P.O. Box 1450
`In Compliance with 35 U.S.C. § 290 and/or 15 U. S.C. § 1116 you are hereby advised that a court action has
`been filedin the U. S. D1st11ct Cou1t Southe1n Dist1ict of Califo1nia on the following: __X Patents or_
`Trademarks:
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`
` ATE FILED
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`\0l'l\"ql
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`
`In the above—entitled case, the following patents(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`{é'Uéink.
`
`AII'IQII'I
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`In the above—entitled case, the following decision has been rendered or judgment issued:
`
`DECISION/JUDGMENT
`
`CLERK
`
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`
`(BY) DEPUTY CLERK
`
`II ATE
`
`Page 5 of 226
`
`Page 5 of 226
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`

`

`Case3:18~cvum?86-CA8_BLM Doctummtz
`
`Fified 98/021’13
`
`Pagt—3ED.131
`
`Page-“3:
`
`.1 of}.
`
`ACTION REGARDING A PATENT OR
`
`Mail Stop 8
`Director of the U. S. Patent and Trademark Office
`P.O. Box 1450
`In Compliance with 35 U.S.C. § 290 and/or 15 U. S.C. § 1116 you are hereby advised that a court action has
`been filedin the U. S. D1st11ct Cou1t Southe1n Dist1ict of Califo1nia on the following: __X Patents or_
`Trademarks:
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`
`DATE FILED
`
`
`
`{A U-LIK.
`
`{PATENT OR
`PATENT OR
`m—_
`
`U-Lsk.
`
`US District Court Southern District of California
`V
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`
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`a.
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`PATENT OR
`
`{fi'UéIIK'
`
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`
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`
`In the above—entitled case, the following patents(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`{A'Uéilk.
`
`.-
`AI
`AII'IIII'I
`PATENT OR
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`PATENT OR
`{A'UAILK.
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`
`In the above—entitled case, the following decision has been rendered or judgment issued:
`
`I
`
`DECISION/JUDGMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`II ATE
`
`I I I U I
`
`'
`
`Page 6 of 226
`
`Page 6 of 226
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`

`

`UNITED STATES PATENT AND TRADEMARK OEFICE
`
`
`
`UNITED STATES DEPARTIVIENT OF CONHVIERCE
`United States Patent and Trademark Office
`Address, COW/IISSIONER FOR PATENTS
`P 0 Box 1450
`Alexandria1 Virginia 22313-1450
`www.uspt0 gov
`
`APPLICATION NO.
`ISSUE DATE
`PATENT NO.
`ATTORNEY DOCKET NO.
`CONFIRIVIATION NO.
`
`11/237,341
`04/09/2013
`8416862
`BP4880
`6712
`
`51472
`
`7590
`
`03/20/2013
`
`GARLICK & MARKISON
`PO. BOX 160727
`AUSTIN, TX 78716—0727
`
`The projected patent number and issue date are specified above.
`
`ISSUE NOTIFICATION
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment is 2247 day(s). Any patent to issue from the above-identified application will
`include an indication of the adjustment on the front page.
`
`If a 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 Application Assistance Unit (AAU) of the Office of Data Management
`(ODM) at (571)-272-4200.
`
`APPLICANT(S) (Please see PAIR WEB site http://pairuspto. gov for additional applicants):
`
`Carlos Aldana, San Francisco, CA;
`Joonsuk Kim, San Jose, CA;
`
`The United States represents the largest, most dynamic marketplace in the world and is an unparalleled location
`for business investment, innovation, and commercialization of new technologies. The USA offers tremendous
`resources and advantages for those who invest and manufacture goods here. Through SelectUSA, our nation
`works to encourage and facilitate business investment. To learn more about why the USA is the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectUSA.gov.
`
`IR103 (Rev. 10/09)
`
`Page 7 of 226
`
`Page 7 of 226
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OEEICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria Virginia 223 1 3- 1450
`www.uspto gov
`
`APPLICATION NO.
`FILING DATE
`FIRST NAMED INVENTOR
`ATTORNEY DOCKET NO.
`CONFIRMATION NO.
`
`11/237,341
`09/28/2005
`Carlos Aldana
`BP4880
`6712
`
`7590
`51472
`GARLICKWARKISQN
`PO. BOX 160727
`AUSTIN, TX 78716—0727
`
`03/01/2013
`
`NEFF, MICHAEL R
`
`2631
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`03/01/2013
`
`ELECTRONIC
`
`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.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`MMURDOCK@ TEXASPATENTSCOM
`
`glnnptoc0r@ texaspatents.c01n
`smcwhinnie @texaspatents.com
`
`PTOL-9OA (Rev. 04/07)
`
`Page 8 of 226
`
`Page 8 of 226
`
`

`

`
`
`Application No.
`
`Applicant(s)
`
`
`
` _ _ 11/237,341 ALDANA ET AL.
`
`Response to Rule 312 Communication
`.
`.
`Examlner
`Art Unlt
`
`
`
`MICHAEL NEFF 2631
`
`— The MAILING DA TE of this communication appears on the cover sheet with the correspondence address —
`
`1. IXI The amendment filed on 07 February2013 under 37 CFR 1.312 has been considered, and has been:
`
`a)
`
`entered.
`
`b) [I entered as directed to matters of form not affecting the scope of the invention.
`
`0) I] disapproved because the amendment was filed after the payment of the issue fee.
`
`Any amendment filed after the date the issue fee is paid must be accompanied by a petition under 37 CFR 1.313(c)(1)
`
`and the required fee to withdraw the application from issue.
`
`d) El disapproved. See explanation below.
`
`e) [I entered in part. See explanation below.
`
`/Shuwang Liu/
`Supervisory Patent Examiner, Art Unit 2631
`
` US. Patent and Trademark Office
`
`/M|CHAEL R. NEFF/
`Examiner, Art Unit 2631
`
`PTOL-271 (Rev. 04-01)
`
`Reponse to Rule 312 Communication
`
`Part of Paper No. 20130225
`
`Page 9 of 226
`
`
`
`Page 9 of 226
`
`

`

`Serial No.2 11/237,341
`Examiner: Michael R. Neff
`
`IN THE SPECIFICATION
`
`Please amend the Cross References to Related Applications paragraph as follows:
`
`This application is a continuation—in—part of US. Utility Application No. 11/168,793,
`
`filed June 28, 2005 which claims priority to US. Provisional Patent Application Serial No.
`
`60/673,451, filed April 21, 2005, and this application also claims priority to US. Provisional
`
`Patent Application Serial No. 60/698,686, filed July 13, 2005, all of which are incorporated
`
`herein by reference for all purposes.
`
`Page 2
`
`Page 10 of 226
`
`Page 10 of 226
`
`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.0. Box 1450
`Alexandria, Virginia 22313-1450
`or m (571)-273-2885
`
`through 5 should be completed where
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks 1
`appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`in icated unless corrected below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "TEE ADDRESS" for
`maintenance fee notifications.
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Blocklfor any Change of addreSS)
`
`7590
`51472
`GARLICK & MARKISON
`
`12/28/2012
`
`P-O- BOX 160727
`AUSTIN, TX 78716-0727
`
`Note: A certificate of mailin can only be used for domestic mailings of the
`Fee(s) Transmittal. This certi icate cannot be used for any other accompanying
`papers. Each additional paper, such as an assignment or formal drawing, must
`ave its own certificate of mailing or transmission.
`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
`States Postal Service with sufficient postage for first class mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being facsimile
`transmitted to the CSPTO (571) 273—2885, on the date indicated below.
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`11/237,341
`
`09/28/2005
`
`Carlos Aldana
`
`BP4880
`
`6712
`
`TITLE OF INVENTION: Efficient feedback of channel information in a closed loop beamforming wireless communication system
`
`
`
`(Signature)
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonprovisional
`EXAMINER
`
`NO
`
`
`NEFF. MICHAEL R
`
`$1770
`ART UNIT
`
`2631
`
`$300
`CLASSASUB CLASS
`
`375-299000
`
`$0
`
`$2070
`
`DATE DUE
`
`03/28/2013
`
`1. Change of correspondence address or indication of "Fee Address” (37
`CFR 1.363).
`
`
`
`3 Change of correspondence address (or Change of Correspondence
`Address form PT'O/SB/122) attached.
`"Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Number is required.
`
`2. For printing on the patent front page, list
`(1) the names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) the name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name will be printed.
`
`
`
`.
`.
`1 Gar11Ck & Markrson
`.
`
`2 Holly L. Rudnick
`
`1
`”
`
`3. ASSIGI\EE 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 assignee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CFR 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)
`
`Broadcom Corporation
`
`Irvine, CA
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : D Individual B Corporation or other private group entity D Government
`
`
`
`4a. The following fee(s) are submitted:
`El Issue Fee
`Z1 Publication Fee (No small entity discount permitted)
`:1 Advance Order — # of Copies
`
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`'3 A check is enclosed.
`3 Payment by credit card. FormPTO—2038-is—attac-heda
`a The Director is hereby authorized to charge t
`e u'r d ee(s). any deficiency. or credit any
`overpayment, to Deposit Account Number
`—
`(enclose an extra copy of this form).
`
`5 . Change in Entity Status (from status indicated above)
`
`
`I: b. Applicant is no longer claiming SMALL ENTITY status. See 37 CFR 1.27(g)(2).
`:1 a. Applicant claims SMALL ENTITY status. See 37 CFR 1.27.
`NOTE: The Issue Fee and Publication Fee (if required) will not be accepted from anyone other than the applicant; a registered attorney or agent; or the assignee or other party in
`interest as shown b the records of the United States Patent and Trademark Office.
`
`
`
`Authorized SignatureWM Date 02/28/2013
`
`Typed or printed name HOlly L RUdI'IICk
`Registration No.
`43,065
`
`This collection of information is required by 37 CFR 1311. The information is re uired 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 1.14. T is collection is estimated to take 12 minutes to complete, including gathering, preparing, and
`submitting the completed application form to the USPTO. Time will vary de endin upon the individual case. Any comments on the amount of time you require to complete
`this form and/or suggestions for reducing this burden, should be sent to the Chief In ormation Officer, US. Patent and Trademark Office, US. Department of Commerce, PO.
`
`Box 1450, Alexandria, Virginia 22313—1450. DO NOT SEND FEES OR COMPLETED FOKVIS TO THIS ADDRESS. SEND TO: Commissioner for Patents, PO. Box 1450,
`Alexandria, Virginia 22313-1450.
`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.
`
`PTOL—85 (Rev. 02/11) Approved for use through 08/31/2013.
`
`OMB 0651—0033
`
`
`US. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
`
`Page 11 of 226
`
`Page 11 of 226
`
`

`

`Docket BP4880
`
`PTO/SBM 7 {03-69}
`‘ 1/201 2. “NB U3310016
`Approved torus
`
`AR: MENT OFLCOMMERCE
`13.5 Patent and Trademark OiiiC
`
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a coiiection of information uniess it disp vs a va:id OMB centre: number.
`
`“FEE ABQRESS” ENQECATEQN FQRM
`
`Address to:
`
`Fax to:
`
`Matt Stop M Correseendence
`Cemmtssioner fer Cetents
`Rt). BOX 1451}
`
`2 Atexandria, VA 223134 456
`
`5?1—2?3—55€3t§
`
`in addition
`ENSTRUCHONSI: Ti1e issue fee must have been paidfor appi ipation(s) iisted eh thisform.
`oniy an address represented by a CustomCI NumberICan he established as the fee address for nIaintChanoe
`fee purposes (hereafter fee address) Atee address shout d b . estetIiished when correspondence reieted to
`marntenaneC fees sheuid ‘oe maiiCd to a different address than the oorrespondeneC aCdIess for the appiication.
`When to check the first box hetow: if you hCIJeL.'2 Customer umber to represent the fee address When
`to cheek the seoend box heiow21fyeu here nC Custemer Numbei represCIntincI the CiCsired I‘Ce address.
`nwhich case a compieted Request:or Customer Number (PTOISBI’EEES) must be attached to this form. For
`more information on Customer Numbers, see the Manuei of Patent Examining Procedure (MPEP) § 403.
`
`For the foiiowing iisted appimationhs). piease recognize as the ‘ ee Address" under the provisions 0137' CFR
`1.363 the address associated with:
`
`Customer Number:
`
`OR
`
`
`
`
`
`PATENT NUMBER
`(it known)
`
`11/237,341
`
`
`
`Compieted by (check one}:
`
`1:1 Appiicant/‘inventor
`
`:
`
`5
`
`D Assignee or" record of the entire interest. See 37 (Ci-”R 3.71.
`Statement under 37‘ CFR 3.73(b) is enpiosed.
`(Form FTQISBI'QES)
`
`lHolly LI Rudnick/
`
`Holly L. Rudnick
`
`‘ nature
`
`Typed or printed name
`
`(214) 8565372
`Requester’s teiephane number
`
`5 1:1
`
`,
`Assgnee recorded at Reel
`
`Frame
`
`February 28, 2013
`
`Signatures of at! the'Inventors or assignees of record of the entire interest or their representativeis) are required. Submit rnuitipie forms if more that
`
`‘ quired see bet-3w.
`
`tiaiitv is governed by aoIUS .13. 122‘and 37CFR1 11 and 1 14 :his COI Iection IS estimated to tekeL.‘1 minutes to Complete.
`fitting the compieted at
`iicatieri form to the USPTO. Time wit vary depending upon the
`dual (2:35? Any Comments on
`.
`
`you require to oompie
`this toIn and/or
`‘tiors for reducing th
`burden. should Ce L ht to the Chief iniorr
`x: O
`,
`.
`. ,
`'
`the amount of
`
`Trademark OI‘ ... US. Departmentm ..ernmerce 13.0. Box 1 ..
`.
`e
`.
`.VA 22313-1450. DO NOT .
`.. DCQMPLE .E 1') F0 MS TO THE .
`'
`
`
`
`SEND TO: Mai! Stop M Correspondenx Commissioner for Patents RC). Box1450, Aiexancfiria. VA 22313-1450.
`
`it you need assistance in sample:ing theform, caii ‘i800-PiI’D—9 198) and seieCMotion 2.
`
`,
`
`Page 12 of 226
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`Page 12 of 226
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`

`
`Certification Under 37 C.F.R. 1.8
`
`Date of Mailing or Transmission: Februaiy 28. 2013. Ihereby certify that I have caused the document indicated herein on the
`date indicated above to be transmitted Via the Office electronic filing system in accordance with 37 C.F.R. Sec. 1.6(a)(4).
`BY:
`/Vicki L. Andrews/
`Name: Vicki L. Andrews
`signature typed name
`
`
`PATENT APPLICATION
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Named Inventor: Carlos Aldana
`
`Examiner: Michael R. Neff
`
`Application No: 11/237,341
`Filing Date: 09/28/2005
`Confirmation N0. 6712
`
`Art Unit: 2631
`Docket No: BP4880
`
`Title: Efficient feedback of channel information in a closed loop beamforming wireless
`communication system
`
`COMMENT ON STATEMENT OF REASONS FOR ALLOWANCE
`
`Date: February 28, 20l3
`
`Mail Stop Issue Fee
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, Virginia 22313- 1450
`
`Applicant recognizes that in accordance with M.P.E.P. § 1302.14, the Examiner's
`
`reasons for allowance need not set forth all of the details as to why the claims are
`
`allowed. Applicant does not concede that the Examiner's stated reasons for allowance are
`
`the only grounds for patentability of the allowed claims or that any element excluded
`
`from the Examiner’s Reasons for Allowance is taught or suggested by the at of
`
`record. Further, Applicant does not concede that all of the elements identified by the
`
`Examiner are necessary to distinguish the prior art of record or to satisfy the requirements
`
`of 35 U.S.C. § 112. In addition, the Examiner does not assert, and Applicant would not
`
`concede, that the Examiner's reasons have any bearing on the patentability of claims in
`
`any other applications directed to the disclosed subject matter.
`
`Each dependent claim stands on its own and is allowable on its own merits. In
`
`particular, each dependent claim may be allowable on the basis of a combination of some
`
`of the features recited in the dependent claim and its base claim(s), which combination of
`
`features may not include all of the elements identified in the Examiner's reasons for
`
`allowance.
`
`Page 13 of 226
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`Page 13 of 226
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`

`

`Application No. 11/237,341
`
`Docket No. BP4880
`
`No additional fees are believed to be due. In the event that additional fees are due
`
`or a credit for an overpayment is due, the Commissioner is hereby authorized to charge
`
`any additional fees or credit any overpayment to Garlick & Markison Deposit Account
`
`No. 50-2126.
`
`RESPECTFULLY SUBMITTED,
`By: /Holly L. Rudnick/ Reg. No. 43,065
`Holly L. Rudnick
`Garlick & Markison
`P. O. Box 160727
`
`Austin, TX 78716-0727
`Phone:
`(214) 856-5372
`Fax:
`(888) 332-2640
`email: hrudnick@texaspatents.com
`
`Page 14 of 226
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`Page 14 of 226
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`

`

`Electronic Patent Application Fee Transmittal
`
`
`
`Application Number: 11237341
`
`Filing Date:
`
`28—Sep—2005
`
`Title of Invention:
`
`Efficient feedback of channel information in a closed loop beamforming
`.
`.
`.
`Wireless communication system
`
`
`
`First Named Inventor/Applicant Name:
`
`Carlos Aldana
`
`Holly L. Rudnick/Vicki Andrews
`
`Attorney Docket Number:
`
`BP4880
`
`Filed as Large Entity
`
`Utility under 35 USC 111 (a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`USD($)
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-lnterference:
`
`Post-AIIowance-and-Post-lssuance:
`
`Utility Appl Issue Fee
`
`1501
`
`1770
`
`1770
`
`Publ. Fee- early, voluntary, or normal
`
`1504
`
`1
`
`300
`
`300
`
`Page 15 of 226
`
`Page 15 of 226
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`

`

`.
`
`.
`
`Miscellaneous:
`
`207°
`
`Total in USD ($)
`
`_
`
`Sub-Total in
`
`Page 16 of 226
`
`Page 16 of 226
`
`

`

`Electronic Acknowledgement Receipt
`
`
`
`Application Number: 11237341
`
`International Application Number:
`
`Confirmation Number:
`
`6712
`
`Title of Invention:
`
`Efficient feedback of channel information in a closed loop beamforming
`.
`.
`.
`WIreless communication system
`
`
`
`——
`
`
`
`Receipt Date: 28—F EB-201 3
`
`Filing Date:
`
`28—SEP-2005
`
`Application Type:
`
`Utility under 35 USC111(a)
`
`Payment information:
`
`Payment Type
`
`Credit Card
`
`Charge any Additional Fees required under 37 CPR Section 1.21 (Miscellaneous fees and charges)
`
`13391
`RAM confirmation Number
`
`
`
`
`Deposit Account 502126
`
`Authorized User
`
`ANDREWS, VICKI
`
`The Director ofthe USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.20 (Post Issuance fees)
`
`Page 17 of 226
`
`Page 17 of 226
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`

`

`Document
`Number
`
`Document Descri
`
`tion
`
`P
`
`File Size(Bytes)/
`Message Digest
`
`Pages
`Multi
`Part /.zip (ifappl.)
`
`Issue Fee Payment (PTO-85B)
`
`BP4880-IssueFeeTransmittaI.
`pdf
`
`d3(302910(33264b064959330e1a93zb8f8
`Saan
`
`Information:
`
`Miscellaneous Incoming Letter
`
`BP4880-Fee—Address-Form.pdf 1430eb624d66182533f655c926936b49882
`59315
`
`1612868
`
`Warnings:
`Information:
`
`Post Allowance Communication —
`Incoming
`
`BP4880-Comment.pdf
`
`11023
`
`d28a0702b40c2c309831c0c05f77dn69293
`e2af4
`
`‘
`
`
`
`Warnings:
`Information:
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`31528
`
`6c4844e4c3f5c5fd4fc1e87ee0bco4c30d79
`bfee
`
`Warnings:
`
`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 ofthe 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.
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`Page 18 of 226
`
`Page 18 of 226
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`

`

`
`Certification Under 37 C.F.R. 1.8
`Date of Mailing or Transmission: February 7, 2013, Ihereby certify that I have caused the document indicated herein on the date
`indicated above to be transmitted Via the Office electronic filing system in accordance with 37 C.F.R. Sec. l.6(a)(4).
`
`Name: Vicki L. Andrews
`BY: Nicki L: Andrews/
`
`signature typed name
`
`PATENT APPLICATION
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant(s):
`
`Serial No.:
`
`Filed:
`
`Title:
`
`Carlos Aidana
`
`Docket:
`
`BP4880
`
`11/237,341
`
`09/28/2005
`
`Art Unit:
`
`2631
`
`Examiner: Michael R. Neff
`
`Efficient Feedback of Channel Information in a Closed Loop Beamforming
`Wireless Communication System
`
`AMENDMENT UNDER § 312
`
`February 7, 2013
`
`M/S Issue Fee
`Commissioner for Patents
`P. O. Box 1450
`
`Alexandria, VA 22313-1450
`
`1.312 AMENDMENT
`
`This amendment is being filed to amend the priority paragraph. No new matter is being
`
`added herein.
`
`Page 19 of 226
`
`Page 19 of 226
`
`

`

`Serial No.2 11/237,341
`Examiner: Michael R. Neff
`
`IN THE SPECIFICATION
`
`Please amend the Cross References to Related Applications paragraph as follows:
`
`This application is a continuation—in—part of US. Utility Application No. 11/168,793,
`
`filed June 28, 2005 which claims priority to US. Provisional Patent Application Serial No.
`
`60/673,451, filed April 21, 2005, and this application also claims priority to US. Provisional
`
`Patent Application Serial No. 60/698,686, filed July 13, 2005, all of which are incorporated
`
`herein by reference for all purposes.
`
`Page 2
`
`Page 20 of 226
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`Page 20 of 226
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`

`

`Serial No.2 11/237,341
`Examiner: Michael R. Neff
`
`REMARKS
`
`The amendment to the section entitled “Cross Reference to Related Applications” is
`
`made to clarify and more clearly identify the priority claims. No new matter has been added.
`
`The priority claim as amended does not make any priority claim that was not previously made in
`
`the Specification. Applicants provide herewith a Supplemental Application Data Sheet.
`
`Applicants respectfully request an updated Filing Receipt.
`
`No additional fees are believed to be due.
`
`In the event that additional fees are due or a
`
`credit for an overpayment
`
`is due,
`
`the Commissioner is hereby authorized to charge any
`
`additional fees or credit any overpayment to Garlick & Markison Deposit Account N 0. 50-2126.
`
`The Examiner is invited to contact the undersigned by telephone or email if the Examiner
`
`believes that such a communication would advance the prosecution of the present invention.
`
`RESPECTFULLY SUBMITTED,
`
`By: /Holly L. Rudnick/ Reg. No. 43,065
`Holly L. Rudnick
`Garlick & Markison
`P. O. Box 160727
`
`Austin, TX 78716-0727
`Phone: (214) 856-5372
`Fax: (888) 332-2640
`email: hrudnick@texaspatents.com
`
`Page 3
`
`Page 21 of 226
`
`Page 21 of 226
`
`

`

`U.S. Application Number: 11/237,341
`
`SUPPLEMENTAL APPLICATION DATA SHEET
`
`Kindly amend the domestic benefit claim, as follows:
`
`This application is a continuation—in—part of U.S. Utility Application No. 11/168,793,
`
`filed June 28, 2005 which claims priority to U.S. Provisional Patent Application Serial No.
`
`60/673,451, filed April 21, 2005, and this application also claims priority to U.S. Provisional
`
`Patent Application Serial No. 60/698,686, filed July 13, 2005, all of which are incorporated
`
`herein by reference for all purposes.
`
`RESPECTFULLY SUBMITTED,
`
`By: /IIolly L. Rudnick/ Reg. No. 43,065
`Holly L. Rudnick
`Garlick & Markison
`P. O. Box 160727
`
`Austin, TX 78716-0727
`Phone: (214) 856-5372
`Fax: (888) 332-2640
`email: hrudnick@texaspatents.corn
`
`Page 22 of 226
`
`Page 22 of 226
`
`

`

`Electronic Acknowledgement Receipt
`
`
`
`Application Number: 11237341
`
`International Application Number:
`
`Confirmation Number:
`
`6712
`
`Title of Invention:
`
`Efficient feedback of channel information in a closed loop beamforming
`.
`.
`.
`WIreless communlcatlon system
`
`
`
`——
`
`
`
`Receipt Date: O7-FEB-2013
`
`Filing Date:
`
`28—SEP-2005
`
`Application Type:
`
`Utility under 35 USC111(a)
`
`Payment information:
`
`7(5e
`
`File Size(Bytes)/
`.
`.
`.
`Document
`Number
`Document Descrlptlon
`FIle Name
`Message Digest
`Part /.zip (ifappl.)
`19206
`
`BP4880—312—Amendment—bz.
`pdf
`
`6l8dlf51 591621 7e9df591d9<aall38258d5
`
`Page 23 of 226
`
`Page 23 of 226
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`

`

`Multipart Description/PDF files in .zip description
`
`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.
`
`Total Files Size (in bytes)
`
`
`
`New International Application Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 1810), a Notification of the International Application Number
`and ofthe International Filing Date (Form PCT/R0/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`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 ofthe 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 24 of 226
`
`Page 24 of 226
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVIISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria. Virginia 22313-1450
`WWW IISPIO gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`me
`2142
`GARLICK & MARKISON
`PO. BOX 160727
`AUSTIN, TX 78716-0727
`
`1222/2021
`
`NEFF, MICHAEL R
`
`PAPER NUMBER
`
`ART UNIT
`
`2631
`
`DATE MAILED: 12/28/2012
`
`11/237,341
`
`09/28/2005
`
`Carlos Aldana
`
`BP4880
`
`6712
`
`TITLE OF INVENTION: Efficient feedback of channel information in a closed loop beamforming wireless communication system
`
`APPLN. TYPE
`
`SMALL ENTITY
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonprovisional
`
`N 0
`
`$ 1770
`
`$3 00
`
`$0
`
`$2070
`
`DATE DUE
`
`03/28/2013
`
`TIIE APPLICATION IDENTIFIED ABOVE IIAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAVVAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313