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 CFR. § 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 madein writing, and a true and correct
`
`copy of the agreementis filed as Exhibit 2001. Paper 9, 1,3. The parties further
`
`state that the district court has dismissed the claimsrelating to the challenged
`
`patent. Jd. at 2. The parties also assert that there are no public interest or other
`
`factors that weigh against termination of this proceeding.
`
`/d. at 1-2.
`
`This proceedingis in its preliminary stages and we havenot yet decided
`
`whetherto institute an inter partes review. Under the circumstances, we determine
`
`it is appropriate to terminate this proceeding. We further determineit is
`
`appropriate to treat the settlement agreement as business confidential information,
`
`and, therefore, grant the request. See 35 U.S.C. § 317(b); 37 CFR. § 42.74(c).
`
`It is
`
`ORDEREDthat the joint Motion to Terminate this proceedingis
`
`GRANTEDandthe proceeding is hereby terminated; and
`
`FURTHER ORDEREDthatthe 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
`
`

`

`JPR2019-01438
`* 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 E. Gasser
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`
`Page 3 of 226
`
`Page 3 of 226
`
`

`

`Case 3:18-cv-O1784-CAB-BLM Document 2 Filed G8/O2/18 PagelD.136 Page 1 of i
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`In Compliance with35 U.S.C. § 200 and/or 5 U.S.C. § 1116 you are hereby advised that a court action has
`
`beenfiled in the U.S. District Court Southern District of California on the following: _X_ Patents or ____
`Trademarks:
`
`ACTION REGARDING APATENT OR
` DATE FILED
`
`
`
`US District Court Southern District of California
`\
`.
`
`A
`eco
`an
`IDEFENDANT
`
`B
`
`Northern Research
`PATENT OR
`RADEMARK NO
`
`AWE
`
`Hu
`
`ECNNOLOST1E
`g
`
`©
`
`@
`
`Cla
`
`PATENT OR
`RADEMARK NO
`6.8.792432
`
`PATENT OR
`RADEMARK NO
`
`In the above—entitled case, the following patents(s)/ trademark(s) have been included:
`
`IDATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`RADEMARK NO
`
`Answe
`Amendmen
`PATENT OR
`RADEMARK NO
`
`O
`
`Other Pleading
`PATENT OR
`RADEMARK NO
`
`BoOG
`
`In the above—entitled case, the following decision has been rendered or judgment issued:
`
`IDECISION/JUDGMENT
`
`CLERK
`
`ohn Morri
`
`(BY) DEPUTY CLERK
`
`IDATE
`
`Page 4 of 226
`
`Page 4 of 226
`
`

`

`Case 3:18-cv-01785-BMS-BLM DBocurnent 2? Filed 08/01/18 PagelM. iso Page i ofa
`
`REPORT ON THE
`Mail Stop 8
`FILING OR DETERMINATION OF AN
`Director of the U.S. Patent and Trademark Office
`ACTION REGARDINGA PATENT OR
`P.O. Box 1450
`nN
`Ale
`4
`iy
`fy
`4
`fy
`Xana
`
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has
`beenfiled in the U.S. District Court Southern District of California on the following: _X_ Patents or ____
`Trademarks:
`
`DOCKET NO.
`
`DATE FILED
`
`US District Court Southern District of California
`
`
`
`A
`evo
`0
`IDEFENDANT
`
`B Corporation,etNorthern Research Kyocera a
`
`
`
`PATENT OR
`PATENT OR
`PATENT OR
`RADEMARK NO
`RADEMARK NO
`RADEMARK NO
`
`
`
`In the above—entitled case, the following patents(s)/ trademark(s) have been included:
`
`IDATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`RA
`MARK NO
`
`Answe
`Amendmen
`PATENT OR
`RADEMARK NO
`
`oss
`
`Bi
`
`Other Pleading
`PATENT OR
`RA
`MARK NO
`
`
`
`a B
`
`og
`
`fe ;
`
`{
`In the above—entitled case, the following decision has been rendered or judgmentissued:
`
`IDECISION/JUDGMENT
`
`CLERK
`
`ohn Morri
`
`(BY) DEPUTY CLERK
`
`IDATE
`
`Page 5 of 226
`
`Page 5 of 226
`
`

`

`Case 3:18-cv-O1786-CAB-BLM Document? Filed G8/O2/18 PagelD.131 Page 1 of i
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`In Compliance with35 U.S.C. § 200 and/or 5 U.S.C. § 1116 you are hereby advised that a court action has
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`
`beenfiled in the U.S. District Court Southern District of California on the following: _X_ Patents or ____
`Trademarks:
`
`US District Court Southern District of California
`4
`
`CA
`Diego,
`an
`IDEFENDANT
`
`ACTION REGARDING APATENT OR
` DATE FILED
`
`
`
`hern Research orporation,et a
`
`
`PATENT OR
`PATENT OR
`PATENT OR
`RADEMARK NO
`RADEMARK NO
`RADEMARK NO
`L7sl9gs9 SG R79
`
`In the above—entitled case, the following patents(s)/ trademark(s) have been included:
`
`IDATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`RADEMARK NO
`He
`>»PO
`BoOG
`Bo
`
`
`Answe
`Amendmen
`PATENT OR
`RADEMARK NO
`
`oss
`
`Bi
`
`Other Pleading
`PATENT OR
`RADEMARK NO
`
`In the above—entitled case, the following decision has been rendered or judgmentissued:
`
`IDECISION/JUDGMENT
`
`CLERK
`
`ohn Morri
`
`(BY) DEPUTY CLERK
`
`IDATE
`
`Page 6 of 226
`
`Page 6 of 226
`
`

`

`
`
`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.
`
`11/237,341
`
`ISSUE DATE
`
`04/09/2013
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`8416862
`
`BP4880
`
`6712
`
`51472
`
`7590
`
`03/20/2013
`
`GARLICK & MARKISON
`P.O. BOX 160727
`AUSTIN, TX 78716-0727
`
`The projected patent numberand 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) wasfiled in the above-identified application, the filing date that
`determines Patent Term Adjustmentis 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) WEBsite (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 WEBsite http://pair-uspto.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 USAis the best country in
`the world to develop technology, manufacture products, and grow yourbusiness, visit SelectUSA. gov.
`
`IR103 (Rev. 10/09)
`
`Page 7 of 226
`
`Page 7 of 226
`
`

`

`
`
`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.
`
`11/237,341
`
`09/28/2005
`
`Carlos Aldana
`
`BP4880
`
`6712
`
`7590
`51472
`GARLICK& MARKISON
`P.O. 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 timeperiodforreply, 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@ TEXASPATENTS.COM
`ghmptocor@texaspatents.com
`smewhinnie @texaspatents.com
`
`PTOL-90A (Rev. 04/07)
`
`Page 8 of 226
`
`Page 8 of 226
`
`

`

` . 11/237,341 ALDANA ET AL.
`
`Responseto Rule 312 Communication
`-
`-
`Examiner
`Art Unit
`
`
`
`MICHAEL NEFF 2631
`
`
`
`
`
`Application No.
`
`Applicant(s)
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address —
`
`1. KX] The amendmentfiled on 07 February 2013 under 37 CFR 1.312 has been considered, and has been:
`
`a)
`
`entered.
`
`b) (1) entered as directed to matters of form not affecting the scopeof the invention.
`
`c)[ disapproved because the amendmentwasfiled after the paymentofthe issuefee.
`
`Any amendmentfiled after the date the issue fee is paid must be accompaniedbya petition under 37 CFR 1.313(c)(1)
`
`and the required fee to withdraw the application from issue.
`
`d)() disapproved. See explanation below.
`
`e)(] entered in part. See explanation below.
`
`/Shuwang Liu/
`Supervisory Patent Examiner, Art Unit 2631
`
` U.S. Patent and Trademark Office
`
`/MICHAEL R. NEFF/
`Examiner, Art Unit 2631
`
`PTOL-271 (Rev. 04-01)
`
`Reponseto Rule 312 Communication
`
`Part of Paper No. 20130225
`
`Page 9 of 226
`
`Page 9 of 226
`
`

`

`IN THE SPECIFICATION
`
`Serial No.: 11/237,341
`Examiner: Michael R. Neff
`
`Please amend the Cross References to Related Applications paragraph 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.
`
`Page 2
`
`Page 10 of 226
`
`Page 10 of 226
`
`

`

`PARTB - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`or Fax (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
`indicated unless corrected below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "TLE ADDRESS"for
`maintenancefee notifications.
`
`CURRENT CORRESPONDENCE ADDRESS(Note: Use Block | for any change of address)
`
`7590
`51472
`GARLICK & MARKISON
`P.O. BOX 160727
`AUSTIN, TX 78716-0727
`
`12/28/2012
`
`Note: A certificate of mailing can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`papers. Each additional paper, such as an assignment or formal drawing, must
`ave its owncertificate 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 forfirst class mail in an envelope
`addressed to the Mail Stop ISSUF FEE address above, or being facsimile
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`(Depositor's name)
`(Signature)
`(Mate)
`
`
`
`11/237,341
`
`09/28/2005
`
`Carlos Aldana
`
`BP4880
`
`6712
`
`‘TITLE OFINVEN'TION: Efficient feedback of channel intormation in a closed loop beamforming wireless communication system
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV.PAID ISSUE FEESMALL ENTITY ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`$300
`CLASS-SUBCLASS
`
`$0
`
`$2070
`
`03/28/2013
`
`375-299000
`
`2. Forprinting on the patentfront page,list
`(1) the names of up to 3 registered patent attorneys
`or agents OR,alternatively,
`(2) the nameof a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents._Ifnonameis
`listed, no namewill be printed.
`
`.
`.
`1 Garlick & Markison
`:
`
`2 Holly L. Rudnick
`
`4
`~
`
`
`
`nonprovisional
`EXAMINER
`
`NO
`
`
`NEFF, MICHAEL R
`
`$1770
`ART UNIT
`
`2631
`
`1. Change of correspondence address orindication of "Fee Address" (37
`CFR 1.363).
`LI Change of correspondence address (or Change of Correspondence
`Address form P'l'O/SB/122)attached.
`Kl "Fee Address" indication (or "Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`Numberis required.
`
`
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT(printor 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 NOTa substitute forfiling an assignment.
`(A) NAMEOF ASSIGNEE
`(B) RESIDENCE:(CITY and STATE OR COUNTRY)
`
`Broadcom Corporation
`
`Irvine, CA
`
`Please check the appropriate assignee calegory or categories (will nol be printed on the patent) :
`
`(LD individual kl Corporation or other privale group enlily (J Government
`
`
`
`4a. The following fee(s) are submitted:
`El Issue Fee
`RX) Publication Fee (No small entity discount permitted)
`Lj Advance Order - # of Copies
`
`4b. Paymentof Fee(s): (Please first reapply any previously paid issue fee shown above)
`LJ A checkis enclosed.
`i] Paymentby credit card. FormPT-O-2038is-attached.
`kl The Director is hereby authorized to charge the
`required fee(s), any deficiency, or credit any
`overpayment, to Deposit Account Number
`-
`(enclose an extra copy of this form).
`
`5. Changein Entity Status (from status indicated above)
`
`
`LI}. Applicant is no longer claiming SMALL ENTITYstatus. See 37 CFR 1.27(g)(2).
`LJ a. Applicant claims SMALL ENTITYstatus. 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 by
`the records of the United States Patent and Trademark Office.
`
`
`
`
`Authorized Signature_/HollyL.Rudnick/ Date 02/28/2013
`
`Typedor printed name Holly L. Rudnick
`Registration No.
`43,065
`
`This collection of information is required by 37 CFR 1.311. The information is required to obtain or retain a benefit by the public whichis to file (and by the USPTOto process)
`an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 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 amountof time you require to complete
`this form and/or suggestions for reducing this burden, should be sentto the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O.
`
`Box 1450, Alexandria, Virginia 22313-1450. DO NOT SEND FEES OR COMPLETED FORMSTO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450,
`Alexandria, Virginia 22313-1450.
`Under the Paperwork Reduction Act of 1995, no persons are required to respondto a collection of information unless it displays a valid OMB control number.
`
`PTOL-85 (Rev. 02/11) Approved for use through 08/3 1/2013.
`
`OMB 0651-0033
`
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 11 of 226
`
`Page 11 of 226
`
`

`

`Docket BP4880
`
`PTOMSB4? (03-09}
`
`ugh C9/S1/2012, OMB 0651-0016
`Approved for us
`ARTMENT OF COMMERCE
`US. Patent and Trademark Offic
`
`Underthe Paperwork Reduction Act of 1995, no persans are required to respond to 2 coilection of information uniess it displays a valid OMB control number.
`
`“FEE ADDRESS” INDICATION FORM
`
`| Address ta:
`| Mali Stop M Correspondence
`| Commissioner for Patents
`| P.O. Box 1450
`| Alexandria, VA 22313-1450
`
`Fax to:
`871-273-6506
`
`For the following listed application(s}, olease recognize as the “Fee Address” underthe provisions of 37 CFR
`1.363 the address associated with:
`
`|
`
`Customer Number:
`
`OR
`
`in addition,
`INSTRUCTIONS: The issue fee must have been paid for application(s) listed on this form.
`only an address represented by a Custamer Numbercan be established as the fee address for maintenance
`fee purposes (hereafter, fee address}. Afee address should be established when correspondence related to
`maintenance fees should be mailed to a different address than the correspondence address for the application.
`When to check the first box below: I you have a Customer Number to represent the fee address. When
`to check the second box below: f you have no Customer Number representing the desired fee address,
`n which case a completed Requesi jor Customer Number (PTO/SB/125) must be alfached to this form. For
`more information on Customer Numbers, see the Manual of Patent Examining Procedure (MPEP) § 403.
`
`
`
`PATENT NUMBER
`Gf known}
`
`11/237,341
`
`
`
`Cornpleted by (check one):
`[| Apolicant/inventor
`
`Molly L. Rudnick/
`
`| [| Assignee of record ofthe entire interact. See 37 CFR 3.71.
`Statement under 37 CFR 3.73(b) Is enclosed.
`(Form PTO/SB/96}
`
`Holly L. Rudnick
`Typed or printed name
`(214) 856-5372
`Requester’s telephone number
`
`CI
`
`Assignees recorded at Ree!
`
`Frame
`
`February28, 2013
`
`Signatures of ail the inventors or assignees of record of the entire interest or their representative(s) are required. Submit multiple formsif more that
`is
`required, see below".
`
`
`
`:
`p
`>
`tility: is governed by 35 |us$c. W22 and 37 CFR 4. 14 and 4 44. This colte ction is estimated to talke §& minutes to complete,
`:
`iting the completed ap lication form to the USPTO.Time will vary depending upon the |
`se. Any comments on
`
`
`the amount of
`yourequire io complete
`this form andior
`i
`burdan, should des
`>
` Go
`Trademark Offices, U.S. Department of Commerce, P.O. Box 1450,
`»V¥A 22313-14450, DO NGT SE!
`5 COMPLE rE D FO
`
`
`SEND TO: Mail Stop M Correspandenc _ Commissioner for Patents, P,G. Box 4450, Alexandria. VA 22313-1450.
`if you needassistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`Page 12 of 226
`
`Page 12 of 226
`
`

`

`
`Certification Under 37 C.F.R. 1.8
`
`I hereby certify that [have caused the documentindicated herein on the
`Date of Mailing or Transmission: February 28, 2013.
`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 TRADEMARKOFFICE
`
`First Named Inventor: Carlos Aldana
`Application No: 11/237,341
`Filing Date: 09/28/2005
`Confirmation No. 6712
`Title: Efficient feedback of channel information in a closed loop beamforming wireless
`communication system
`
`Examiner: Michael R. Neff
`Art Unit: 2631
`Docket No: BP4880
`
`COMMENT ON STATEMENT OF REASONS FOR ALLOWANCE
`
`Date: February 28, 2013
`
`Mail Stop Issue Fee
`Commissioner for Patents
`P.O. 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 art 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 orto 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 andits 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 Commissioneris 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
`.
`gs
`wireless communication system
`
`Utility under 35 USC 111(a) Filing Fees
`
`Description
`
`Fee Code
`
`Quantity
`
`Sub-Total in
`
`USD(S$)
`
`feme
`
`1504
`
`Basic Filing:
`
`Miscellaneous-Filing:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`UtilityApplIssueFee
`
`Publ. Fee- early, voluntary, or normal
`
`1501 = 1770
`
`1770
`
`Page 15 of 226
`
`Page 15 of 226
`
`

`

`2070
`
`Total in USD (S$)
`
`.
`
`Sub-Total in
`
`_
`
`Page 16 of 226
`
`Page 16 of 226
`
`

`

`Electronic AcknowledgementReceipt
`
`
`
`Application Number: 11237341
`
`International Application Number:
`
`Confirmation Number:
`
`6712
`
`Title of Invention:
`
`Efficient feedback of channel information in a closed loop beamforming
`.
`sags
`wireless communication system
`
`
`
`er
`
`
`
`Receipt Date: 28-FEB-2013
`
`Filing Date:
`
`28-SEP-2005
`
`Application Type:
`
`Utility under 35 USC 111(a)
`
`Paymentinformation:
`
`Payment Type
`
`Credit Card
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.21 (Miscellaneous fees and charges)
`
`13391
`RAM confirmation Number
`
`
`
`
`Deposit Account 502126
`
`Authorized User
`
`ANDREWS,VICKI
`
`The Director of the USPTOis 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 Issuancefees)
`
`Page 17 of 226
`
`Page 17 of 226
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`

`

`Pages
`Multi
`File Size(Bytes)/
`DocumentDescription
`Document
`
`
`
`Number Message Digest|Part/.zip|P (ifappl.)
`
`Issue Fee Payment (PTO-85B)
`
`BP4880-IssueFeeTransmittal.
`pdf
`
`8ca0291 0caa264b0649593a0e1 a95chats
`Saat
`
`Information:
`
`Miscellaneous Incoming Letter
`
`BP4880-Fee-Address-Form.pdf 1430eb624d6618253af555<926936b4988)]
`59515,
`
`1612868
`
`Warnings:
`Information:
`
`Post Allowance Communication -
`Incoming
`
`BP4880-Comment.pdf
`
`11023
`
`d28a0702b40¢2¢3098a1 c0c05f77da69293
`edaf4
`
`|
`
`Warnings:
`
`the application.
`
`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 componentsfor
`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/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receiptwill establish the international filing date of
`
`Information:
`
`Warnings:
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`31528
`
`6c4844e4c3{5c5fd4fcl e867ee0bc04<30d79
`bfee
`
`This Acknowledgement Receipt evidencesreceipt on the noted date by the USPTOof 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 componentsfora 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 shownon this
`AcknowledgementReceiptwill 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/E0O/903indicating acceptance of the application asa
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`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, [herebycertify that I have caused the documentindicated 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).
`
`Name: Vicki L. Andrews
`/Vicki L. Andrews/
`BY:
`
`signature typed name
`
`PATENT APPLICATION
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants):
`
`Carlos Aldana
`
`Docket:
`
`BP4880
`
`Serial No.:
`
`11/237,341
`
`Art Unit:
`
`2631
`
`Filed:
`
`Title:
`
`09/28/2005
`
`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 amendmentis being filed to amend the priority paragraph. No new matter is being
`
`addedherein.
`
`Page 19 of 226
`
`Page 19 of 226
`
`

`

`IN THE SPECIFICATION
`
`Serial No.: 11/237,341
`Examiner: Michael R. Neff
`
`Please amend the Cross References to Related Applications paragraph 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.
`
`Page 2
`
`Page 20 of 226
`
`Page 20 of 226
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`

`

`Serial No.: 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 No. 50-2126.
`
`The Examineris 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: /Ilolly 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 22 of 226
`
`Page 22 of 226
`
`

`

`Electronic AcknowledgementReceipt
`
`
`
`Application Number: 11237341
`
`International Application Number:
`
`Confirmation Number:
`
`6712
`
`
`
`Title of Invention:
`
`Efficient feedback of channel information in a closed loop beamforming
`.
`sags
`wireless communication system
`
`ee
`
`—Attorney Docket Number:
`
`BP4880
`
`
`
`Receipt Date: 07-FEB-2013
`
`Filing Date:
`
`28-SEP-2005
`
`Application Type:
`
`Utility under 35 USC 111(a)
`
`Paymentinformation:
`
`705e
`
`File Size(Bytes)/
`.
`wou.
`Document
`DocumentDescription
`File Name
`Message Digest
`Part /.zip|
`(if appl.)
`Number
`19206
`
`BP4880-312-Amendment-bz.
`pdf
`
`618d1151591621 7e9df591d9caa2t38258d5
`
`Page 23 of 226
`
`Page 23 of 226
`
`

`

`Multipart Description/PDF files in .zip description
`
`Information:
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTOof 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.
`
`the application.
`
`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 componentsfor
`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/RO/105) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receiptwill establish the international filing date of
`
`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfora 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 shownon this
`AcknowledgementReceiptwill 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/E0/903indicating acceptanceof 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 TRADEMARKOFFICE
`
`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
`
`NOTICE OF ALLOWANCEAND FEE(S) DUE
`
`7300
`start
`GARLICK & MARKISON
`P.O. BOX 160727
`AUSTIN, TX 78716-0727
`
`Iana012
`
`NEFF, MICHAEL R
`
`2631
`
`DATE MAILED: 12/28/2012
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`11/237,341
`
`09/28/2005
`
`Carlos Aldana
`
`BP4880
`
`6712
`
`‘TITLE OFINVEN'TION: Efficient feedback of channel intormation in a closed loop beamforming wireless communication system
`
`
`
`
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV.PAID ISSUE FEESMALL ENTITY ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`nonprovisional
`
`NO
`
`$1770
`
`$300
`
`$0
`
`$2070
`
`03/28/2013
`
`THE APPLICATION IDENTIFIED ABOVE ITAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCEIS 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 (IEF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE
`
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STAT