`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addiess: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria. Viiginia 22313-1450
`www.uspto.gov
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`127226
`
`-
`7390
`
`10/21/2014
`
`Birch, Stewart, Kolasch & Birch, LLP
`PO. Box 747
`Fan.c1...d.,VA22040-0747
`
`JAlN,RAJK
`
`2411
`
`DATE MAILED: 10/21/2014
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`0465-23 54PUSJ
`Dong Youn SEO
`03/08/2013
`13/791,421
`TITLE OF INVENTION: METHOD AND APPARATUS FOR INDICATING DEACTIVATION 0F SEMIPPERSIS TENT SCHEDULING
`
`I918
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE
`
`PREV. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`nonprovi sional
`
`I
`
`\1 )ISCOI fNTFD
`
`$960
`
`SO
`
`SO
`
`S960
`
`DATE DUE
`
`01/21/2015
`
`THE APPLICATION IDENTIFIED ABOVE HAS 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.
`TIIIS APPLICATION IS SUBJECT TO VVITIIDRAWAL FROM ISSUE AT TIIE INITIATIVE OF TIIE 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 'I‘I-IREE MONTHS FROM THE
`MAILING DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED.
`THIS
`STATUTORY PERIOD CANNOT BE EXTENDED.
`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN TIIIS APPLICATION.
`IF AN ISSUE FEE IIAS
`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:
`
`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
`entity status still applies.
`II the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
`If the ENTITY STATUS is changed from that shown above, on PART B - FEE(_S) TRANSMITTAL, complete section number 5 titled
`”Change in Entity Status (from status indicated above)".
`For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
`fees.
`
`II. 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 "4b"
`of Part B - Fee(s) Transmittal should be completed and an extra copy of the fonn should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
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`
`III. All communications regarding this application must give the application number. Please direct all comlnunications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary.
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`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.
`
`PTOI.—85 (Rev. 02/11)
`
`Page 1 of 3
`
`Ex. 1008 - TCT Mobile (US) Inc.
`Ex. 1008 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-00678
`Page 1 of 7
`Page 1 of 7
`
`
`
`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 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
`in icated unless corrected below or directed otherwise in Block I, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for
`appropriate. AII further correspondence including the Patent, advance orders and notification of maintenance fees will be mailed to the current correspondence address as
`maintenance fee notifications
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1f01 any change ofaddWSS)
`
`_10/21/2014
`”390
`_ 127226
`BII'CI’I, Stewart, Kolasch & BII'Ch, LLP
`P 0 B
`747
`'
`'
`0X
`Falls Church, VA 22040-0747
`
`Note: A certificate of maiIinU can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`ave its own certificate of mailing or transmission.
`papers. Each additional paper, such as an assignment or formal drawing. must
`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 USPTO ( 71) 273-2885, on the date indicated below.
`(D
`)
`
`—eposrtor5 name
`
`APPLICATION NO.
`FILING DATE
`FIRST NAMED INVENTOR
`ATTORVEY DOCKET NO.
`CONFIRMATION NO.
`
`13/701,421
`03/08/2013.
`Dong Youn SEO
`046572354PUS3
`1018
`TITLE OF INVENTION: METHOD AND APPARATUS FOR INDICATING DEACTIVATION 0F SEMI-PERSISTENT SCHEDULING
`
`APPLN. TYPE
`ENTITY S I'ATUS
`ISSUE 1"EE DUE
`PUBLICATION IIL'E DI. E
`PREV. PAID ISSUE IIEE
`TOTAL FEE/S) DUE
`DATE DUE
`
` nonprovisional IINDISCOLNTED $960 SO S960 01/21/2015
`
`
`
`
`
`
`
`JAIN, RAJ K
`
`2411
`
`370-329000
`
`1. Change of correspondence address or indication of "Fee Address" (3.7
`CFR 1.363).
`D Chan e of corresgipndence address (or Change of Correspondence
`Address onn PTO/
`/122) attached.
`D "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.
`
`I
`
`2
`
`3
`
`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 fiIed for
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent.
`recordation as set forth in 37 CPR 3.1 1. Completion of this form is NOT a substitute for filing an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDE‘ICE: (CITY and STATE OR COUNTRY)
`
`I] Individual I] Corporation or other private group entity I] Government
`Please check the appropriate assignee category or categories (will not be printed on the patent) :
`4a. The following fee(s) are submitted:
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`3 Issue Fee
`:1 A check is enclosed.
`D Publication Fee (No small entity discount permitted)
`D Payment by credit card. Form PTO-2038 is attached.
`3 Advance Order — # of Copies
`3 The Director is hereby authorized to charge the required fee(s), any deficiency, or credits any
`overpayment, to Deposit Account Number
`(enclose an extra copy of this form).
`
`
`
`
`
`5. Change in Entity Status (from status indicated above)
`D Applicant certifying micro entity status. See 37 CFR 1.29
`
`D Applicant asserting small entity status. See 37 CPR 1.27
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/ 15A and 15B), issue
`ee payment in the micro entity amount will not be accepted at the risk of application abandonment.
`NOTE: If the application was previously under micro entity status, checking this box will be taken
`0 be a notification of Ioss of entitlement to micro entity status.
`NOTE: Checking this box will be taken to be a notification of loss of entitlement to small or micro
`D Applicant changing to regular undiscounted fee status.
`entity status. as applicable.
`NOTE: This form must be si rned in accordance with 37 CFR 131 and 1.33. See 37 CFR 1.4 for si mature re uirements and certifications.
`
`Authorized Signature
`
`Typed or printed name
`
`Date
`
`Registration No.
`
`PTOLASS Part B (1013) Approved for use through 10/31/2013.
`
`Page 2 of 3
`
`OMB 0651003
`
`
`US. Patent and Trademark Office; US. DEPARTMENT OF COMMERCE
`
`Ex. 1008 - TCT Mobile (US) Inc.
`Ex. 1008 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-00678
`Page 2 of 7
`Page 2 of 7
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addiess: COMMISSIONER FOR PATENTS
`Po. Box 1450
`Alexandria. Viiginia 22313-1450
`www.uspto.gov
`
`
`13/701,421
`03/08/2013
`Dong Youn SE0
`046572354PUS3
`1018
`
`127226
`
`—
`7390
`
`10121/2014
`
`Birch, Stewart, Kolasch & Birch, LLP
`PO. Box 747
`Falls Church, VA 22040-0747
`
`JAlN,RAJK
`
`2411
`
`DATE MAILED: 10/21/2014
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(Applications filed on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
`
`to eliminate the
`Section l(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i)
`requirement that the Office provide a patent term adjustment determination with the notice of allowance. See
`Revisions to Patent Term Adjustment, 78 Fed. Reg. 19416, 19417 (Apr. 1, 2013). Therefore, the Office is no longer
`providing an initial patent term adjustment determination with the notice of allowance. The Office will continue to
`provide a patent term adjustment determination with the Issue Notification Letter that is mailed to applicant
`approximately three weeks prior to the issue date of the patent, and will include the patent term adjustment on the
`patent. Any request for reconsideration of the patent term adjustment determination (or reinstatement of patent term
`adjustment) should follow the process outlined in 37 CFR 1.705.
`
`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 l-(888)-786-0101 or (571)-272-4200.
`
`PTOL-SS (Rev. 02/11)
`
`Page 3 of 3
`
`Ex. 1008 - TCT Mobile (US) Inc.
`Ex. 1008 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`Page 3 of 7
`Page 3 of 7
`
`
`
`OMB Clearance and PRA Burden Statement for PTOL-85 Part B
`
`The Paperwork Reduction Act (PRA) of 1995 requires Federal agencies to obtain Office of Management and
`Budget approval before requesting most types of information from the public. When OMB approves an agency
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`agency to inform the public about the OMB Control Number’s legal significance in accordance with 5 CFR
`1320.5(b).
`
`The information collected by PTOL-85 Part B is required by 37 CFR 1.311. The information is required to obtain
`or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is
`governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 12 minutes to complete,
`including gathering, preparing, and submitting the completed application form to the USP’l‘O. Time will vary
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`and/0r suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and
`Trademark Office, U .S. Department of Commerce, PO. Box 1450, Alexandria, Virginia 22313-1450. DO NOT
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`Privacy Act Statement
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`The Privacy Act of 1974 (PL. 93-579) requires that you be given certain information in connection with your
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`requirements of the Act, please be advised that: (1) the general authority for the collection of this information is
`35 U .S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for which
`the information is used by the U.S. Patent and Trademark Office is to process and/or examine your submission
`related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent and
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`proceedings or abandonment of the application or expiration of the patent.
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`k4.)
`
`The information provided by you in this form will be subject to the following routine uses:
`1. The information on this form will be treated confidentially to the extent allowed under the Freedom of
`Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records
`may be disclosed to the Department of Justice to determine whether disclosure of these records is required
`by the Freedom of Information Act.
`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence
`to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of
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`need for the information in order to perform a contract. Recipients of information shall be required to
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`5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of
`records may be disclosed, as a routine use, to the Intemational Bureau of the World Intellectual Property
`Organization, pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes
`of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C.
`218(c)).
`7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General
`Services, or his/her dcsignee, during an inspection of records conducted by GSA as part of that agency's
`responsibility to recommend improvements in records management practices and programs, under authority
`of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations
`governing inspection of records for this purpose, and any other relevant (i.e., GSA or Commerce) directive.
`Such disclosure shall not be used to make determinations about individuals.
`8. A record from this system of records may be disclosed, as a routine use, to the public after either publication
`of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a
`record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the
`record was filed in an application which became abandoned or in which the proceedings were terminated
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`inspection or an issued patent.
`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
`enforcement agency, if the USPTO becomes aware of a violation or potential Violation of law or regulation.
`
`Ex. 1008 - TCT Mobile (US) Inc.
`Ex. 1008 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-00678
`Page 4 of 7
`Page 4 of 7
`
`
`
`
`Applicant(s) 13/791,421Application No. SEO ET AL.
`
`'
`'
`AIA (First Inventor to
`5233133
`3:1 1”“
`File) Status
`No
`
`
`
`.
`.
`.
`Notice of Allowabilify
`
`
`
`Attachment(s)
`1. IXI Notice of References Cited (PTO-892)
`2. IX! Information Disclosure Statements (PTO/SB/OB),
`Paper No./Mail Date
`3. El Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`4. El Interview Summary (PTO-413),
`
`Paper No./Mail Date .
`/RAJ JAIN/
`
`-- 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. IXI This communication is responsive to 3/8/13.
`
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2. [I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`requirement and election have been incorporated into this action.
`
`; the restriction
`
`3. IX The allowed claim(s) is/are 1—20. As a result ofthe allowed claim(s), you may be eligible to benefit from the Patent Prosecution
`Highway program at a participating intellectual property office for the corresponding application. For more information. please see
`
`hit“ Lilwwwus'tooov/eatentsrinit events/
`iflinciexjsr or send an inquiry to PPered'pack "1 us idem.
`
`4. IX Acknowledgment is made of a claim forforeign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`*c) El None of the:
`b) El Some
`a) IX All
`1. IX Certified copies of the priority documents have been received.
`2. El Certified copies of the priority documents have been received in Application No. _
`3. El 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.
`
`5. El CORRECTED DRAWINGS ( as “replacement sheets”) must be submitted.
`
`El
`
`including changes required by the attached Examiner’s Amendment/ Comment or in the Office action of
`Paper No./Mai| Date
`.
`Identifying indicia 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. I] 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.
`
`5. El Examiner‘s Amendment/Comment
`6. IX Examiner‘s Statement of Reasons for Allowance
`
`7. El Other
`
`.
`
`Primary Examiner, Art Unit 2411
`
`
`
`
`
`
`US. Patent and Trademark Office
`PTOL-37 (Rev. 08-13)
`
`Part of Paper No./Mai| Date 20141009
`
`Notice of Allowabilify
`
`Ex. 1008 - TCT Mobile (US) Inc.
`Ex. 1008 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-00678
`Page 5 of 7
`Page 5 of 7
`
`
`
`Application/Control Number: 13/791 ,421
`Art Unit: 2411
`
`Page 2
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`Allowable Subject Matter
`
`The following is an examiner’s statement of reasons for allowance:
`
`Claim(s) 1, 6, 11, 16 and their respective dependents is/are allowed.
`
`The prior art fails to disclose receiving, by the UE, a Physical Downlink Control
`
`Channel (PDCCH) signal with a Radio Network Temporary Identifier (RNTI), wherein
`
`the PDCCH signal includes a first field related to a resource allocation; and performing a
`
`procedure for deactivating the SP8 transmission if the PDCCH signal satisfies
`
`conditions for SP8 deactivation, wherein the conditions for 8P8 deactivation include: -
`
`the RNTI is a 8P8 Cell RNTI (8P8 C-RNTI); and - the first field is entirely filled with '1‘
`
`Any comments considered necessary by 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 submissions should be clearly labeled “Comments on
`
`Statement of Reasons for Allowance.”
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to RAJ JAIN whose telephone number is (571 )272—3145.
`
`The examiner can normally be reached on M-TH.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Andrew Lai can be reached on 571 272-9741. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be 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
`
`Ex. 1008 - TCT Mobile (US) Inc.
`Ex. 1008 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-00678
`Page 6 of 7
`Page 6 of 7
`
`
`
`Application/Control Number: 13/791 ,421
`Art Unit: 2411
`
`Page 3
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/Raj K. Jain/
`
`Primary Examiner, Art Unit 2411
`
`Ex. 1008 - TCT Mobile (US) Inc.
`Ex. 1008 - TCT Mobile (US) Inc.
`TCT Mobile (US) Inc. v. Sisvel S.P.A., IPR2021-00678
`TCT Mobile (US) Inc. V. Sisvel S.P.A., IPR2021-00678
`Page 7 of 7
`Page 7 of 7
`
`