`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`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 U.S. District Court for the Eastern District of Texas -Marshall Division
`on the following
`~Patents. ( 0 the patent action involves 35 U.S.C. ~ 292.):
`0 Trademarks or
`
`DOCKET NO.
`2: 17-cv-00517-JRG
`PLAINTIFF
`
`DATE FILED
`June 21, 2017
`
`AGIS Software Development LLC
`
`U.S. DISTRICT COURT
`Eastern D;strict of Texas -Marshall Division
`DEFENDANT
`ZTE Corporation , et al.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`IIOLDER OF PATENT OR TRADEMARK
`
`I 8,213,970
`
`2 9,408,055
`
`3 9,445,251
`
`July 3, 2012
`
`August 2, 2016
`
`AGIS Software Development LLC
`
`AGIS Software Development LLC
`
`September 13, 2016
`
`AGIS Software Development LLC
`
`4 9,467,838
`
`October 11, 2016
`
`AGIS Software Development LLC
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`0 Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`0 Answer
`
`0 Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`I
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`rRY) OEPUTY CLERK
`
`Copy 1-Upon initiation of action, mail this copy to Director Copy 3-l.lpon termination of action, mail this copy to Director
`Copy 2-lJpon filing document adding patent(s), mail this copy to Director Copy 4-Case file copy
`
`WhatsApp LLC
`Exhibit 1004
`Page 001
`
`
`
`AO 120 (Rev. 081101
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you arc hereby advised that a court action has been
`filed in the U.S. District Court for the Eastern District of Texas- Marshall Division
`on the following
`( 0 the patent action involves 35 U.S.C. § 292.):
`0 Trademarks or
`
`Qil Patents.
`
`DOCKET NO.
`2: 17-cv-00515-JRG
`PLAINTIFF
`
`DATE FILED
`June 21, 2017
`
`AGIS Software Development LLC
`
`U.S. DISTRICT COURT
`Eastern District of Texas- Marshall Division
`DEFENDANT
`
`LG Electronics, Inc.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDEROFPATENlORTRADEMARK
`
`1 8,213,970
`
`2 9,408,055
`
`3 9,445,251
`
`July 3, 2012
`
`August2, 2016
`
`AGIS Software Development LLC
`
`AGIS Software Development LLC
`
`September 13,2016
`
`AGIS Software Development LLC
`
`4 9,467,838
`
`October 11, 2016
`
`AGIS Software Development LLC
`
`5
`
`In the above-entitled case, the following patcnt(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`0 Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`0 Answer
`
`0 Cross Bill
`
`0 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`I
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`I(BY) OEJ>UTY CLERK
`
`Copy 1-l'pon initiation of action, mail this copy to Director Copy 3-lJpon termination of action, mail this COp)' to Director
`Copy 2-lipon filing document adding patent(s), mail this copy to Director Copy 4-Case tile copy
`
`WhatsApp LLC
`Exhibit 1004
`Page 002
`
`
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`REPORT ON THE
`Mail Stop 8
`FILING OR DETERMINATION OF AN
`Director of the U.S. Patent and Trademark Office
`ACTION REGARDING A PATENT OR
`P.O. Box 1450
`Alexandria, VA 22313-1450
`TRADEMARK
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. * 1116 you arc hereby advised that a court action has been
`
`filed in the U.S. District Court for the Eastern District of Texas- Marshall Division
`rn Patents.
`D Trademarks or
`( D the patent action involves 35 U.S.C. ~ 292.):
`
`on the following
`
`DOCKET NO.
`2: 17-cv-00513-JRG
`PLAINTIFF
`
`DATE FILED
`June 21, 2017
`
`AGIS Software Development LLC
`
`U.S. DISTRICT COURT
`Eastern District of Texas- Marshall Division
`DEFENDANT
`Huawei Device USA Inc., et al.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`!!OLDER Of PATENT OR TRADEMARK
`
`I 8,213,970
`
`2 9,408,055
`
`3 9,445,251
`
`July 3, 2012
`
`August 2, 2016
`
`AGIS Software Development LLC
`
`AGIS Software Development LLC
`
`September 13, 2016
`
`AGIS Software Development LLC
`
`4 9,467,838
`
`October 11, 2016
`
`AGIS Software Development LLC
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`PATENTOR
`TRADEMARK NO.
`
`INCLUDED BY
`
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`D Answer
`
`D Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`1
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case. the tollowing decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`I {BY) DEPUTY CLERK
`
`Copy I~lJpon initiation of action, mail this copy to Director Copy 3-Upon termination of action, mail this copy to Director
`Copy 2~Upon filing document adding patent(s), mail this copy to Director Copy 4-<::ase tile copy
`
`WhatsApp LLC
`Exhibit 1004
`Page 003
`
`
`
`AO 120(Rev 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`In Compliance with 35 U.S. C.~ 290 and/or 15 U.S. C.§ 1116 you arc hereby advised that a court action has been
`tiled in the U.S. District Court for the Eastern District of Texas· Marshall Division
`on the following
`( 0 the patent action involves 35 U.S.C. ~ 292.):
`0 Trademarks or
`
`Qi! Patents.
`
`DOCKET NO.
`2•17-cv-00516-JRG
`PLAINTIFF
`
`DATE FILED
`June 21, 2017
`
`U.S. DISTIUCT COURT
`Eastern District of Texas· Marshall Division
`DEFENDANT
`
`AGIS Software Development LLC
`
`Apple, Inc.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`I 8,213,970
`
`2 9,408,055
`
`3 9,445,251
`
`July 3, 2012
`
`August 2, 2016
`
`AGIS Software Development LLC
`
`AGIS Software Development LLC
`
`September 13, 2016
`
`AGIS Software Development LLC
`
`4 9,467,838
`
`October 11, 2016
`
`AGIS Software Development LLC
`
`5
`
`ln the above--entitled case, the following patent(s)J trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`0 Amendment
`DATE or PATENT
`OR TRADEMARK
`
`D Answer
`
`D Cross Bill
`
`0 Other Pleading
`
`HOLDER Or PATENT OR TRADE\1ARK
`
`I
`
`2
`
`3
`
`4
`
`5
`
`In the above--entitled case, the tbllowing decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`I (BY) DEPUTY CLERK
`
`Copy 1-L:pon initiation of action, mail this copy to Director Copy 3-lJpon termination of action, mail this cop} to Director
`Copy 2-lJpon filing document adding patent(s), mail this copy to Director Copy 4-Case file copy
`
`WhatsApp LLC
`Exhibit 1004
`Page 004
`
`
`
`AO 120 (Rev. 08/10)
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`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
`tiled in the U.S. District Court for the Eastern District of Texas- Marshall Division
`on the following
`~Patents. ( 0 the patent action involves 35 U.S.C. § 292.):
`D Trademarks or
`
`DOCKET NO.
`2:17-cv-00514-JRG
`PLArNTIFF
`
`DATE FILED
`June 21, 2017
`
`AGIS Software Development LLC
`
`U.S. DIS'! R.!Cf COURT
`Eastern District of Texas - Marshall Division
`DEFENDANT
`HTC Corporation
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`I !OLDER or PATENT OR TRADEMARK
`
`1 8,213,970
`
`2 9,408,055
`
`3 9,445,251
`
`July 3, 2012
`
`August2, 2016
`
`AGIS Software Development LLC
`
`AGIS Software Development LLC
`
`September 13, 2016
`
`AGIS Software Development LLC
`
`4 9.467,838
`
`October 11, 2016
`
`AGIS Software Development LLC
`
`5
`
`In the above---entitled case, the following patent(s)l tradcmark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`D Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`0 Answer
`
`D Cross Bill
`
`D Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`I
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case. the following decision has been rendered or judgement issued:
`
`DECISION/JUDGEMENT
`
`I (BY) DEPUTY CLERK
`
`Copy 1-Upon initiation of action, mail this copy to Director Copy 3-lJpon termination of action, mail this copy to Director
`Copy 2-Upon filing document adding patent(s), mail this copy to Director Copy 4--Case file copy
`
`WhatsApp LLC
`Exhibit 1004
`Page 005
`
`
`
`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.
`
`14/529,978
`
`ISSUE DATE
`
`10/1112016
`
`PATENT NO.
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`9467838
`
`MOC-001
`
`1092
`
`09/21/2016
`
`7590
`51414
`GOODWIN PROCTER LLP
`PATENT ADMINISTRATOR
`100 Northern A venue
`BOSTON, MA 02210
`
`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 0 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://pair.uspto.gov for additional applicants):
`
`Malcolm K. Beyer Jr., Jupiter, FL;
`Advanced Ground Information Systems, Inc., Jupiter, FL;
`Christopher R. Rice, Redmond, W A;
`
`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)
`
`WhatsApp LLC
`Exhibit 1004
`Page 006
`
`
`
`UNITED STA 1ES p A 1ENT 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
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`08/31/2016
`7590
`51414
`GOODWIN PROCTER LLP
`PATENT ADMINISTRATOR
`100 Northern A venue
`BOSTON, MA 02210
`
`EXAMINER
`
`OBAYANJU, OMONIYI
`
`ART UNIT
`
`PAPER NUMBER
`
`2646
`
`DATE MAILED: 08/3112016
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/529,978
`
`10/3112014
`
`Malcolm K Beyer 1L
`
`MOC-001
`
`1092
`
`TITLE OF INVENTION: METHOD TO PROVIDE AD HOC AND PASSWORD PROTECTED DIGITAL AND VOICE NETWORKS
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`SMALL
`
`$480
`
`$0
`
`$0
`
`$480
`
`11/30/2016
`
`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.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE 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
`IF AN ISSUE FEE HAS
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`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:
`
`L 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,
`If 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 l/2 the amount of undiscounted fees, and micro entity fees are l/2 the amount of small entity
`fees,
`
`IL 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 form 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
`the paper as an equivalent of Part B,
`
`IlL All communications regarding this application must give the application number, Please direct all communications prior to issuance to
`Mail Stop ISSUE FEE unless advised to the contrary,
`
`IMPORTANT REMINDER: Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenance fees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev, 02/11)
`
`Pagel of3
`
`WhatsApp LLC
`Exhibit 1004
`Page 007
`
`
`
`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.O. Box 1450
`Alexandria, Virginia 22313-1450
`(571)-273-2885
`
`or Fax
`
`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks l through 5 should be completed where
`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 l, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for
`maintenance fee notifications.
`
`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1 for any change of address)
`
`51414
`7590
`08/31/2016
`GOODWIN PROCTER LLP
`PATENT ADMINISTRATOR
`100 Northern A venue
`BOSTON, MA 02210
`
`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
`have 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 USPTO (571) 273-2885, on the date indicated below.
`
`(Depositor's name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/529,978
`
`10/3112014
`
`Malcolm K. Beyer Jr.
`
`MOC-001
`
`1092
`
`TITLE OF INVENTION: METHOD TO PROVIDE AD HOC AND PASSWORD PROTECTED DIGITAL AND VOICE NETWORKS
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`SMALL
`
`$480
`
`$0
`
`$0
`
`$480
`
`ll/30/2016
`
`EXAMINER
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`OBAYANJU, OMONIYI
`
`2646
`
`455-404200
`
`l. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`0 Change of correspondence address (or Change of Correspondence
`Address form PTO/SB/122) attached.
`0 "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
`( l) 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.
`
`2 ________________________ _
`
`3 ________________________ _
`
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent. If an assignee is identified below, the document has been filed for
`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)
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : 0 Individual 0 Corporation or other private group entity 0 Government
`
`4a. The following fee(s) are submitted:
`0 Issue Fee
`0 Publication Fee (No small entity discount permitted)
`0 Advance Order- #of Copies _________ __
`
`4b. Payment ofFee(s): (Please first reapply any previously paid issue fee shown above)
`0 A check is enclosed.
`0 Payment by credit card. Form PT0-2038 is attached.
`0 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)
`0 Applicant certifying micro entity status. See 37 CFR 1.29
`0 Applicant asserting small entity status. See 37 CFR 1.27
`0 Applicant changing to regular undiscounted fee status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/l5A and l5B), issue
`fee 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
`to be a notification of loss 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
`entity status, as applicable.
`
`NOTE: This form must be signed in accordance with 37 CFR 1.31 and 1.33. See 37 CFR 1.4 for signature requirements and certifications.
`
`Authorized Signature _______________________ _
`
`Date ____________________ _
`
`Typed or printed name ______________________ __
`
`Registration No. ________________ _
`
`PTOL-85 Part B (10-13) Approved for use through 10/3112013.
`
`OMB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 2 of3
`
`WhatsApp LLC
`Exhibit 1004
`Page 008
`
`
`
`UNITED STA 1ES p A 1ENT 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.
`
`14/529,978
`
`10/3112014
`
`Malcolm K. Beyer Jr.
`
`MOC-001
`
`1092
`
`51414
`7590
`08/31/2016
`GOODWIN PROCTER LLP
`PATENT ADMINISTRATOR
`100 Northern A venue
`BOSTON, MA 02210
`
`EXAMINER
`
`OBAYANJU, OMONIYI
`
`ART UNIT
`
`PAPER NUMBER
`
`2646
`
`DATE MAILED: 08/3112016
`
`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.
`
`Section 1(h)(2) of the AlA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i) to eliminate the
`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 CPR 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 1-(888)-786-0 101 or (571 )-272-4200.
`
`PTOL-85 (Rev. 02/11)
`
`Page 3 of3
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`WhatsApp LLC
`Exhibit 1004
`Page 009
`
`
`
`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
`request to collect information from the public, OMB (i) provides a valid OMB Control Number and expiration
`date for the agency to display on the instrument that will be used to collect the information and (ii) requires the
`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 USPTO. Time will vary
`depending 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 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 FORMS TO 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
`respond to a collection of information unless it displays a valid OMB control number.
`
`Privacy Act Statement
`
`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your
`submission of the attached form related to a patent application or patent. Accordingly, pursuant to the
`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
`Trademark Office may not be able to process and/or examine your submission, which may result in termination of
`proceedings or abandonment of the application or expiration of the patent.
`
`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
`settlement negotiations.
`3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a
`request involving an individual, to whom the record pertains, when the individual has requested assistance
`from the Member with respect to the subject matter of the record.
`4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having
`need for the information in order to perform a contract. Recipients of information shall be required to
`comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).
`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 International 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 designee, 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
`and which application is referenced by either a published application, an application open to public
`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.
`
`WhatsApp LLC
`Exhibit 1004
`Page 010
`
`
`
`Notice of Allowability
`
`Application No.
`14/529,978
`Examiner
`OMONIYI OBAYANJU
`
`Applicant(s)
`BEYER ET AL.
`AlA (First Inventor to File)
`Art Unit
`Status
`2646
`Yes
`
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`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 ALLOW ABILITY 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. ~This communication is responsive to 08/1212016.
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on ___ .
`2. D An election was made by the applicant in response to a restriction requirement set forth during the interview on __ ;the restriction
`requirement and election have been incorporated into this action.
`
`3. ~ The allowed claim(s) is/are 90-173. As a result of the 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
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`4. D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`*c) D None of the:
`a) D All
`b) D Some
`1. D Certified copies of the priority documents have been received.
`2. D Certified copies of the priority documents have been received in Application No. __ .
`3. D 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. D CORRECTED DRAWINGS (as "replacement sheets") must be submitted.
`D including changes required by the attached Examiner's Amendment I Comment or in the Office action of
`Paper No./Mail 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. 0 DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. D Notice of References Cited (PT0-892)
`2. D Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date __
`3. D Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`4. ~ Interview Summary (PT0-413),
`Paper No./Mail Date __ .
`
`/OMONIYI OBAYANJU/
`Primary Examiner, Art Unit 2646
`
`5. D Examiner's Amendment/Comment
`6. ~ Examiner's Statement of Reasons for Allowance
`7. D Other __ .
`
`U.S. Patent and Trademark Off1ce
`PTOL-37 (Rev. 08-13)
`20160822
`
`Notice of Allowability
`
`Part of Paper No./Mail Date
`
`WhatsApp LLC
`Exhibit 1004
`Page 011
`
`
`
`Application/Control Number: 14/529,978
`Art Unit: 2646
`
`Page 2
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AlA.
`
`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1.114
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`08/12/2016 has been entered.
`
`Allowable Subject Matter
`
`Claims 90-173 are allowed.
`
`The following is an examiner's statement of reasons for allowance: According to
`
`the Applicant's remarks and/or amendments filed on 08/12/2016, the prior art
`
`references (Crowley, Rousu, and Melen) does not teach the at least claim "A computer-
`
`implemented method comprising: performing, by a first device: joining a communication
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`network corresponding to a group, wherein joining the communication network
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`comprises transmitting a message including an identifier corresponding to the group;
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`participating in the group, wherein participating in the group includes sending first
`
`WhatsApp LLC
`Exhibit 1004
`Page 012
`
`
`
`Application/Control Number: 14/529,978
`Art Unit: 2646
`
`Page 3
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`location information to a first server and recei