`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00218
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`WOODFOREST NATIONAL BANK AND WOODFOREST
`FINANCIAL GROUP, INC.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 1 of 323
`
`PETITIONERS' EXHIBIT 1004
`
`
`
`Case 2:22-cv-00217-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 34
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00217
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`WELLS FARGO & COMPANY AND WELLS FARGO
`BANK, N.A.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 2 of 323
`
`
`
`Case 2:22-cv-00214-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 34
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00214
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`PNC FINANCIAL SERVICES GROUP, INC., PNC BANK,
`N.A., BBVA USA BANCHARES, INC., AND BBVA USA
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 3 of 323
`
`
`
`Case 2:22-cv-00212-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 34
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00212
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`JPMORGAN CHASE & CO., JPMORGAN CHASE
`BANK, NATIONAL ASSOCIATION AND CHASE BANK
`USA NATIONAL ASSOCIATION
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 4 of 323
`
`
`
`Case 2:22-cv-00211-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 34
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:21-cv-00211
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`BOKF, NATIONAL ASSOCIATION
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 5 of 323
`
`
`
`Case 2:22-cv-00216-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 35
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00216
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`TRUIST FINANCIAL CORPORATION AND TRUIST
`BANK
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 6 of 323
`
`
`
`Case 2:22-cv-00215-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 35
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00215
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`REGIONS FINANCIAL CORPORATION AND REGIONS
`BANK
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 7 of 323
`
`
`
`Case 2:22-cv-00213-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 34
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00213
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`PLAINSCAPITAL BANK AND HILLTOP HOLDINGS INC.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 8 of 323
`
`
`
`Case 2:22-cv-00210-JRG-RSP Document 2 Filed 06/17/22 Page 1 of 1 Page!D #: 34
`
`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
`Eastern District of Texas
`on the following
`filed in the U.S. District Court
`D Trademarks or
`( D the patent action involves 35 U.S.C. § 292.):
`
`~Patents.
`
`DOCKET NO.
`2:22-cv-00210
`PLAINTIFF
`DYNAPASS IP HOLDINGS LLC
`
`DATE FILED
`6/17/2022
`
`U.S. DISTRICT COURT
`Eastern District of Texas
`
`DEFENDANT
`BANK OF AMERICA CORPORATION AND BANK OF
`AMERICA, N.A.
`
`PATENTOR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`HOLDER OF PATENT OR TRADEMARK
`
`1 6,993,658
`
`1/31/2006
`
`DYNAPASS IP HOLDINGS LLC
`
`2
`
`3
`
`4
`
`5
`
`In the above-entitled case, the following patent(s)/ trademark(s) have been included:
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENTOR
`TRADEMARK NO.
`
`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 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-Upon 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
`
`Page 9 of 323
`
`
`
`01/02/2022
`507053802
`PATENT ASSIGNMENT COVER SHEET
`
`Electronic Version v1 .1
`Stylesheet Version v1 .2
`
`EPASID:PAT7100640
`
`SUBMISSION TYPE:
`NATURE OF CONVEYANCE:
`
`NEW ASSIGNMENT
`
`ASSIGNMENT
`
`CONVEYING PARTY DATA
`
`DYNAPASS, INC.
`
`Name
`
`Execution Date
`
`11/12/2021
`
`DYNAPASS IP HOLDINGS LLC
`
`16192 COASTAL HIGHWAY
`
`RECEIVING PARTY DATA
`Name:
`Street Address:
`City:
`State/Country:
`Postal Code:
`
`LEWES
`
`DELAWARE
`
`19958
`
`PROPERTY NUMBERS Total: 1
`
`Property Type
`Patent Number:
`
`6993658
`
`Number
`
`CORRESPONDENCE DATA
`Fax Number:
`(302)645-1280
`Correspondence will be sent to the e-mail address first; if that is unsuccessful, it will be sent
`using a fax number, if provided; if that is unsuccessful, it will be sent via US Mail.
`Phone:
`9099642272
`Email:
`miguel.medina@dynapass.com
`Correspondent Name:
`DYNAPASS, INC.
`Address Line 1:
`16192 COASTAL HIGHWAY
`Address Line 4:
`LEWES, DELAWARE 19958
`
`NAME OF SUBMITTER:
`SIGNATURE:
`DATE SIGNED:
`
`MIGUEL MEDINA
`
`/MM/
`
`01/02/2022
`
`This document serves as an Oath/Declaration (37 CFR 1.63).
`
`Total Attachments: 3
`source=DynaPass '658 Patent Asignment Agreement with Dynapass IP Holdings LLC-11-12-21 (1 )#page1 .tit
`source=DynaPass '658 Patent Asignment Agreement with Dynapass IP Holdings LLC-11-12-21 (1 )#page2.tif
`source=DynaPass '658 Patent Asignment Agreement with Dynapass IP Holdings LLC-11-12-21 (1 )#page3.tif
`
`Page 10 of 323
`
`
`
`ASSIGNMENT OF U.S PATENT NO. 6~993.658
`
`DynaPa,;s, Inc., a Delaware Corporation organized under and pursuant to the laws of the State
`
`of Delaware (hereinafter referred to as "Assignor"), is the sole and exdusive owner of the U.S.
`
`Patent No. 6,993,658 listed in Exhibit A (hereinafter referred to as " '658 Patent); and
`
`Dynapass IP Holdings, a Limited Liability Company and a wholly O\hmed subsidiai-y of
`
`DynaPass, Inc. organized under and pursuant to the laws of the State ofDelavvm·e (hereinafter
`
`referred to as 11Assignee"), desires tu acquire the right, title and interest in, to and under said
`
`'658 Patent a.ud the Inventions covered thereby.
`
`For good and valuable consideration, the receipt and sufficiency of which Assignor acknowledges,
`
`l\ssignor hereby seUs, assigns, transfors, and sets over to Assignee, its successors, legal
`
`representatives and assigns, the entire right, title and interest in and to said '658 Patent and all
`improvements thereon, and aH provisional, original, divisional, continuatio~ continuation in part,
`
`substitute or reissue applications and patents applied for or granted therefor (including related
`
`rights such as utility model registrations, inventor's certificates ai:id•the like\ in the Unite<l States
`··-----~------- of America and all other countries, which claim priority to the Patent Matters induding, vvithout
`
`limitation , all United States Letters Patents and all reissues, reexaminations and extensions
`
`thereof and all priority rights under all available international agrnements, treaties and conventions
`
`for the protection of intellectual property in its various fonns in every participating country, and
`
`the Commissioner of Patents and Trademarks is hereby authoriz,ed and requested to issue all
`
`patents resulting from the '658 Patent to said Assignee herein, as assignee of the entire interest
`
`therein; and the Assignor for itself and its legal representatives, heirs and assigns does hereby
`
`agree and covenant without further remunt~ration, to execute and deliver all originat divisional,
`
`continuation, continuation iI1 part, reissue and other applications for Letters Patent and all
`assignments thereof to said Assignee or its successors, legal representatives and assik,rns, to
`
`communicate to said Assignee or its successors, legal representatives and assigns all facts known
`
`to the Assignor respecting said $658 Patent whenever requested, to testify in any interferences or
`
`other legal proceedings fa which said applications or patents may become involved, to sign all
`Iav..ful papers, make an rightful oaths, and do generaHy everything necessary to aid Assignee, its
`successors., legal representatives and assigns to obtain patent protection for said "658 Patent in the
`
`United States of America and all other countries, the reasonable expenses incident to said '658
`
`Patent to be borne and paid by said Assignee.
`
`Page 11 of 323
`
`
`
`Assignor further assigns, transfers and conveys to Assignee all causes of action (whether knm-v:n
`
`or unknown or whether currently pending, filed, or otherwise) and other enforcement rights tmder,
`or on account ot any of the '658 Patent 111d.udi11g, without limitation, aU causes of action and
`
`other enforcement rights for (I) damages, (2) :injunctive relief, and (3) any other remedies of any
`
`kind for past, current, and future infringement
`
`The right, title~ and interest conveyed in this Assignment is to be held and enjoyed by Assignee
`
`and Assignee's successors as folly and exclusively as it would have been held and enjoyed by
`
`Assignor had this assignment not been made. ,
`
`For and on behalf of
`
`ASSIGNOR:
`
`Name: Steve Carter
`
`Date:
`
`Page 12 of 323
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`U.S. Patent No. [6,993,658]
`US. Patent No. (6,993 638)
`
`Page13 of 323
`
`Page 13 of 323
`
`
`
`A31 PTO/SB/66
`0MB 0651-00XX
`U.S. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`
`PETITION TO ACCEPT UNINTENTIONALLY DELAYED PAYMENT OF MAINTENANCE FEE IN AN EXPIRED
`PATENT (37 CFR 1.378(b}}
`
`Patent Number
`
`Issue Date
`
`Application
`Number
`
`Filing Date
`
`Docket Number (if applicable)
`
`6993658
`
`31-Jan-2006
`
`09519829
`
`06-Mar-2000
`
`CAUTION: Maintenance fee (and surcharge, if any) payment must correctly identify: (1) the patent number and (2) the application number of the
`actual U.S. application leading to issuance of that patent to ensure the fee(s) is/are associated with the correct patent. 37 CFR 1.366(c) and (d).
`
`Applicants claims the following fee status:
`
`@ Small Entity
`
`0 Micro Entity
`
`O Regular Undiscounted
`
`Applicants selects the following:
`
`31/2
`
`lo 71/2
`
`0
`PETITION FEE
`The petition fee required by 37 CFR 1.17(m) (Fee Code 1558/2558) must be paid as a condition of accepting unintentionally delayed payment of
`the maintenance fee.
`
`I® 11 1/2
`
`MAINTENANCE FEE (37 CFR 1.20(e)-(g)J
`The appropriate maintenance fee must be submitted with this petition.
`
`STATEMENT
`THE UNDERSIGNED CERTIFIES THAT THE DELAY IN PAYMENT OF THE MAINTENANCE FEE TO TIHIS PATENT WAS
`UNINTENTIONAL
`PETITIONER(S) REQUEST THAT THE DELAYED PAYMENT OF THE MAINTENANCE FEE BE ACCEPTED AND THE PATENT REINSTATED
`
`THIS PORTION MUST BE COMPLETED BY THE SIGNATORY OR SIGNATORIES
`
`37 CFR 1.378(c) states: "Any petition under this section must be signed in compliance with 37 CFR 1.33(b) ."
`
`I certify, in accordance with 37 CFR 1.4(d){4) that I am
`
`0 An attorney or agent registered to practice before the Patent and Trademark Office who has been given power of attorney in
`this application.
`0 An attorney or agent registered to practice before the Patent and Trademark Office
`0 A sole patentee
`A joint patentee; I certify that I am authorized to sign this submission on behalf of all the other patentees as evidenced by the power of
`attorney in the application
`
`0
`
`0 A joint patentee; all of whom are signing this e-petition
`
`The assignee of record of the entire interest that qualifies as an authorized party under 37 CFR 1.33(b)
`
`@
`
`Page 14 of 323
`
`
`
`A31 PTO/SB/66
`0MB 0651-00XX
`U.S. Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE
`
`Under 37 CFR 3.71 an assignee becomes of record by filing a statement in compliance with 37 CFR 3.73{b).
`Signature requirements are set forth in 37 CFR 1.4(d), and the undersigned certifies that he/ she is empowered to act on behalf of the assignee of
`the entire interest
`
`The Assignee of record of the entire interest
`
`Signature
`
`/Fredrik Bohman/
`
`Name
`
`Fredrik Bohman
`
`Enter Reel and Frame Number
`
`Reel Number
`
`Click ADD for additional Reel Number and Frame Number
`
`I Frame Number
`
`I Remove I
`
`I
`
`I Add
`
`I
`
`Page 15 of 323
`
`
`
`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`09519829
`
`06-Mar-2000
`
`Title of Invention:
`
`USE OF PERSONAL COMMUNICATION DEVICES FOR USER AUTHENTICATION
`
`First Named Inventor/Applicant Name:
`
`Sten-Olov Engberg
`
`Filer:
`
`Attorney Docket Number:
`
`Filed as Small Entity
`
`Filing Fees for Utility under 35 USC 111 (a)
`
`Fredrik Bohman
`
`APRILS.001 A
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USO($)
`
`Basic Filing:
`
`MAINTENANCE FEE DUE AT 11.5 YEARS
`
`PET. DELAY PYMT MAINTAIN PATENT IN FORCE
`
`2553
`
`2558
`
`1
`
`1
`
`3700
`
`1000
`
`3700
`
`1000
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-Interference:
`
`Page 16 of 323
`
`
`
`Description
`
`Fee Code
`
`Quantity
`
`Amount
`
`Sub-Total in
`USO($)
`
`Post-Allowance-and-Post-Issuance:
`
`Extension-of-Time:
`
`Miscellaneous:
`
`Total in USO($)
`
`4700
`
`Page 17 of 323
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`In re Patent No. 6993658
`Issue Date:
`January 31,2006
`Application No. 09519829
`March 6,2000
`
`Filed:
`Attorney Docket No. APRILS.001 A
`
`:DECISION GRANTING PETITION
`:UNDER 37 CFR 1.378(b)
`
`,under 37 CFR 1.378(b)
`February 6,2018
`This is a decision on the electronic petition, filed
`to accept the unintentionally delayed payment of the
`11.5 year maintenance fee for the above-identified patent.
`
`The petition is GRANTED.
`
`February 6,2018
`The maintenance fee is accepted, and the above-identified patent reinstated as of
`This decision also constitutes notice that the fee has been accepted. An electronic copy of the petition and
`this decision has been created as an entry in the Image File Wrapper. Nevertheless, petitioner should print
`and retain an independent copy.
`
`Telephone inquiries related to this electronic decision should be directed to the Electronic Business Center at 1-866-217-9197.
`
`Page 18 of 323
`
`
`
`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`Patent Number:
`
`31715942
`
`09519829
`
`6993658
`
`Confirmation Number:
`
`8563
`
`Petition Issued Date:
`
`February 6,2018
`
`Title of Invention:
`
`USE OF PERSONAL COMMUNICATION DEVICES FOR USER AUTHENTICATION
`
`First Named Inventor/Applicant Name:
`
`Sten-Olov Engberg
`
`Customer Number:
`
`151075
`
`Filer:
`
`Fredrik Bohman
`
`Filer Authorized By:
`
`Attorney Docket Number:
`
`APRILS.001 A
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`06-FEB-2018
`
`06-MAR-2000
`
`15:32:15
`
`Application Type:
`
`Utility under 35 USC 111 (a)
`
`Payment information:
`
`Submitted with Payment
`
`Payment Type
`
`Payment was successfully received in RAM
`
`yes
`
`CARD
`
`$4700
`
`RAM confirmation Number
`
`020718INTEFSW15341100
`
`Deposit Account
`
`Authorized User
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`Page 19 of 323
`
`
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size(Bytes}/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(if appl.)
`
`33774
`
`1
`
`Petition automatically granted by EFS
`
`petition-request.pdf
`
`no
`
`2
`
`Warnings:
`
`Information:
`
`Sd 8544404ee5 cb91 3e4a 7a94 9d baf8469e5
`73ec6
`
`31931
`
`2
`
`Fee Worksheet (5B06)
`
`fee-info.pdf
`
`no
`
`2
`
`1 e51 dee6018cadadea69ee42cd4cfdecc64
`816e
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`65705
`
`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 Agglications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`National Stage of an International Agglication 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 Agglication 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 181 O), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/1 OS) 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 20 of 323
`
`
`
`.. ~
`
`\.
`
`,qS/18/2017 12:39 FAX
`
`7036841409
`
`RECEIVED
`CENTRAL FAX CENTER
`SEP 1 8 2017
`
`➔ CENTRAL FAX
`
`~001/001
`
`To: uspto Page 3 of 3
`
`2017-09-15 16:56:45 (GMD
`
`19493131269 From: Fredrik Bohman
`
`PTO/SB/47 (03·09)
`Approv<:d /ur use :hrou~h 07fJ 1/201~. 0MB 0~51-0015
`U.S. Pa\.,,,I and Ttadernarlc Ofli~e; U.S. DEPARTMENT OF COMrJERCE
`U11<lcr Ll'~e Pape1'.-vark Red~clion Acl or 1995: rto persor,~ mo rc~uired lo r-csttvnd to .i collection CJt iufoml.:Jtic.u unlelis il di!ip1.1ys ;i v.1lid OrJB CCll!rol nu,11bcr.
`
`"FEE ADDRESS" INDICATION FORM
`
`1
`
`Address to:
`Mail Stop M Correspondence
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Fax to:
`571-273-6500
`
`-OR-
`
`INSTRUCTIONS: The issue fee must have been paid for application(s) listed on this form. In addition,
`only an address represented by a Customer Number can be established as the fee address for maintenance
`fee purposes (hereafter, fee address). A fee 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: If you have a Customer Number to represent the fee address. When
`to check the second box below: If you have no Customer Number representing the desired fee address,
`In which case a completed Request for Customer Number (PTO/SB/125) must be attached to this fom1. For
`more information on Customer Numbers, see the Manual of Patent Examining Procedure (MPEP) § 403.
`
`For the following listed application(s). please recognize as the "Fee Address· under the provisions of 37 CFR
`1.363 the address associated with:
`
`□ Customer Number: I
`
`\ is ) D'1~
`
`I
`
`OR
`[j} The attached Request for Customer Number (PTO/SB/125) form.
`PATENT NUMBER
`(if known)
`
`APPLICATION NUMBER
`
`6993658
`
`09519829
`
`Completed by (~heck one):
`
`D Applicant/Inventor
`D Attorney or Agent of record _
`
`(Reg. No.)
`
`[xi Assignee of record of the entire interest. See 37 CFR 3. 71.
`Statement under 37 CFR 3.73(b) is enclosed.
`(Form PTO/SB/96)
`D Assignee recorded at Reel
`
`Frame
`-
`
`-:.1;'(:.u.((_ C:10k1.----.. ______
`
`Signature
`
`Fredrik Bohman, OynaPass Inc
`Typed or printed name
`855-396-2727
`Requester's telephone number
`
`-
`
`9/15/17
`
`Date
`
`NOTE: Sig11atun:,s of an tha inventurs ur ass~r11::1:1S. uf rttt::urJ uf tl1e ~nlirt: lntt!ri::st :::ir l11t:":r r~prtj5,t;:r1talivt!(S) ar~ r~~uirtid. Sv1.>1nlt niultipli::t furn1s If murt1 lhal c11t'
`s.icnature is ,-eauired. see belov:·.
`D
`•Total of
`
`forms arc submitted.
`..
`Th,s collecr,or, cf 1nforma11on 1s required ~y 37 CFR 1.J6J. The rnformalicn Is required 10 oblarn or ,eta,n;, bengfir by rha put:lic v,hich 1s ta file 1and by rhe US PTO
`lo procc,;s) .in opplICD1lori. ccr,lidcntr3llly Is govomcd by 35 U.S.C. 122 .:ind 37 CFR 1. 11 ond 1.1-1. This c,,llcciion IG csm,0100 tc rsko 5 m rnutcs 10 .;cmpt;:,[,).
`including gethering, preparing. and wbmitling \he complcled appliCi:ilio,; Jonn 10 tho USPTO. Time wil var,· d~panding upcn the i,,divid~al case. Any comments. on
`lh• ernounl of 6me you require lo complete lhis lorm andl•~r su,rnasticr& ror reducing 1hls burden. shou:d be sent 10 the Chief Inrormation Otlice:. U.S. P&tenl and
`Trademark Office. U.S. D,;par tme,,r of Commerce. P.O. B.:>, 145C. Alexandria. VA 2231.1- "450. 00 NOT SEND COMPLETi: D FORMS TO THIS A ODRESS.
`SE rm TO: Mail Stop M CorYespon<lance, Commissionerfor Patonts, P.O. Box 1450, Alexandria, VA22J'l3•1450.
`If y-.Ju need assistance in completing the f,;mn, c;,/11-800-PT0-9199 and select cp/ion 2.
`
`PACE 3/3' RCVOAT 9/1512017 2:56:45 PM [Eastern Daylight Time]' SVR:W.PTOFAX-001/41 'ONIS:2730177 • CSIO:19493131289 • DURATION (mm-ss):02-38
`
`PAGE 1/1 • RCVD AT 9/18/2017 1:37:44 PM (Eastern Daylight Time]• SVR:W-PTOFAX-003118' DNIS:2738300' CSID:7036841409' DURATION (mm-ss):00-53
`
`Page 21 of 323
`
`
`
`To: uspto Page 2 of 3
`
`2017-09-15 18:56:45 (GMT)
`
`19493131289 From: Fredrik Bohman
`
`-~
`~
`CHANGE OF
`~4'7-& AOet,W·
`CORRESPONDENCE ADDRESS
`Patent
`
`Address to:
`Mail Stop Post Issue
`Commissioner for Patents
`P .0. Box 1450
`Alexandria, VA 22313-1450
`
`PTO/SB/123 (04-15)
`Approved for use through 01/31/2016. 0MB 0651-0035
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`· I
`.
`I
`B ·
`ber.
`
`Issue Date
`
`Application Number
`
`Filing Date
`
`09519829
`03/06/2000
`First Named Inventor Sten-Olav Engberg
`APRILS.001A
`
`Attorney Docket
`Number
`
`Please change the Correspondence Address for the above-Identified patent to:
`
`~ The address associated with Customer Number:
`OR
`
`I
`
`l6)D()~
`
`I
`
`□ Firm or
`
`Individual Name
`
`Address
`
`City
`
`Country
`
`I State
`
`I ZIP
`
`Telephone
`
`I Email
`This form cannot be used to change the data associated with a Customer Number. To change the data associated with an
`existing Customer Number use "Request for Customer Number Data Change" (PTO/SB/124).
`
`This form will not affect any "fee address" provided for the above-Identified patent. To change a ''fee address" use the "Fee
`Address Indication Form" (PTO/SB/47).
`
`I am the:
`
`Statement under 37 CFR 3