throbber
TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Frademark Office
`P.O, Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`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
`Eastern District of North Carolina, Western Division
`on the following
`Trademarks or
`[Wf Patents.
`( 0] the patent action involves 35 U.S.C, § 292.):
`DOCKET NO.
`DATE FILED
`U.S. DISTRICT COURT
`5:23-CV-570-D-RJ
`10/41/2023
`Eastern District of North Carolina, Western Division
`PLAINTIFF
`DEFENDANT
`
`-
`
`Lenovo (United States), Inc. et al.
`
`
`
` Telefonaktiebolaget LM Ericsson et al.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3 10,972,654
`
`4/6/2021
`
`Telefonaktiebolaget LM Ericsson
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`{] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`1 Answer
`
`LJ Cross Bill
`
`C1 Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`
`
`
`
`
`
`
`
`
` 2
`aee
`
`
`
`
`
`
`CLERK
`
`Peter A. Moore,Jr.
`
`(BY) DEPUTY CLERK
`
`Gehan Man
`
`DATE
`
`10/12/2023
`
`Copy 1—Upon initiation of action, mail this copy to Director©Copy 3-——Upon termination of action, mail this copy te Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Case file copy
`Case 5:23-cv-00570-D-RJ Decument7 Filed 10/12/23 Page 1 of1
`
`EX1002 - Page 1
`EX1002 - Page 1
`
`Google Exhibit 1002
`Google Exhibit 1002
`Google v. Ericsson
`Google v. Ericsson
`
`

`

`Trials@uspto. gov
`Tel: 571-272-7822
`
`Paper 17
`Date: December30, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Patent Owner.
`
`IPR2022-00618
`Patent 9,313,178 B2
`
`Before GEORGIANNAW. BRADEN, NATHAN A. ENGELS,
`and NORMANH. BEAMER,Administrative Patent Judges.
`
`BEAMER,Administrative Patent Judge.
`
`TERMINATION
`Dueto Settlement After Institution of Trial
`Granting Jomt Request to Treat Settlement
`Agreement as Business Confidential Information
`35 U.S.C. $317; 37 CFR. § 42.74
`
`EX1002 - Page 2
`EX1002 - Page 2
`
`

`

`IPR2022-00618
`Patent 9,313,178 B2
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`
`review of claims 1—20 of U.S. Patent No. 9,313,178 B2 (Exhibit 1001,
`
`“the ’178 patent’) under 35 U.S.C. §$ 311-319. Paper2.
`
`Telefonaktiebolaget LM Ericsson (“Patent Owner’)filed a Preliminary
`
`Response. Paper 9.
`
`On September1, 2022, the Board instituted an interpartes review of
`
`claims 1—20 of the °178 patent. Paper 11.
`
`On December16, 2022, after receiving Board authorization, Petitioner
`
`and Patent Ownerfiled a Joint Motion to Terminate Proceeding under
`
`35 U.S.C. §317(a) and 37 C.F.R. § 42.74. Paper 15. As Exhibit 1016,
`
`the parties filed a copy of an agreementtitled “Global Patent License
`
`Agreement.” Ex. 1016, 1. The parties also filed a Joint Request to Treat
`
`Settlement Agreementas Business Confidential Information under 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. §42.74(c). Paper 16.
`
`Il. DISCUSSION
`
`The parties represent that they “have reached a settlementasto all the
`
`disputes in this proceeding and asto the °178 patent.” Paper 15,2. The
`
`parties representthat a “true copyofthe settlement agreement”1s filed
`
`as Exhibit 1016. /d. The parties also representthat “[n]o other such
`
`agreements, written or oral, exist between or among”the parties.
`
`/d.
`
`Theparties assert that termination “would save significant further
`
`expenditure of resources by”the parties. Paper 15,2. The parties assert
`
`that termination “would also further the purpose of interpartes review
`
`proceedings, which seek to provide an efficient and less costly alternative
`
`forum for patent disputes.” /d. at 2-3. Additionally, the parties contend that
`
`EX1002 - Page 3
`EX1002 - Page 3
`
`

`

`IPR2022-00618
`Patent 9,313,178 B2
`
`“maintaining the proceeding would discourage further settlements, as patent
`
`ownersin similar situations would havea strongdisincentive tosettle if they
`
`perceivedthat an interpartes review would continue regardless ofa
`
`settlement.” /d. at 3.
`
`This proceeding has not progressed very far. Patent Ownerhas not
`
`filed its Response. Terminating this proceeding will save the Board
`
`administrative and judicial resources, e.g., in conducting an oral argument
`
`and issuing a final written decision to decide the patentability issues raised
`
`in the Petition. Further, “[t]here are strong public policy reasonsto favor
`
`settlement betweenthe parties to a proceeding,” and “[t]he Board expects
`
`that a proceeding will terminate after the filing of a settlement agreement,
`
`unless the Board has already decided the merits of the proceeding.” Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`
`Underthese circumstances, we determinethat it is appropriate to
`
`terminate this proceeding. Wealso determinethatit is appropriate to treat
`
`the parties’ settlement agreement (Exhibit 1016) as business confidential
`
`mformation under 35 U.S.C. §317(b) and 37 C.F.R. § 42.74(c).
`
`This Order does not constitute a final written decision under 35 U.S.C.
`
`§ 318(a).
`
`Ill. ORDER
`
`Accordingly,it is
`
`ORDEREDthatthe parties’ Jomt Motion to Terminate Proceeding
`
`(Paper 15) is granted;
`
`FURTHER ORDEREDthatthis proceedingis terminatedas toall
`
`parties; and
`
`EX1002 - Page 4
`EX1002 - Page 4
`
`

`

`IPR2022-00618
`Patent 9,313,178 B2
`
`FURTHER ORDEREDthatthe parties’ Joint Request to Treat
`
`Settlement Agreement as Business Confidential Information (Paper 16) is
`
`granted, and the parties’ settlement agreement (Exhibit 1016) shall be treated
`
`as business confidential information and be kept separate from thefile of
`
`U.S. Patent No. 9,313,178 B2 and madeavailable only underthe provisions
`
`of 35 U.S.C. §317(b) and 37 C.F.R. § 42.74(c).
`
`EX1002 - Page 5
`EX1002 - Page 5
`
`

`

`IPR2022-00618
`Patent 9,313,178 B2
`
`For PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`Nicholas Stephens
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`tar@fr.com
`nstephens@fr.com
`
`For PATENT OWNER:
`
`Peter C. Knops
`Jason Wejnert
`NOROOZI PC
`peter@noroozipc.com
`jason@noroozipe.com
`
`EX1002 - Page 6
`EX1002 - Page 6
`
`

`

`Case 2bl-ov-O00Q1-JRG Document S2 Filed O6/f2/21 Page Lori PagesiDa: 1873
`
`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
`
`TRADEMARK
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`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
`on the following
`(] Trademarks or
`(MW Patents.
`( [] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:21-cv-00001
`PLAINTIFF
`
`DATE FILED
`1/8/2021
`
`U.S. DISTRICT COURT
`for the Eastern District of Texas
`DEFENDANT
`
`ERICSSON INC., TELEFONAKTIEBOLAGET
`LM ERICSSON, AND ERICSSON AB
`
`SAMSUNG ELECTRONICS CoO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`Ee
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`
`_] Amendment
`
`LC] Answer
`
`CL) Cross Bill
`
`L] Other Pleading
`
`Caes
`Ea
`Es
`
`
`
`are DISMISSED WITH PREJUDICE CLERK
`
`aa I
`
`n the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/IUDGEMENT
`
`ORDERED thatall of Ericsson’s patent infringement claims and all of Samsung's patentinfringement counterclaims
`
`Ti, Ota
`
`(BY) DEPUTY CLERK
`
`DATE
`
`sn
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`KXCSSRQqQW EXXXUoOWWi
`
`CRC
`
`EX1002 - Page 7
`EX1002 - Page 7
`
`

`

`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P,Q, Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`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
`on the following,
`
`[ff Patents.
`
`( LJ the patent action involves 35 U.S.C. § 292.):
`
`ppd
`
`In the above—entitled case, the following patent(s)/ trademark(s} have been included:
`
`INCLUDED BY
`
`CO Amendment
`O Answer
`CJ Cross Bill
`[1 Other Pleading
`PATENT OR
`DATE OF PATENT
`
`TRADEMARE NO.
`OR TRADEMARK
`HOLDER OF PATENT OR TRADEMARK
`
`ERGn
`
`eo
`po
`
`
`
` -
`a I
`
`n the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/TUDGEMENT
`
`oo
`
`Copy 1--Uponinitiation of action, mail this copy to Director Copy 3—Upon terminationofaction, mail this copy to Director
`Copy 2—Upenfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`EX1002 - Page 8
`EX1002 - Page 8
`
`DATE INCLUDED
`
`
`
`
`
`
`
`
`Cl Trademarks or
`
`
`Doc
`KET NO.
`2:21-cv-00001
`PLAINTIFF
`
`DATE FILED
`4/8/2021
`
`ERICSSON INC., TELEFONAKTIEBOLAGET
`LM ERIGSSON, AND ERICSSON AB
`
`PATENT OR
`TRADEMARKNO,
`
`
`
`DATE OF PATENT
`OR TRADEMARK
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`
`
`
`
`
`U.S. DISTRICT COURT,
`for the Eastern District of Texas
`DEFENDANT
`‘
`
`TELEFONAKTIEBOLAGET LM ERICSSON
`
`
`
`
`
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`CERTIFICATE OF CORRECTION
`
`PATENT NO.
`APPLICATIONNO.
`
`DATED
`INVENTOR(S)
`
`: 9,313,178 B2
`: 14/266368
`
`: April 12, 2016
`:Maet al.
`
`Page | of 1
`
`It is certified that error appears in the above-identified patent and that said Letters Patent is hereby corrected as shownbelow:
`
`On the Title Page
`
`In Item (56), under “OTHER PUBLICATIONS”, in Column 2, Line 7, delete “-BE9E000D8435/" and
`insert -- -BE9EOQC0D8435/--, therefor.
`
`In the Specification
`
`In Column 4, Lines 4-27, delete “In one embodiment.............00.... format header.” and
`insert the same at Line 3, after “key.”, as a continuation paragraph.
`
`In Column 5, Lines 26-52, delete “The transcoded contentis then............. data centers.”
`and insert the sameat Line 25, after “resolutions.”, as a continuation paragraph.
`
`In Column 5, Line 46, delete “manger” andinsert -- manager--, therefor.
`
`In Column 7, Lines 45-63, delete “In one embodiment.......... previous key.” and insert the
`same at Line 46, as a new paragraph.
`
`Signed and Sealedthis
`Tenth Day of October, 2017
`5
`Ley ff
`oof
`eu & ¢ tp ae
`RP bcePitt
`
`Joseph Matal
`Performing the Functions and Duties ofthe
`Under Secretary of Commercefor Intellectual Property and
`Director ofthe United States Patent and Trademark Office
`
`EX1002 - Page 9
`EX1002 - Page 9
`
`

`

`PTO/SB/44 (09-07)
`Approved for use through 08/31/2013. OMB 0651-0033.
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unlessit displays a valid OMB control number.
`(Also Form PTO-1050)
`
`UNITED STATES PATENT AND TRADEMARKOFFICE
`CERTIFICATE OF CORRECTION
`
`PATENT NO.
`
`: 9,313,178 B2
`
`APPLICATION NO. : 14/266,368
`
`ISSUE DATE
`
`: April 12, 2016
`
`INVENTOR(S)
`
`: Ma, etal.
`
`Page 1 of 1
`
`It is certified that an error appears or errors appear in the above-identified patent and that
`said Letters Patent is hereby corrected as shown below:
`
`On the Face Page, in Field (56), under “OTHER PUBLICATIONS”, in Column2, Line 7,
`delete “-BE9E000D8435/’ and insert - - -BE9EOCOD8435/ - -, therefor.
`
`In Column 4, Lines 4-27, delete “In one embodiment................... format header.” and
`insert the sameat Line 3, after “key.”, as a continuation paragraph.
`
`In Column 5, Lines 26-52, delete “The transcoded content is then .............data centers.”
`and insert the same at Line 25, after “resolutions.”, as a continuation paragraph.
`
`In Column 5, Line 46, delete “manger” and insert - - manager- -, therefor.
`
`In Column 7, Lines 45-63, delete “In one embodiment.......... previous key.” and insert the
`same at Line 46, as a new paragraph.
`
`
`
`
`
`MAILING ADDRESS OF SENDER (Please do not use customer number below):
`
`6300 Legacy, MS EVR 1-C-11
`Plano, TX 75024
`972-583-8656
`
`This collection of information is required by 37 CFR 1.322, 1.323, and 1.324. The information is required to obtain or retain a benefit by the public whichis 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 1.0 hour to
`complete, including gathering, preparing, and submitting the completed application form to the USPTO. Timewill 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, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS
`TO THIS ADDRESS. SEND TO: Attention Certificate of Corrections Branch, Commissioner for Patents, P.O. Box 1450, Alexandria, VA
`22313-1450.
`
`ifyou need assistance in completing the form, call 1-800-PTO-9199 and select option 2.
`
`EX1002 - Page 10
`EX1002 - Page 10
`
`

`

`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,
`pursuantto 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(6)(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 mayresult in termination of proceedings or
`abandonmentof 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 (6 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from
`this system of records may be disclosed to the Departmentof Justice to determine whether
`disclosure of these records is required by the Freedom of Information Act.
`A record from this system of records may be disclosed, as a routine use, in the course of
`presenting evidenceto a court, magistrate, or administrative tribunal, including disclosures to
`opposing counsel in the course of settlement negotiations.
`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.
`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).
`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.
`A record in this system of records may be disclosed, as a routine use, to another federal
`agency for purposesof National Security review (35 U.S.C. 181) and for review pursuantto the
`Atomic Energy Act (42 U.S.C. 218(c)).
`A record from this system of records maybedisclosed, 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 improvementsin 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 anyother relevant (7.e., GSA or Commerce) directive. Such disclosure shall not
`be used to make determinations aboutindividuals.
`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 wasfiled in an application which
`became abandonedor 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.
`A record from this system of records may bedisclosed, as a routine use, to a Federal, State,
`or local law enforcement agency,if the USPTO becomesaware of a violation or potential
`violation of law or regulation.
`
`EX1002 - Page 11
`EX1002 - Page 11
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`14266368
`
`30-Apr-2014
`
`Title of Invention:
`
`METHOD AND SYSTEM FOR SECURE OVER-THE-TOP LIVE VIDEO DELIVERY
`
`Steven Ware Smith/Kara Coffman
`
`Attorney Docket Number:
`
`P43758-US3
`
`Filed as Large Entity
`
`Filing Fees for Utility under 35 USC 111(a)
`
`
`
`
`
`Certificate of Correction
`
`Sub-Total in
`Fee Code Quantity AmountDescription USD(S)
`
`
`
`
`
`Basic Filing:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`
`EX1002 - Page 12
`EX1002 - Page 12
`
`

`

`Extension-of-Time:
`
`Total in USD ($)
`
`Miscellaneous:
`
`EX1002 - Page 13
`EX1002 - Page 13
`
`

`

`
`
`a s
`
`First Named Inventor/Applicant Name:
`
`Kevin J. Ma
`
`Customer Number:
`
`27045Pe
`ee
`
`Utility under 35 USC 111{a)
`Application Type:
`
`
`Paymentinformation:
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`Deposit Account
`
`501379
`
`EX1002 - Page 14
`EX1002 - Page 14
`
`Electronic AcknowledgementReceipt
`
`ete
`
`Title of Invention:
`
`METHOD AND SYSTEM FOR SECURE OVER-THE-TOP LIVE VIDEO DELIVERY
`
`

`

`Charge any Additional Fees required under 37 CFR 1.20 (Post Issuance fees)
`
`
`
`File Listing:
`
`Document
`
`sg:
`
`File Size(Bytes)/
`
`Multi
`
`Pages
`
`P43758-
`
`Transmittal Letter
`
`US3_2016-06-27_CoC_Request
`~
`Letter.pdf
`
`ce018
`910839ea2394a6a573085 1ee7d7b419a9b4
`
`Information:
`
`
`
`the application.
`
`Requestfor Certificate of Correction
`
`P43758-
`US3_2016-06-27_CoC_PTO-105
`O.pdf
`
`Fd89a0ff5c09c0209706c23F1a3463b73b754
`
`123405
`
`Information:
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`8dfdad7f7ac275626542c21c2ecdd405e32a}
`{63a
`
`Warnings:
`Information:
`
`This AcknowledgementReceipt evidences receipt on the noted date by the USPTO ofthe 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 applicationis 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 shownonthis
`Acknowledgement Receiptwill establish thefiling 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/EO/903 indicating 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.
`
`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 Intemational Application Number
`andofthe International Filing Date (Form PCT/RO/105)will be issued in due course, subject to prescriptions concerning
`national security, and the date shown onthis Acknowledgement Receiptwill establish the international filing date of
`
`EX1002 - Page 15
`EX1002 - Page 15
`
`

`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`IN RE APPLICATIONOF: U.S. Patent No. 9,313,178
`
`USPTO CONFIRMATION CODE: 9269
`
`APPLICATION NO.: 14/266,368
`
`FILED: April 30, 2014
`
`EXAMINER:Brandon Hoffman
`
`GROUP ART UNIT: 2433
`
`FOR: METHOD AND SYSTEM FOR SECURE OVER-THE-TOP LIVE VIDEO
`DELIVERY
`
`
`37 CFR 1.322 & 37 CFR 1.323 REQUEST FOR CERTIFICATE OF CORRECTION
`
`FOR USPTO AND/OR APPLICANT MISTAKE
`
`HONORABLE COMMISSIONER OF PATENTS & TRADEMARKS
`
`SIR:
`
`The following is a request for a certificate of correction in Serial Number
`14/266,368, now Patent Number 9,313,178.
`
`A certificate of correction under 35 USC 254 1s respectfully requested in the
`above-identified patent.
`
`The errors were the fault of both the applicant and USPTO and, accordingly,
`please charge $100.00 to our Deposit Account No. 50-1379. In the event that a further fee
`is required, please charge the amount to the same Deposit Account.
`
`The exact locations where the errors appear in the patent and patent application
`are as follows:
`
`EX1002 - Page 16
`EX1002 - Page 16
`
`

`

`Onthe Face Page,in Field (56), under “OTHER PUBLICATIONS”, in Column2,
`Line 7, delete “-BE9E000D8435/” and insert - - -BE9EOCOD8435/ - -, therefor.
`(LIST OF REFERENCES CITED BY APPLICANT AND CONSIDERED BY
`EXAMINER DATEDMAY26, 2015, SHEET 2 (PAGE 56 OF FW), UNDER
`“NON-PATENT LITERATURE DOCUMENTS”, ENTRY 2, LINE 2)
`
`In Column4, Lines 4-27, delete “In one embodiment................... format
`header.” and insert the same at Line 3, after “key.”, as a continuation
`paragraph.
`(ORIGINALLY FILED SPECIFICATION DATED APRIL 30, 2014,
`PAGE5, LINES 6-20)
`
`In Column 5, Lines 26-52, delete “The transcoded content is then
`.........data centers.” and insert the same at Line 25, after “resolutions.”, as
`a continuation paragraph.
`(ORIGINALLY FILED SPECIFICATION DATED APRIL 30, 2014,
`PAGE7, LINES6-22)
`
`In Column5, Line 46, delete “manger”and insert - - manager- -, therefor.
`(ORIGINALLY FILED SPECIFICATION DATED APRIL 30, 2014,
`PAGE7, LINE 19)
`
`In Column 7, Lines 45-63, delete “In one embodiment.......... previous key.” and
`insert the sameat Line 46, as a new paragraph.
`(ORIGINALLY FILED SPECIFICATION DATED APRIL 30, 2014,
`PAGE10, LINES15-26)
`
`EX1002 - Page 17
`EX1002 - Page 17
`
`

`

`The requested corrections are attached on Form PTO 1050.
`
`, 2016
`
`DATE
`
`Respectfully Submitted
`
`/Ronald J. Ward, Reg#54870/
`
`Ronald J. Ward
`Registration No. 54,870
`Attomey of Record
`
`EX1002 - Page 18
`EX1002 - Page 18
`
`

`

`
`
`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.
`
`14/266,368
`
`ISSUE DATE
`
`04/12/2016
`
`PATENT NO.
`
`9313178
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`P43758-US3
`
`9269
`
`27045
`
`7590
`
`03/23/2016
`
`ERICSSON INC.
`6300 LEGACY DRIVE
`M/S EVR1-C-11
`PILANO, TX 75024
`
`The projected patent numberandissue 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 Adjustmentis 0 day(s). Any patent to issue from the above-identified application will include
`an indication of the adjustmenton 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):
`
`Kevin J. Ma, Nashua, NH;
`Ericsson AB, Stockholm, SWEDEN;
`Robert Hickey, Bedford, MA;
`Paul Tweedale, Andover, MA;
`
`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
`worksto encourage andfacilitate business investment. To learn more about why the USAis the best country in
`the world to develop technology, manufacture products, and grow your business, visit SelectUSA. gov.
`
`IR103 (Rey. 10/09)
`
`EX1002 - Page 19
`EX1002 - Page 19
`
`

`

`PARTYB- FREY TRANSMIVEAL
`
`Complete and seat this form, lngelier wih applicable foe(s), te; BOMail Stay ISSUE FRE
`Comnissioner for Patents
`BAY. Bow Lise
`Albszamdria, Vireishe 22519-7458
`ap Bay (S79)-273-2885
`
`
` muh be used tip traasmy
`
`
`néonae fachuding de Pate
`
`alins o digecnal otter
`
` ates aEKO
`
`TERE
`
` LAS.
`A than!
`pape
`oh ag 2
`YRS
`have
`
`
`
` ficaie ot 53) FREDO
`
`
`Wg, PRS,
`
` ASnpRNT atonal
`
`
`aed patent
`al
`+3
`
`. HO waMe Will he pring,
`
`ehbed & yyy Mae choc
`
`i has been Ped for
`
`
`
`
`CR COUNTER)
`
`SWEDEN
`
`
`
`
`J nee Cantye
`ee
`siahoad RO Comp
`S| Fall
`
`
`{Please fied! reapply any peoviniely guid isane fen shea above)
`
`
`
`ee sinall endingais
`
`STOCKHOLM,
`
`Rom orator rivals preup wenty .) LRAT
`
`
`
`
`a Aiondeserts
`
`
`
`Yygidor pate
`
` Caregen Latiby Slates £
`
`Angeas
`cerdiyng mic
`ied Spplvaat
`
`wag iy Shey
`
`
`Hinany status, Seek,
` IHFWAS
`
` % silero€ ening
` LSpationnt char
`
`
`pace eh
`SOY}YS This formmust be cienerdt in
`
` Aathdagd Sigua
` 83 Pan, BCE) Appeared fae wie through BV
`
`IMMERCE
`
`EX1002 - Page 20
`EX1002 - Page 20
`
`

`

`Electronic Patent Application Fee Transmittal
`
`Application Number:
`
`Filing Date:
`
`14266368
`
`30-Apr-2014
`
`Title of Invention:
`
`METHOD AND SYSTEM FOR SECURE OVER-THE-TOP LIVE VIDEO DELIVERY
`
`Steven Ware Smith/Kathryn Lopez
`
`Attorney Docket Number:
`
`P43758-US3
`
`Filed as Large Entity
`
`Filing Fees for Utility under 35 USC 111(a)
`
`
`
`
`
`Utility Appl Issue Fee
`
`Sub-Total in
`Fee Code Quantity AmountDescription USD(S)
`
`
`
`
`
`Basic Filing:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`
`EX1002 - Page 21
`EX1002 - Page 21
`
`

`

`Extension-of-Time:
`
`Total in USD ($)
`
`Miscellaneous:
`
`EX1002 - Page 22
`EX1002 - Page 22
`
`

`

`
`
`a s
`
`First Named Inventor/Applicant Name:
`
`Kevin J. Ma
`
`Customer Number:
`
`27045Pe
`a
`
`Utility under 35 USC 111{a)
`Application Type:
`
`
`Paymentinformation:
`
`Charge any Additional Fees required under 37 CFR 1.17 (Patent application and reexamination processing fees)
`
`Deposit Account
`
`Authorized User
`
`501379
`
`LIU, RONALDS.
`
`The Director of the USPTO is hereby authorized to charge indicated fees and credit any overpayment as follows:
`Charge any Additional Fees required under 37 CFR 1.16 (National application filing, search, and examination fees)
`
`EX1002 - Page 23
`EX1002 - Page 23
`
`Electronic AcknowledgementReceipt
`
`ete
`
`Title of Invention:
`
`METHOD AND SYSTEM FOR SECURE OVER-THE-TOP LIVE VIDEO DELIVERY
`
`

`

`Charge any Additional Fees required under 37 CFR 1.19 (Document supply fees)
`
`Charge any Additional Fees required under 37 CFR 1.20 (Post Issuance fees)
`
`Charge any Additional Fees required under 37 CFR 1.21 (Miscellaneous fees and charges)
`
`
`
`File Listing:
`
`Pages
`Multi
`File Size(Bytes)/
`Document Description
`Document
`
`
`
`Number Message Digest|Part /.zip|P (if appl.)
`P43758-
`304894
`
`Issue Fee Payment (PTO-85B)
`
`US3_2016-01-28_16-3516_lIssu
`e_Fee_Transmittal.pdf
`
`25b4
`775d6efe73a218e620778ca9e41540544121]
`
`the application.
`
`NewInternational 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:
`
`Fee Worksheet (SB06)
`
`fee-info.pdf
`
`Ofeic0S Sd8b77582fd7d24044484971522
`e771
`
`Information:
`
`
`
`TotalFiles Size (in bytes} 335717
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTOofthe 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 applicationis 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
`Acknowledgement Receiptwill establish thefiling 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/EO/903indicating acceptanceof the application as a
`national stage submission under35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`
`EX1002 - Page 24
`EX1002 - Page 24
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`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
`
`NOTICE OF ALLOWANCEAND FEE(S) DUE
`
`-
`10/28/2015
`
`-
`7590
`27045
`ERICSSON INC.
`6300 LEGACYDRIVE
`MIS EVR IC
`PLANO, TX 75024
`
`EXAMINER
`
`HOFEMAN, BRANDON S$
`
`2433
`
`DATE MAILED: 10/28/2015
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEYDOCKET NO.
`
`CONFIRMATION NO.
`
`Kevin J. Ma
`04/30/2014
`14/266,368
`TITLE OF INVENTION: METHOD AND SYSTEM FOR SECURE OVER-THE-TOP LIVE VIDEO DELIVERY
`
`P43758-US3
`
`9269
`
`
`
`
`
`APPIN. TYPR PUBLICATION FER DUP.|PREV. PAID ISSUE FRRENTITY STATUS ISSTTF FRE DUR TOTAT. FER(S) DUE DATE DUR
`
`nonprovisional
`
`UNDISCOUNTED
`
`$960
`
`01/28/2016
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCEAS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. TIS NOTICE OF ALLOWANCEIS NOT A GRANT OF PATENT RIGIITS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CER 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
`NOT REFLECT A CREDIT FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION.
`IF AN ISSUE FEE HAS
`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 THEISSUE FEE NOW
`DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the ENTITY STATUSshownabove.If the ENTITY STATUSis shown as SMALL or MICRO,verify whether entitlement to that
`entity status sull applies.
`If the ENTITY STATUS is the same as shownabove, pay the TOTAL FEE(S) DUE shownabove.
`If the ENTITY STATUS is changed from that shown above, on PART B - FER(S) TRANSMITTAL, complete section number5 titled
`"Change in Entity Status (fromstatus indicated above)".
`For purposesof this noticc, small entity fecs are 1/2 the amount of undiscountcd fees, and micro entity fees are 1/2 the amountof small cntity
`fees.
`
`I. 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 PUBLICATIONFEE(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 subm

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket