`
`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
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`
`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
`
`
`
`
`
`
`
`
`
`
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`
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`
`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.
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`SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES
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