Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 1 of 14 PageID #: 33036
`Case 5:19-cv-00036—RWS Document 646-4 Filed 03/08/21 Page 1 of 14 PageID #: 33036
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`EXHIBIT 4
`EXHIBIT 4
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`Case 5:19-cv-00036—RWS Document 646-4 Filed 03/08/21 Page 1 of 14 PageID #: 33036
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`EXHIBIT 4
`EXHIBIT 4
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`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 2 of 14 PageID #: 33037
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONERFORPATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`90/014,628
`
`12/10/2020
`
`8339493
`
`2638-19.00
`
`6100
`
`01/28/2021
`7590
`24956
`MATTINGLY & MALUR, PC
`1800 DIAGONAL ROAD
`SUITE 210
`ALEXANDRIA, VA 22314
`
`EXAMINER
`
`KE.PENG
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`01/28/2021
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 3 of 14 PageID #: 33038
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`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
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Apple Inc.
`One Apple Park Way
`Cupertino, CA 95014
`
`EX PARTEREEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/014,628.
`
`PATENT UNDER REEXAMINATION 8339493.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 4 of 14 PageID #: 33039
`
`Order Granting Request For
`Ex Parle Reexamination
`
`Control No.
`
`90/014,628
`
`Examiner
`
`PENG KE
`
`Patent Under Reexamination
`
`8339493
`
`Art Unit
`
`AIA (FITF) Status
`
`3992
`
`No
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 12/10/2020 has been considered and a determination has
`been made. An identification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)~ PT0-892,
`
`PTO/SB/08,
`
`c)O Other:
`
`1. ~ The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`cc:Requester ( if third party requester)
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20210104
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 5 of 14 PageID #: 33040
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 2
`
`Notice of Pre-AJA or AJA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`Detail Action
`
`2.
`
`On 12/10/20, Third Party Requester ("Requester'') filed a request ("'Request'') for
`
`90/014,628 ex parte reexamination of claims 5 and 6 of US Patent 8,339,493 (''the
`
`'493 patent") which \Vas filed on 09/12/03 ,;vith application number 12/845,266 ('' '266
`
`applicalion''), \vhich is a continuation of application 10/660,710 ("'710 application''), which is a
`
`division of 09/520,836 ("''836 application") that becarne Patent 6,765,616 ('"616 patent'').
`
`Priority
`
`3.
`
`Based upon a revie,v of the '493 patem, the Examiner finds that lhe '493 paient claims
`
`the following domestic priority:
`
`4.
`
`This '266 application is a continuation of U.S. SeL No. 10/660,710, filed 09/12/2003,
`
`now US Patent 8059117, ("the' 117 patent") which is a division of U.S. SeL No. 09/520,836,
`
`filed on 03/08/2000, now U.S. PaL No. 6,765,616, vvhicb clai1ns foreign priority to applicalion
`
`JP 2000006064 filed on January l L 2000.
`
`PRIOR OR CONCURRENT PROCEEDINGS
`
`5.
`
`Based upon Examiner's reviev-,: of the '493 patent itself, the Request, and its prosecution
`
`history, the Examiner finds that:
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 6 of 14 PageID #: 33041
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`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 3
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`6.
`
`Maxell Ltd, v. Apple Inc, No 5:19-cv-0036--RWS (KD, Tex) (Complaint EX. 1025)
`
`w-hich is schedule for trial on April 2021.
`
`t.
`
`Inter Partes Revievvs;
`
`a.
`
`b.
`
`c.
`
`IPR.2018-00236, the Board declined to jnstitute.
`
`IPR.2018--00904, the request \Vas terminated prior to an institution decision,
`
`IPR2020-00597, the Board declined to institute and a Petitioner Notice of Appeal
`
`•.vas filed.
`
`References cited:
`
`REFERENCES
`
`i. Casio LCD Digital Cmnera QV-800SX User's Guide ("Casio") is new art that provides new,
`
`non-cumulative technological teachings that were not previously considered and discussed on the
`
`record during prosecution of '493 Patent;
`
`The Casio Camera and its user's guide was provided to David Etchells on November 1,
`
`1999 without a non-disclosure agreement or any other restriction. (see Etchells' s declaration,
`
`paragraph 10) David Etchells had full control of the camera and was able to disclose
`
`frmctionafay of the camera. (see Etchells's declaration paragraphs 9 and 11) Therefore, il is
`
`deterrnined that there was public use on November L 1999. 1
`
`to use the lnvet:1imi without hmitatiou, re,;;riction or obllgatlon of secrecy 1o ,he inventor.'' fn ff S:nith, 714 F.2d 1127, 1134.
`
`213 USPQ 976, 983 (Fed. Cir. l 933 ). The presrnce ot absence of a confidentiality ,,greement is not itself determinz,tive of
`
`the rmblk ust~ i,;,ue, h,11: i,; o,1e fa::tor to be con:;idered :;Jm,g ;vith 1he ,ime, pface, and cir::urmtances o;' the rn,e which shmv ,he
`
`amount of control tbe it,ventm retained o;;er the lnv::tition. Mo/ernlon Rcscatch Corp. v. CBS. lr:c., 79'.➔ F.2d [26 l, 1265, 229
`
`1..JSPQ 805, 809 (Fed. Cir. 1986). See Ex pane C, 27 USPQ2d :.492, J 499 (Bd. P:;t App. & ln,er. 1992) (lnventor sold invenfrve
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 7 of 14 PageID #: 33042
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`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 4
`
`iL U.S. Patent No. 7,9(f-U62 to Juen ("Juen"\ is new art that provides new, non-cumulative
`
`technological teachings that were not previously considered and discussed on the record during
`
`prosecution of '493 Patent.
`
`iii. U.S. Patent No. 5,502,483 To Takase et al. ("Takase''), is new art that provides new, non(cid:173)
`
`cumulative technological teachings that were not previously considered and discussed on the
`
`record during prosecution of '493 Patent
`
`iv. U.S. Patent No. 5,444,482 To Misawa et al. ("Misawa"\ is new art that provides new, non(cid:173)
`
`cumulative technological teachings that were not previously considered and discussed on the
`
`record during prosecution of '493 Patent
`
`PROSECUTION HISTORY
`
`8,
`
`During the prosecution of application '266, which is the parent application of '493
`
`patem, independent claim 5 vvas rejected under double palenting over claims 1 and 6; or clairns
`
`13 and 18 of Patent '616.
`
`9,
`
`ln the prosecution of Patent '616 as Application '836, on Febmary 26, 2004, follm.ving.
`
`amendments were made to claims 1 and 6: and claims 13 and 18 are added:
`
`soybean seeds m growers who contracted and were p:,id to plz,nt the seeds to increase stock for lat:cr s:,le. The commerd:,l n,,tur:c
`
`of the BS€ of the seed coupled witb the "on--saJe'· aspects of tbe cou1nct and apparent lack of contidenti,;hty requirement:; rose ,o
`
`the level of z, '"public use" bar.): Egbu! 1·. Lipp11w.rm, 104 U.S. 333, 336 (1881; (Public use found where inventor allowed
`
`;mo1her to ust~ inventive rn,set inset,, thot,gh hidden ;°rom view during w,e, be,;;mse he did ,101 impo,;e ;m oblig3.tion of ,ec,ec-y
`
`or restrtc1irnis on it;: use.),
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 8 of 14 PageID #: 33043
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`10.
`
`Claim 1 An electric camera comprising:
`
`Page 5
`
`A color filter to pass first, second and third colors respectively arranged to
`
`cyclically _appear_borizontally at_ ihree-pixel__interval_ and_w_pass __ the _same_ colors_ arranged
`
`vertically:
`
`An image sensing device with a light receiving surface having N vertically
`
`arranged pixels and an arbitrary number of pixels arranged horizontally, N being equal
`
`to or more than three times the number of effective scanning lines JVI of display screen of
`
`a television systern;
`
`a driver to drive the image sensing device to vertically mix or cull signal chai-ges
`
`accumulated in individual pixels of every K pixels to produce a number of lines of out
`
`put signals vvbich corresponds to the number of effective scanning lines l'v1. K being at
`
`least one of integers equal to or less than an integral part of a quotient of N divided by
`
`M;
`
`a signal processing unit to generate image signals by using the output signals of
`
`the i1nage sensing device. and
`
`a displav unit with the displav screen of the television system to display an image
`
`corresponding to the output signals:
`
`wherein said driver verticallv mixes or culls signal charges accumulated in
`
`indi vidual_pix.els __ of every _K_l __ pix.ds,_ v.;hen_first _i1nages _are_ displ_ayed __ on __ said_ display
`
`unit:
`
`·wherein said driver verticallv mixes or culls signal charges accumulated in
`
`individual pixels of every K2 pixels, vvhen second imag:es are displayed on said display
`
`unit. __ and
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 9 of 14 PageID #: 33044
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 6
`
`wherein a value of K1 is different from a value of K2.
`
`Claim 6: An electric camera according to claim 1, wherein list and second imar::e
`
`are. moving i1nages_and _ _still.)1nages,. respectivelv,.and. ,vherein_ihe. value. of .Kl.. is_s1naller
`
`than the value of IC.
`
`Then on March 09 2004" the Examiner issued a notice of allowance.
`
`11.
`
`Claim 5 of the '493 patent has follmving limitations that contain subject matters overlaps
`
`vvith that of claim 1 of '6 l 6;
`
`(,~ , , ar1 irnage sensing device \-'/ith a light receiving sensor having an a,rra,y of pL~els
`
`arranged vertically and horizontally in a grid pattern, in an N number of vertically
`
`arranged pixel lines:
`
`a display nnii with a display screen, that display an image corresponding to the i1nage
`
`signals ...
`
`the signal processing unit generates the image signals by using pixel lines that have been
`
`mixed or culled from the N number of vertically arranged pixel lines to only include
`
`pixel lines separated from one another by intervals of a first distance. "
`
`Substantial new question of patentability
`
`12.
`
`Independent claim 5 is the determinative claim. The italicized sections below are utilized
`
`by the examiner to show how specific teachings of the proposed references create a substantial
`
`new question of patentability in light of the original prosecution history.
`
`Claim 5: An electric camera comprising:
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 10 of 14 PageID #: 33045
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 7
`
`an image sensing device with a light receiving sensor having an array of pixels
`
`arranged vertically and horizontally in a grid pattern, in an N number of vertically
`
`arranged pixel lines;
`
`a signal processing unit that generates image signals by processing the output
`
`signals of the image sensing device; and
`
`a display unit with a display screen, that displays an image corresponding to the
`
`image signals;
`
`wherein when recording an image in a static image mode, the signal processing
`
`unit generates the image signals by using all signal charges accumulated in all N
`
`number of vertically arranged pixel lines of the image sensing device, to provide N pixel
`
`lines;
`
`wherein when monitoring the image in the static image mode, the signal
`
`processing unit generates the image signals by using pixel lines that have been mixed
`
`or culled from the N number of vertically arranged pixel lines to only include pixel lines
`
`separated from one another by intervals of a first distance; and
`
`wherein when recording the image in a moving video mode, the signal
`
`processing unit generates the image signals by using a portion of, or the entirety of,
`
`pixel lines which have been mixed or culled from the N number of vertically arranged
`
`pixel lines to only include pixel lines separated from one another by intervals of a
`
`second distance, where the second distance is different from the first distance.
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 11 of 14 PageID #: 33046
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 8
`
`Issue I
`
`Casio & Juen
`
`13.
`
`Casio is determined to be in public use on Novernber l, 1999 and teaches usage of a digital
`
`camera. Juen is a continuation of 08/937,805 filed on September 25, 1997 and teaches . The
`
`Request shows that Casio and Juen teach following limitations of claim 5 in '493 patent:
`
`•
`
`an image sensing device with a light receiving sensor having an array of
`
`pixels arranged vertically and horizontally in a grid pattern, in an N number of
`
`vertically arranged pixel lines; (see Request p 21-28; Casio 11-12, 49, 58, 59, 61, 118;
`
`Juen 1:35-42, 5:63-6:2, 7:51-58)
`
`•
`
`a display unit with a display screen, that displays an image corresponding
`
`to the image signals; (see Request p33-35; Casio, 25, 46, 47, and 49)
`
`•
`
`... the signal processing unit generates the image signals by using pixel
`
`lines that have been mixed or culled from the N number of vertically arranged
`
`pixel lines to only include pixel lines separated from one another by intervals of a
`
`first distance; (see Request p42-48, Casio 16, 58-59, 61, 71, 117; Juen 3:32-35, Fig. 1
`
`3:38-44, 6:3-14, 9:52-58, 5:66)
`
`It is agreed that the consideration of Casio and Juen raises an SNQ as to at least claim 5
`
`of the '923 patent as pointed out above. There is a substantial likelihood that a reasonable
`
`examiner would consider the teachings of Casio and Juen important in deciding whether or not
`
`claim 5 is patentable.
`
`Issue II
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 12 of 14 PageID #: 33047
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 9
`
`Casio, Juen, Takase & Misawa
`
`14.
`
`Requester asserts a substantial new question of patentability involving claim 6 as being
`
`obvious over the combined teaching of Casio, Juen, Takase and Misawa. Casio raises a substantial
`
`new question of patentability with respect to independent claim 5, which claim 6 depends on. (see
`
`Issue I above). According, it is agreed that the combination of Casio, Juen, Takase and Misawa
`
`raise a substantial new question of patentability with respect to claim 6.
`
`Scope of Reexamination
`
`15.
`
`Claims 5 and 6 will be reexamined as requested in the Request and are hereby Ordered.
`
`Conclusion
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a
`
`reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings
`
`"will be conducted with special dispatch" (37 CFR 1.550(a)). Extension of time in ex parte
`
`reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`The patent owner is reminded of the continuing responsibility under 37 CFR 1.565(a) to
`
`apprise the Office of any litigation activity, or other prior or concurrent proceeding, involving
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 13 of 14 PageID #: 33048
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 10
`
`Patent No. 9,423,923 throughout the course of this reexamination proceeding. See MPEP §§
`
`2207, 2282 and 2286.
`
`All correspondence relating to this ex parte reexamination proceeding should be directed as
`
`follows:
`
`By U.S. Postal Service Mail to:
`
`Mail Stop Ex Parte Reexam
`ATTN: Central Reexamination Unit Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`By FAX to:
`(571) 273-9900
`Central Reexamination Unit
`
`By hand to:
`Customer Service Window
`Randolph Building
`401 Dulany St.
`Alexandria, VA 22314
`
`By EFS-Web:
`
`Registered users of EFS-Web may alternatively submit such correspondence via the electronic
`filing system EFS-Web, at
`
`https:/ /efs, uspto,gov /efile/mvportal/cf s -registered
`
`EFS-Web offers the benefit of quick submission to the particular area of the Office that needs to
`act on the correspondence. Also, EFS-Web submissions are "soft scanned" (i.e., electronically
`uploaded) directly into the official file for the reexamination proceeding, which offers parties the
`opportunity to review the content of their submissions after the "soft scanning" process is
`complete.
`
`
`
`Case 5:19-cv-00036-RWS Document 646-4 Filed 03/08/21 Page 14 of 14 PageID #: 33049
`
`Application/Control Number: 90/014,628
`Art Unit: 3992
`
`Page 11
`
`Any inquiry concerning this communication or earlier communications from the Reexamination
`
`Legal Advisor or Examiner, or as to the status of this proceeding, should be directed to the
`
`Central Reexamination Unit at telephone number (571) 272-7705.
`
`/PENG KE/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/DENNIS G BONSHOCK/
`Primary Examiner, Art Unit 3992
`
`/ ALEXANDER J KOSOWSKI/
`Supervisory Patent Examiner, Art Unit 3992
`
`
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