In re application of:
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`Rothschild. e¢ al.
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`Appl. No. 09/407,371
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`Filed: September 28, 1999
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`For:
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`Server-Group Messaging System
`for Interactive Applications
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`PECENES/o1
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`NOV 02m 0
`2758
`Art Unit:
`To Be AehnologyCenter2109
`Examiner:
`Atty. Docket: 1719.0050002
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`IN THE UNITED S
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`ATENT AND TRADEMARK OFF
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`FIRST SUPPLEMENTAL -
`INFORMATION DISCLOSURE STATEMENT
`UNDER MPEP§ 2001.06(c)
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`Commissioner for Patents
`Washington, D.C. 20231
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`Sir:
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`Listed on accompanying Form PTO-1449are ninety-seven (97) documents that may be
`considered material to the examination of this application, in compliance with the duty of
`disclosure requirements of 37 C.F.R. §§ 1.56, 1.97 and 1.98.
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`The documentslisted on the accompanying Form PTO-1449 were broughtto the attention
`of the undersigned dueto a litigation captioned HearMev. Lipstream Networks,Inc., Case No.
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`C-99-04506 (WHA), filed in the United States District Court for the Northern District of
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`California on October 8, 1999. This suit involved U.S. Patents Nos. 5,822,523 and 6,018,766,
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`to which the present application claimspriority under 35 U.S.C. § 120. The suit was ultimately
`settled on August 30, 2000.
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`The defendantsin the suit alleged invalidity and unenforceability ofboth U.S. Patent Nos.
`5,822,523 and 6,018,766 based on the ninety-four (94) documents listed on the accompanying
`Form PTO-1449. These ninety-four documents were cited by the defendantin three “Response
`Charts” (Documents AN13, AO13 and AP13 listed on the accompanying Form PTO-1449)
`which are required by Local Rules 16-7 and 16-9 of the United States District Court for the
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`Northern District of California. Thus, due to the requirements of 37 C.F.R. §§ 1.56, 1.97 and
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`1.98, as well as MPEP § 2001.06(c) (7th ed., Rev. 1, Feb. 2000), the undersignedfelt it best to
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`cite all ninety-four documents, and the three Response Charts themselves, on the accompanying
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`Form PTO-1449.
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`Applicants note that three documentslisted in one of the defendant's Response Charts are
`drafts of the same Request for Comment (RFC) documentandare no longer available from the
`Internet Engineering Task Force IETF). The three documentsare:
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`Schulzrinneef al., “RTP: A Transport Protocol for Real-Time Applications,” JETFInternet Draft
`draft-ietf-avt-rtp-03.txt, December 1992;
`Schulzrinne et a/_, “RTP: A Transport Protocol for Real-Time Applications,” JETFInternet Draft
`draft-ietf-avt-rtp-07.txt, December 1992; and
`Schulzrinne et al.,““RTP: A Transport Protocol for Real-Time Applications,” JETFInternet Draft
`draft-ietf-avt-rtp-05. txt, 1994.
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`They are unavailable because, according to IETF policy, older drafts of RFCs must be updated
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`within six monthsor are deleted from their archives. See www..ietf.org/ID html (IETF’s “Internet
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`Drafts”link), visited by the undersigned on September 5, 2000. Document AQ12 listed on the
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`accompanying Form PTO-1449, dated July 14, 2000, however, is the most recent draft of these
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`IETF RFCs that are no longeravailable.
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`Further, of the ninety-four documents cited in the three Response Charts, it is the
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`undersigned’s understanding that Documents AQ6, AM7-AP7, AP12 and AQ12 listed on the
`accompanying Form PTO-1449--all drafts of the same IETF RFC document--were the
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`documents primarily relied upon by the defendants for their assertion of invalidity and
`unenforceability during the suit. See Molins PLC v. Textron, Inc., 48 F.3d 1172, 1182-83 (Fed.
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`Cir. 1995) (discussion of inequitable conduct and “burying” references).
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`Applicants havelisted publication dates on the attached PTO-1449 based on information
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`presently available to the undersigned. However, the listed publication dates should not be
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`construed as an admissionthat the information was actually published on the date indicated.
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`Appl. No. 09/407,371 ~
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`Applicants reserve the right to further establish the patentability ofthe claimed invention
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`over any ofthe listed documents should they be applied as references, and/or to prove that some
`of these documents maynotbe priorart, and/or to prove that some of these documents maynot
`be enabling for the teachings they purport to offer.
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`This statement should not be construed as a representation that a search has been made,
`or that information more material to the examination of the present patent application does not
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`exist. The Examiner is specifically requested not to rely solely on the material submitted
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`herewith. It is further understood that the Examinerwill consider information that was cited or
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`submitted to the U.S. Patent and Trademark Office in a prior application relied on under 35
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`U.S.C. § 120. 1138 OG 37, 38 (May 19, 1992).
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`It is respectfully requested that the Examinerinitial and return a copy ofthe enclosed
`PTO-1449,andindicate in the official file wrapperofthis patent application that the documents
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`have been considered.
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`This Information Disclosure Statementis being filed before the mailingdate ofa first
`Office Action on the merits. No statementor fee is required. Nevertheless, the U.S. Patent and
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`Trademark Office is hereby authorized to charge any fee deficiency, or credit any overpayment,
`to our Deposit Account No. 19-0036. A duplicate copy of this pleading is enclosed.
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`Rothschildet al.
`Appl. No. 09/407,371.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOXP.L.L.C.
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`M/—
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`Raymofhd Millien
`Attorney for Applicants
`Registration No. 43,806
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`Date:
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`\\ | Joo
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`1100 New York Avenue, N.W.
`Suite 600
`Washington, D.C. 20005-3934
`(202) 371-2600
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