`
`Substitute for form 1449/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`(Use as many sheets as necessary)
`
`Filing Date
`First Named Inventor
`Art Unit
`
`12754573 - GAU: 3716
`
`PTO/SB/08
`
`Complete if Known
`12/754,573 and 90/011,117
`4/5/2010
`Sheldon F. Goldberg
`3716
`
`
`
`Examiner
`Initials*
`
`Cite
`No.
`
`Document Number
`Number-kind Code 2 “{k1o#")
`
`U.S. PATENT DOCUMENTS
`
`Publication Date
`MM-DD-YYYY
`
`Nameof Patentee of
`Applicant of Cited Document
`
`Pages, Columns, Lines, Where
`Relevant Passages or Relevant
`Figures Appear
`
`FOREIGN PATENT DOCUMENTS
`
`Foreign Patent Document
`
`Country Code?; Number’; Kind Code?(if known)
`
`Publication
`Date
`MM-DD-YYYY
`
`Nameof Patentee or
`Applicant of Cited Document
`
`Pages, Columns,
`Lines,
`Where Relevant
`Passagesor
`Relevant Figures
`Appear
`
`NON-PATENT LITERATURE DOCUMENTS
`
`Include name of the author (in CAPITAL LETTERS), title of the article (when appropriate), title of
`the item (book, magazine, journal, serial, symposium, catalog, etc.), date, page(s), volume-issue
`
`DefendantDell Inc.'s Certificate of Financially Interested Entities filed in the United States District
`Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Apr. 27, 2012, 2
`
`Declaration of Nicholas A. Schuneman Regarding Travel in Support of Dell's Motion to Sever and
`Transfer Venue filed in the United States District Court, Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Sep. 4, 2012, 38 pages
`Notice of Appearance of Counsel for Defendant Demand Mediafiled in the Eastern District of
`Texas Marshall Division, Case No. 2:11-CV-229, on Nov. 13, 2012, 3 pages
`
`Defendants' Motion to Strike Plaintiff's Initial and Supplemental Disclosures of Asserted Claims
`and Infringement Contentions Under Local Rule 3-1 filed in the Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Nov. 16, 2012, 23 pages
`Declaration of Stuart M. Rosenberg in Support of Defendants' Motion to Strike Plaintiff's Initial
`and Supplemental Disclosures of Asserted Claims and Infringement Contentions Under Local
`Rule 3-1, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Nov. 16, 2012,
`
`Notice of Compliance with the Court's Motion Practice Orderfiled in the Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Nov. 26, 2012, 9 pages
`
`Order Proposing Technical Advisor entered in the Eastern District of Texas Marshall Division,
`Case No. 2:11-CV-229, on Nov. 28, 2012, 1 page
`
`Date
`Examiner
`Considered
`Signature
`*EXAMINER: Initial if reference considered, whether or notcitation is in conformance with MPEP 609. Draw line through citation if,not in conformance and not
`considered. Include copyof this form with next communication to applicant. Applicant’s unique citation designation number(optional). See Kinds Codes of USPTO
`Patent Documents at www. tispto.gov or MPEP 901.04. Enter Office that issued the document, by the two-letter code (WIPO Standard ST.3). For Japanese patent
`documents, the indication of the year of the reign of the Emperor must precede the serial number of the patent document. Kind of document by the appropriate
`symbols as indicated on the document under WIPO Standard ST.16 if possible. Applicant is to place a check mark here if English language Translation is
`attached.
`
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`/P.D//
`
`
`
`Receipt date: 07/23/2013
`
`12754573 - GAU: 3716
`
`Substitute for form 1449A/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`
`
`[sreotTTtoeyDocketnumberaor
`
`Notice of Letter in Support of Google's Requestfor Permission to File a Motion for Summary
`Adjudicationfiled in the Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on
`Nov. 28, 2012, 5 pages
`Plaintiff Beneficial Innovations, Inc.'s Agreed Motion to Modify Briefing Scheduel re: Defendants’
`Motion to Strike Plaintiff's Initial and Supplemental Disclosures of Asserted Claims and
`Infringement Contentions Under Location Patent Rule 3-1 filed in the Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Nov. 28, 2012, 5 pages
`Plaintiff Beneficial Innovations, Inc.'s Agreed Motion to Modify Briefing Scheduel re: Defendants’
`Motion to Strike Plaintiff's Initial and Supplemental Disclosures of Asserted Claims and
`Infringement Contentions Under Location Patent Rule 3-1 filed in the Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Nov. 29, 2012, 5
`
`Supplemental Disclosures of Asserted Claims and Infringement Contentions under Local Rule 3- 20
`
`
`
`OYUnopposed Motion for Extension ofTime to File a Reply Letter Brieffiled in the Eastern Districtof|frees Marshall Division, Case No. 2:11-CV-229, on Dec. 3, 2012, 4 pages
`
`12
`
`13.
`
`14
`
`15
`
`17
`
`18
`
`|Order Granting Unopposed Motion for Extension of Time to File a Reply Letter Brief entered in
`the United States District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-
`229, on Dec. 4, 2012, 1 page
`|Notice of Compliance with Court's Motion Practice Order filed in the Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Dec. 7, 2012, 8 pages
`
`|Order Appointing Technical Advisor entered in the Eastern District of Texas Marshall Division,
`Case No. 2:11-CV-229, on Dec. 10, 2012, 2 pages
`
`|Plaintiff Beneficial Innovations, Inc.'s Opposition to Defendants' Motion to Strike Plaintiff's Initial
`and Supplemental Disclosures of Asserted Claims and Infringement Contentions under Local
`Rule 3-1 filed in the Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Dec.
`10, 2012, 21 pages
`Declaration of David E. Rosen in Opposition to Defendants' Motion to Strike Plaintiff's Initial and
`
`1 filed in the Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Dec. 10,
`2012, 58 pages
`|Amended Order Appointing Technical Advisor entered in the Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Dec. 10, 2012, 2 pages
`
` |Notice of Compliance with the Court's Motion Practice Orderfiled in the Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Dec. 10, 2012, 8 pages
`
`Defendants' Responsive Claim Constructionfiled in the United States District Court, Eastern
`District of Texas, Marshall Division, Case Nos. 2:11-CV-299 (MHS/CMC), on Dec. 10, 2012, 311
`
`‘Affidavit of Engagement filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Dec. 11, 2012, 2 pages
`
`Date
`Examiner
`Considered
`Signature
`*EXAMINER: Initial if reference is considered, whether or not citation is in conformance and not considered.
`next communication to applicant.
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`Include copyof this form with
`
`/P.D//
`
`
`
`Receipt date: 07/23/2013
`
`12754573 - GAU: 3716
`
`Substitute for form 1449A/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`
`
`[sreotTTtoeyDocketnumberBaste
`
`pages
`
`Plaintiff's Notice of Compliance with the Court's Motion Practice Order filed in the United States
`District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Dec. 12,
`
`Google Inc.'s Notice of Compliance with the Court's Motion Practice Order filed in the United
`States District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Dec.
`
`Defendants’ Reply in Support of Motion to Strike Plaintiff's Initial and Supplemental Disclosures
`of Asserted Claims and Infringement Contentions under Local Patent Rule 3-1 filed in the United
`States District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Dec.
`21, 2012, 11 pages
`Plaintiff Beneficial Innovations, Inc.'s Reply to Defendant's Claim Construction Brief filed in the
`United States District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229,
`on Dec. 21, 2012, 19 pages
`Plaintiff's Notice of Compliance with the Court's Motion Practice Order filed in the United States
`District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Dec. 21,
`2012, 6 pages
`Plaintiff Beneficial Innovations, Inc.'s Sur-Reply in Response to Defendants’ Motion to Strike
`Plaintiff's Initial and Supplemental Disclosures of Asserted Claims and Infringement Contentions
`Under Local Rule 3-1 filed in the United States District Court, Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Dec. 31, 2012, 7
`Order entered in the Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Jan.
`2, 2013, 1 page
`
`Joint Claim Construction Chartfiled in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Jan. 7, 2013, 38 pages
`
`Joint Motion to Dismiss Dell Inc. filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Jan. 10, 2013, 5 pages
`
`Order of Dismissal entered in the Eastern District of Texas Marshall Division, Case No. 2:11-CV-
`229, on Jan. 11, 2013, 1 page
`
`General Order Regarding Pending Case Transfers entered in the Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Jan. 14, 2013, 20 pages
`
`Joint and Unopposed Motion for a New Trial in a Reassigned Casefiled in the United States
`District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Jan. 28,
`2013, 9 pages
`Joint and Unopposed Motion for Entry of a Discovery Order filed in the United States District
`Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Jan. 28, 2013, 16
`
`Date
`Examiner
`Considered
`Signature
`*EXAMINER: Initial if reference is considered, whether or not citation is in conformance and not considered.
`next communication to applicant.
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`Include copyof this form with
`
`/P.D//
`
`
`
`Receipt date: 07/23/2013
`
`12754573 - GAU: 3716
`
`Substitute for form 1449A/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`
`
`[sreotTTtoeyDocketnumberBase
`
`34
`
`35
`
`36
`
`37
`
`|Agreed to Motion to Set Briefing Schedule on Cross-Motions for Summary Judgment on Google
`Inc.'s Complaint for Intervention filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Mar. 1, 2013, 6 pages
`|Motion for Summary Judgment that Beneficial Innovations, Inc. is in Breach of its Settlement
`Agreement with Google Inc. and Memorandum in Support Thereoffiled in the United States
`District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Mar. 1,
`2013, 361 pages
`|Order Granting Agreed to Motion to Set Briefing Schedule on Cross-Motions for Summary
`Judgment on Google Inc.'s Complaint for Intervention entered in the Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Mar. 5, 2013, 2 pages
`{Order re Scheduling Conference entered in the Eastern District of Texas Marshall Division, Case
`No. 2:11-CV-229, on Mar. 15, 2013, 2 pages
`
`38 Order granting Joint Motion for a New Trial Date entered in the Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Mar. 15, 2013, 1 page
`
`
`
`39
`
`40
`
`41
`
`42
`
`43
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`44
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`45
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`46
`
`47
`
` |Motion to Strike Declaration of Dr. Almeroth and Memorandum in Support Thereof by Google Inc.
`filed in the United States District Court, Eastern District of Texas Marshall Division, Case No.
`2:11-CV-229, on Mar. 21, 2013, 18 pages
`|Declaration of D. Clay Hollowayfiled in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Mar. 21, 2013, 58 pages
`
`|Notice of Firm Name Change filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Mar. 22, 2013, 3 pages
`
`{Response and Opposition of Google Inc. to the Motion for Summary Judgmentfiled by Beneficial
`Innovations Inc. (Dkt. 273) filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Mar. 22, 2013, 309 pages
` |Defendants Amazon.com Inc., Expedia, Inc., Scripps Networks, LLC, and Viacom Inc.'s Notice
`Regarding Cross-Motions for Summary Judgment by Google and Beneficial Innovationsfiled in
`the United States District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-
`229, on Mar. 25, 2013, 4
`|Agreed Submission of Docket Control Order filed in the United States District Court, Eastern
`District of Texas Marshall Division, Case No. 2:11-CV-229, on Mar. 29, 2013, 8 pages
`
`|Notice of Firm Name Change filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Mar. 29, 2013, 2 pages
`
`{Amended Joint and Unopposed Motion for Entry of a Discovery Order filed in the United States
`District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Mar. 29,
`
` |Notice re: Mediatorfiled in the United States District Court, Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Mar. 29, 2013, 3 pages
`
`Date
`Examiner
`Considered
`Signature
`*EXAMINER: Initial if reference is considered, whether or not citation is in conformance and not considered.
`next communication to applicant.
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`Include copyof this form with
`
`/P.D//
`
`
`
`Receipt date: 07/23/2013
`
`12754573 - GAU: 3716
`
`Substitute for form 1449A/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`
`
`[sreotTStoeyDocketnumberBasTRG
`
`
`
`Discovery Order entered in the United States District Court, Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Apr. 2, 2013, 8 pages
`
`Docket Control Order entered in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Apr. 2, 2013, 5 pages
`
`Amended Notice re: Mediatorfiled in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Apr. 2, 2013, 3 pages
`
`Order Appointing Mediator entered in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on Apr. 3, 2013, 1 page
`
`Sur-Reply of Google Inc. in Opposition to Beneficial Innovations Inc.'s Motion for Summary
`Judgment (Dkt. 273) filed in the United States District Court, Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Apr. 15, 2013, 8 pages
`Reply of Google Inc. in Support of its Motion to Strike Declaration (Dkt. 279) filed in the United
`States District Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on Apr.
`
`Joint Motion to Dismiss Demand Media, Inc. filed in the United States District Court, Eastern
`District of Texas Marshall Division, Case No. 2:11-CV-229, on Apr. 24, 2013, 5 pages
`
`Order of Dismissal entered in the United States District Court, Eastern District of Texas Marshall
`Division, Case No. 2:11-CV-229, on Apr. 26, 2013, 1 page
`
`Beneficial Innovations, Inc.'s Sur-Reply to Google's Motion to Strike the Declaration of Dr.
`Almeroth filed in the United States District Court, Eastern District of Texas Marshall Division,
`Case No. 2:11-CV-229, on Apr. 29, 2013, 10 pages
`Declaration of David Rosen in Opposition to Google's Motion to Strike the Declaration of Dr.
`Almeroth filed in the United States District Court, Eastern District of Texas Marshall Division,
`Case No. 2:11-CV-229, on Apr. 29, 2013, 4
`Notice of Technology Tutorial filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on May 14, 2013, 24 pages
`
`Jury Demand of Third-Party Plaintiff Google Inc. filed in the United States District Court, Eastern
`District of Texas Marshall Division, Case No. 2:11-CV-229, on May 16, 2013, 2 pages
`
`Plaintiff Beneficial Innovations, Inc.'s Jury Demandfiled in the United States District Court,
`Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on May 16, 2013, 2 pages
`
`Order re: Markman hearing entered in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on May 21, 2013, 2 pages
`
`Order on Letter Briefs entered in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on May 21, 2013, 1 page
`
`Date
`Examiner
`Considered
`Signature
`*EXAMINER: Initial if reference is considered, whether or not citation is in conformance and not considered.
`next communication to applicant.
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`Include copyof this form with
`
`/P.D//
`
`
`
`Receipt date: 07/23/2013
`
`12754573 - GAU: 3716
`
`Substitute for form 1449A/PTO
`
`INFORMATION DISCLOSURE
`STATEMENT BY APPLICANT
`
`[sreotTTtoreyDocketnumberBasTRG
`
`District of Texas Marshall Division, Case No. 2:11-CV-229, on Jun. 5, 2013, 17 pages
`
`
`
`
`
`Joint Statement Regarding Claim Terms for Argment at Markman Hearing Pursuant to Court's
`May 21, 2013 Order [Dkt. 304]filed in the United States District Court, Eastern District of Texas
`Marshall Division, Case No. 2:11-CV-229, on May 29, 2013, 10 pages
`Defendants’ Motion for Summary Judgment of Indefiniteness filed in the United States District
`Court, Eastern District of Texas Marshall Division, Case No. 2:11-CV-229, on May 30, 2013, 17
`
`Declaration of Stuart M. Rosenberg in Support of Defendants’ Motion for Summary Judgmentof
`Indefinitenessfiled in the United States District Court, Eastern District of Texas Marshall Division,
`Case No. 2:11-CV-229, on May 30, 2013, 147 pages
`Unopposed Motion for Oral Argument on Pending Motions Regarding Alleged Breachof
`Settlement Agreement [Dkt. Nos. 273 and 275]filed in the United States District Court, Eastern
`
`
`
`Date
`Examiner
`Considered
`Signature
`*EXAMINER: Initial if reference is considered, whether or not citation is in conformance and not considered.
`next communication to applicant.
`ALL REFERENCES CONSIDERED EXCEPT WHERE LINED THROUGH.
`
`Include copyof this form with
`
`:
`
`/P.D//
`
`