Case 2:19-cv-00126-JRG Document 2 Filed 04/16/19 Page 1of1PageiID#: 17
`
`DOL.
`
`
`
`
`REPORT ON THE
`Mail Stop 8
`
`Director of the U.S, Patent and Trademark Office
`FILING OR DETERMINATION OF AN
`
`
`P.O. Box 1450
`ACTION REGARDING A PATENT OR
`
`
`TRADEMARK
`
`
`
`Alexandria, VA 22313-1450
`
`APR 3 0 2019 ~
`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 Texas, Marshall Division
`on the following
`(Trademarks or
`f{Patents.
`( [] the patentaction involves 35 U.S.C. § 292.):
`DOCKET NO.
`DATE FILED
`U.S. DISTRICT COURT
`2:19-cv-00126
`4/16/2019
`Eastern District of Texas, Marshall Division
`PLAINTIFF
`DEFENDANT
`
`
`
`
`
`UNILOC 2017 LLC
`
`SAMSUNG ELECTRONICS AMERICA,INC. and
`SAMSUNG ELECTRONICS Co. LTD.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARE
`
`HOLDER OF PATENT OR TRADEMARK
`
`| 7,136,999
`
`11/14/2006
`
`Uniloc 2017 LLC
`
`
`
`
`
`pe
`
`||
`
`In the above—entitled case, the following patent(s)/ trademark{s) have been included:
`INCLUDED BY
`
`(] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`
`
`0 Other Pleading
`Cross Bill
`HOLDER OF PATENT OR TRADEMARK
`
`In the above—entiiled case, the following decision has been rendered or judgementissued:
`
`DECISION/JUDGEMENT
`
`
`CLERK
`(BY) DEPUTY CLERK
`DATE
`
`Copy I—-Upon initiation 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 Capy 4—Casefile copy
`
`Page 1 of 195
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`SAMSUNG EXHIBIT 1004
`
`Page 1 of 195
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`SAMSUNG EXHIBIT 1004
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`

`

`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark 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
`Western District of Texas, Austin Division
`on the following
`( Trademarks or
`[Wf Patents.
`( [] the patentaction involves 35 U.S.C. § 292.):
`DOCKETNO.
`DATE FILED
`U.S. DISTRICT COURT
`1:18-cv-990-LY
`11/17/2018
`Western District of Texas, Austin Division
`PLAINTIFF
`DEFENDANT
`
`UNILOG 2017 LLC
`
`APPLEINC.
`
`
`
`PATENT OR
`
`DATE OF PATENT
`
`
`
`
`
`mveuang|
`
`
`
`ep
`
`
`
`
`
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`‘
`
`
`OO Answer
`OD CrossBill
`( Other Pleading
`
`
`
`
`
`O
`
`aE
`aE
`
`Sa
`
`DATE INCLUDED
`
`PATENT OR
`
`OD Amendment
`DATE OF PATENT
`
`
`
`
`
`
`
`
`In the above—entitled case, the following decision has been rendered or judgement issued:
`DECISION/JUDGEMENT
`
`
`
`CLERK
`
`JEANNETTE J. CLACK
`
`AyoCLERK
`
`(A df Chit
`
`f
`
`DATE
`
`HOV 19 2018
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upontermination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent{s), mail this copy ta Director Copy 4—Casefile copy
`
`Page 2 of 195
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`Page 2 of 195
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`

`Campirte acd send this farna, together with applicable fee(s}, fo:
`
`
`
`
`PART B~ FEES) TRANSMITTAL
`
`
`MMisil Stop ISSUE FRE
`
`Perpodssingaer for Patents
`PD. Box 1456
`Alexandria, Virginia 22913-1458
`
` ack} faraay chaige of ac
`
`671ZFRAIGRS
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` PRAT MAMED
`
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`KONINKLIJKE PHILIPS ELECTRONCIS N.V.
`EINDHOVEN, THE NETHERLANDS
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`
`Page 3 of 195
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`Page 3 of 195
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Inre Application of:
`
`GRIFFITHS, Jonathan C.
`
`Serial No.
`
`Filed
`
`Atty. Docket
`
`Examiner
`
`Group Art Unit
`
`Confirmation No.
`
`,
`
`:
`
`;
`
`:
`
`:
`
`:
`
`09/597,198
`
`June 20, 2000
`
`US000136
`
`KAMBIZ ZAND
`
`2132
`
`6017
`
`Mail Stop Issue Fee
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`COMMENTS ON STATEMENT OF REASONS FOR ALLOWANCE
`
`Sir:
`
`In the Notice of Allowability, the Examinersct forth various reasons for allowance and
`
`made certain allegations pertaining to claims and/or references.
`
`It is hereby submitted that Applicant does not concede, acquiesce or admit the positions
`
`taken in the examiner’s statement of reasons for allowance.
`
`It is further submitted that the record of the prosecution as a whole makes clear the
`
`reasons for allowing a claim or claims. Namely, the examiner's actions and the applicant's
`
`replies during the prosecution made evident the reasons for allowance,satisfying the "record as a
`
`whole" proviso of the rule. The examiner's actions clearly pointed out the reasons for rejection
`
`and the applicant's reply explicitly presented reasons why claims are patentable over the
`
`reference. Hence, it is believed that the reasons for allowance were evident from the record, and
`
`no statement was necessary.
`
`Page 4 of 195
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`Page 4 of 195
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`Serial No. 09/597,198
`
`Asfurther explicitly stated in MPEP 1302.14, it is improper to use a statement of reasons
`
`for allowance to attempt to narrow a claim by providing a special definition to a claim limitation
`
`which is argued by Applicant, but not supported by a special definition in the description in
`
`cases where the ordinary meaning of the term in the prior art demonstrates that the claim remains
`
`unpatentable for the reasons of record, and where such claim narrowingis only tangential to
`
`patentability. Cf. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 741, 62
`
`USPQ2d 1705, 1714 (2002).
`
`Still further according to MPEP 1302.14, the examiner's statement of reasons for
`
`allowanceis the personal opinion of the examiner as to why the claims are allowable. In
`
`accordance with the Festo court, the examiner's statement should not create an estoppel, and only
`
`applicant's statements can create an estoppel. The failure of applicant to commenton the
`
`examiner's statement of reasons for allowance should not be treated as acquiescenceto the
`
`examiner's statement. Any inferences or presumption are to be determined on a case-by-case
`
`basis by a court reviewing the patent, the USPTO examining the patent in a reissue application
`
`or a reexamination proceeding, the Board of Patent Appeals and Interferences reviewing the
`
`patent in an interference proceeding,ete.
`
`October 10, 2006
`
`Respectfully submitted,
`
`/LARRY LIBERCHUK/
`By
`Larry Liberchuk, Reg. No. 40,352
`Senior IP Counsel
`Philips Electronics N.A. Corporation
`914-333-9602
`
`Page 5 of 195
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`Page 5 of 195
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`
`
`Application Number:
`
`Filing Date:
`
`Title of Invention:
`
`Electronic Patent Application Fee Transmittal
`
`09597198
`
`20-Jun-2000
`
`METHOD AND SYSTEM FOR ELECTRONIC DEVICE
`AUTHENTICATION
`
`Jonathan C. Griffiths
`First NamedInventor:
`
`
`Filer:
`
`Attorney Docket Number:
`
`Filed as Large Entity
`
`Utility
`
`Filing Fees
`
`Michael E. Marion‘NOEMI CHAPA
`
`US 000136
`
`momen|rns||_|
`
`Basic Filing:
`
`Pages:
`
`Claims:
`
`Miscellaneous-Filing:
`
`Petition:
`
`Patent-Appeals-and-Interference:
`
`Post-Allowance-and-Post-Issuance:
`
`1501 1 1400Utility Appl issue fee 1400
`
`
`
`
`
`
`
`
`
`
`
`Extension-of-Time:
`
`Page 6 of 195
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`Page 6 of 195
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`
`
`
`
`
`
`
`
`Description Fee Code|Quantity] Amount SSDIS) in
`
`
`
`
`
`
`
`Total in USD ($)
`
`1400
`
`Miscellaneous:
`
`Page 7 of 195
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`Page 7 of 195
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`

`
`
`
`
`
`
`Electronic Acknowledgement Receipt
`
`EFS ID:
`
`1243553
`
`Application Number:
`09597198
`
`
`Confirmation Number:
`
`6017
`
`Title of Invention:
`
`METHOD AND SYSTEM FOR ELECTRONIC DEVICE
`AUTHENTICATION
`
`First Named Inventor:
`
`Jonathan C. Griffiths
`
`Philips Intellectual Property & Standards
`
`Correspondence Address:
`
`Briarcliff Manor
`
`NY
`
`10610
`
`PO BOX 3001
`
`US
`
`- F
`
`Michael E. Marion‘NOEMI CHAPA
`
`iler:
`
`Filer Authorized By:
`
`Michael E. Marion
`
`Attorney Docket Number:
`
`US 000136
`
`ReceiptDate:
`10-OCT-2006
`
`
`Filing Date:
`
`Time Stamp:
`
`Application Type:
`
`International Application Number:
`
`Paymentinformation:
`
`Submitted with Payment
`
`20-JUN-2000
`
`09:39:45
`
`Utility
`
`yes
`
`
`
`Payment was successfully received in RAM $1400
`
`
`
`Page 8 of 195
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`Page 8 of 195
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`
`
`1
`Issue Fee Payment Recorded
`US000136_IF.pdf
`727425
`no
`{
`
`
`Warnings:
`Information:
`
`2
`
`Post Allowance Communication -
`Incoming
`
`US000136_reason-for-allow
`ance.pdf
`
`111334
`
`no
`
`3
`
`
`Warnings:
`Information:
`
`3
`
`Fee Worksheet (PTO-875)
`
`fee-info.pdf
`
`2 W
`
`8168
`
`no
`
`arnings:
`Information:
`
`
`Total Files Size (in bytes):
`
`846927
`
`This Acknowledgement Receiptevidencesreceipt on the noted date by the USPTOof the indicated documents,
`characterized by the applicant, and including page counts, where applicable.
`It serves as evidenceof receipt
`similar to a Post Card, as described in MPEP 503.
`
`New Applications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary componentsfor a 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 the filing 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.
`
`Page 9 of 195
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`
`
`
`
`
`RAMconfirmation Number 1682
`
`
`
`Deposit Account 141270
`
`The Director of the USPTOis hereby authorized to charge indicated fees and credit any overpayment as follows:
`
`Charge any Additional Fees required under 37 C.F.R. Section 1.16 and 1.17
`
`File Listing:
`Document
`Number
`
`
`
`i.
`DocumentDescription
`
`.
`File Name
`
`_
`File Size(Bytes)
`
`Pages
`
`Page 9 of 195
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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
`
`APPLICATION NO.
`
`09/597,198
`
`FILING DATE
`
`06/20/2000
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATIONNO.
`
`Jonathan C.Griffiths
`
`US000136
`
`6017
`
`Philips Intellectual Property & Standards
`PO BOX 3001
`Briarcliff Manor, NY 10610
`
`/
`
`ZAND, KAMBIZ
`
`2132
`
`DATE MAILED:09/21/2006
`
`Please find below and/orattached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`Page 10 of 195
`
`Page 10 of 195
`
`

`

`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`U.S. Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`.
`
`
`
`APPLICATION NOJ
`CONTROL NO.
`091097, 14%
`
`FILING DATE
`
`FIRST NAMED INVENTOR/
`PATENTIN REEXAMINATION
`
`ATTORNEY DOCKET NO,
`
`|
`
`
`
`
`
`ART UNIT
`
`PAPER
`
`20060915
`
`DATE MAILED:
`
`Please find below and/or attached an Office communication concerning this application or
`proceeding.
`
`IDS filed on 06/20/2000 was considered on 02/26/2006 andit is being re-mailed in order to complete the records.
`
`Commissionerfor Patents
`
`KAMBIZ ZAND
`PRIMARY EXAMINER
`
`Kambiz Zand
`Examiner
`Art Unit: 2132
`
`PTO-90C (Rev.04-03)
`
`Page 11 of 195
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`Page 11 of 195
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`

`

`nn
`nnn
`
`Form PTO-1449 U.S. DEPARTMENT OF COMMERCE|Atty. Docket No. Serial No.
`
`
`
`(REV. 7-80)
`PATENT AND TRADEMARK OFFICE
`US 000136
`
`
` Applicant
`JONATHAN C. GRIFFITHS
`
`
`
` Filing Date
`
`INFORMATION DISCLOSURE CITATION
`
`(Use several sheets if necessary)
`
`
`U.S. PATENT DOCUMENTS
`
`
`
` "SPECIFICATION OF BLUETOOTH SYSTEM - CORE” v. %. OA, July 26
`
`Filing Oate
`If Approp.
`
`169-170, 194-200, 226, 319, 537, 1029 and 1031.
`
`
`
`EXAMINER:
`Initial if reference considered, whether or not citation is in conformance with MPEP 609; Draw li
`through citetion if not
`in conformance and not considered.
`Include a copy of this formwith next
`
`
`communication to applicant.
`
`
`\\SERVERO\SYS2\WPDOCSI\MK\miscelns\mv20mkc0. ma0.doc
`
`Page 12 of 195
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`Page 12 of 195
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`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`ct
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`‘WwW._USptD.gov
`
`NOTICE OF ALLOWANCEAND FEE(S) DUE
`
`1590
`
`crasno0s
`
`Philips Intellectual Property & Standards
`PO BOX 301
`Bnarcliff Manor, NY 10610
`
`ZAND, KAMBIZ
`
`2132
`DATE MAILED: 07/25/2006
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Jonathan C. Griffiths
`06/20/2000
`09/597,198
`TITLE OF INVENTION: METHOD AND SYSTEM FOR ELECTRONIC DEVICE AUTHENTICATION
`
`US 000136
`
`6017
`
`
`
`APPLN. TYPE PUBLICATION FEE DUE|PREV. PAID ISSUE FEESMALL ENTITY ISSUE FEE DUE TOTAL FEE(S) DUE DATE DUE
`
`
`
`
`
`
`
`NO
`$0
`$0
`
`nonprovisional
`
`31400
`
`$1400
`
`10/25/2006
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION
`[THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCEIS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP1308.
`
`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 PREVIOUSLYPAID ISSUE FEE TOWARD THE ISSUE FEE NOW
`DUE.
`
`HOW TO REPLYTO THIS NOTICE:
`
`I. Review the SMALL ENTITY status shown above.
`
`If the SMALL ENTITY is shown as YES, verify your current
`SMALL ENTITY status:
`
`If the SMALL ENTITY is shown as NO:
`
`A. If the status is the same, pay the TOTAL FEE(S) DUE shown
`above.
`
`A. Pay TOTAL FEE(S) DUE shown above, or
`
`B. If the status above is to be removed, check box 5b on Part B -
`Fee(s) Transmittal and pay the PUBLICATION FEE(if required)
`and twice the amount of the ISSUE FEE shown above, or
`
`B. If applicant claimed SMALL ENTITY status before, or is now
`claiming SMALLENTITY status, check box 5a on Part B - Fee(s)
`Transmittal and pay the PUBLICATIONFEE(if required) and 1/2
`the ISSUE FEE shown above.
`
`Il. PART B - FEE(S) TRANSMITTAL,orits 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 submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occurdueto the difficulty in recognizing
`the paper as an equivalent of Part B.
`
`I. All communications regarding this application must give the application number. Please direct all communications prior to issuance to
`Mail Stop ISSUE FEEunlessadvised to the contrary.
`
`IMPORTANT REMINDER:Utility patents issuing on applications filed on or after Dec. 12, 1980 may require payment of
`maintenancefees. It is patentee's responsibility to ensure timely payment of maintenance fees when due.
`
`PTOL-85 (Rev. 07/06) Approvedforuse through 04/30/2007.
`
`Page 13 of 195
`
`Page 1 of 3
`
`X
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`Page 13 of 195
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`

`

`PART B - FEE(S) TRANSMITTAL
`
`Complete and sendthis form, together with applicable fee(s), to: Mail Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`or Fax (571)-273-2885
`through 5 should be completed where
`INSTRUCTIONS:This form should be used for tansmitting the ISSUE FEE and PUBLICATIONFEE(if required). Blocks |
`appropriate. All further correspondence including the Patent, advance orders and notification of maintenance fees will
`be mailed to the current correspondence address as
`indicated unless corrected below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS"for
`maintenancefee notifications.
`CURRENT CORRESPONDENCE ADDRESS(Note: Use Block | for any change ofaddress)
`
`7590
`
`07/25/2006
`
`see
`Philips Intellectual Property & Standards
`PO BOX 3001
`4
`?
`Briarcliff Manor, NY 10610
`
`:
`
`Note: A certificate of mailin can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
`apers. Each additional paper, such as an assignmentor formal drawing, must
`fave its own certificate ofmailing or transmission.
`Certificate of Mailing or Transmission
`that this Foe(s) Transmittal is being deposited with the United
`certify
`I hereby
`Postal Service with
`States
`cient postage for first class mail in an envelope
`addressed to the Mail Stop ISSUE FEE address above, or being
`facsimile
`transmitted to the USPTO (571) 273-2885, on the date indicated below.
`
`(Depositor's name)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Jonathan C. Griffiths
`06/20/2000
`09/597,198
`TITLE OF INVENTION: METHOD AND SYSTEM FOR ELECTRONIC DEVICE AUTHENTICATION
`
`US 000136
`
`6017
`
`
`
`APPLN. TYPE ISSUB FEB DUE|PUBLICATION FEE DUE|PREV. PAID ISSUE FEE|TOTAL FEE(S) DUESMALL ENTITY
`
`NO
`$0
`
`nonprovisional
`EXAMINER
`
`$1400
`ART UNIT
`
`CLASS-SUBCLASS
`
`$0
`
`$1400
`
`10/25/2006
`
`ZAND, KAMBIZ
`
`2132
`
`713-168000
`
`
`1. Change of correspondence addressor indication of "Fee Address" (37
`2. For printing on thepatent frontpage,list
`CFR 1.363).
`(1) the names of up to 3 registered patent attorneys
`1
`
`() Change ofcorrespondence address (or Change of Correspondence
`or agents OR, alternatively,
`Address form PTO/SB/122)attached.
`
`(2) the nameofa single firm (having asa membera
`tegistered attorney or agent) and the namesofup to
`C) "Fee Address"indication (or “Fee Address" Indication form
`PTO/SB/47; Rev 03-02 or more recent) attached. Use of a Customer
`2 registered patent attomeys or agents. Ifnoname is
`3
`
`
`
`listed, no namewill be printed. Numberis required.
`3. ASSIGNEE NAME AND RESIDENCE DATATO BE PRINTED ON THE PATENT (print ortype)
`If an assignee is identified below, the document has been filed for
`PLEASE NOTE:Unless an assignee is identified below, no assignee data will appear on the patent.
`
`recordation as set forth in 37 CFR 3.11. Completion of this form is NOTasubstitute forfiling an assignment.
`(A) NAME OF ASSIGNEE
`(B) RESIDENCE:(CITY and STATE OR COUNTRY)
`
`2
`
`
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : (J individual O Corporation or other private group entity O) Government
`
`4b. Payment of Fee(s): (Please first reapply any previously paid issue fee shown above)
`4a. The following fee(s) are submitted:
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`() Advance Order - # ofCopies
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`overpayment, to Deposit Account Number enclose an extra copyofthis form).
`
`3. Change in Entity Status (from status indicated above)
`Oa. Applicant claims SMALL ENTITY status. See 37 CFR 1.27.
`Ob. Applicantis no longer claiming SMALL ENTITY status. See 37 CFR 1.27(g)(2).
`
`NOTE:The Issue Fee and Publication Fee (if required) will not be accepted from anyoneother than the applicant; a registered attomeyor agent; or the assigneeorother party in
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`Registration No.
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`This collection of information is required by 37 CFR 1.311. The information is required to obtain orretain a benefit by
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`Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce,P.O.
`Box 1450, Alexandria, Virginia 22313-1450. DO NOT SEND FEES OR COMPLETED FORMSTO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450,
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`OMB0651-0033
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`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`Page 14 of 195
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`Page 14 of 195
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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 223 13-1450
`WWW.USTtO.OY
`
`APPLICATION NO.
`
`09/597,198
`
`FILING DATE
`
`06/20/2000
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`Jonathan C. Griffiths
`
`US 000136
`
`6017
`
`Philips Intellectual Property & Standards
`
`Briarcliff Manor, NY 10610
`
`ZAND, KAMBIZ
`
`R1D2
`DATE MAILED:07/25/2006
`
`Determination of Patent Term Adjustment under 35 U.S.C. 154 (b)
`(application filed on or after May 29, 2000)
`
`The Patent Term Adjustment to date is 588 day(s). If the issue fee is paid on the date that is three monthsafter the
`mailing date of this notice and the patent issues on the Tuesday before the date that is 28 weeks (six and a half
`months)after the mailing date of this notice, the Patent Term Adjustmentwill be 588 day(s).
`
`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.
`
`Applicantwill 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 Customer Service Center of the Office of Patent Publication at 1-(888)-786-0101
`or
`(571)-272-4200.
`
`PTOL-85 (Rev. 07/06) Approved for use through 04/30/2007.
`
`Page 3 of 3
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`Page 15 of 195
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`

`

`Notice of Allowability
`
`Application No.
`
`Applicant(s)
`
`09/597,198
`Examiner
`
`Kambiz Zand
`
`GRIFFITHS, JONATHAN C.
`Art Unit
`
`2132
`
`-- The MAILING DATE ofthis communication appears on the cover sheet with the correspondence address--
`All daims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application.
`If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANTOF PATENT RIGHTS.This application is subject to withdrawal from issue at theinitiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` 1. Xd This communicationis responsive to Appealbrieffiled on 05/15/2006.
`
`
`
`2.XX]The allowed claim(s)is/are 1-177.
`
`
`
`
`
`
`noted below. Failure to timely complywill result in ABANDONMENTofthis application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`INFORMAL PATENT APPLICATION (PTO-152) which gives reason(s) why the cath or dectaration is deficient.
`
`
`
`
`3. LJ Acknowledgmentis made of a claim forforeign priority under 35 U.S.C. § 119(a}-(d)or(f).
`a) All
`~=b)[) Some* c)[) None
`ofthe:
`1. (J Certified copies of the priority documents have been received.
`2. D0 Certified copies of the priority documents have been received in Application No.
`3. (1 Copies of the certified copies of the priority documents have beenreceivedin this national stage application from the
`
`
`
`
`International Bureau (PCT Rule 17.2(a)).
`
`* Certified copies not received: _
` Applicant has THREE MONTHS FROM THE “MAILING DATE’of this communication to file a reply complying with the requirements
`
`
`
`
` 4. _] A SUBSTITUTE OATH OR DECLARATION must be submitted. Note the attached EXAMINER'S AMENDMENTor NOTICE OF
`
`
`
`
`
`5. L] CORRECTED DRAWINGS( as “replacement sheets’) must be submitted.
`(a) CZ including changes required by the Notice of Draftsperson’s Patent Drawing Review ( PTO-948)attached
`1) hereto or 2)( to Paper No./Mail Date
`(b) C) inctuding changes required by the attached Examiner's Amendment / Commentorin the Office action of
`Paper No./Mail Date.
`Identifying indicia such as the application number(see 37 CFR 1.84(c)) should be written on the drawingsin the front (not the back) of
`each sheet. Replacement sheet(s) should be labeled as such in the header according to 37 CFR 1.121(d).
`6.) DEPOSIT OF and/or INFORMATIONaboutthe deposit of BIOLOGICAL MATERIAL mustbe submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`9. 1) Other
`.
`c
`PRIMARY EXAMINER
`
`
`Attachment(s)
`1. OJ Notice of References Cited (PTO-892)
`2. [1] Notice of Draftperson's Patent Drawing Review (PTO-948)
`
`3. CL) Information Disclosure Statements (PTO-1449 or PTO/SB/08),
`Paper No./Mail Date
`4. 1) Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`
`5. ( Notice of Informal Patent Application (PTO-152)
`6. [1] Interview Summary (PTO-413),
`Paper No./Mail Date
`.
`7. 2] Examiner's Amendment/Comment
`
`8. I] Examiner's Statement of Reasonsfor Allowance
`
`
`
` U.S. Patent and Trademark Office
`PTOL-37 (Rev. 7-05)
`Notice of Allowabllity
`Part of Paper No./Mail Date 20060720
`
`KAMBIZ ZAND
`
`Page 16 of 195
`
`Page 16 of 195
`
`

`

`Application/Control Number: 09/597 ,198
`Art Unit: 2132
`
`Page 2
`
`DETAILED ACTION
`
`. The text of those sections of Title 35,U.S.Code not included in this section can be
`
`found in the prior office action.
`
`. The prior office actions are incorporated herein by reference. In particular, the
`
`observations with respect to claim language, and responseto previously
`
`presented arguments.
`
`Applicant's request for reconsideration of the finality of the rejection of the last
`
`Office action is persuasive and, therefore, the finality of that action is withdrawn.
`
`Claims 1-17 are pending.
`
`Responseto Arguments
`
`Applicant's Appeal Brief arguments filed 05/15/2006 have beenfully considered
`
`in an Appeal conference and they are persuasive.
`
`Allowable Subject Matter
`
`. Claims 1-17 are allowed.
`
`. The following is an examiner’s statement of reasons for allowance:
`
`Applicant’s arguments in appeal brief filed on 05/12/2006 on pages 10-13 have
`
`been found persuasive since the prior art method and system and apparatus
`
`single or in combination are in contrast with specific steps of applicant’s invention
`
`Page 17 of 195
`
`Page 17 of 195
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`

`

`Application/Contro! Number: 09/597 ,198
`Art Unit: 2132
`
`Page 3
`
`limitation “ when the first and second electronic devices are beyond the short-
`
`range wireless link, executing the authentication protocol by exchanging the
`
`authentication information between the first and second electronic devices over
`
`an alternate communication link, then only allowing communication between the
`
`first and second devices if the first and second devices had initially been
`
`successfully authenticated” in light of other limitation in claim 1; and the same
`
`reasonsfor allowance for other independentclaims that contain similarlimitations
`
`and in view of the specification.
`
`Conclusion
`
`. Any comments considered necessary by the applicant must be submitted no later
`
`than the payment of the issue fee and, to avoid processing delays, should
`
`preferably accompanythe issue fee. Such submission should be clearly labeled
`
`“comments on statement of reasonsfor allowance.”
`
`. Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Kambiz Zand whose telephone numberis 571-
`
`272-3811. The examiner can normally reached on Monday-Thursday (8:00-5:00).
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Gilberto Barron can be reached on 571-272-3799. The fax phone
`
`numbersfor the organization where this application or proceeding is assigned as
`
`571-273-8300. information regarding the status of an application may be
`
`Page 18 of 195
`
`Page 18 of 195
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`

`

`Application/Control Number: 09/597,198
`Art Unit: 2132
`
`Page 4
`
`obtained from the Patent Application information Retrieval (PAIR) system. Status
`
`information for published applications may be obtained from either Private PAIR
`
`or Public PAIR. Status information for unpublished applications is available
`
`through Private PAIR only. For more information about the PAIR system, see
`
`http://pair-direct.uspto.gov. Should you have questions on accessto the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`EEZAND
`
`PRIMARY EXAMINER
`
`07/20/2006
`
`AU 2132
`
`Page 19 of 195
`
`Page 19 of 195
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`

`

`.
`.
`Issue Classification
`
`Application/Control No.
`09/597.198
`
`Examiner
`Kambiz Zand
`
`Applicant(s)/Patent under
`Reexamination
`GRIFFITHS, JONATHAN C.,
`Art Unit
`2132
`
`ORIGINAL
`
`SUBCLASS
`
`CROSS REFERENCES
`SUBCLASS (ONE SUBCLASS PER BLOCK)
`
`04
`
`713
`
`
`
`KAMBIZ ZAN
`
`PRIMARY 2eAMIneR
`
`0/06
`
`(Primary Examiner)
`
`(Date)
`
`Total Claims Allowed: 17
`
`so
`
`Print Claim(s)
`
`5S
`
`Print Fig.
`
`Claims renumbered in the same orderas presented by applicant
`
`OTD.
`
`= ana
`
`— oO©
`
`ISSUE CLASSIFICATION
`INTERNATIONAL CLASSIFICATION
`NON-CLAIMED
`
`1
`
`
`
` Original Original
`
`
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`
`U.S. Patent and Trademark Office
`Part of Paper No. 20060720
`
`Page 20 of 195
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`Page 20 of 195
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`

`

`.
`Search Notes
`
`Application/Control No.
`
`09/597 ,198
`Examiner
`
`Kambiz Zand
`
`Applicant(s)/Patent under
`Reexamination
`
`GRIFFITHS, JONATHAN C.
`Art Unit
`
`2132
`
`SEARCH NOTES
`(INCLUDING SEARCH STRATEGY)
`
`
`
` search updated 7/20/2006
`
` pi|||ft|te
`
`
`
`INTERFERENCE SEARCHED
`
`Pleaseseeinterference
`search report
`
`}
`
`7/20/2006
`
`U.S. Patent and Trademark Office
`
`Part of Paper No. 20060720
`
`Page 21 of 195
`
`Page 21 of 195
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`

`

`Trbefime Seu % vadidisl ey
`
`EASTSearch History
`
`
`
`Search Queryje| Default Time Stamp
`
`Operator
`
`2006/07/20 13:49
`
`wireless.clm. and devices.clm. and
`protocol.clm. and authentication.
`clm. and link.clm. and
`"short-range".clm. and exchange.
`
`
`and
`communicati
`
`USPAT
`
`3 and blutooth
`
`;
`
`7/20/06 1:49:30 PM
`C:\Documents and Settings\KZand\My Documents\EAST\Workspaces\default.wsp
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`May 15 06 04:43»=THLLP 6316655101 p.1
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`
`
`RECEIVED
`CENTRAL FAX CENTER
`MAY 1 5 2006
`PATENT
`Serial No. 09/597,198
`Appeal Brief in Reply to Advisory Action of March 6, 2006
`
`‘
`
`TO THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`(571) 273-8300
`
`I certify that this dacument consisting of 26 pages (including 23 sheets of Appeal Brief and 1 sheet of
`Authorization to charge credit card) is being transmitted via facsimile to the United States Patent and Trademark
`Office at the telephone number set forth above on May 15, 2006.
`
`(Signature) Dicraé-Halajian
`
`
`By
`
`L ey DL. =
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`JONATHAN C. GRIFFITHS
`
`Serial No. 09/597,198
`
`.
`
`us 000136
`Confirmation No. 6017
`Group Art Unit: 2132
`
`Filed:
`
`JUNE 20, 2000
`
`Examiner: ZAND, KAMBIZ
`
`Title:
`
`METHOD AND SYSTEM FOR ELECTRONIC DEVICE AUTHENTICATION
`
`Mail Stop Appeal Brief-Patents
`Board of Patent Appeals and Interferences
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, VA 22313-1450
`
`Sir:
`
`Enclosed is an Appeal Brief in the above-identified patent
`
`application.
`Please charge the Appeal Brief fee of $500 to the credit card
`
`as noted in the enclosed authorization to charge eredit card form.
`
`It is believed that no additional fees or charges are
`
`US000136-appeal cover-05-15-06.D0C
`
`1
`
`7
`*,
`®
`PAGE 1/26*RCVD AT 5/15/2006 4:43:11 PM [Eastern Daylight Time] * SVR:USPTO-EFXRF-1/14 * ONIS:2738300 * CSID:6316655101 * DURATION (mm-ss):06-22
`
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`May 15 06 04:43p
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`THLLP
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`6316655101
`
`p.2
`
`PATENT
`Ser