Tse v. Google Inc., et al.

Filing 1

COMPLAINT against All Defendants ( Filing fee $ 350 receipt number 0540-3611342.), filed by Ho Keung TSE. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit A-US Patent 6665797, # 3 Exhibit B-Notice of Intent to Issue Ex Parte Reexamination Certificate, # 4 Exhibit C-Final State of Claims)(Keung TSE, Ho)

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EXHIBIT B (“Notice of Intent to Issue Ex Parte Reexamination Certificate” issued by the Patent Office on March 14, 2012) This PDF file is Searchable. Please note that it is originally a non-searchable PDF file consists of pages of images only. Plaintiff transforms the PDF image file into searchable PDF file by the “OCR Text Recognition” function of Adobe Acrobat 9 Pro Extended. When opening the file with PDF reader, the original images will be displayed, not the OCR generated texts. As the “search” function of the PDF reader is actually basing on the OCR generated texts which are hidden and not visually displayed, and also for the sake that, the OCR generated texts may not be all correct, therefore Plaintiff cannot guarantee a search can generate a correct result. Hopefully, this searchable PDF file would be more useful than the original. UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. 8o, 1450 Alexandria, Virginia 22313·1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 90/008,772 07124/2007 6665797 7590 ATTORNEY DOCKET NO. CONFIRMATION NO. 9520 0311412012 EXAMINER HO KEUNG TSE P.O. BOX 80306 CHEUNG SHA WAN ,POST OFFICE HONG KONG, HONG KONG ART UNIT PAPER NUMBER DATE MAILED: 03/14/2012 Please find below and/or attached an Office communication concerning this application or proceeding. PTO-90C (Rev. 10/03) Commissioner (or Patents United States Patent and Trademark Office P.O.80X145O Alexandria, VA 22313-1450 ~.u$pto.gov DO NOT USE IN PALM PRINTER (THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS) !.r········~·ORRISON & FOERSTER LLP 555 West Fifth Street Los Angeles, CA 90013 EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM REEXAMINATION CONTROL NO. 90/00B,772. PATENT NO. 6665797. 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) Control No. 901008,772 6665797 Examiner Art Unit MATTHEW HENEGHAN Notice of Intent to Issue Ex Parte Reexamination Certificate Patent Under Reexamination 3992 •• The MAILING DA TE of this communication appears on the cover sheet with the correspondence address •• 1. [2] Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certifica.te will be issued in view of (a) [2] Patent owner's communication(s) filed: 03 February 2012. (b) 0 Patent owner's late response filed: _ _ . (c) 0 Patent owner's failure to file an appropriate response to the Office action mailed: _ _ . (d) 0 Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31). (e) 0 Other: _ _ Status of Ex Parte Reexamination: (f) Change in the Specification: [2] Yes 0 No (g) Change in the Drawing(s): [2] Yes 0 No (h) Status of the Claim(s): (1) Patent claim(s) confirmed: _ _ . (2) Patent claim(s) amended (including dependent on amended claim(s)): 1-5,16 and 21 (3) Patent claim( s) canceled: 11.12.14. 15. 18. 19 and 22. (4) Newly presented claim(s) patentable: 23 and 27-29. (5) Newly presented canceled claims: 24-26. (6) Patent claim(s) 0 previously 0 currently disclaimed: _ _ (7) Patent claim(s) not subject to reexamination: 6-10,13,17 and 20. 2. [2] Note the attached statement of reasons for patentability andlor confirmation. Any comments considered necessary by patent owner regarding reasons for patentability andlor confirmation must be submitted promptly to avoid processing delays. Such submission(s) should be labeled: "Comments On Statement of Reasons for Patentability andlor Confirmation." 3. 0 Note attached NOTICE OF REFERENCES CITED (PTO-892). 4. 0 Note attached LIST OF REFERENCES CITED (PTO/SB/08 or PTO/S8/DB substitute). 0 6. 0 5. The drawing correction request filed on _ _ is: 0 approved 0 disapproved. Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f). a)D All b)O Some* c)O None of the certified copies have been received. not been received. been filed in Application No. _ _ . been filed in reexamination Control No. _ _ . been received by the International Bureau in PCT Application No. _ _ . o o o o o * Certified copies not received: _ _ . 7. [2] Note attached Examiner's Amendment. 8. 9. 0 0 Note attached Int~rview Summary (PT0-474). Other: _ _ . cc: Requester (if third party requester) U.S. Patent and Trademark Office PTOl-469 (Rev. 05-10) Notice of Intent to Issue Ex Parte Reexamination Certificate Part of Paper No 20120206 Continuation Sheet (PTOL-469) Reexam Control No. Application/Control Number: 90/008,772 Page 2 Art Unit: 3992 DETAILED ACTION The proposed amendment filed on 31 January 2012 has not been entered qt the request of the Patent Owner (see Remarks, filed 3 February 2012) because it does not fully address the issues raised in the Ex Parte Quayle Action mailed 26 January 2012. The proposed amendment filed on 3 February 2012 is not entered. Specifically, the proposed amendments to claims 13 and 17 cannot be entered because the claims are not subject to this reexamination proceeding. It is important to note that, upon the conclusion of this reexamination proceeding, claims 13 and 17 shall continue to have exactly the same scope as they had previously had before the proceeding. They shall continue to be in force and incorporate as their respective base claims those claims were originally issued in the patent. even though those base claims have now been cancelled. See MPEP 2260.01. The proposed amendment to claim 27 appears to have been cut off in transmission and is being corrected via Examiner's Amendment. Claims 14, 15, 18, 19,22, and 24-26 have been previously cancelled via Examiner's Amendment, which is restated below. Claims 11 and 12 are additionally cancelled; claim 27 is amended; and claims 28 and 29 are additionally added via Examiner's Amendment. Certain previous amendments to the specification are also now cancelled via Examiner's Amendment. Claims 1-5, 16,21,23, and 27-29 are subject to reexamination. Claims 6-10, 13, 17, and 20 are not being treated further on the merits. Appiicati.onlControl Number: 90/008,772 Page 3 Art Unit: 3992 A review of the File Wrapper has shown that the signed Form 1449 from the IDS filed on 13 February 2008 was never sent by the Office, also the IDS had been considered. A signed Form 1449 is attached to this action. STATEMENT OF REASONS FOR PATENTABILITY ANDIOR CONFIRMATION Claim 1-5, 16, 21, 23, and 27-29 are patentable. The following is an examiner's statement of reasons for patentability and/or confirmation of the claims found patentable in this reexamination proceeding: Claim 16, as amended by the Patent Holder, is fully supported by the Application No. 08/587,448, to which the Patent claims priority as a continuation-in-part, because in no longer recites a multi-processing apparatus arrangement. Since the art previously cited to reject that claim, Munyan, does not have a filing date that predates the '448 application, Munyan can no longer be used as a prior art reference under 35 U.S.C. 102(e). The other art cited by the Requester regarding that claim, Shear, does not teach to step (b) of the claim, in that the determination being made regarding the read/write heads in Shear is not being done in response to the password input. Claims 1-5, 16,21,23, and 27 are patentable for the reasons stated in the SPAI decisions. Application/Control Number: 90/008,772 Page 4 Art Unit: 3992 Claims 28 and 29 are patentable for the reasons stated in the SPAI decisions with respect to claims 11 and 12, respectively. Any comments considered necessary by PATENT OWNER regarding the above statement must be submitted promptly to avoid processing delays. Such submission by the patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or Confirmation" and will be placed in the reexamination file. 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 Patent No. 6,665,797 throughout the course of this reexamination proceeding. The third party requester is also reminded of the ability to similarly apprise the Office of any such activity or proceeding throughout the course of this reexamination proceeding. See MPEP §§ 2207,2282 and 2286. Application/Control Number: 90/008,772 Page 5 Art Unit: 3992 Conclusion All correspondence relating to this ex parte reexamination proceeding should be directed: By Mail to: Mail Stop Ex Parte Reexam Central Reexamination Unit Commissioner for Patents United States Patent & Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450 By FAX to: (571) 273-9900 Central Reexamination Unit By hand: Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314 Registered users of EFS-Web may alternatively submit such correspondence via the electronic filing system EFS-Web, at https:llefs.uspto.gov/efile/myportal/efs-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" (Le., 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. . Any inquiry concerning this communication should be directed to Examiner Matthew Heneghan at telephone number (571 )272-3834. /Matthew Heneghan/ Primary Examiner, Art Unit 3992 Conferees: /Minh Dieu Nguyen/ Primary Examiner, Art Unit 3992 /Daniel J Ryman/ Supervisory Patent Examiner, Art Unit 3992 Application/Control Number: 901008,772 Art Unit: 3992 Page 6 EXAMINER'S AMENDMENT An examiner's amendment to the record appears below. The changes made by this examiner's amendment will be reflected in the reexamination certificate to issue after the resolution of the outstanding issues. The proposed amendments to the specification after col. 5, lines 37-39 and after col. 3, line 27 are cancelled. Claims 11, 12, 14, 15, 18, 19, 22, and 24-26 are cancelled. 27 (New). A method for protecting software which being made available to a person in the form of protected file(s) from unauthorised use, by restricting the use thereof to be under control of said person, comprising a sub-method: said sub-method comprising the steps of: (a) establishing a communication between a processing apparatus, say, first processing apparatus and a remote electronic transaction system; (b) verifying said person having a valid account. by said remote electronic transaction system, basing on authenticated information related to said person, said authenticated information being information communicated to said remote electronic transaction system from said processing apparatus and then authenticated by said remote electronic transaction system: Application/Control Number: 90/008,772 Page 7 Art Unit: 3992 (c) using a positive result of said verification as a pre-condition for permitting use of said \. software on said first processing apparatus; wherein said sub-method a cost is being charged from said account: and thereafter, said sub-method being capable of being used on a processing apparatus, say, second processing apparatus, without said cost. wherein said use of said software being permitted independently of, at a site said person using, said software, any hardware specific for protecting said software from unauthorized use. 28.(New). A method for protecting publicly distributed software, from unauthorised use, comprising the steps of: obtaining first information from a user of a processing apparatus having an identity, software; using said first information received being correct as a pre-condition for causing said processing apparatus to provide user access to said software desired to be protected; wherein: said identity software being for providing a second information specific to rightful user(s) of said software desired to be protected. if said correct first information is being obtained from a user thereof; and said second information being capable of being used in Application/Control Number: 90/008,772 Page 8 Art Unit: 3992 enabling electronic commerce operation(s) for which said rightful user(s) has to be responsible; said access to said software desired to be protected is being provided without causing a said operation being performed; and said software desired to be protected is being made available to said rightful user(s) in the form of protected file(s) and is being received by said rightful user(s). through a communication network. 29. (New). A method for protecting software from unauthorised use. as claimed in claim 28. wherein said operation being for making payment from an account of said rightful user(s); and said responsibility of said rightful user(s) as recited in claim 28 is referring to said payment said rightful user(s) has to be responsible for; and said first information being a password; and said access being an access to the use of said software desired to be protected; and said software desired to be protected being supplied to said rightful user(s), before said receiving step; and said access being provided indepe'ndently of. at a site said access being obtained by human user(s). any hardware specific for protecting said software desired to be protected from unauthorized use; Application/Control Number: 901008,772 ,Page 9 Art Unit: 3992 and in additional to said processing apparatus. said method also being capable of being used on at least one more processing apparatus. 1M. H.I Primary Examiner, Art Unit 3992 Receipt' date: 02/13/2008 90008772 - GAU: 3992 • ALTERNATIVE TO PTO/SBI08a1b (07'()S) Complete if Known Substitute for form 1449/PTO Patent Number INFORMATION DISCLOSURE STATEMENT BY THIRD PARTY REQUESTERS i I I 1 1 of December 16, 2003 First Named Inventor Ho Keung TSE Art Unit 3992 Examiner Name (Use as many sheets as necessary) Sheet 6,665,797 61 Issue Date Albert Paladini Attorney Docket Number 106842800800 U.S. PATENT DOCUMENTS Examiner Initials' Cite No,' 1. 2, Document Number Number·Kind Code' (i/known) 5,509.070 5,636,276 Publication Date MM-D[)'VYYY 04/16/1996 06/03/1997 Name of Patentee or Applicant ot Cited Document Pages. Columns. Unes. Where Relevant Passages Ot Relevant Figures Appear Schull Brugger 'EXAMINER: Inttial ~ inloll1lation conSidered, wtlether or not citation is in confonTIance with MPEP 609, Draw line through c~atlon nnot in conlOll1lBnce and not considered, Include copy of this 10nTI with next communication to applicant 'Applicant's unique chation designation number (Optional), 'See Kinds Codes 01 USPTO Patent Documents at www usplo,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 at the Emperor must precede the serial number of the patent document • Kind of document by the appropriate symbols as indicated on the document under WlPO Standard ST. 16 npossible. • Applicant is to place a Check mark here nEnglish language Translation is attaChed. NON PATENT LITERATURE DOCUMENTS Examiner Initials' Cite No.' Include name of the author (in CAPITAL lETTERS). title of the article (when appropriate), title of the item (book, magazine, joumal. serial. symposium. catalog, etc.). date. page(s). volume-issue number(s). publisher, city and/or country where published, 'EXAMINER; Initial Wreference considered, wtlether or not citation is in confonTIance with MPEP 609. Draw line through Chation considered. Include copy of Ihis form with next communication 10 applicent. If not In conformance and not 'Applicant's unique,citation designation number (optional), 'Applicant is to place a Check mark here WEnglish language Translation is attached, IMatthew Heneghanl Date Considered 'P 02/29/2012 Page 1.ofl UNlTED STATES DEPARTMENT OF COMMERCE UBIt.... 8&0 .... Patent Dnd TtoclOlD4.k Omce Mdmo:COMMISSIONER f'OR PATENTS P.O. Boca •• )!) Aloao4ria, \\IsiNA -"'I!IOP Imm~mlmmlml~mM~ml~~mIM~lmI~OO m 13-1'50 CONFIRMATION NO. 9520 aib Data Sheet FILING OR 371 (c) DATE 07/24/2007 SERIAL NUMBER 90/008,772 . CLASS 713 GROUP ART UNIT 3992 ATTORNEY DOCKET NO. RULE ~PPLICANTS 6665797, NORTH POINT POST OFFICE, HONG KONG; TSE HO KEUNG(OWNER), NORTH POINT POST OFFICE, HONG KONG; MORRISON & FOERTSTER LLP(3RD PTY REO), LOS ANGELES, CA; MORRISON & FOESTER LLP, LOS ANGELES, CA I**.CONTINUING DATA . _......... u~.u.u. This application is a REX of 09/112,27607/09/1998 PAT 6,665,797 which is a CIP of 08/587,44812101/1995 ABN ~ FOREIGN APPLICATIONS .................... Foreign Priority dalmed . IJ yes 12 no IJ yes il no IJ Metafter 3SUSC 119 (a-d) conditions A..rh..' c-,-' A1':i..ance 'J.d,' mel ~erified and ; Eemlnefs SlgnallJrd ~cknowledged Art u I . . lI'1itiflls STATE OR COUNTRY HONG KONG SHEETS DRAWING TOTAL CLAIMS }ZJi ~NDEPENDENT CLAIMS 9 !ADDRESS fl.' AIR MAIL .;J U"~/' HO KEUNGTSE p,o, BOX 70492 . f . .:I. C~ ~ l~' KLN CENTRAL POST OFFICE HK. CHlt'u1l1. !#fA "'hi'-' Po:'1" o!'t1c..e HONG KONG . Hod,I 1-("'111, Ld{ ,rt '0 t:.:.'" rrlTLE PROTECTION OF SOFlWARE AGAIN AGAINST UNAUTHORIZED USE IIJ All Fees I [J 1.16 Fees (Filing) FILING FEE RECEIVED 2520 FEES: Authority has been given In Paper to charge/credit DEPOSIT ACCOUNT No. for following: No. [J 1.17 Fees ( Processing Ext. ~f time) I[J 1.18 Fees (Issue) ICJ Other ICJ Credit ,', I I I Application/Control No. 90008772 11111111111 Art Unit MATTHEW HENEGHAN III II I 6665797 Examiner Search Notes Applicant(s)/Patent Under Reexamination 3992 SEARCHED Class I I Subclass I I Date I I Examiner SEARCH NOTES Search Notes Date Reviewed prosecution history of US Patent 6665797 New Litigation Search EAST, class+keywod search, see notesr Updated Litigation Search Review of Litigation Search for 90/010,943 Review for Quayle Action Review for NIRC Examiner 10/9/07 10/28/08 2/24/09 6/22/09 6/10/10 1/23/12 2/7/12 . AWP MH MH MH MH MH MH INTERFERENCE SEARCH Class I I u.s. Patent and Trademar1c: Office Subclass I I Date I Examiner I Part of Paper No.: 20120206 Reexamination IIII III I III I III Requester Application/Control No. Applicant(s)/Patent Under Reexamination 901008,772 6665797 Certificate Number Certificate Date C1 Correspondence Address: o Patent Owner [8] Third Party MORRISON & FOERSTER LLP 555 West Fifth Street Los Angeles, CA 90013 LITIGATION REVIEW [8] IMHI 2/9/12 (examiner initials) Case Name (date) Director Initials 3:12cv21, Keung Tse, HO v. Apple, Inc et ai, U.S. District - Wisconsin Western (OPEN) :)r12 -b:.- 'PI 2:09cv380, Keung Tse v. Ebay, Inc et ai, U.S. District - Texas Eastern (OPEN) om. .(.;~ '£y 4:06cv6573, Ho Keung Tse v. Apple inc, et ai, U.S. District - California Northern (STAYED) f)j'Q (~'J:y 1:11cv1127,3:11cv1812,5:06cv6573, 1:05cv2149 (CLOSED) Om .fer'!.'( COPEN DING OFFICE PROCEEDINGS TYPE OF PROCEEDING 1. NUMBER None. 2. 3. 4. U.S. Patent and Trademark Office DOC. CODE RXFILJKT Application/Control No. 6665797 Art Unit MATTHEW HENEGHAN II 1111 1111111111111 90008772 Examiner Issue Classification Applicant(s)/Patent Under Reexamination 3992 ORIGINAL CLASS INTERNATIONAL CLASSIFICATION SUBCLASS CLAIMED 193 713 G 6 F 21 100 (2006.0) 0 6 F 1 100 (2006.0) SUBCLASS (ONE SUBCLASS PER BLOCK) CLASS 59 51 0 0 G CROSS REFERENCE(S) 705 NON-CLAIMED Claims renumbered in the same order as presented by applicant Final Original Final Original 1 1 17 2 3 4 20 5 21 6 7 7 23 8 24 9 9 25 26 Original Final 28 10 Original 27 10 Final 23 8 Original 21 6 Final Original R.1.47 20 5 Original Final 0 19 4 Final T.D. 18 3 Original 0 CPA 17 2 Final 0 29 ._- 22 11 12 13 13 14 15 16 16 NONE Total Claims Allowed: 19 (Assistant Examiner) IMATTHEW HENEGHANI Primary Examiner.Art Unit 3992 (Date) (Primary Examiner) (Date) U.S. Patent and Trademar1< Office O.G. Print Claim(s} O.G. Print Figure 1 1 Part of Paper No. 20120206

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