Motorola Mobility, Inc. v. Apple, Inc.

Filing 93

Defendant's MOTION Defendant and Counterclaim-Plaintiff Apple Inc.'s Claim Construction Brief by Apple, Inc.. (Attachments: # 1 Declaration of Christine Saunders Haskett, # 2 Exhibit 1, # 3 Exhibit 2, # 4 Exhibit 3, # 5 Exhibit 4, # 6 Exhibit 5, # 7 Exhibit 6, # 8 Exhibit 7, # 9 Exhibit 8, # 10 Exhibit 9, # 11 Exhibit 10, # 12 Exhibit 11, # 13 Exhibit 12, # 14 Exhibit 13, # 15 Exhibit 14, # 16 Exhibit 15, # 17 Exhibit 16, # 18 Exhibit 17, # 19 Exhibit 18, # 20 Exhibit 19, # 21 Exhibit 20)(Pace, Christopher)

EXHIBIT 5

Control No.
90/010,891

6,101,531

Examiner

Art Unit

Deandra M. Hughes

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.

I2J

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 CFR1.313(a). A Certificate will be
issued in view of
(a) 0 Patent owner's communication(s) filed: _ _.
(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: 0 Yes ~ No
0 Yes ~ No
(g) Change in the Drawing(s):
(h) Status of the Claim(s):
(1)
(2)
(3)
(4)
(5)

Patent claim(s) confirmed: 1-3,5,6 and 11.
Patent c1aim(s) amended (including dependent on amended claim(s)): _ _
Patent claim(s) canceled: ___.
'
Newly presented c1aim(s) patentable: _ _.
Newly presented canceled claims: _ _.

(6) Patent claim(s) 0 previously 0 currently disclaimed: _ _

(7) Patent claim(s) not subject to reexamination: 4 and 7-10.

2.

I2J

3. 0

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 and/or Confirmation."
Note attached NOTICE OF REFERENCES CITED (PTO-B92).

4. ~ Note attached LIST OF REFERENCES CITED (PTO/SB/OB or PTO/88/08 substitute).
5. 0

The drawing correction request filed on _'_

is:

0 approved

0 disapproved.

6. 0

Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
a)D All b)D Some*
c)D 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: _ _.
7.0 Note attached Examiner's Amendment.
B.D Note attached Interview Summary (PT0-474).
9. 0

Other: _ _
.

I/Deandra M Hughes/
rrimary Examiner, Art Unit 3992
cc: Requester (ifthird 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 20100902

Control Number: 901010,891

Page 2

Art Unit: 3992
EX PARTE REEXAMINATION NIRC

1.

Reexamination of claims 1-3. 5-6. and 11 of USP 6,101,531 (531 patent") has

been ordered.

References Cited in this Action
2.

USP 5,742,905 to Pepe et al. published Apr. 21, 1998 ("Pepe")

3.

USP 5,742,905 to Hamalainen et al. published Sep. 01, 1998 ("Hamalainen")

Reasons for Confirming Claims as Patentable
4.

Claims 1-3. 5-6. and 11 are confirmed as patentable over the prior art of record

in this proceeding.
5.

The '531 patent is a system which includes a communications server for

establishing and maintaining a virtual session, via a session-less communication path
with a client communications unit on the one hand and a session-oriented·
communications path with a host server on the other hand. (col. 2:55-67 to col. 3:1-13)
The communications server and the client communications unit are coupled via a
tariffed network or connection. (!QJ However, the virtual session, via a session-less
oriented communication protocol between the communications server and the client

communications unit, permits remote access to the host server without the expense of a
circuit switched connection on the tariffed network. (!QJ
Pepe discloses a method of communicating data units over a network (flgJ)
between a client communications unit (#30) and a host device (OFFICE) via a

communications server (#40). However, this method does not communicate data units
over a wireless network because the network of Pepe is a wireline network (#29)

Control Number: 90/010,891

Page 3

Art Unit: 3992
between the communication server (#30) and the host server (OFFICE) and wireless
(#39) between the client communications unit (#30) and the communications server

(#40). As such, claims 1-3, 5-6, and 11 are confirmed as patentable over Pepe
because Pepe does not disclose or suggest a method of communicating data units over
I

a wireless network between a client communications unit and a host device via a

communications server in combination with the other features set forth in the claims.
Conclusion

6.

All correspondence relating to this inter partes reexamination proceeding should

be directed:
By Mail to:

Mail Stop Ex Parte Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
United States Patent & Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450

By FAX to:

[phone]
Central Reexamination Unit

By hand:

7.

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:/Isportal.uspto.gov/authenticate/authenticateuserlocalepf. htmI.
EFS-Web offers the benefit of quick submission to the particular area of the Office that
needs to a'ct on the correspondence. Also, EFS-Web submissions are "soft scanned"
(i.e., electronically uploaded) directly into the official file for the reexamination

Page 4

,Con,trol Number: 901010,891
Art Unit: 3992
proceeding, which offers parties the opportunity to review the content of their
submissions after the "soft scanning" process is complete.
8.

Any inquiry concerning this communication or earlier communications from the

examiner, or as to the status of this proceeding, should be directed to the Central
Reexamination Unit at telephone number [phone].
Signed:
IDeandra M. Hughesl
Primary Examiner, AU3992

Conferees: