Nokia Corporation v. Apple Inc.

Filing 22

Declaration of Coby S. Nixon filed by Plaintiff Nokia Corporation in Support of Brief in Opposition to Dkt 12 re: 12 Motionto Transfer to District of Delaware filed by Apple Inc. (Attachments: # 1 Exhibit 1 - Complaint dated 10-22-09, # 2 Exhibit 2 - Apple's First Amended Answer, # 3 Exhibit 3 - Joint Status Report 3-8-10, # 4 Exhibit 4 - 854 Patent - Order Granting Request, # 5 Exhibit 5 - 105 Patent-Order Granting Request, # 6 Exhibit 6 - 703 Patent-Order Granting Request, # 7 Exhibit 7 - 074 Patent-Order Granting Request, # 8 Exhibit 8 - 381 Patent-Order Granting Request, # 9 Exhibit 9 - Notice of Filing Date-Apple 034, # 10 Exhibit 10 - Notice of Filing Date-Apple 795, # 11 Exhibit 11 - Notice of Filing Date-453 Patent, # 12 Exhibit 12 - 3-11-10 Nokia's Motion to Dismiss, # 13 Exhibit 13 - 7-2-10 Nokia's Opening Brief, # 14 Exhibit 14 - Nokia's First Proposed Amended Complaint, # 15 Exhibit 15 - 4-30-10 Scheduling Order, # 16 Exhibit 16 - 701 Complaint 12-29-09, # 17 Exhibit 17 - 12-29-10 Complaint 1002, # 18 Exhibit 18 - 704 Complaint 1-15-10, # 19 Exhibit 19 - 2-12-10 Stipulation and Order to Stay, # 20 Exhibit 20 - 1002 3-3-10 Stipulation and Order to Stay, # 21 Exhibit 21 - 5-24-10 Motion to Consolidate, # 22 Exhibit 22 - 6-21-10 Answering Brief, # 23 Exhibit 23 - 6-21-10 HTC's Answering Brief in Opposition, # 24 Exhibit 24 - Judicial Case Load Profile - Delaware, # 25 Exhibit 25 - Judicial Case Load Profile - WD Wis, # 26 Exhibit 26 - First Amended Complaint - Apple v. Creative Labs, # 27 Exhibit 27 - Complaint in Apple v HTC 10-166, # 28 Exhibit 28 - Complaint in Apple v. HTC 10-544, # 29 Exhibit 29 - Complaint in Apple v. HTC 10-167, # 30 Exhibit 30 - Nokia Counterclaims in Qualcomm v Nokia, # 31 Exhibit 31 - Nokia's Motion to Transfer, # 32 Exhibit 32 - US 6373345, # 33 Exhibit 33 - US 6359904) (Scheller, John)

Nokia Corporation v. Apple Inc.

Doc. 22 Att. 7

Exhibit 7 April 28, 2010 Order entered by the USPTO granting ex parte reexamination of U.S. Patent No. 5,634,074.

Dockets.Justia.com

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. 90/010,964 21839 7590

FILING DATE 04/28/2010 07/14/2010

FIRST NAMED INVENTOR 5634074

ATTORNEY DOCKET NO. 0919/01029

CONFIRMATION NO. 8064

EXAMINER

BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404

ART UNIT

PAPER NUMBER

DATE MAILED: 07/14/2010

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 10/03)

Control No.

Patent Under Reexamination 5634074 Art Unit 3992

Order Granting / Denying Request For Ex Parte Reexamination

90/010,964 Examiner Christina Y. Leung

-The MAILING DATE of this communication appears on the cover sheet with the correspondence addressThe request for ex parte reexamination filed 28 April 2010 has been considered and a determination has been made. An identification of the claims, the r eferences relied upon, and the rationale supporting the determination are attached. Attachments: a)D PTO-892, 1 . [3 b)E3 PT O/SB/08, c)[~l Other:

The request for ex parte reexamination is GRANTED. RESPONSE TIMES ARE SET AS F OLLOWS:

For Patent Owner's Statement (Optional): TW O MONTHS from the mailing date of this communication (37 CFR 1.530 (b)). EXTENSIONS OF TIME AiRE GOVERNED BY 37 CFR 1.550(c). For Requester's Reply (optional): TWO MON1 HS from the date of service of any timely filed " Patent Owner's Statement (37 CFR 1.535). N<0 EXTENSION OF THIS TIME PERIOD IS PERMITTED. If Patent Owner does not file a timely stateme nt under 37 CFR 1.530(b), then no reply by requester is permitted. 2. 1 I The request for ex parte reexamination is DENIED. This decision is not appealable (35 U.S.C. 30C3(c)). Requester may seek review by petition to the Commissioner under 37 CFR 1.181 within ON E MONTH from the mailing date of this communication (37 . CFR 1.51 5(c)). EXTENSION OF TIME TO FIL E SUCH A PETITION UNDER 37 CFR 1.181 ARE AVAILABLE ONLY BY PETITION TO SUSPEJND OR WAIVE THE REGULATIONS UNDER 37 CFR 1.183. In due course, a refund under 37 CFR 1 .26 ( 3< ) will be made to requester: a) D by Treasury check or, b) Fl by credit to Deposit Account No.

, or

c) n by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(c)).

/Christina Y. Leung/ Primary Examiner, Art Unit 3992 cc:Reauester ( if third oartv requester )
U S. Patent and Trademark Office PTOL-471 (Rev. 08-06)

Office Action in Ex Parte Reexamination

Part of Paper No. 20100628

Application/Control Number: 90/010,964 Art Unit: 3992 DECISION GRANTING EX PARTE REEXAMINATION Decision on the Request The present request for exparte reexamination raises a substantial new question of patentability with respect to claims 1-19 of United States Patent 5,634,074 A to Devon. References Cited in the Request Riikonen (US 4,025,906 A) Bertsch (US 5,195,085 A) Understanding Data Communications (George Friend et al., Understanding Data Communications, Howard W. Sams & Co., 1984) Issues Raised by the Request Issue 1

Page 2

The request alleges that Riikonen alone raises a substantial new question of patentability with respect to claim 1 Issue 2 The request alleges that Bertsch in combination with Riikonen raises a substantial new question of patentability with respect to claims 1, 2, and 8. Issue 3 The request alleges that Bertsch in combination with Riikonen and Understanding Data Communications raises a substantial new question of patentability with respect to claims 1-19. The Devon Patent The Devon patent is generally directed to a method of identifying an I/O device connected to a computer through a serial interface. Claim 1 is representative:

Application/Control Number: 90/010,964 Art Unit: 3992

Page 3

1. In a system comprising a computer and an I/O device connected to the computer through a serial interface by a serial cable no more than a few feet in length, a method of identifying the I/O device, comprising the steps of: in response to at least one of a power-up reset signal and a control signal from the computer, sending from the I/O device to the computer a beacon signal comprising a sequence of bytes identifying the I/O device; and in response to the beacon signal, determining within the computer a manner of interaction of the computer with the I/O device. Prosecution History Claims 1-19 are the current claims in the Devon patent, which issued 27 March 1997 from application 08/059,598 filed 07 May 1993. 07 May 1993: Applicant originally filed claims 1-20. 19 May 1995: Examiner rejected claims 1-7 under 35 U.S.C. 103 as being unpatentable over Sullivan (US 4,773,005 A) in view of Dorfe (US 5,204,669 A); and claims 8-20 under 35 U.S.C. 103 as being unpatentable over Sullivan in view of Dorfe and Comer ("Internetworking with TCP/IP, Volume I"). 07 August 1995: Applicant amended claim 1 and canceled claim 2. 28 September 1995: Examiner finally rejected claims 1 and 3-7 under 35 U.S.C. 103 as being unpatentable over Sullivan in view of Dorfe and Engdahl (US 5,452,420 A); and claims 820 under 35 U.S.C. 103 as being unpatentable over Sullivan in view of Dorfe, Engdahl, and Comer. 02 February 1996: Applicant requested reconsideration of the final Office action.

Application/Control Number: 90/010,964 Art Unit: 3992

Page 4

27 February 1996: Examiner mailed an advisory action maintaining the rejections of claims 1 and 3-20. 02 April 1996: Applicant filed an appeal brief and amended claims 1, 3, 4, and 7-9 to correct informalities. 18 July 1996: Examiner reopened prosecution and rejected claims 1, 4, 8, and 12 under 35 U.S.C. 102 as being anticipated by Clark (GB 2,255,887 A); claims 3, 5-7, 9, and 11 under 35 U.S.C. 103 as being unpatentable over Clark in view of Arpin (US 4,750,136 A); and claims 10, 13, 14, and 15-20 under 35 U.S.C. 103 as being unpatentable over Clark in view of Arpin and Comer. 05 September 1996: Applicant amended claim 1. 14 November 1996: Examiner allowed claims 1 and 3-20 without an explicit statement of reasons for allowance. Detailed Analysis Claims 1-19 will be reexamined. In view of the prosecution history, a substantial new question of patentability is raised by the evaluation of a prior art reference (or combination of prior art references) that teaches the features and limitations added to the claims in the 05 September 1996 amendment. Specifically these limitations include sending a beacon signal from an I/O device that is connected to a computer no more than a few feet away, and determining a manner of interaction of the computer with the I/O device in response to the beacon signal. Issue 1 Riikonen is new prior art. Riikonen teaches, among other things, sending an identification code from a peripheral device, such as a serial printer, to a controller unit in a data processing

Application/Control Number: 90/010,964 Art Unit: 3992

Page 5

system and using the identification code to configure the device (column 1, lines 54-67; column 2, lines 2-12; column 3, lines 8-16; column 8, lines 42-53). Since this teaching is directly related to subject matter considered the basis for allowability of claim 1, a reasonable examiner would consider Riikonen important in determining the patentability of the claims. Therefore, Riikonen raises a substantial new question of patentability with respect to claims 1-19. Issues 2 and 3 Bertsch is new prior art. Bertsch teaches, among other things, sending identifying signals from a local I/O device to a computer and using the identifying signals to determine a manner of interaction of the computer with the I/O device (column 2, lines 28-47; column 6, lines 4-22; column 7, lines 7-21). Since this teaching is directly related to subject matter considered the basis for allowability of claims 1-19, a reasonable examiner would consider Bertsch important in determining the patentability of the claims. Therefore, Bertsch in combination with Riikonen only, or with Riikonen and Understanding Data Communications, raises a substantial new question of patentability with respect to claims 1-19. Conclusion Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)). Extension of time in exparte reexamination proceedings are provided for in 37 CFR 1.550(c). 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

Application/Control Number: 90/010,964 Art Unit: 3992

Page 6

Patent No. 5,634,074 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. 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 [phone] Central Reexamination Unit Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314

By fax to: By hand to:

Any inquiry concerning this communication should be directed to the Central Reexamination Unit at telephone number [phone].

/Christina Y. Leung/

Primary Examiner, Art Unit 3992 /D. M. H./ Primary Examiner, Art Unit 3992

Substitute for form 1449/PTO (Revised 07/2007)

INFORMATION DISCLOSURE STATEMENT BY APPLICANT
(Use as many sheets as necessary)

Application Number Filing Date Patent Number Issue Date First Named Inventor Art Unit Examiner Name Attorney Docket Number

Complete if Known 08/059,598 May 7, 1993 5,634,074 (Exhibit A) May 27, 1997 Devon et al. 2317 Le Hien Luu 09 1 9/0 1 029

Sheet

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7

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of

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1

U. S. PATENT DOCUMENTS
Document Number Examin er Initials* Cite No. N u m b e r - Kind Code (if known) Publication Date MM-DD-YYYY Name of Patentee or Applicant of Cited Document
Pages, Columns, Lines, Where Relevant Passages of Relevant Figures Appear

/CL/ /CL/

1

US-4,025,906 (Exhibit B) US-5, 195,085 (Exhibit C)

05-24-1977 03-16-1993

Riikonen Bertsch et al.

2

OTHER 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 number(s), publisher, city and/or country where published. English Language Translation Attached

Examiner Initials*

Cite No.

/CL/

3

FRIEND et al., Understanding Data Communications, 1984, 1st Edition, 2d Pr. 1986, Howard W. Sams & Co., pages l-(6-7), 2-(18-26), 4-(3-22), 5-(l-20), 7(10-25) and 8-(l-28), Radio Shack (Exhibit D)

Examiner Signature

/Christina Leung/

Łot,dered

07/08/2010

*Examiner: Initial if reference considered, whether or not citation is in conformance with MPEP 609. Draw line through citation if not in conformance and not considered. Include copy of this form with next communication to applicant.