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. 8

Exhibit 8 April 28, 2010 Order entered by the USPTO Granting ex parte reexamination of U.S. Patent No. 7,469,381.

Dockets.Justia.com

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. 90/010,963 61725 7590

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

FIRST NAMED INVENTOR 7469381

ATTORNEY DOCKET NO. 0919/01028

CONFIRMATION NO. 8062

EXAMINER

Morgan Lewis & Bockius LLP/ AI 2 Palo Alto Square 3000 El Camino Real, Suite 700 Palo Alto, CA 94306

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 7469381 Art Unit 3992

Order Granting / Denying Request For Ex Parte Reexamination

90/010,963 Examiner Christina Y. Leung

-The MAILING DA TE 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 . [X] b)E3 PT O/SB/08,

c)n 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 A.RE GOVERNED BY 37 CFR 1.550(c). " For Requester's Reply (optional): TWO MON1 HS from the date of service of any timely filed D Patent Owner's Statement (37 CFR 1.535). N< 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. 3(X3(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 .515(c)). EXTENSION OF TIME TO FllE SUCH A PETITION UNDER 37 CFR 1.181 ARE AVAILABLE ONLY BY PETITION TO SUSPEEND 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) CH by Treasury check or, b) n by credit to Deposit Account No. , or

c) D 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

.
Office Action in Ex Parte Reexamination Part of Paper No. 20100707

PTOL-471 (Rev. 08-06)

Application/Control Number: 90/010,963 Art Unit: 3992 DECISION GRANTING EX PARTE REEXAMINATION Decision on the Request The present request for ex parte reexamination raises a substantial new question of patentability with respect to claims 1-20 of United States Patent 7,469,381 to Ording. References Cited in the Request

Page 2

Glimpse (Forlines et al., "Glimpse: A Novel Input Model for Multi-Level Devices," Conference on Human Factors in Computing Systems CHI '05, Association for Computing Machinery, 2005, pp. 1375-1378) Inside Out (Millhollon et al., "Microsoft Office Word 2003 Inside Out," Microsoft Press, 2004, pp. 13-16, 93, 762-765, 802-804) Robbins (US 2005/0195154 Al) Zimmerman (US 6,690,387 A) Issues Raised by the Request Issue 1 The request alleges that Glimpse in combination with Inside Out raises a substantial new question of patentability with respect to claims 1-11, 13, 14, 16, 17, 19, and 20. Issue 2 The request alleges that Glimpse in combination with Inside Out and Robbins raises a substantial new question of patentability with respect to claims 1-11, 13-17, 19, and 20. Issue 3

Application/Control Number: 90/010,963 Art Unit: 3992 The request alleges that Glimpse in combination with Inside Out, Robbins, and

Page 3

Zimmerman raises a substantial new question of patentability with respect to claims 5, 9, 11, 12,
15, and 18.

The Ording Patent The Ording patent is generally directed to method and computer-readable instructions for displaying an electronic document on a touch screen display in response to movement of an object on or near the touch screen. Claim 1 is representative: 1. A computer-implemented method, comprising: at a device with a touch screen display: displaying a first portion of an electronic document; detecting a movement of an object on or near the touch screen display; in response to detecting the movement, translating the electronic document displayed on the touch screen display in a first direction to display a second portion of the electronic document, wherein the second portion is different from the first portion; in response to an edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch screen display: displaying an area beyond the edge of the document, and displaying a third portion of the electronic document, wherein the third portion is smaller than the first portion; and in response to detecting that the object is no longer on or near the touch screen display, translating the electronic document in a second direction until the area beyond the edge of the

Application/Control Number: 90/010,963 Art Unit: 3 992 electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion. Prosecution History

Page 4

Claims 1-20 are the current claims of the Ording patent, which issued 23 December 2008 from application 11/956,969 filed 14 December 2007. Application 11/956,969 claims priority to provisional applications 60/937,993 filed 29 June 2007; 60/946,971 filed 28 June 2007; 60/945,858 filed 22 June 2007; 60/879,469 filed 08 January 2007; 60/883,801 filed 07 January 2007; and 60/879,253 filed 07 January 2007. 14 December 2007: Applicant originally filed claims 1-20. 18 April 2008: The Office granted Applicant's petition for accelerated examination. 30 April 2008: Applicant filed an examination support document, citing Zimmerman (US 6,690,387 A), Kwatinetz (US 5,495,566 A), Pallakoff (US 2005/0012723 Al), and Miller ("Personal Java Application Environment," 1999) as references deemed most closely related to the claims. 02 June 2008: Examiner initiated an interview with Applicant and discussed Zimmerman, Microsoft Word screenshots, and Collins (US 2008/0104544 Al). Applicant agreed to amend the independent claims to include "in response to detecting that the object is no longer on or near the touch screen display, translating the document in a second direction until the area beyond the edge of the document is no longer displayed." 04 August 2008: Examiner initiated an interview with Applicant and discussed Photo Mesa screenshots and Jaeger (US 2004/0027398 Al). Applicant proposed amended claims, and Examiner agreed that they were allowable over the cited art.

Application/Control Number: 90/010,963 Art Unit: 3992

Page 5

29 October 2008: Examiner amended claims 1,2, 19, and 20 by Examiner's amendment and allowed claims 1-20, noting that: "In regards to the independent claims 1,19 and 20, the prior art found does not teach in response to an edge of the electronic document being reached while translating the electronic document in the first direction while the object is still detected on or near the touch screen display: displaying an area beyond the edge of the document, and displaying a third portion of the electronic document, wherein the third portion is smaller than the first portion; and in response to detecting that the object is no longer detected on or near the touch screen display, translating the electronic document in a second direction until the area beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion; in combination with all of the other claim limitations." Detailed Analysis Claims 1-20 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 a combination of prior art references) that teaches the features and limitations added to independent claims 1,19, and 20 in the 29 October 2008 Examiner's amendment and highlighted in Examiner's reasons for allowance. Specifically, these limitations include displaying an area beyond the edge of the document, and displaying a third portion of the electronic document, wherein the third portion is smaller than the first portion, if the edge of the electronic document is reached while translatin g the electronic document in the first direction while the object is still detected on or near the touch screen display; and translating the electronic document in a second direction until the area

Application/Control Number: 90/010,963 Art Unit: 3992

Page 6

beyond the edge of the electronic document is no longer displayed to display a fourth portion of the electronic document, wherein the fourth portion is different from the first portion, in response to detecting that the object is no longer on or near the touch screen. Issues 1-3 Glimpse, Inside Out, and Robbins are new prior art. Zimmerman was previously cited by the examiner but was not considered in combination with Glimpse, Inside Out, and Robbins. Glimpse teaches, among other things, translating an electronic document on a touch screen in a first direction to display a second portion of the document different from the first portion when an object is on or near the touch screen. Glimpse further teaches translating the document in a second direction to display another portion of the document, different from the first portion, when the object is no longer on or near the touch screen (i.e., Glimpse teaches panning back to a saved state when contact is broken with the screen; page 1377). Inside Out teaches, among other things, displaying an area beyond the edge of an electronic document and displaying a portion of the document smaller than a first portion if the edge of the document is reached while translating the document in a first direction (page 764). Since these teachings are directly related to subject matter considered the basis for allowability of claims 1-20, a reasonable examiner would consider evaluation of Glimpse in combination with Inside Out important in determining the patentability of the claims. Therefore, Glimpse in combination with Inside Out only, or with Inside Out and further references, raises a substantial new question of patentability with respect to claims 1-20.

Application/Control Number: 90/010,963 Art Unit: 3992 Conclusion

Page 7

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 exparte reexamination proceedings "will be conducted with special dispatch" (37 CFR 1.550(a)). Extensions 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 Patent No. 7,469,381 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.

AH 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:

Application/Control Number: 90/010,963 Art Unit: 3992 Any inquiry concerning this communication should be directed to the Central Reexamination Unit at telephone number [phone].

Page 8

/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
(L/se 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 1 1 7956,969 December 14, 2007 7,469,38 1 (Exhibit A) December 23, 2008 Ording 2174 B. Pesin 09 1 9/0 1 02 8

Sheet

/

of

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-2005/0195I54 Al (Exhibit D) US-6,690,387 B2 (Exhibit E)

09-08-2005 02-10-2004

Robbins et al. Zimmerman et al.

2

OTHER DOCUMENTS
Include name of the author (in CAPITAL LETTERS), title of tie 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*

No.

e

/CL/ /CL/

3

FORLINES et al., Glimpse: A Novel Input Model for Multi-Level Devices, April 2005, 6 pages total, Mitsubishi Electric Research Laboratories, Cambridge, MA (Exhibit B) MILLHOLLON et al., Microsoft Office Word 2003 Inside Out, 2003, Microsoft Press, Redmond, Washington, pages 93, 762-765. (Exhibit C)

4

Examiner Signature

/Christina Leung/

Cot,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.