`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————
`
`UNIFIED PATENTS, INC.
`
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`
`Patent Owner.
`
`Case No.: IPR2015-00521
`Patent No.: 7,801,304
`
`
`
`PATENT OWNER’S MANDATORY NOTICES
`
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`REAL PARTY-IN-INTEREST
`
`The real party-in-interest is Personalized Media Communications, LLC.
`
`RELATED MATTERS
`
`The involved patent is asserted in:
`
`
`
`Personalized Media Communications, LLC v. v. Amazon.com, Inc.,
`
`U.S. District Court for the District of Delaware, No. 1:13-cv-1608-RGA. Patent
`
`Owner’s related U.S. Patents 8,046,791; 7,805,749; 7,783,252; 7,827,587;
`
`7,864,956; and 5,887,243 are also asserted in this litigation. Amazon.com, Inc. has
`
`petitioned for inter partes review of each of these patents, as well as the ‘304
`
`patent at issue here, in IPR2014-01527, IPR2014-01528, IPR2014-01530,
`
`IPR2014-01531, IPR2014-01532, IPR2014-01533, and IPR2014-01534.
`
`
`
`Petitioner Unified Patents has separately petitioned for inter partes
`
`review of the ‘749 Patent in IPR2015-00520.
`
`
`
`The involved patent is not before the Office in any other pending
`
`proceedings. No other patent or pending application claims the benefit of the
`
`actual filing date of the involved patent. The involved patent sets forth following
`
`Related U.S. Application Data:
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`Continuation of application Ser. No. 08/113,329, filed Aug. 30,
`1993, herein incorporated by reference in its entirety, which is a
`continuation of application Ser. No. 08/056,501, filed May 3, 1993, now
`U.S. Pat. No. 5,335,277, which was a continuation of application Ser. No.
`07/849,226, filed Mar. 10, 1992, now U.S. Pat. No. 5,233,654, which was
`a continuation of application Ser. No. 07/588,126, filed Sep. 25, 1990,
`now U.S. Pat. No. 5,109,414, which was a continuation of application
`Ser. No. 07/096,096, filed Sep. 11, 1987, now U.S. Pat. No. 4,965,825,
`which was a continuation-in-part of application Ser. No. 06/829,531,
`filed Feb. 14, 1986, now U.S. Pat. No. 4,704,725, which was a
`continuation of application Ser. No. 06/317,510, filed Nov. 3, 1981, now
`U.S. Pat. No. 4,694,490.
`
`There are a number of issued patents and pending applications which,
`
`like the involved patent, were filed as continuations of application No. 08/113,329.
`
`These issued patents and pending applications are listed in Appendix A attached
`
`hereto.
`
`Other patents from the same family as the involved patent have been
`
`involved in several judicial and administrative proceedings. These proceedings are
`
`listed in Appendix B attached hereto.
`
`
`
`
`
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`LEAD AND BACK-UP COUNSEL
`
`Lead Counsel
`
`Backup Counsel
`
`Stephen T. Schreiner
`Registration No. 43,097
`Goodwin Procter LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Email: sschreiner@goodwinprocter.com
`Phone: 202-346-4000
`Fax: 202-346-4444
`
`Thomas J. Scott, Jr.
`Registration No. 27,836
`Vice President & General Counsel
`Personalized Media Communications,
`LLC
`11491 Sunset Hills Road, Suite 340
`Reston, Virginia 20190
`Email: tscott@pmcip.com
`Phone: (281) 201-2213
`
`Eleanor M. Yost
`Registration No. 58,013
`Goodwin Procter LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Email: eyost@goodwinprocter.com
`Phone: 202-346-4000
`Fax: 202-346-4444
`
`
`
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`SERVICE INFORMATION
`
`Patent Owner consents to electronic service by email at the email addresses
`
`for counsel listed above.
`
`
`
`Dated: January 23, 2015
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`By: /Stephen T. Schreiner /
`Stephen T. Schreiner
` Registration No.: 43,097
`GOODWIN PROCTER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`
`Attorneys for Patent Owner
`
`
`
`Appendix A
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`APPENDIX A
`
`
`
`The following patents and pending applications are continuations of
`
`Application No. 08/113,329. Abandoned continuation applications are omitted
`
`from this list.
`
`PATENTS
`
`SERIAL NO.
`
`ISSUE DATE
`
`PATENT NO.
`
`1. 08/480,060
`
`2. 08/486,258
`
`3. 08/447,621
`
`4. 08/446,431
`
`5. 08/447,712
`
`6. 08/487,556
`
`7. 08/511,491
`
`8. 08/477,547
`
`9. 08/459,218
`
`10. 08/488,383
`
`11. 08/475,341
`
`12. 08/459,521
`
`13. 08/445,054
`
`14. 08/441,701
`
`March 23, 1999
`
`January 11, 2011
`
`November 18, 2014
`
`August 3, 2010
`
`November 23, 2010
`
`October 8, 2013
`
`December 28, 2010
`
`March 15, 2011
`
`October 21, 2014
`
`January 4, 2011
`
`December 10, 2013
`
`November 2, 2010
`
`December 16, 2014
`
`December 28, 2010
`
`5,887,243
`
`7,870,581
`
`8,893,177
`
`7,769,170
`
`7,840,976
`
`8,555,310
`
`7,861,263
`
`7,908,638
`
`8,869,228
`
`7,864,248
`
`8,607,296
`
`7,827,587
`
`8,914,825
`
`7,860,249
`
`
`
`Appendix A
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`15. 08/441,027
`
`16. 08/473,484
`
`17. 08/440,837
`
`18. 08/446,553
`
`19. 08/445,296
`
`20. 08/482,857
`
`21. 08/473,997
`
`22. 08/479,374
`
`23. 08/466,894
`
`24. 08/397,636
`
`25. 08/480,392
`
`26. 08449,263
`
`27. 08/449,413
`
`28. 08/474,145
`
`29. 08/485,507
`
`30. 08/460,711
`
`31. 08/470,051
`
`32. 08/469,106
`
`33. 08/460,770
`
`34. 08/460,793
`
`35. 08/477,711
`
`October 15, 2013
`
`October 19, 2010
`
`September 23, 2014
`
`December 7, 2010
`
`October 29, 2013
`
`November 30, 2010
`
`March 18, 2014
`
`October 19, 2010
`
`September 28, 2010
`
`November 9, 2010
`
`December 28, 2010
`
`September 21, 2010
`
`October 15,2013
`
`August 2, 2011
`
`May 29, 2012
`
`July 6, 2010
`
`October 26, 2010
`
`January 21, 2014
`
`October 25, 2011
`
`October 22, 2013
`
`June 7, 2011
`
`8,558,950
`
`7,818,776
`
`8,843,988
`
`7,849,493
`
`8,572,671
`
`7,844,995
`
`8,675,775
`
`7,818,778
`
`7,805,738
`
`7,831,204
`
`7,860,131
`
`7,801,304
`
`8,559,635
`
`7,992,169
`
`8,191,091
`
`7,752,650
`
`7,823,175
`
`8,635,644
`
`8,046,791
`
`8,566,868
`
`7,958,527
`
`
`
`Appendix A
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`36. 08/459,788
`
`37. 08/487,411
`
`38. 08/474,674
`
`39. 08/113,329
`
`40. 08/442,165
`
`41. 08/478,544
`
`42. 08/460,081
`
`43. 08/470,571
`
`44. 08/452,395
`
`45. 08/483,980
`
`46. 08/449,097
`
`47. 08/474,964
`
`48. 08/480,059
`
`49. 08/459,522
`
`50. 08/458,760
`
`51. 08/487,526
`
`52. 08/477,805
`
`53. 08/483,269
`
`54. 08/444,758
`
`55. 08/459,216
`
`56. 08/460,817
`
`April 12, 2011
`
`May 10, 2011
`
`December 17, 2013
`
`December 21, 2010
`
`December 31, 2013
`
`October 19, 2010
`
`March 12, 2013
`
`June 8, 2010
`
`December 7, 2010
`
`June 10, 2014
`
`July 6, 2010
`
`February 15, 2011
`
`November 19, 2013
`
`July 27, 2010
`
`August 12, 2014
`
`June 29, 2010
`
`July 20, 2010
`
`May 27, 2014
`
`January 4, 2011
`
`October 5, 2010
`
`February 7, 2012
`
`7,926,084
`
`7,940,931
`
`8,613,034
`
`7,856,650
`
`8,621,547
`
`7,817,208
`
`8,395,707
`
`7,734,251
`
`7,849,480
`
`8,752,088
`
`7,752,649
`
`7,889,865
`
`8,587,720
`
`7,764,685
`
`8,804,727
`
`7,747,217
`
`7,761,890
`
`8,739,241
`
`7,865,920
`
`7,810,115
`
`8,112,782
`
`
`
`Appendix A
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`57. 08/487,397
`
`58. 08/449,901
`
`59. 08/447,447
`
`60. 08/446,124
`
`61. 08/442,383
`
`62. 08/488,620
`
`63. 08/447,908
`
`64. 08/448,251
`
`65. 08/444,787
`
`66. 08/483,169
`
`67. 08/486,266
`
`68. 08/447,496
`
`69. 08/498,002
`
`70. 08/447,974
`
`71. 08/449,523
`
`72. 08/487,649
`
`73. 08/487,410
`
`74. 08/478,908
`
`75. 08/474,146
`
`76. 08/469,612
`
`77. 08/448,644
`
`August 10, 2010
`
`November 12, 2013
`
`December 7, 2010
`
`February 4, 2014
`
`August 3, 2010
`
`April 29, 2014
`
`August 24, 2010
`
`May 31, 2011
`
`September 16, 2014
`
`January 4, 2011
`
`October 21, 2014
`
`September 14, 2010
`
`September 7, 2010
`
`August 24, 2010
`
`December 21, 2010
`
`March 25, 2014
`
`June 21, 2011
`
`December 3, 2013
`
`November 16, 2010
`
`October 12, 2010
`
`November 9, 2010
`
`7,774,809
`
`8,584,162
`
`7,849,479
`
`8,646,001
`
`7,769,344
`
`8,713,624
`
`7,783,252
`
`7,953,223
`
`8,839,293
`
`7,864,956
`
`8,869,229
`
`7,797,717
`
`7,793,332
`
`7,784,082
`
`7,856,649
`
`8,683,539
`
`7,966,640
`
`8,601,528
`
`7,836,480
`
`7,814,526
`
`7,830,925
`
`
`
`Appendix A
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`78. 08/459,507
`
`79. 08/472,066
`
`80. 08/487,536
`
`81. 08/444,788
`
`82. 08/445,328
`
`83. 08/448,326
`
`84. 08/485,283
`
`85. 08/479,215
`
`86. 08/487,428
`
`
`
`April 29, 2014
`
`November 2, 2010
`
`October 19, 2010
`
`December 28, 2010
`
`November 15, 2011
`
`September 28, 2010
`
`September 28, 2010
`
`October 19, 2010
`
`January 28, 2014
`
`8,711,885
`
`7,827,586
`
`7,818,761
`
`7,861,278
`
`8,060,903
`
`7,805,748
`
`7,805,749
`
`7,818,777
`
`8,640,184
`
`
`
`Appendix A
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`PENDING APPLICATIONS
`
`
`
`SERIAL NO.
`
`08/438,659
`
`08/441,996
`
`08/447,611
`
`08/447,724
`
`08/451,377
`
`08/460,394
`
`08/460,592
`
`08/470,476
`
`08/480,383
`
`08/482,573
`
`08/483,054
`
`08/487,155
`
`
`
`
`
`Appendix B
`
`
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`
`APPENDIX B
`
`The following patents from the same family as the involved patent have
`
`been involved in the following proceedings:
`
`U.S. Patent 4,94,490 was subject to an ex parte reexamination proceeding
`
`in which the certificate issued June 23, 2009.
`
`U.S. Patent 4,704,725 was subject to an ex parte reexamination
`
`proceeding in which the certificate issued June 16, 2009.
`
`U.S. Patent 4,965,825 has been subject to several ex parte reexamination
`
`proceedings with certificates issuing on November 10, 2009; October 26, 2010 and
`
`December 6, 2011.
`
`U.S. Patent 5,109,414 has been subject to several ex parte reexamination
`
`proceedings with certificates issuing on August 4, 2009; June 7, 2011 and July 10,
`
`2012, and June 3, 2014.
`
`U.S. Patent 5,233,654 was subject to an ex parte reexamination
`
`proceeding in which the certificate issued February 17, 2009.
`
`
`
`Appendix B
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`
`U.S. Patent 5,335,277 has been subject to several ex parte reexamination
`
`proceedings with certificates issuing on August 28, 2012; September 25, 2012,
`
`August 14, 2013, and October 23, 2013.
`
`U.S. Patent 5,887,243 was subject to an ex parte reexamination in which
`
`a certificate issued on October 13, 2009.
`
`U.S. Patents 4,965,825; 5,109,414; and 5,335,277 were asserted in the
`
`U.S. District Court, Eastern District of Virginia in Personalized Mass Media Corp.
`
`v. The Weather Channel, Inc. et al., Doc. No. 2:95cv242 (“Virginia Action”). The
`
`case was settled prior to any substantive decision by the Court although one
`
`procedural decision was published at 899 F.Supp. 239 (E.D. Va. 1995).
`
`U.S. Patent 5,335,277 was involved in the matter of Certain Digital
`
`Satellite System (DDS) Receivers and Components Thereof before the United
`
`States International Trade Commission (“Commission”), Investigation No. 337-
`
`TA-392 (“ITC Investigation”). The Administrative Law Judge (“ALJ”) issued an
`
`“Initial Determination Granting Motion for Summary Determination of Invalidity
`
`of Claim 35 of the ’277 Patent” on May 16, 1997. This determination was
`
`appealed to the Federal Circuit, which affirmed the Commission decision in a
`
`decision decided January 7, 1999. The ALJ issued “Initial and Recommended
`
`
`
`Appendix B
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`
`Determinations” on October 31, 1997 that included various claim constructions.
`
`The Commission adopted certain of the ALJ’s findings and took no position on
`
`certain other issues in a “Notice of Final Commission Determination Of No
`
`Violation Of Section 337 Of The Tariff Act Of 1930,” dated December 4, 1997.
`
`The determination was appealed to the Federal Circuit, which affirmed-in-part,
`
`reversed-in-part, vacated-in-part, and remanded in a decision decided November
`
`24, 1998, and published at 161 F.3d 696, 48 U.S.P.Q.2d 1180. On remand, the
`
`complainant moved to terminate the investigation. The Commission issued a
`
`“Notice of Commission Decision To Terminate The Investigation And To Vacate
`
`Portions Of The Initial Determination” on May 13, 1999.
`
`U.S. Patents 4,965,825; 5,109,414 and 5,335,277 were asserted in the
`
`U.S. District Court, Northern District of California in Personalized Media
`
`Communications, LLC v. Thomson Consumer Electronics et al., Doc No. C-96
`
`20957 SW (EAI). The case was stayed during the above ITC Investigation and
`
`was thereafter voluntarily dismissed by plaintiff. The Court issued no substantive
`
`decisions.
`
`U.S. Patents 4,494,490; 4,965,825; 5,109,414; 5,233,654; and 5,335,277
`
`were asserted in the U.S. District Court, District of Delaware in Pegasus
`
`
`
`Appendix B
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`
`Development Corp. v. DIRECTV Inc., Doc. No. CA 00-1020 (“Delaware Action”).
`
`Special Master Robert L. Harmon issued a “Report And Recommendation Of
`
`Special Master Regarding Claim Construction” on March 24, 2003. On March 29,
`
`2003, Special Master Harmon issued a letter clarifying his report. The suit was
`
`stayed in 2003 due to ex parte reexaminations filed against the patents. Following
`
`the issuance of reexamination certificates, the stay was lifted in 2011. The parties
`
`settled this dispute in 2013 and the Court dismissed the action.
`
`U.S. Patents 4,494,490; 4,704,725; 4,965,825; 5,109,414; 5,233,654; and
`
`5,335,277 were asserted in the U.S. District Court, Northern District of Georgia in
`
`the case styled Personalized Media Communications, LLC v. Scientific-Atlanta,
`
`Inc. et al., Doc. No. 1:02-CV-824 (CAP) (“Atlanta Action”). Special Master Gale
`
`Peterson issued his “Report and Recommendation on Claim Construction” on
`
`March 1, 2005. The Court issued an order on June 6, 2005 construing the claims at
`
`issue that adopted the report of Special Master Peterson with minor modifications.
`
`The case was stayed in 2009 based on pending ex parte reexaminations.
`
`Certificates later issued from each of the reexaminations. The Court dismissed a
`
`cross-claim filed by Gemstar in a decision later affirmed by the Court of Appeals
`
`for the Federal Circuit. PMC and Scientific-Atlanta settled the infringement suit in
`
`2011 and all claims between them were dismissed.
`
`
`
`Appendix B
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`
`U.S. Patents 4,965,825; 5,109,414; 5,233,654; 5,335,277 and 5,887,243
`
`are asserted in the U.S. District Court, Eastern District of Texas, in Personalized
`
`Media Communications, L.L.C. v. Motorola, Inc. et al., Doc. No. 2:08-CV-00070.
`
`The Court issued a September 30, 2011, Memorandum Opinion and Order. This
`
`Order construes various claim terms from the patents. PMC and Defendant
`
`Motorola settled in 2011, leading to Motorola’s dismissal from the suit. This
`
`litigation remains pending as to Dish Network/Echostar and a trial is scheduled for
`
`April 2015.
`
`Related U.S. Patents Numbers 7,734,251; 7,797,717; 7,860,131 and
`
`7,908,638 were asserted in the Eastern District of Texas in Personalized Media
`
`Communications, LLC v. Zynga, Inc. (Case No. 2:12-CV-68-JRG- RSP). The
`
`Court construed the claims at issue in an order dated August 28, 2013. Patents
`
`7,734,251 and 7,860,131 were voluntarily dismissed from the litigation by PMC
`
`prior to judgment. A directed verdict of validity was entered with regard to the
`
`claims at issue of the 7,797,717 and 7,908,638 patents. A jury verdict issued on
`
`November 19, 2013, with a finding of no infringement. The parties later dismissed
`
`the suit with prejudice. U.S. Patents Numbers 7,734,251; 7,797,717; 7,860,131 and
`
`7,908,638 were also subject to inter partes review as a result of petitions filed by
`
`Defendant, Zynga, Inc.. IPR Case Nos. IPR2013-00156, IPR2013-00162,
`
`
`
`Appendix B
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`
`IPR2013-00164, and IPR2013-00171 were terminated prior to a decision on the
`
`merits by the Patent Trial and Appeal Board, in response to the parties’ joint
`
`request for termination due to settlement.
`
`
`
`
`
`
`
`
`
`
`IPR2015-00521
`Patent No. 7,801,304
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of Patent Owner’s Mandatory
`
`Notices, along with Appendices A & B, were served on January 23, 2015 via e-
`
`mail on counsel for Petitioner at: cpdocketkiklis@oblon.com.
`
`
`
`
`
`Dated: January 23, 2015
`
`
`
`By:
`
` /Stephen T. Schreiner/
`
`
`
`
`
`
`
`
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