UNITED STATES PATENT AND TRAhEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Paten! and Trademark Oflicc
`Address: COMMISSIONER FOR PATENTS
`P 0 . Box 1450
`Alcxandrin, Virginia 22313~ 1450
`www .usplo.gov
`
`APPLTCATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`95/000,659
`
`02/13/2012
`
`6629163
`
`159291-0025( 163)
`
`6219
`
`12/12/2013
`7590
`HEIM, PAYNE & CH0RUSH, LLP
`600 TRAVIS STREET
`SUITE 6710
`HOUSTON, TX 77002
`
`EXAMfNER
`
`AHMED, SALMAN
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`MAIL DATE
`
`DELIVERY MODE
`
`I 2/ 12/2013
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev . 04/07)
`
`Page 1 of 5
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`Implicit Exhibit 2004
`Juniper v. Implicit
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`

`

`@ UNITED STATES PATENT AND TRADEMARK OPFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`IRELL & MANELLA, LLP
`DA YID MCPHIE
`840 NEWPORT CENTER DR., STE 400
`NEWPORT BEACH, CA 92660
`
`Commissioner for Pa1cnts
`United Stales Patents and Trademark Office
`POflox 1450
`Alexandria, VA 22313-1450
`www usplo gov
`
`Date:
`
`MAILED
`DEC 122013
`CENTRAL RE
`EXAMINATION UNtT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NO. : 95000659
`PATENT NO.: 6629163
`ART UNIT: 3992
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 314(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination, no responsive
`submission by any ex parte third party requester is permitted.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the
`Central Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of the
`communication enclosed with this transmittal.
`
`Page 2 of 5
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`Implicit Exhibit 2004
`Juniper v. Implicit
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www .uspto .gov
`
`(For Patent Owner)
`
`MAILED
`
`DEC 1 2 2013
`
`
`
`CENTRAL REEXAMINATION UNIT
`
`(Courtesy CC: For Patent Owner)
`
`HEIM, PAYNE & CHORUSH, L.L. P.
`600 TRAVIS STREET
`SUITE 6710
`HOUSTON TX 77002
`
`MEYERTONS, HOOD, KIVLIN,
`KOWERT & GOETZEL, P.C.
`P.O. BOX398
`AUSTIN, TX 78767-0398
`
`DAVID McPHIE
`IRELL & MANELLA, LLP
`840 NEWPORT CENTER DR., STE 400
`NEWPORT BEACH, CA 92660
`
`(For Third Party Requester)
`
`In re Balassanian
`Reexamination Proceeding
`Control No. 95/000,659
`Request Deposited: February 13, 2012
`For: U.S. Patent No. 6,629,163
`
`: SUA SPONTE
`: DECISION
`: VA CA TING INTER P ARTES
`: REEXAMINATION
`: PROCEEDING
`
`This decision constitutes notice that the above-captioned inter partes reexamination proceeding
`is hereby vacated, because every claim (e.g., claims 1, 15, and 35) for which reexamination was
`requested has been held invalid by a final court decision. For this reason, the proceeding as a
`whole is hereby vacated.
`
`Page 3 of 5
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`Implicit Exhibit 2004
`Juniper v. Implicit
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`

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`Application/Control Number: 95/000,659
`Art Unit: 3992
`
`Page 2
`
`REVIEW OF FACTS
`
`U.S. Patent No. 6,629,163 (hereinafter, the '163 patent) was issued to Balassanian on
`1.
`September 30, 2003.
`
`On February 13, 2012, a third party deposited a request for inter partes reexamination of
`2.
`claims 1, 15, and 35 of the '163 patent, made pursuant to 37 CFR 1.915. The deposited
`reexamination request was assigned Control No. 95/000,659 (hereinafter, the '659 proceeding).
`
`On February 24, 2012, a "Notice of Inter Partes Reexamination Request Filing Date"
`3.
`was mailed for the '659 proceeding. The notice assigned the filing date of February 13, 2012 to
`the request for reexamination.
`
`On April 3, 2012, an order granting reexamination and a non-final Office action were
`4.
`mailed in the '659 proceeding.
`
`On June 4, 2012, the patent owner filed a response to the Office action. No claims
`5.
`amendments were filed.
`
`On July 9, 2012, the requester filed comments. The comments were not compliant.
`6.
`Corrected comments were filed on August 30, 2012.
`
`Prosecution continued and on August 16, 2013, an Office action, which rejected claims 1,
`7.
`15, and 35, was mailed.
`
`On October 2, 2013, the patent owner notified the Office that claims 1, 15, and 35 of the
`8.
`'163 patent were determined to be invalid by a final decision in the district court in the Northern
`District of California. See Implicit Networks Inc. v. F5 Networks Inc./ Implicit Networks Inc. v.
`Juniper Networks Inc., 3: 10 CV 3365/4234, 'Order Granting Defendant ' s Motions for Summary
`Judgment,, (dated March 13, 2013) (hereinafter "Summary Judgment Order"). The patent owner
`also notified the Office that the appeals to the U .S. Court of Appeals for the Federal Circuit were
`dismissed.
`
`DECISION
`
`This is a sua sponte decision that the '659 reexamination is vacated in accordance with the
`policies set forth in MPEP 2686.
`
`MPEP 2686, IV explains, in part:
`
`"Upon the issuance of a final holding of invalidity or unenforceability, the claims held
`invalid or unenforceable will be withdrawn from consideration in the reexamination. The
`reexamination will continue as to any remaining claims. If all of the claims being
`examined are finally held invalid or unenforceable, the reexamination will be vacated
`by the CRU Director ... and the reexamination prosecution wilJ be terminated."
`(Emphasis added in bold).
`
`Page 4 of 5
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`Implicit Exhibit 2004
`Juniper v. Implicit
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`Application/Control Number: 95/000,659
`Art Unit: 3992
`
`Page 3
`
`As pointed out above claims 1, 15, and 35 of the 163 patent have been held invalid by a
`Summary Judgment Order by the U.S. District Comt for the Northern District of California. See
`the 30-page October 2 2013 paJJer. Althongh the Summary Judgment Order was appealed to the
`U.S. Court of Appeals for the Federal Circuit, the appeal was dismissed on June 17, 2013 (see
`the Order in appeal nos. 2013-1328 & 2013-1441) or June 20, 2013 (see the Order in appeal no.
`2013-1327). See also two-page documents submitted October 2, 2013. As a result of the
`dismissal ofthe appeals, claims 1, 15, and 35 of the '163 patent, which are the only claims for
`which reexamination was ordered, have been held invalid by a final court decision.
`
`Accordingly , the filing date that was granted for the '659 proceeding is hereby vacated.
`Furthe1more, any papers (e.g., the order, Office actions , responses , or comments) of the record
`previously issued by the Office for the proceeding , by the patent owner or by the requester, and
`tbe proceeding, as a whole, are hereby vacated . Prosecution in this proceeding is terminated.
`
`The requester's papers, the patent owner's papers, and previously issued Office communications
`were scanned into the electronic Image File Wrapper (IFW) to create a record. Since the
`proceeding is vacated, all papers and previously issued Office communications will be marked
`"closed" and "non-public," and will not constitute part of the public record. The present decision
`will, however, remain open to the public, to provide a record of the action being taken.
`
`CONCLUSION
`
`1.
`
`2.
`
`3.
`
`5.
`
`The filing date assigned to the February 13, 2012 request papers, any papers of the record
`as a result of the request, and inter partes reexamination proceeding Control No.
`95/000,659, as a whole, are hereby vacated.
`
`The papers of the IFW record will be marked "closed" and "non-public," and will not
`constitute part of the public record. The present decision will, however, remain open to
`the public.
`
`The vacated inter partes reexamination proceeding is hereby referred to the Central·
`Reexamination Unit, where the proceeding will be processed to mark its file history
`papers "closed" and "non-public."
`
`Telephone inquiries related to this decision should be directed to Daniel Ryman,
`Supervisory Patent Examiner, at (571) 272-3152 or in his absence to the undersigned at
`(571) 272-0700.
`
`Ire~
`Director, Central Reexamination Unit
`
`Page 5 of 5
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`Implicit Exhibit 2004
`Juniper v. Implicit
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