www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`90/015,063
`
`06/23/2022
`
`7233790
`
`22104.12R
`
`8395
`
`Workman Nydegger
`60 East South Temple
`Suite 1000
`Salt Lake City, UT 84111
`
`HENEGHAN, MATTHEW E
`
`3992
`
`MAIL DATE
`
`04/10/2023
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`VIDEOLABS, INC.
`EX2009
`
`NETFLIX, INC.v. ipRotosa0Woe
`
`VIDEOLABS, INC.
`EX2009
` NETFLIX, INC. v. VIDEOLABS, INC.
`IPR2023-00628
`
`IPR2023-00628
`
`

`

`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
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`GREENBERG TRAURIG
`500 CAMPUS DRIVE
`SUITE 40
`
`FLORHAM PARK, NJ 07932
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/015,063 .
`
`PATENT UNDER REEXAMINATION 7233790 .
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the aboveidentified exparte reexamination proceeding (87 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the evparfe reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
`
`

`

`Application/Control Number: 90/015,063
`Art Unit: 3992
`
`Page 2
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`Notice of Pre-AIA or AIA Status
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`The present application is being examined underthe pre-AlA first to invent provisions.
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`Ex Parte Reexamination
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`A third party, Unified Patents, LLC, has requested ex parte reexamination of
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`claims 1, 2, 4, 8, and 9 of U.S. Patent No. 7,233,790.
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`A substantial new question of patentability affecting claims 1, 2, 4, 8, and 9 of
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`United States Patent Number 7,233,790 is raised by the request for ex parte
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`reexamination. See Order Granting Ex Parte Reexamination, mailed 17 August 2022.
`
`The patent owneris reminded of the continuing responsibility under 37 CFR
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`1.565(a) to apprise the Office of anylitigation activity, or other prior or concurrent
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`proceeding,
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`involving Patent No. 7,233,790 (hereinafter the ‘790 patent) throughout the
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`course of this reexamination proceeding. The third party requester is also reminded of
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`the ability to similarly apprise the Office of any such activity or proceeding throughout
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`the course of this reexamination proceeding. See MPEP §§ 2207, 2282 and 2286.
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`Extensions of time under 37 CFR 1.136(a) will not be permitted in these
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`proceedings because the provisions of 37 CFR 1.136 apply only to "an applicant" and
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`not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that
`
`

`

`Application/Control Number: 90/015,063
`Art Unit: 3992
`
`Page 3
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`ex parte reexamination proceedings "will be conducted with special dispatch" (37
`
`CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided
`
`for in 37 CFR 1.550(c).
`
`Patent owner is notified that any proposed amendmentto the specification and/or
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`claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j), must be
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`formally presented pursuant to 37 CFR 1.52(a) and (b), and must contain any fees
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`required by 37 CFR 1.20(c).
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`In order to ensure full consideration of any amendments, affidavits or
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`declarations, or other documents as evidence of patentability, such documents must be
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`submitted in response to this Office action. Submissions after the next Office action,
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`which is intended to be a final action, will be governed by the requirements of 37
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`CFR 1.116, after final rejection and 37 CFR 41.33 after appeal, which will be strictly
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`enforced.
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`In response to the previous office action, claims 1 and 8 have been amended.
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`Claims 1, 2, 4, 8, and 9 have been examined.
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`References
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`

`

`Application/Control Number: 90/015,063
`Art Unit: 3992
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`Page 4
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`The following references have been supplied by the third party requester for proposed
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`groundsof rejection:
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`U.S. Patent Application Publication No. 2002/0078178 to Senoh (hereinafter (Senoh)
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`U.S. Patent No. 6,035339 to Agraharam et al. (hereinafter Agraharam)
`
`U.S. Patent No. 6,421,726 to Kenneret al. (hereinafter Kenner)
`
`U.S. Patent No. 6,345,279 to Li et al. (hereinafter Li)
`
`Claim Rejections - 35 USC § 305
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`Claims 1 and 8 are rejected under 35 U.S.C. 305 as enlarging the scope of the
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`claim(s) of the patent being reexamined.
`
`In 35 U.S.C. 305, it is stated that "[nJo
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`proposed amended or new claim enlarging the scope of a claim of the patent will be
`
`permitted in a reexamination proceeding...." A claim presented in a reexamination
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`"enlarges the scope" of the patent claim(s) where the claim is broader than each and
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`every claim of the patent. A claim is broader in scope than the original claims ifit
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`contains within its scope any conceivable product or process which would not have
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`infringed the original patent. A claim is broadenedif it is broader in any one respect,
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`even though it may be narrowerin other respects.
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`Claims 1 and 8 no longer encompass a method(in the case of claim 1) ora
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`system (in the case of claim 8) in which “a plurality of items of... content to be made
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`available in wireless communication... devices used by a plurality of wireless
`
`

`

`Application/Control Number: 90/015,063
`Art Unit: 3992
`
`Page5S
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`subscribers,” as recited in the claims of the ‘790 patent. They are therefore
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`impermissibly enlarging in scope.
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`Allowable Subject Matter
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`Claims 2, 4, and 9 are confirmed.
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`Claims 1 and 8 would bepatentable if rewritten or amended to overcome the
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`rejection(s) under 35 U.S.C. 305 set forth in this Office action.
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`The following is a statement of reasons for the indication of confirmed subject
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`matter:
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`Regarding claims 1, 2, 8, and 9, the only primary reference considered, Senoh,
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`explicitly teaches away from “selecting a portion of the product catalog to be presented
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`to the subscriber, based on device capabilities of the wireless device used by the
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`subscriber; and presenting the selected portion of the product catalog to the subscriber
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`via a wireless network, such that the selected portion, as presented to the subscriber,
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`provides only a single description of each item of digital content in said portion,
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`regardless of the number of implementations of each said item,” as recited in claims 2
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`and 9. Senoh specifically states that it is an objective to enable a viewer terminal to
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`enjoy content in the format of a display device that is different from the specifications of
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`the user terminal (see paragraphs 8 and 15). Neither Kenner nor Li have been
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`presented in such a way that one skilled in the art would be motivated to modify Senoh
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`

`

`Application/Control Number: 90/015,063
`Art Unit: 3992
`
`Page 6
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`in amanner that would completely teach to the claimed inventions, as they would
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`removethis critical functionality from Senoh’s invention.
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`Claim 4 is confirmed based upon its dependence upon base claim 2.
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`Conclusion
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`Patent owner’s amendmentfiled 31 March 2023 necessitated the new grounds of
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`rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL.
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`See MPEP § 706.07(a).
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`A shortened statutory period for response to this action is set to expire 2
`
`MONTHS from the mailing date of this action.
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`Extensions of time under 37 CFR 1.136(a) do not apply in reexamination
`
`proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant” and not to
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`parties in a reexamination proceeding. Further,
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`in 35 U.S.C. 305 and in 37 CFR
`
`1.550(a),
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`it is required that reexamination proceedings “will be conducted with special
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`dispatch within the Office.”
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`Extensions of time in reexamination proceedings are provided for in 37
`
`CFR 1.550(c). A request for extension of time must specify the requested period of
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`extension and it must be accompanied bythe petition fee set forth in 37 CFR 1.17(g).
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`Any request for an extension in a third party requested ex parte reexamination must be
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`filed on or before the day on which action by the patent owner is due, and the mere
`
`filing of a request will not effect any extension of time. A request for an extension of time
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`in a third party requested ex parte reexamination will be granted only for sufficient
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`

`

`Application/Control Number: 90/015,063
`Art Unit: 3992
`
`Page 7
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`cause, and for a reasonable time specified. Any request for extension in a patent owner
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`requested ex parte reexamination (including reexamination ordered under 35 U.S.C.
`
`257) for up to two months from the time period set in the Office action mustbefiled no
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`later than two months from the expiration of the time period set in the Office action. A
`
`requestfor an extension in a patent owner requested ex parte reexamination for more
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`than two monthsfrom the time period set in the Office action mustbefiled on or before
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`the day on which action by the patent owner is due, and the merefiling of a request for
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`an extension for more than two months will not effect the extension. The time for taking
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`action in a patent owner requested ex parte reexamination will not be extended for more
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`than two monthsfrom the time period set in the Office action in the absence of sufficient
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`cause or for more than a reasonable time.
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`The filing of a timely first response to this final rejection will be construed as
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`including a request to extend the shortened statutory period for an additional two
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`months. In no event, however, will the statutory period for response expire later than
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`SIX MONTHS from the mailing date of the final action. See MPEP § 2265.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to MATTHEW E HENEGHAN whose telephone numberis
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`(571)272-3834. The examiner can normally be reached MF 8-5.
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`Examiner interviews are available via telephone, in-person, and video
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`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
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`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Awww.uspto.gov/interviewpractice.
`
`

`

`Application/Control Number: 90/015,063
`Art Unit: 3992
`
`Page 8
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Michael Fuelling can be reached on (571)270-1367. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
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`visit: httos://patentcenter.uspto.gov. Visit https:/Avww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https :/;www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/MATTHEW E HENEGHAN/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/DEANDRA M HUGHES/
`Reexamination Specialist, Art Unit 3992
`
`/ANDREW J. FISCHER/
`Supervisory Patent Reexamination Specialist, Art Unit 3992
`
`

`

`Office Action in Ex Parte Reexamination
`
`Control No.
`90/015,063
`
`Patent Under Reexamination
`7233790
`
`Examiner
`MATTHEW E HENEGHAN
`
`Art Unit
`3992
`
`AIA (FITF) Status
`No
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`
`a.¥]Responsive to the communication(s) filed on 31 March 2023.
`(1 Adeclaration(s\affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`.
`
`
`
`b.M4)This action is made FINAL.
`
`ce.) A statement under 37 CFR 1.530 has not been received from the patent owner.
`
`A shortenedstatutory period for responseto this action is set to expire 2 month(s) from the mailing date ofthis letter.
`Failure to respond within the period for responsewill result in termination of the proceeding and issuance of an eygarfe reexamination
`certificate in accordance with this action. 37 CFR 1.550(d). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(c).
`If the period for response specified aboveis less than thirty (30) days, a responsewithin the statutory minimum ofthirty (30) days
`will be considered timely.
`
`THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`Part!
`Interview Summary, PTO-474.
`1. (J Notice of References Cited by Examiner, PTO-892.
`3.{1
`2. () Information Disclosure Statement, PTO/SB/08.
`40.
`
`Part Il
`
`la.
`
`1b.
`
`2.
`
`SUMMARY OF ACTION
`
`Claims 1-2,4 and 8-9 are subject to reexamination.
`
`Claims 3,5-7 and 10-14 are not subject to reexamination.
`
`Claims __ have been canceled in the present reexamination proceeding.
`
`Claims 2,4 and 9 are patentable and/or confirmed.
`
`OOO088O88 Acknowledgment is madeofthe priority claim under 35 U.S.C. 119(a)-(d) or (f).
`
`10. () Other: cc: Requester (if third
`
`Claims1and8are rejected.
`
`Claims __ are objectedto.
`
`The drawings, filedon___—_s are acceptable.
`The proposed drawing correction, filed on
`
`has been (7a)
`
`L approved (7b)
`
`() disapproved.
`
`a) CJ All
`
`b)
`
`(3 Some* c)
`
`(C)None
`
`of the certified copies have
`
`1 ©) been received.
`
`2 ( not been received.
`
`3 (1 been filed in Application No.
`
`4 (] been filed in reexamination Control No.
`
`5 (] been received by the International Bureau in PCT application No.
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`9.
`
`(J Since the proceeding appears to be in condition for issuance of an exparte reexamination certificate except for formal
`matters, prosecution as to the merits is closed in accordancewith the practice under Exparte Quayle, 1935 C.D.
`11, 453 O.G. 213.
`
`U.S. Patent and Trademark Office
`PTOL-466 (Rev. 08-13)
`
`Office Action in Ex Parte Reexamination
`
`PartofPaperNo.
`
`20230405
`
`