ACQIS LLCDownload PDFPatent Trials and Appeals BoardDec 2, 2021IPR2021-00607 (P.T.A.B. Dec. 2, 2021) Copy Citation Trials@uspto.gov Paper 9 571-272-7822 Date: December 2, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ SAMSUNG ELECTRONICS CO., LTD. and SAMSUNG ELECTRONICS AMERICA, INC., Petitioner, v. ACQIS LLC, Patent Owner. ____________ IPR2021-00607 Patent RE45,140 E ____________ Before THU A. DANG, JONI Y. CHANG, and PATRICK M. BOUCHER, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION Denying Petitioner’s Request on Rehearing of Decision on Institution 37 C.F.R. § 42.71(d) IPR2021-00607 Patent RE45,140 E 2 I. INTRODUCTION Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of claims 14−38 (“the challenged claims”) of U.S. Patent No. RE45,140 E (Ex. 1001, “the ’140 patent”). Paper 1 (“Pet.”), 3. ACQIS LLC (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Upon consideration of the parties’ contentions and evidence, we exercised our discretion under 35 U.S.C. § 325(d) to deny institution. Paper 7 (“Decision” or “Dec.”). Subsequently, Petitioner filed a Request for Rehearing of the Decision. Paper 8 (“Req. Reh’g”). For the reasons that follow, Petitioner’s Request for Rehearing is denied. II. STANDARD OF REVIEW A party requesting rehearing bears the burden of showing that the decision should be modified. 37 C.F.R. § 42.71(d). Under 37 C.F.R. § 42.71(d), a petitioner who requests rehearing of a decision denying institution must identify specifically all matters we misapprehended or overlooked, and the place where each matter was previously addressed in its petition. Id. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. IPR2021-00607 Patent RE45,140 E 3 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315−16 (Fed. Cir. 2000). III. ANALYSIS In its Petition, Petitioner relies upon U.S. Patent No. 6,345,330 B2 (“Chu ’330”), issued from Application No. 09/149,882 (“the ’882 application”) in each asserted ground, and U.S. Provisional Application 60/083,886 (“Chu ’886”) in one asserted ground. Pet. 6. Petitioner contends that the United States Patent and Trademark Office (“USPTO” or “Office”) “erred in overlooking Chu ’330 and Chu ’886.” Id. at 7. To support its contention, Petitioner argues that “Chu ’886 was not properly incorporated by reference into the applications of the ’140 Patent family, and the earliest priority date to which the claims relying on the Chu ’886 disclosure are entitled is November 10, 2011.” Id. at 7, 9−17. Petitioner also argues that “the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’140 Patent.” Id. at 7−8. In the Decision, after applying the two-part framework set forth in Advanced Bionics, we determined to exercise our discretion under 35 U.S.C. § 325(d) not to institute inter partes review. Dec. 6−22 (citing Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential); Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17−18, 24 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph)). As to Part I of the Advanced Bionics framework, we determined that the IPR2021-00607 Patent RE45,140 E 4 same or substantially the same arguments were presented previously to the Office. Id. at 8−11. Under Part II of the Advanced Bionics framework, we determined that Petitioner failed to show that “[t]he Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’140 Patent.” Id. at 11−22. In its Rehearing Request, Petitioner does not challenge our determination as to Part I of the Advanced Bionics framework. Req. Reh’g 1−12. In particular, Petitioner does not dispute that the Office had considered previously the following issues: (1) whether Chu ’330 and Chu ’886 were properly incorporated by reference in the ’140 patent’s family, and (2) whether Chu ’330 properly incorporated by reference Chu ’886. Dec. 8−11. Petitioner mainly contends that the Board misapprehended and overlooked that (1) “essential subject matter from Chu ’886 was improperly incorporated by reference prior to November 10, 2011 (i.e., such essential material was added improperly into the priority chain during prosecution of the ’138 application – the ‘nested incorporation’ issue),” and (2) “Chu ’330 did not properly incorporate the subject matter of Chu ’886.” Req. Reh’g 1−2. Under Part II of the Advanced Bionics framework, Petitioner has the burden to show that “the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the claims in the ’140 Patent,” as Petitioner alleges in its IPR2021-00607 Patent RE45,140 E 5 § 325(d) analysis. Pet. 7−8. Upon consideration of Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s arguments. We address below each of Petitioner’s arguments in turn. A. We did not misapprehend or overlook Petitioner’s argument that the challenged claims have a priority date of November 10, 2011 To support its position that “essential subject matter from Chu ’886 was improperly incorporated by reference prior to November 10, 2011,” Petitioner argues that “the Petition established that by statute essential material can be incorporated by reference only by way of a U.S. patent or U.S. patent application publication, which ‘does not itself incorporate such essential material by reference,’” citing 37 C.F.R. § 1.57(c) (2004) for support. Req. Reh’g 1−4. Petitioner also argues that “the Board either misapprehended or overlooked Petitioner’s arguments and underlying support cited in the Petition as the Institution Decision is focused primarily on the MPEP’s guidelines for an Examiner to determine if an application’s disclosure was complete,” and that “the MPEP does not have the force of law.” Id. at 6−7 (citing Nat. Alternatives Int’l, Inc. v. Iancu, 904 F.3d 1375, 1382 (Fed. Cir. 2018); Nomandix, Inc. v. Second Rule LLC, 2009 WL 10668158, at *23−24 (C.D. Cal. Jan. 16, 2009)). Petitioner further argues that the Decision denying institution misapprehends Ex parte Maziere, 27 USPQ2d 1705, 1706−07 (BPAI 1993). Id. at 7. According to Petitioner, Maziere “predates the current § 1.57 and concerns priority under Section 120,” and “has nothing to do with ‘nested’ incorporation by reference, which is what the ’138 application improperly attempted to do.” Id. IPR2021-00607 Patent RE45,140 E 6 Petitioner’s arguments are unavailing. Section 1.57 of Title 37 of the Code of Federal Regulations is not a “statute,” but a regulation that became effective on September 21, 2004. See 69 Fed. Reg. 56482. The ’882 application, which incorporated Chu ’886 by reference, was filed on September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005, codes (21), (22), (45). The’140 patent is a reissue patent of U.S. Patent No. 6,643,777 (“the ’777 patent”), which was issued on November 4, 2003, from U.S. Application No. 09/312,199 (“the ’199 application”) filed on May 14, 1999. Ex. 1001, codes (63), (64). Both the ’882 application and the ’199 application were filed and issued as patents prior to the effective date of 37 C.F.R. § 1.57, September 21, 2004. Petitioner does not explain why the applicant should have complied with 37 C.F.R. § 1.57, which did not exist at the time of filing those applications or issuance of those patents that incorporated by reference Chu ’886 and the ’882 application (issued as Chu ’330). Pet. 6−17; Req. Reh’g 1−12. We decline to apply 37 C.F.R. § 1.57 retroactively to the incorporation by reference statements submitted in the ’882 application and the ’199 application. In addition, we do not agree with Petitioner’s argument that we should ignore the guidance set forth in the MPEP and Maziere, which is cited in MPEP § 608.01(p) since July 1998, even after the implementation of 37 C.F.R. § 1.57. Notably, MPEP § 608.01(p) expressly states that “[t]he Commissioner has considerable discretion in determining what may or may not be incorporated by reference in a patent application,” and that the incorporation by reference practice set forth in MPEP § 608.01(p) “is the IPR2021-00607 Patent RE45,140 E 7 manner in which the Commissioner has elected to exercise that discretion.” MPEP § 608.01(p) (7th Ed. Rev. 1 Feb. 2000) (citing General Electric Co. v. Brenner, 407 F.2d 1258 (D.C. Cir. 1968)). Petitioner does not explain why it would have been error for the examiner to follow the guidance in MPEP § 608.01(p) when considering the incorporations by reference of Chu ’886 and the ’882 application (issued as Chu ’330). Pet. 6−17; Req. Reh’g 1−12. Tellingly, in its Petition, Petitioner relied on MPEP § 608.01(p) for the proposition that “essential material may not be incorporated by reference to . . . a US patent or application which itself incorporates essential material by reference” to support its arguments that “the subject matter added from Chu ’886 is essential to providing written description support for the elements of the challenged claims” in the ’140 patent, and that “[t]he ’140 Patent did not properly incorporate the subject matter from Chu ’886.” Pet. 11−12. To address those arguments presented in the Petition, we determined in the Decision that “Petitioner conflate[d] the two Subparts of MPEP § 608.01(p)—namely, Subpart I (‘Review of Applications Which are To Issue as Patents’) and Subpart II (‘Review of Applications Which Are Relied on To Establish an Earlier Effective Filing Date’).” Dec. 12. We also explained that “MPEP § 608.01(p) sets forth a clear distinction between those applications that are under examination for issuance under Subpart I and those applications which are relied on for priority under Subpart II.” Id. at 12−13. We further noted that MPEP § 608.01(p), Subpart II, repeatedly explains that the prohibition of referencing “essential IPR2021-00607 Patent RE45,140 E 8 material” in a “nested incorporation” does not apply to applications which are relied on to establish an earlier effective filing date. Id. at 12−14. For example, as we pointed out in the Decision (id. at 13−14), under MPEP § 608.01(p), Subpart II, “[t]he limitations on the material which may be incorporated by reference in U.S. patent applications which are to issue as U.S. patents do not apply to applications relied on only to establish an earlier effective filing date under 35 U.S.C. 119 or 35 U.S.C. 120.” MPEP § 608.01(p) (8th Ed. Aug. 2001) (emphasis added); see also all subsequent versions of the MPEP, which contain the same guidance. MPEP § 608.01(p), Subpart II, also explains that “[n]either 35 U.S.C. 119(a) nor 35 U.S.C. 120 places any restrictions or limitations as to how the claimed invention must be disclosed in the earlier application to comply with 35 U.S.C. 112, first paragraph.” MPEP § 608.01(p) (8th Ed. Aug. 2001); see also In re Brower, 433 F.2d 813 (CCPA 1970). “Accordingly, an application is entitled to rely upon the filing date of an earlier application, even if the earlier application itself incorporates essential material by reference to another document.” MPEP § 608.01(p) (8th Ed. Aug. 2001) (emphasis added). More importantly, MPEP § 608.01(p), Subpart II, expressly states the following: Incorporation by reference in the earlier application of (1) patents or applications published by foreign countries or regional patent offices, (2) nonpatent publications, (3) a U.S. patent or application which itself incorporates “essential material” by reference, or (4) a foreign application, is not critical in the case of a “benefit” application. IPR2021-00607 Patent RE45,140 E 9 Id. (emphases added). The MPEP maintains in this guidance that the prohibition of referencing “essential material” in a “nested incorporation” does not apply to applications which are relied on to establish an earlier effective filing date under 35 U.S.C. § 119 or 35 U.S.C. § 120 since August 1993, even after the implementation of 37 C.F.R. § 1.57. See, e.g., MPEP § 608.01(p) (5th Ed. Rev. 15 Aug. 1993); MPEP § 608.01(p) (8th Ed. Rev. 3 Aug. 2005); MPEP § 608.01(p) (9th Ed. Rev. 11 Mar. 2014). Consistent with this guidance, since July 1998, MPEP § 608.01(p), Subpart II, cites to Maziere for the proposition that “an application is entitled to rely upon the filing date of an earlier application, even if the earlier application itself incorporates essential material by reference to another document.” See, e.g., MPEP § 608.01(p) (7th Ed. July 1998); MPEP § 608.01(p) (9th Ed. Rev 10.2019 June 2020). Therefore, in the Decision, we determined that the prohibition of referencing “essential material” in a “nested incorporation” does not apply to the continuation applications in the ’140 patent priority chain. Dec. 12−14. Furthermore, Petitioner ignores that, in the Decision, we also found that the ’140 patent and its prior applications in the priority chain comply with the “essential material” requirement in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) and MPEP § 608.01(p). Id. at 14−16. Mere disagreement with the Board’s conclusion is not a proper basis for rehearing. It is not an abuse of discretion to have made a conclusion with which a party disagrees. IPR2021-00607 Patent RE45,140 E 10 For these reasons, we are not persuaded by Petitioner’s aforementioned arguments that we misapprehended or overlooked 37 C.F.R. § 1.57(c), MPEP, and Maziere. B. We did not misapprehend or overlook Federal Circuit case law Petitioner argues that “Patent Owner mischaracterized the Droplets decision as ‘acknowledging that claim amendments during prosecution can transform nonessential material into essential material,’” because the language being paraphrased omitted “triggering a § 112 rejection if the incorporation fails to satisfy § 1.57(c),” and that “the Board misapprehended the case law cited in the POPR” (Patent Owner Preliminary Response). Req. Reh’g 5 (quoting Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309 (Fed. Cir. 2018)). According to Petitioner, “[b]ecause the Petition and POPR establish that the alleged incorporation failed to satisfy § 1.57(c) no earlier than November 10, 2011, this characterization of Droplets is egregiously misleading.” Id. We disagree with Petitioner. Patent Owner did not mischaracterize, nor did we misapprehend, Droplets. Omitting the phrase “triggering a § 112 rejection if the incorporation fails to satisfy § 1.57(c)” in the cited sentence—“[t]he MPEP also explains that the claim amendments during prosecution can transform nonessential material into essential material, triggering a § 112 rejection if the incorporation fails to satisfy § 1.57(c)”—does not amount to mischaracterization of Droplets. Droplets, 887 F.3d at 1319 (citing MPEP IPR2021-00607 Patent RE45,140 E 11 § 608.01(p) I.A.2 (Example 2)) (emphasis added by Petitioner to show the omitted language). Petitioner fails to recognize that the Federal Circuit in Droplets cited to Example 2 set forth in MPEP § 608.01(p), Subpart I, for support of the sentence. Id. Example 2 addresses situations where the “essential material is improperly incorporated by reference to a foreign application or patent or to a publication,” as well as other situations that do not involve essential material (e.g., “subsequent publications or subsequently filed applications”). MPEP § 608.01(p) I.A.2 (Example 2) (emphasis added). Here, Chu ’886 and the ’882 application (issued as Chu ’330) are U.S. prior-filed patent applications, not foreign or subsequently-filed applications. Tellingly, Petitioner does not explain specifically how Example 2 applies to the facts of this proceeding, let alone how this portion of MPEP § 608.01(p) supports its argument that “essential subject matter from Chu ’886 was improperly incorporated by reference prior to November 10, 2011.” Req. Reh’g 1−12. In addition, Petitioner also fails to recognize that the phrase “the claim amendments during prosecution can transform nonessential material into essential material” cited by Patent Owner is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Prelim. Resp. 12 (citing Droplets, 887 F.3d at 1319). As we explained in the Decision, whether certain disclosure is “essential” depends entirely on what the claims recite in the particular application, not the claims in the later-filed application as Petitioner alleges. Dec. 14−15. It is undisputed that “essential material” is defined as material IPR2021-00607 Patent RE45,140 E 12 necessary to provide written description of the claimed invention as required by 35 U.S.C. § 112, ¶ 1, describe the claimed invention as required by 35 U.S.C. § 112, ¶ 2, and describe the corresponding structure, material, or acts for performing a recited function in a means or step for element as required by 35 U.S.C. § 112, ¶ 6. 37 C.F.R. § 1.57(c) (2004); MPEP § 608.01(p) (8th Ed. Aug. 2001). More significantly, nothing in 37 C.F.R. § 1.57 and MPEP § 608.01(p) defines “essential material” as material necessary to provide written description of the claims in the later-filed application (e.g., the claims of the application issued as the ’140 patent) that does not exist at the time of filing the earlier application (e.g., the initial parent application in the ’140 patent’s priority chain). Petitioner’s position that “essential material” depends on the claims in the later-filed application that issued as the ’140 patent and that all of the prior applications in the ’140 patent priority chain must expressly disclosed the claimed subject matter of the ’140 patent (Pet. 6−17; Req. Reh’g 1−12) is inconsistent with 37 C.F.R. § 1.57(c) (2004), MPEP § 608.01(p), and Droplets, 887 F.3d at 1318. Therefore, we are not persuaded by Petitioner’s arguments that omitting the phrase “triggering a § 112 rejection if the incorporation fails to satisfy § 1.57(c)” and relying on the phrase “the claim amendments during prosecution can transform nonessential material into essential material” in Droplets, 887 F.3d at 1319, “is egregiously misleading” or that “the Board misapprehended the case law cited in the POPR.” Req. Reh’g 5. IPR2021-00607 Patent RE45,140 E 13 C. Petitioner’s Rehearing Request improperly introduces new arguments Relying on Hollmer v Harari, 681 F.3d 1351 (Fed. Cir. 2012), for support, Petitioner argues for the first time in its Request for Rehearing the following: (1) “MPEP § 608.01(p) Subpart II . . . is contradicted by controlling Federal Circuit case law,” (2) “the Federal Circuit has held that ‘amendments in later applications cannot cure an otherwise defective application in the priority chain’ and that ‘[t]he incorporation by reference analysis, therefore, is similarly constrained by the four corners of the application,’” (3) “under Federal Circuit law, a child application cannot benefit from an earlier application by later fixing an incorporation by reference requirement,” and (4) “the Institution Decision’s application of MPEP 608.01(p)—that an otherwise defective incorporation by reference in an application can be cured through a child application—appears to contradict Federal Circuit law.” Req. Reh’g 5−6, 9−10 (quoting Hollmer, 681 F.3d at 1355). Petitioner further argues that “the ’140 Patent is akin to the patent analyzed in the NRG decision” and that “to the extent the provisional application provides support for the challenged claims, the incorporation by reference of the provisional application by the [intermediate] applications cannot cure the deficiencies.” Id. at 7−10 (citing NRG Energy, Inc. v. Midwest Energy Emissions Corp., IPR2020-00832, Paper 17, 29−30 (PTAB Oct. 26, 2020)). Petitioner’s arguments are new arguments raised for the first time in its Rehearing Request. Petitioner acknowledges that Hollmer and NRG were not cited in the Petition. Id. at 10. Nevertheless, Petitioner alleges that it IPR2021-00607 Patent RE45,140 E 14 “could not have anticipated the Patent Owner’s mischaracterization of the Droplets decision, nor the Board’s reliance on this mischaracterization,” and that Petitioner was not authorized to file a reply to the Patent Owner Preliminary Response. Id.; see also id. at 2−3 n.1. Petitioner’s new arguments in connection with Hollmer and NRG are improper. As we discussed above, Patent Owner did not mischaracterize, nor did we misapprehend, Droplets. It was not necessary to authorize Petitioner to file a reply, as we were capable of determining whether Patent Owner mischaracterizes Droplets. Petitioner fails to recognize that the language relied upon by Patent Owner in Droplets is consistent with 37 C.F.R. § 1.57 and MPEP § 608.01(p). Although Petitioner relies on MPEP § 608.01(p) in its Petition, Petitioner now in its Rehearing Request for the first time suggests that we should ignore MPEP § 608.01(p) and the case law cited in MPEP § 608.01(p). Pet. 12; Req. Reh’g 6−7. A request for rehearing is not an opportunity to submit new arguments, after the decision has noted the deficiencies in the petitioner’s original analysis. 37 C.F.R. § 42.71(d). We could not have misapprehended or overlooked the new arguments that were not presented in the record until after the Decision. Id. In any event, even if we were to consider Petitioner’s new arguments, we would not be persuaded by those arguments. We disagree with Petitioner’s arguments that: (1) “MPEP § 608.01(p) Subpart II . . . is contradicted by controlling Federal Circuit case law,” (2) “the Federal Circuit has held that ‘amendments in later applications cannot cure an IPR2021-00607 Patent RE45,140 E 15 otherwise defective application in the priority chain’ and that ‘[t]he incorporation by reference analysis, therefore, is similarly constrained by the four corners of the application,’” (3) “under Federal Circuit law, a child application cannot benefit from an earlier application by later fixing an incorporation by reference requirement,” and (4) “the Institution Decision’s application of MPEP 608.01(p)—that an otherwise defective incorporation by reference in an application can be cured through a child application— appears to contradict Federal Circuit law.” Req. Reh’g 5−6, 9−10 (quoting Hollmer, 681 F.3d at 1355). Petitioner’s new arguments essentially rely on Hollmer as the “controlling Federal Circuit case law” because Petitioner does not provide any other Federal Circuit case law regarding incorporation by reference to support its arguments. Id. Petitioner’s reliance on Hollmer here is misplaced. In Hollmer, the intervening applications merely identified the referenced application with the title and the language “filed on the same day as the present application,” but the intervening applications were not “filed on the same day” as that referenced application, and at least two other applications by the same inventors had the same title as that referenced application. Hollmer, 681 F.3d at 1353, 1358. Therefore, the Federal Circuit held that the incorporation language in Hollmer did not directly lead one of ordinary skill in the art to that referenced application, but rather presented several potential documents for incorporation. Id. at 1358. IPR2021-00607 Patent RE45,140 E 16 In contrast, the ’882 application (issued as Chu ’330) here provided an incorporation by reference statement of the applicant’s prior applications in the transmittal form, and clearly identified the applicant’s prior applications (including Chu ’886) in the first sentence of the Specification stating that “[t]his application claims any and all benefits as provided by law of U.S. Provisional Application No. 60/083,886” (Chu ’886) “and of U.S. Provisional Application No. 60/092,706 filed on July 14, 1998.” Ex. 1006, 3, 7. The USPTO accepted the benefit claims to these two prior applications (including Chu ’886) by placing them on the file wrapper cover of the ’882 application and the examiner verified them by placing his or her initials on the file wrapper cover. Id. at 2. The Cross-Reference to Related Applications Section of the ’882 application listed only these two prior applications and another concurrently-filed application. Id. at 7. The incorporation by reference statement together with the first sentence of the Specification would have directly led one of ordinary skill in the art to those referenced prior applications, distinguishing them from all others. Moreover, the ’199 application (the original application issued as the ’777 patent) incorporated by reference the ’882 application, and each reissue application in the ’140 patent’s priority chain incorporated by reference the ’882 application and the prior applications in the priority chain. See, e.g., Ex. 1001, 1:24−31; 5:67−6:4; Ex. 1002, 5:9−13. Furthermore, one of ordinary skill in the art would not have ignored the incorporation by reference statement in the ’882 application’s transmittal form because Box 4b was not checked or because the applicant was not IPR2021-00607 Patent RE45,140 E 17 filing a continuation or divisional application. As the Federal Circuit has explained, “[t]he incorporation standard relies only on the reasonably skilled artisan and his or her ability to deduce from language, however, imprecise, what a host document aims to incorporate.” Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236, 1248 (Fed. Cir. 2016) (citing Harari v. Lee, 656 F.3d 1331 (Fed. Cir. 2011); Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000)). As we pointed out in the Decision (Dec. 16−19), the evidence before us showed that two different examiners on three separate occasions considered the transmittal form together with the benefit claims to the prior provisional applications (which included Chu ’886), and recognized that the applicant incorporated by reference those prior applications. Ex. 1015, 363; IPR2021-00604, Ex. 1011, 15, 16, 26−28, 382, 392, 401. The examiner in each of those cases did not object to the amendments as new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1 for lack of written description support for the claims. Instead, the examiners entered the amendments and subsequently allowed the applications with the subject matter added from Chu ’886. See, e.g., IPR2021-00604, Ex. 1011, 430 (Notice of Allowance and Fee(s) Due). The incorporation statement in the transmittal form also was never objected to by any examiner during prosecution of the ’882 application, the ’199 application (the original application issued as the ’777 patent), and all six reissue applications in the priority chain of the ’140 patent, as well as during the prosecution of all eleven continuation applications in the priority chain of U.S. Patent No. 9,703,750 (“the ’750 IPR2021-00607 Patent RE45,140 E 18 patent”) as we noted in our Decision Denying Institution in IPR2021-00604, Paper 7 at 18. And none of the examiners required the applicant to change its benefit claims from “continuation” to “continuation-in-part” in those applications. The portions of Hollmer relied upon by Petitioner address a preliminary amendment filed in a later application in Hollmer that added the serial number and filing date of the referenced application to correct the incorporation language (“filed on the same day as the present application”). Req. Reh’g 5−6 (citing Hollmer, 681 F.3d at 1355). Petitioner’s reliance on those portions of Hollmer is inapposite in the instant proceeding. The ’882 application here clearly identified the referenced prior applications by their serial numbers and common filing date in the first sentence of the Specification on filing. Ex. 1006, 7. In addition, Hollmer is silent as to MPEP § 608.01(p) and the “essential material” requirement. Hollmer does not address the prohibition of referencing “essential material” in a “nested incorporation,” as Petitioner suggests. Req. Reh’g 5−6. Nor does Hollmer support Petitioner’s position that “essential material” depends on the claims in the later-filed application that issued as the ’140 patent and that all of the prior applications in the ’140 patent priority chain must expressly disclose the claimed subject matter of the ’140 patent. Pet. 6−17; Req. Reh’g 1−10. Therefore, we are not persuaded by Petitioner’s arguments in connection with Hollmer, as well as its arguments that “essential subject matter from Chu ’886 was improperly incorporated by reference prior to IPR2021-00607 Patent RE45,140 E 19 November 10, 2011,” or that “written description support for the claims of the ’138 application was not present in its priority chain at all and was only provided in the November 10, 2011 preliminary amendment.” Pet. 9−17; Req. Reh’g 1−6. Furthermore, Petitioner’s reliance on NRG, a non-precedential Board decision, is also misplaced. The panel in NRG found that the Office did not consider previously the same or substantially the same argument. NRG, Paper 17 at 13. In contrast here, we exercised our discretion under § 325(d) to deny institution because we determined that the same or substantially the same arguments were presented previously to the Office and the Petitioner failed to show that the Examiner erred, as discussed above. Dec. 6−22. For the foregoing reasons, even if we were to consider Petitioner’s new arguments, those arguments would be unavailing. D. We did not overlook or misapprehend Petitioner’s argument that Chu ’330 did not properly incorporate the subject matter of Chu’886 Petitioner contends that the Board overlooked or misapprehended the argument that Chu ’330 did not properly incorporate the subject matter of Chu ’886 because “neither the application transmittal nor the specification of the application that issued as Chu ’330 states that Chu ’886 is incorporated by reference.” Req. Reh’g 11−12. According to Petitioner, “a claim of priority is not the same as incorporation by reference.” Id. (citing In re de Seversky, 474 F.2d 671, 674 (CCPA 1973) (“a mere reference to another application, or patent, or publication is not an incorporation of anything therein into the application.”)). IPR2021-00607 Patent RE45,140 E 20 Petitioner again improperly introduces new arguments. Notably, Petitioner for the first time in its Rehearing Request argues that “a claim of priority is not the same as incorporation by reference.” In any event, Petitioner’s reliance on de Seversky is misplaced here. In de Seversky, “the parent application . . . contains no ‘incorporation-by- reference’ language whatsoever.” de Seversky, 474 F.2d at 674. In contrast, the applicant here filed a transmittal form in the ’882 application that includes an incorporation by reference statement of his prior applications and the benefit claims in the first sentence of the Specification clearly identify the applicant’s prior applications (including Chu ’886). Ex. 1006, 3, 5, 7. Petitioner fails to consider the incorporation by reference statement together with the benefit claims. More importantly, as our Decision explained, we determined that Petitioner failed to show that the examiner erred in determining that Chu ’330 incorporated by reference Chu ’886 or in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. Dec. 16−21. Under the second part of the Advanced Bionics framework, Petitioner has the burden to demonstrate that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, Paper 6 at 8. “If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability. At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9. IPR2021-00607 Patent RE45,140 E 21 In addition, as discussed above, the incorporation by reference language together with the benefit claims in the first sentence of the Specification of the ’882 application would have sufficiently identified the applicant’s prior applications (including Chu ’886) as the referenced prior applications, distinguishing them from all other documents. Ex. 1006, 5, 7. One of ordinary skill in the art would not have ignored the incorporation by reference statement in the ’882 application’s transmittal form, as “[t]he incorporation standard relies only on the reasonably skilled artisan and his or her ability to deduce from language, however, imprecise, what a host document aims to incorporate.” Husky Injection, 838 F.3d at 1248; cf. In re Fouche, 439 F.2d 1237, 1239−1240 (CCPA 1971) (“It seems amply clear that an applicant should be permitted to incorporate the disclosure of a copending application . . . so long as the reference application is sufficiently well identified to distinguish it from all others.”). In short, the ’882 application identified Chu ’886 with particularity and would have directly led a reasonably skilled artisan to the document intended to be incorporated. Mere disagreement with the Board’s conclusion is not a proper basis for rehearing. It is not an abuse of discretion to have made a conclusion with which a party disagrees. Therefore, we are not persuaded by Petitioner’s arguments that we overlooked or misapprehended the arguments that Chu ’330 did not properly incorporate the subject matter of Chu ’886. IPR2021-00607 Patent RE45,140 E 22 IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated that we abused our discretion. Consequently, Petitioner’s Request for Rehearing is denied. PETITIONER: Gianni Minutolli Harpreet Singh Alan Limbach DLA PIPER LLP (US) Gianni.minutoli@dlapiper.com Harpreet.singh@dlapiper.com Alan.limbach@dlapiper.com FOR PATENT OWNER: Cyrus Morton Derrick Carman ROBINS KAPLAN LLP cmorton@robinskaplan.com dcarman@robinskaplan.com Copy with citationCopy as parenthetical citation