ACQIS LLC,

Patent Trials and Appeals Board

Dec 2, 2021

IPR2021-00604 (P.T.A.B. Dec. 2, 2021)

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.
____________

IPR2021-00604
Patent 9,703,750 B2
____________

Before THU A. DANG, JONI Y. CHANG, and SCOTT A. DANIELS,
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)

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I. INTRODUCTION
Samsung Electronics Co., Ltd. and Samsung Electronics America,
Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes
review (“IPR”) of claims 1−7, 10, 11, 21−25, 27, 31−35, 37, 39, and 44−50
(“the challenged claims”) of U.S. Patent No. 9,703,750 B2 (Ex. 1001, “the
’750 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.
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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 two asserted grounds. 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 ’750 Patent family, and the earliest
priority date to which the claims relying on the Chu ’886 disclosure are
entitled is April 5, 2011.” Id. at 7, 9−18. Petitioner also argues 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 ’750 Patent.” Id. at 7.
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. 6−21 (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
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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 ’750 Patent.” Id. at
11−21.
In its Rehearing Request, Petitioner does not challenge our
determination as to Part I of the Advanced Bionics framework. Req. Reh’g
1−14. 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 ’750 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 April 15, 2011 (i.e., such essential
material was added improperly on April 15, 2011 during prosecution of the
’912 application[, an intermediate application in the ’750 patent’s priority
chain,] – 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 “[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 ’750 Patent,” as Petitioner alleges in its
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§ 325(d) analysis. Pet. 7, 9−18. 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 April 15, 2011
To support its position that “essential subject matter from Chu ’886
was improperly incorporated by reference prior to April 15, 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 1−3. 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 (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 ’912 application improperly attempted to do.” Id.
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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. 56,482. 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,
code (22). The initial parent application in the ’750 patent’s priority chain,
U.S. Application No. 09/569,758 (“the ’758 application”), which
incorporated the ’882 application by reference, was filed on May 12, 2000,
and issued as U.S. Patent No. 6,718,415 B1 (“the ’415 patent”) on April 6,
2004. Ex. 1001, 1:13−37. Both the ’882 application and the ’758
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. 7, 9−18; Req. Reh’g 1−14. We decline to apply 37 C.F.R. § 1.57
retroactively to the incorporation by reference statements submitted in the
’882 application and the ’758 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
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incorporation by reference practice set forth in MPEP § 608.01(p) “is the
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. 7, 9−18; Req. Reh’g
1−14.
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 ’750 patent, and that “[t]he ’750
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
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II, repeatedly explains 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. 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
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material” by reference, or (4) a foreign application, is not critical
in the case of a “benefit” application.
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 ’750 patent priority chain. Dec. 12−14.
Furthermore, Petitioner ignores that, in the Decision, we also found that the
’750 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.
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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 standing for the proposition that ‘The MPEP also explains that
claim amendments during prosecution can transform nonessential material
into essential material,’” and that “the Board misapprehended the case law
cited in the [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 [Patent Owner
Preliminary Response] establish that the alleged incorporation failed to
satisfy § 1.57(c) no earlier than April 15, 2011, this partial quote 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
§ 608.01(p) I.A.2 (Example 2)) (emphasis added by Petitioner to show the
omitted language).
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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 April 15,
2011.” Req. Reh’g 1−14.
In addition, Petitioner also fails to recognize that the phrase “[t]he
MPEP also explains that 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. 13 (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 necessary to provide written
description of the claimed invention as required by 35 U.S.C. § 112, ¶ 1,
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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); see also Pet. 11 (citing Droplets, 887 F.3d at 1318).
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 ’750 patent) that does not exist at the
time of filing the earlier application (e.g., the initial parent application in the
’750 patent’s priority chain). Petitioner’s position that “essential material”
depends on the claims in the later-filed application that issued as the ’750
patent and that all of the prior applications in the ’750 patent priority chain
must expressly disclosed the claimed subject matter of the ’750 patent
(Pet. 7, 9−18; Req. Reh’g 1−10) 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 “[t]he MPEP also explains that
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 Patent Owner Preliminary Response.” Req. Reh’g 5.
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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 ’750 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
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“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. 11; 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
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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.
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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 ’758 application (the initial parent application) incorporated
by reference the ’882 application, and each intervening application in the
’750 patent’s priority chain incorporated by reference both the ’882
application and the ’758 application. See, e.g., Ex. 1001, 1:13−37;
9:66−10:2; Ex. 1009, 10.
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
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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. 17−18), 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. 1011, 15,
16, 26−28, 382, 392, 401; Ex. 2012, 363. 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 ’912 application with the subject matter added from Chu ’886.
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 ’758 application (initial
parent application), and all eleven continuation applications in the priority
chain of the ’750 patent, as well as during the prosecution of U.S. Patent No.
6,643,777 (the ’777 patent) and all six reissue applications in the priority
chain of the ’777 patent, as noted in our Decision Denying Institution in
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IPR2021-00607, Paper 7 at 20. 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 ’750 patent and that all of the prior applications in the ’750
patent priority chain must expressly disclose the claimed subject matter of
the ’750 patent. Pet. 7, 9−18; 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
April 15, 2011,” or that “written description support for the claims of the
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’912 application was not present in its priority chain at all and was only
provided in the April 15, 2011 amendment.” Pet. 9−12; 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. 6−21.
For the foregoing reasons, even if we were to consider Petitioner’s
new arguments, those arguments would be unavailing.
D. We did not misapprehend an Office generated file wrapper cover
Petitioner contends that the Board overlooked or misapprehended the
argument that Chu ’330 did not properly incorporate the subject matter of
Chu ’886. Req. Reh’g 10−14. To support that contention, Petitioner argues
that Patent Owner’s Preliminary Response “mischaracterizes a Patent Office
generated file wrapper document as part of the application transmittal
submitted by the applicant when the application that issued as Chu ’330 was
filed.” Id. at 11. Petitioner also argues that “the Institution Decision
misapprehended what the applicant included in the transmittal as the
Decision specifically cites to this mischaracterized PTO form in its
conclusion that Chu ’330 claims priority to Chu ’886 and incorporates by
reference Chu ’886. Ex. 1006, 2−3, 5, 7; Ex. 1011, 26, 392.” Id. at 13.
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Petitioner’s arguments are unavailing. Petitioner improperly
presumes that we misapprehended the Office generated file wrapper cover
for the ’822 application as the applicant’s transmittal form because our
citation (“Ex. 1006, 2−3, 5, 7; Ex. 1011, 26, 392”) includes page 2 of
Exhibit 1006.
We are capable of distinguishing an Office generated file wrapper
cover (Ex. 1006, 2) from a transmittal form, which is an Office form
(PTO/SB/05) submitted by the applicant with certain check boxes filled in
(Ex. 1006, 3, 5). Notably, the “CONTINUING DOMESTIC DATA” section
of the file wrapper cover (Ex. 1006, 2) of the ’882 application that issued as
Chu ’330 shows that the priority claims “VERIFIED” by the Office include
Chu ’886. Clearly, the citation to page 2 of Exhibit 1006 is to provide
support for the language “Chu ’330 claims priority to Chu ’886” in our
Decision. Dec. 10. Moreover, when the Decision discussed the applicant’s
transmittal form, our citation includes only pages 3 and 5 of Exhibit 1006.
Id. at 17.
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 ’912 application. Id. at
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
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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.
In addition, as discussed above, the incorporation by reference
statement of the applicant’s prior applications in the transmittal form
together with the benefit claims the first sentence of the Specification of the
’882 application (issued as Chu ’330) would have sufficiently identified the
applicant’s prior application (including Chu ’886) as the referenced prior
applications, distinguishing them from all other documents. Ex. 1006, 3, 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
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Petitioner’s arguments that we overlooked or misapprehended the arguments
that Chu ’330 did not properly incorporate the subject matter of Chu ’886,
and that we misapprehended the Office generated file wrapper cover as the
applicant’s transmittal form.
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