ACQIS LLC

Patent Trials and Appeals Board

Dec 8, 2021

IPR2021-00608 (P.T.A.B. Dec. 8, 2021)

Trials@uspto.gov Paper 10
571-272-7822 Date: December 8, 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.
____________

IPR2021-00608
Patent RE44,654 E
____________

Before THU A. DANG, JONI Y. CHANG, and PATRICK M. BOUCHER,
Administrative Patent Judges.

DANG, 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 20–28, 35, and 36 (“the challenged claims”) of
U.S. Patent No. RE44,654 E (Ex. 1001, “the ’654 patent”). Paper 1 (“Pet.”),
1. ACQIS LLC (“Patent Owner”) filed a Preliminary Response (Paper 7,
“Prelim. Resp.”). In an August 12, 2021 email, Petitioner identified pages in
the Preliminary Responses that, according to Petitioner, contain
mischaracterization of fact and law. Upon consideration of the parties’
contentions and evidence, we exercised our discretion under 35 U.S.C.
§ 325(d) to deny institution. Paper 8 (“Decision” or “Dec.”). Subsequently,
Petitioner filed a Request for Rehearing of the Decision. Paper 9
(“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). The party 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
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Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 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 of the five asserted ground, and U.S. Provisional
Application 60/083,886 (“Chu ’886”) in three of the asserted grounds.
Pet. 8. According to Petitioner, the United States Patent and Trademark
Office (“USPTO” or “Office”) erred in overlooking Chu ’330 and Chu ’886.
Id. at 7–8. To support its contention, Petitioner argues that “Chu ’886 was
not properly incorporated by reference into the applications of the ’654
Patent family” (id. at 8), and thus, “the earliest priority date to which the
claims relying on the Chu ’886 disclosure are entitled is November 10,
2011.” Id. Petitioner also argues that “[t]he Examiner erred by not realizing
that Chu ’330 and Chu ’886 qualify as prior art under 35 U.S.C. § 102(b)
and are material to the patentability of the ’654 Patent claims.” Id.
In the Decision, after applying the two-part framework set forth in
Advanced Bionics, we exercised our discretion under 35 U.S.C. § 325(d) and
determined not to institute inter partes review. Dec. 7−26 (citing Advanced
Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh, IPR2019-
01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential)). As to Part 1 of
the Advanced Bionics framework, we determined that the same or
substantially the same arguments were presented previously to the Office.
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Id. at 10−13. Under Part 2 of the Advanced Bionics framework, we
determined that Petitioner failed 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 ’654 patent. Id.
at 14−26.
In its Rehearing Request, Petitioner does not challenge our
determination as to Part 1 of the Advanced Bionics framework. See
generally Req. Reh’g. In particular, Petitioner does not dispute that the
Office had considered previously the following issues: (1) whether
Chu ’886 were properly incorporated by reference in the ’654 patent’s
priority chain (Dec. 15–19), and (2) whether Chu ’330 properly incorporated
by reference Chu ’886. Id. at 19−24.
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[, an intermediate application in the ’654 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 2 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 prior art under 35 U.S.C. § 102(b) prior art and are
material to the patentability of the claims in the ’654 Patent,” as Petitioner
alleges in its § 325(d) analysis. Pet. 7–8, 10−17. Upon consideration of
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Petitioner’s Request for Rehearing, we are not persuaded by Petitioner’s
arguments of Examiner error.
We address each of Petitioner’s arguments in turn below.
A. The Board Did Not Overlook or Misapprehend Petitioner’s Argument
That the Challenged Claims Have a Priority Date of November 10,
2011
According to Petitioner, “essential subject matter from Chu ’886 was
improperly incorporated by reference prior to November 10, 2011.” Req.
Reh’g 1−2. Petitioner contends 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. Id. at 3–4. Petitioner contends that the Decision denying
institution misapprehends Ex parte Maziere, 27 USPQ2d 1705, 1706−07
(BPAI 1993) because 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. at 7. According to Petitioner, the Board either
misapprehended or overlooked Petitioner’s arguments and underlying
support “as the Institution Decision is focused primarily on the MPEP’s
guidelines for an Examiner,” wherein “the MPEP does not have the force of
law.” Id. at 6–7 (quoting Nat. Alternatives Int’l, Inc. v. Iancu, 904 F.3d
1375, 1382 (Fed. Cir. 2018); citing Nomadix, Inc. v. Second Rule LLC, 2009
WL 10668158, at *23−24 (C.D. Cal. Jan. 16, 2009)).
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Moreover, Petitioner contends that “the Petition established that under
existing Federal Circuit case law referencing of essential material through
‘nested’ referencing is specifically prohibited.” Req. Reh’g 3–4. According
to Petitioner, “the Board misapprehended the case law cited in the
[Preliminary Response (‘POPR’)], specifically the Droplets, Inc v.
E*TRADE Bank, 887 F.3d 1309 (Fed. Cir. 2018) decision as cited in the
POPR.” Id. at 5.
1. Petitioner’s contention is unavailing that essential material can
be incorporated by reference only by way of U.S. patent or U.S.
patent application publication, which “does not itself
incorporate such essential material by reference” as set forth in
37 C.F.R. § 1.57(c).
We find Petitioner’s contentions unavailing that, “by statute,” 37
C.F.R. § 1.57(c), essential material can be incorporated by reference only by
way of a U.S. patent or U.S. patent application publication. Req. Reh’g 3–4.
We also find unavailing Petitioner’s contention that the Decision denying
institution misapprehends Maziere because Maziere “predates the current
§ 1.57,” “concerns priority under Section 120,” and “has nothing to do with
‘nested’ incorporation by reference.” Id. at 7. Further, we also do not find
availing Petitioner’s contention that “the MPEP does not have the force of
law.” Id. at 6–7.
Contrary to Petitioner’s contentions, 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
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September 8, 1998, and issued as Chu ’330 on February 5, 2002. Ex. 1005,
codes (21), (22), (45), (60), 6:1–7. The ’654 patent, which incorporated the
’882 application by reference, is a reissue of Application No. 09/312,199
(“the ’199 application”) filed on May 14, 1999, now U.S. Patent No.
6,634,777 (“the ’777 patent”), issued on November 4, 2003. Ex. 1001, codes
(63), (64); 5:63–67. Both the ’882 application (issued as Chu ’330) and the
’199 application (reissued as the ’654 patent) were filed and issued as
patents prior to the effective date, September 21, 2004, of 37 C.F.R. § 1.57.
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 of those applications
or issuance of those patents that incorporated by reference Chu ’886 and the
’882 application. Pet. 7–8, 10−17; 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.
Further, we do not agree with Petitioner’s contentions that we should
ignore Maziere since it predates the current 37 C.F.R. § 1.57 and “has
nothing to do with ‘nested’ incorporation by reference” (Req. Reh’g 7), or
the guidance set forth in the MPEP since it merely provides guidelines for an
Examiner and does not have the force of law. Id. at 6–7.
In particular, Maziere is cited in MPEP § 608.01(p), even after the
implementation of 37 C.F.R. § 1.57. 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
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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 (Chu ’330). Pet. 7–8, 10−17; Req. Reh’g 1−12.
In fact, in its own Petition, Petitioner relied on the MPEP, in
particular, 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 ’654 patent, and that “[t]he ’654 Patent did not properly
incorporate the subject matter from Chu ’886.” Pet. 11−12. In our
Decision, we addressed those arguments presented in the Petition, wherein
we determined 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. 15.
We also explained that MPEP § 608.01(p) sets forth “a definitive distinction
between those applications which are relied on for priority [under Subpart
II], and those applications that are under examination for issuance [under
Subpart I].” Id. at 15−16. We further noted that MPEP § 608.01(p), Subpart
II, repeatedly explains that the prohibition of referencing “essential material”
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in a “nested incorporation” does not apply to applications which are relied
on to establish an earlier effective filing date. Id. at 16−19.
As we pointed out in the Decision, 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.” See Dec. 16 (citing 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) or 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.
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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 priority chain of the ’768 patent.
Dec. 16−17.
Nevertheless, in the Decision, we also found that the ’768 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), which Petitioner appears to ignore.
Dec. 17−19.
For these reasons, we are not persuaded by Petitioner’s
aforementioned arguments that we misapprehended or overlooked 37 C.F.R.
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§ 1.57(c), MPEP, and Maziere. 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.
2. Petitioner has not established that the Board misapprehended or
overlooked Federal Circuit case law
Petitioner further argues that “Patent Owner mischaracterized the
Droplets decision as ‘acknowledging that claim amendments during
prosecution can transform nonessential material into essential material.’”
Req. Reh’g 5 (citing Droplets, 887 F.3d at 1309). According to Petitioner,
the full quote in Droplets is “[t]he MPEP also explains that claim
amendments during prosecution can transform nonessential material into
essential material, triggering a § 112 rejection if the incorporation fails to
satisfy § 1.57(c),” and thus, “[b]ecause the Petition and POPR establish that
the alleged incorporation failed to satisfy § 1.57(c) no earlier than November
10, 2011, this [partial quote] of Droplets is egregiously misleading.” Id.
(emphasis added by Petitioner to show the omitted language). Accordingly,
Petitioner contends that “the Board misapprehended the case law cited in the
POPR, specifically the Droplets . . . decision.” Id.
We disagree with Petitioner. Patent Owner did not mischaracterize,
and we did not misapprehend Droplets.
Omitting the phrase “triggering a § 112 rejection if the incorporation
fails to satisfy § 1.57(c)” does not amount to mischaracterization of
Droplets. See Droplets, 887 F.3d at 1319 (citing MPEP § 608.01(p) I.A.2
(Example 2)). Petitioner fails to recognize that, in Droplets, the Federal
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Circuit 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 are U.S. prior-filed patent
applications, not foreign or subsequently-filed applications. We note that
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 1−2.
In addition, Petitioner also fails to recognize that the phrase “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. 17−18. It is undisputed that “essential material” is expressly defined as
material 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,
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or acts for performing a recited function in a means or step for element as
required by 35 U.S.C. § 112, ¶ 6. See 37 C.F.R. § 1.57(c) (2004); MPEP
§ 608.01(p) (8th Ed. Aug. 2001); see also Pet. 11–12 (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 ’654 patent) that does not exist at the
time of filing an earlier application such as, for example, Application
No. 11/056,604 (the initial parent application in the ’654 patent’s priority
chain), filed on February 10, 2005. See Ex. 1001, code (63). Petitioner’s
position that “essential material” depends on the claims in the later-filed
application that issued as the ’654 patent and that all of the prior applications
in the ’654 patent priority chain must expressly disclosed the claimed subject
matter of the ’654 patent (Pet. 7–8, 10−17; Req. Reh’g 9−10) 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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3. Petitioner’s Rehearing Request improperly introduces new
arguments
Citing to Hollmer v Harari, 681 F.3d 1351 (Fed. Cir. 2012), 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” (Req. Reh’g 5–6); (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’” (id.) (quoting Hollmer, 681 F.3d at 1358); (3) “under Federal
Circuit law, a child application cannot benefit from an earlier application by
later fixing an incorporation by reference requirement” (id. at 6); 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.” Id.; see also id. at 9−10. Citing to NRG Energy, Inc. v. Midwest
Energy Emissions Corp, Petitioner further argues for the first time that “the
’654 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
(quoting NRG Energy, Inc. v. Midwest Energy Emissions Corp., IPR2020-
00832, Paper 17, 29−30 (PTAB Oct. 26, 2020)).
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Petitioner’s arguments are new arguments raised for the first time in
its Rehearing Request. Petitioner acknowledges that “NRG and Hollmer
were not cited in the Petition.” Req. Reh’g 10. Nevertheless, Petitioner
alleges that it “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, fn.1.
Petitioner’s new arguments in connection with Hollmer and NRG are
improper. As we discussed above, Patent Owner did not mischaracterize
and we did not misapprehend Droplets. It was not necessary to authorize
Petitioner to file a reply, as we were capable of determining whether Patent
Owner mischaracterizes Droplets. As discussed above, 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. 11–12;
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). It is Petitioner’s burden to identify
specifically all matters we misapprehended or overlooked in our Decision to
Institute. We could not have misapprehended or overlooked the new
arguments that were not presented in the record until after the Decision.
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Nevertheless, even if we were to consider Petitioner’s new arguments
in the Rehearing Request, 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 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.
As the “controlling Federal Circuit case law,” Petitioner’s new
arguments essentially rely on Hollmer since Petitioner does not provide any
other Federal Circuit case law regarding incorporation by reference to
support its arguments. See Req. Reh’g 5–6. However, 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, wherein at least two other
applications by the same inventors had the same title as that referenced
application. See Hollmer, 681 F.3d at 1353, 1358. Therefore, the Federal
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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.
In contrast, the ’882 application (issued as Chu ’330) here provided an
incorporation by reference statement (“Incorporation By Reference” box
checked) of the applicant’s prior applications in the application transmittal
form, and clearly identified Chu ’886 along with another of applicant’s prior
applications in the “Cross Reference to Related Applications” section 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 “Cross
Reference to Related Applications” section, in the first paragraph of the
Specification, would have directly led one of ordinary skill in the art to those
referenced prior applications, distinguishing them from all other documents
for incorporation. Moreover, the ’199 application (the initial application
issued as the ’777 patent) incorporated by reference the ’882 application,
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and each reissue application in the priority chain of the ’654 patent
incorporated by reference both the ’882 application and the prior
applications in the priority chain. Ex. 1008, 10; see also, e.g., Ex. 1001,
1:13−35, 9:66−10:2.
Furthermore, one of ordinary skill in the art would not have ignored
the incorporation by reference statement in the ’882 application’s application
transmittal form just because Box 4b was not checked or because the
applicant was not 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. 22−23), the evidence before
us showed that two different Examiners on three separate occasions
considered the application transmittal form together with the benefit claims
to the prior provisional applications, including Chu ’886, and recognized
that the applicant incorporated by reference those prior applications.
Ex. 1011, 15, 16, 26−28, 380–382, 392, 401–402; 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 Examiner in the ’912
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application, for example, entered the amendments and subsequently allowed
the application with the subject matter added from Chu ’886. Ex. 1011, 430
(Notice of Allowance and Fee(s) Due). The incorporation by reference
statement in the application transmittal form also was never objected to by
any Examiner during prosecution of the ’882 application, the prosecution of
the ’199 application (the ’777 patent) and all six reissue applications in the
priority chain of the ’654 patent, as well as during the prosecution of all 10
continuation applications in the priority chain of US Patent No. 9,529,768
(the ’768 patent), as noted in our Decision Denying Institution in IPR2021-
00605, Paper 7 at 19. Further, 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 here. Here, the ’882 application
clearly identified the referenced prior applications by their serial numbers
and common filing date in the “Cross Reference to Related Applications”
section of the Specification. 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
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suggests. Req. Reh’g 5−6. Hollmer also does not support Petitioner’s
position that “essential material” depends on the claims in the later-filed
application that issued as the ’654 patent and that all of the prior applications
in the priority chain of the ’654 patent must expressly disclose the claimed
subject matter of the ’654 patent. Pet. 7–8, 10−17; Req. Reh’g 1−12.
Therefore, we are not persuaded by Petitioner’s arguments in
connection with Hollmer, and its arguments that “essential subject matter
from Chu ’886 was improperly incorporated by reference prior to
November 10, 2011.” Pet. 10−12; Req. Reh’g 1−6. We are not persuaded
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 a November
10, 2011 preliminary amendment.” Req. Reh’g 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. See NRG,
Paper 17 at 13. Here, in contrast, 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. 10−26.
For the foregoing reasons, even if we were to consider Petitioner’s
new arguments, those arguments would be unavailing.
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B. The Board Did Not Overlook or Misapprehend the 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
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.”)).
Petitioner’s arguments are unavailing. Petitioner again improperly
introduces new arguments. In particular, Petitioner for the first time in its
Rehearing Request argues that “a claim of priority is not the same as
incorporation by reference.” Req. Reh’g 11–12.
In any event, Petitioner’s reliance on Seversky is misplaced here. In
Seversky, “the parent application . . . contains no ‘incorporation-by-
reference’ language whatsoever.” See Seversky, 474 F.2d at 674. In
contrast, the applicant in the ’882 application filed an application transmittal
form that includes an incorporation by reference statement of his prior
applications and the benefit claims in the “Cross Reference to Related
Applications” section in the first paragraph of the Specification clearly
identify the applicant’s prior applications (including Chu ’886). Ex. 1006, 3,
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5, 7. Petitioner fails to consider the incorporation by reference statement
together with the benefit claims.
As our Decision explained, 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. 14−26. Under the second part of the
Advanced Bionics framework, it is Petitioner’s 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.
Furthermore, as discussed above, the incorporation by reference
statement of the applicant’s prior applications in the application transmittal
form together with the “Cross Reference to Related Applications” section of
the Specification of the ’882 application (issued as Chu ’330) that identifies
the applicant’s prior applications including Chu ’886 would have directly led
one of ordinary skill in the art to those 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 application transmittal form of the ’882
application, as “[t]he incorporation standard relies only on the reasonably
skilled artisan and his or her ability to deduce from language, however
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imprecise, what a host document aims to incorporate.” Husky Injection, 838
F.3d at 1248; see also 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 reasonable skilled artisan to the
document intended to be incorporated.
As discussed, it is Petitioner’s burden to demonstrate that the Office
erred in a manner material to the patentability of challenged claims, but “[i]f
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.” Advanced Bionics, Paper 6 at 8. 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. 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.
IV. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated that we
abused our discretion. Consequently, Petitioner’s Request for Rehearing is
denied.

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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