ACQIS LLC

Patent Trials and Appeals Board

Jan 14, 2022

IPR2021-01102 (P.T.A.B. Jan. 14, 2022)

Trials@uspto.gov Paper 9 571-272-7822 Date: January 14, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ INTEL CORPORATION, Petitioner, v. ACQIS LLC, Patent Owner. ____________ IPR2021-01102 Patent RE44,739 E _______________ Before JONI Y. CHANG, PATRICK M. BOUCHER, and ROBERT J. WEINSCHENK, Administrative Patent Judges. Opinion for the Board filed PER CURIAM. Opinion Dissenting filed by Administrative Patent Judge WEINSCHENK. PER CURIAM. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314 IPR2021-01102 Patent RE44,739 E 2 I. INTRODUCTION A. Background and Summary Intel Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting an inter partes review of claims 14-36 (“the challenged claims”) of U.S. Patent No. RE44,739 E (Ex. 1001, “the ’739 patent”). ACQIS LLC (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to the Petition. With our authorization, Petitioner filed a Reply (Paper 7, “Reply”) to the Preliminary Response, and Patent Owner filed a Sur-reply (Paper 8, “Sur-reply”) to the Reply. An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). In determining whether to institute an inter partes review, we “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). After considering the parties’ arguments and evidence, we exercise our discretion under § 325(d) to deny the Petition. B. Real Parties in Interest Petitioner identifies the following real parties in interest: 1) Intel Corporation.; 2) Lenovo Group Ltd.; 3) Lenovo PC HK Limited; 4) LCFC (HEFEI) Electronics Technology Co., Ltd.; 5) Lenovo Information Products (Shenzhen) Co., Ltd.; 6) Lenovo (Beijing) Information Technology Ltd.; and 7) Lenovo Centro Tecnológico S. de R.L. de C.V. Pet. 8. Patent Owner identifies itself as the only real party in interest. Paper 5, 2. IPR2021-01102 Patent RE44,739 E 3 C. Related Matters The parties indicate that the ’739 patent is the subject of the following district court cases: 1) ACQIS LLC v. MITAC Holdings Corp., No. 6:20-cv- 00962 (W.D. Tex.); 2) ACQIS LLC v. Inventec Corp., No. 6:20-cv-00965 (W.D. Tex.); 3) ACQIS LLC v. ASUSTek Computer Inc., No. 6:20-cv-00966 (W.D. Tex.); and 4) ACQIS LLC v. Lenovo Group Ltd., No. 6:20-cv-00967 (W.D. Tex.). Pet. 1; Paper 5, 2. D. The ’739 Patent The ’739 patent relates to an interconnection between two physically separate units of a personal computer system. Ex. 1001, 14:5−7. The first unit, an attached computing module, contains the core computing power and environment for a computer user. Id. at 14:7−9. The second unit, a peripheral console, contains the power supply and primary input and output devices for the computer system. Id. at 14:9−11. The units are coupled together to form a fully functional personal computer system. Id. at 14:11−13. Figure 13 of the ’739 patent is reproduced below. IPR2021-01102 Patent RE44,739 E 4 Figure 13 shows a block diagram of a computer system using an interface. Id. at 18:39−40. Specifically, computer system 1300 includes attached computer module (“ACM”) 1305 and peripheral console 1310. Id. at 18:41−46. ACM 1305 and peripheral console 1310 are interfaced through exchange interface system (“XIS”) bus 1315. Id. at 18:46−48. XIS bus 1315 includes power bus 1316, video bus 1317 and peripheral bus (“XPBus”) 1318, which also is referred to as an interface channel. Id. at 18:48−51. E. Illustrative Claim Of the challenged claims, claims 14, 18, 22, 26, 29, and 33 are independent. Claim 14 is reproduced below. 14. A computer, comprising: a central processing unit directly connected to a first Low Voltage Differential Signal (LVDS) channel comprising two IPR2021-01102 Patent RE44,739 E 5 unidirectional, differential signal pairs to transmit Universal Serial Bus (USB) Protocol data in opposite directions; a main memory directly connected to the central processing unit; a connector to couple to an external cable; and a second LVDS channel comprising two unidirectional, differential signal pairs to transmit data in opposite directions, wherein the second LVDS channel couples to the connector. Ex. 1001, 22:45-57. F. Evidence Petitioner submits the following evidence: Evidence Exhibit No. Declaration of Dr. Bill Lin (“Lin Declaration”) 1002 Chu, US 6,345,330 B2, issued Feb. 5, 2002 (“Chu ’330”) 1003 Cupps, US 2003/0135771 A1, published July 17, 2003 (“Cupps”) 1004 G. Asserted Grounds Petitioner asserts that the challenged claims are unpatentable on the following grounds: Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis 14-36 103 Chu ’330, Cupps II. ANALYSIS A. 35 U.S.C. § 325(d) Petitioner relies on Chu ’330 in the only asserted ground. Pet. 36-37. Petitioner asserts that Chu ’330 issued on February 5, 2002, and is prior art to the ’739 patent under 35 U.S.C. § 102(b). Id. at 10. The ’739 patent claims priority to an application filed on May 14, 1999, i.e., before Chu ’330 issued on February 5, 2002. Ex. 1001, code (64). But, according to IPR2021-01102 Patent RE44,739 E 6 Petitioner, Chu ’330 is prior art because the ’739 patent is not entitled to a priority date before June 17, 2011. Pet. 18. Petitioner contends that we should not exercise our discretion to deny the Petition under § 325(d). Id. at 123-124. Petitioner argues that although Chu ’330 “appears on the voluminous list of references considered by” the United States Patent and Trademark Office (“USPTO” or “Office”), no Examiner cited Chu ’330 “against any claims of [the ’739 patent] or any of its related applications.” Id. at 123. Petitioner also argues that “the Examiner did not determine the proper priority date of any of the challenged claims during prosecution.” Id. According to Petitioner, “[t]he Examiner simply accepted the applicant’s representation that [the ’739 patent] properly incorporated by reference the materials found only in” U.S. Provisional Application No. 60/083,886 (“Chu ’886”). Id. Petitioner further argues that “even wrongly assuming the Examiner made an implicit determination regarding the priority date, such determination would have been materially erroneous.” Id. at 124. Patent Owner argues that we should exercise our discretion to deny the Petition under § 325(d). Prelim. Resp. 10-17. According to Patent Owner, the Office already considered and rejected Petitioner’s argument regarding the incorporation by reference of Chu ’886. Id. at 11-16. Patent Owner also argues that Petitioner does not demonstrate that the Office erred in a manner material to patentability when it previously considered and rejected Petitioner’s argument. Id. at 16-17. Section 325(d) provides that in determining whether to institute an inter partes review, we “may take into account whether, and reject the petition or request because, the same or substantially the same prior art or IPR2021-01102 Patent RE44,739 E 7 arguments previously were presented to the Office.” To determine whether to deny institution under § 325(d), we use the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (footnote omitted). For the reasons discussed below, we exercise our discretion under § 325(d) to deny the Petition. 1. Whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office We first determine whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, Paper 6 at 8. Patent Owner provides a figure (reproduced below with color annotations added) showing the timeline of the priority chain of the ’739 patent (light-blue filled box) and other related applications, including Chu ’886 (yellow) and U.S. Application No. 09/149,882 (“the ’882 application”), which issued as Chu ’330 (red). Prelim. Resp. 7. IPR2021-01102 Patent RE44,739 E 8 The annotated version of Patent Owner’s figure above shows the filing dates of the applications in the priority chain of the ’739 patent and other related applications. Id. The ’739 patent issued from U.S. Application No. 13/899,484 (“the ’484 application”), which claims priority to U.S. Application No. 11/056,604 (“the ’604 application”) (dark blue) filed on February 10, 2005, through a chain of continuation applications. Ex. 1001, code (63). The ’604 application was a reissue application of U.S. Patent No. 6,643,777 (“the ’777 patent”) that issued from U.S. Application No. 09/312,199 (“the ’199 application”) (dark purple) filed on May 14, 1999. Ex. 1013, code (64). U.S. Application No. 12/561,138 (“the ’138 application”) (green) filed on September 16, 2009, now U.S. Patent No. RE42,984 E (“the ’984 patent”), also claims benefit to the ’604 application. Ex. 1008, code (63). The ’138 application included an amendment on June 17, 2011, that added Figures 8 and 9 and corresponding disclosure from Chu ’886. Ex. 1009, 363. Petitioner argues in this case that the ’739 patent is not entitled to a priority date before June 17, 2011, because the ’984 patent’s parent IPR2021-01102 Patent RE44,739 E 9 applications did not properly incorporate by reference Chu ’886, and thus the amendments adding subject matter from Chu ’886 introduced new matter. Pet. 18−33. As discussed above, Petitioner argues that “the Examiner did not determine the proper priority date of any of the challenged claims during prosecution,” because “[t]he Examiner simply accepted the applicant’s representation that [the ’739 patent] properly incorporated by reference the materials found only in” Chu ’886. Id. at 123. We disagree. During prosecution of the ’138 application, the applicant asserted that the amendments adding subject matter from Chu ’886 were proper because the ’777 patent incorporated by reference the ’882 application, which incorporated by reference Chu ’886. Ex. 1009, 363. In fact, the prosecution history of the ’138 application shows that the applicant directed the Examiner to the incorporation by reference statement in the transmittal form of the ’882 application as support for the amendments. Id. The applicant argued that “the ’777 patent incorporated by reference U.S. Application No. 09/149,882, now issued as U.S. Patent No. 6,345,330 (the ‘’330 patent’), which, in turn, claimed the benefit of and incorporated by reference U.S. Provisional Application No. 60/083,886 . . . (See checked incorporation by reference box in utility patent application transmittal of U.S. Application No. 09/149,882 filed on September 8, 1998).” Id. The Examiner did not object to the amendments adding subject matter from Chu ’886 as new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1. See id. at 446. Instead, the Examiner entered the amendments and subsequently allowed the ’138 application with the subject matter added from Chu ’886. Id. Further, the applicant amended each subsequent application in the ’739 patent’s priority chain, including the application that IPR2021-01102 Patent RE44,739 E 10 issued as the ’739 patent, to include the same figures and disclosure from Chu ’886. See, e.g., Ex. 1006, 154. In each application, the Examiner approved and entered the amendment. See, e.g., id. at 199-203, 228. In addition, Samsung Electronics Co., Ltd. (“Samsung”) previously presented substantially the same arguments to the Office. Specifically, Samsung argued that amendments adding subject matter from Chu ’886 to an application in the challenged patent’s priority chain introduced new matter and that the ’882 application “did not properly incorporate the subject matter of Chu ’886” in the following inter partes review proceedings: (1) Samsung Electronics Co., Ltd. v. ACQIS LLC, IPR2021-00604, Paper 1 at 9−18; (2) Samsung Electronics Co., Ltd. v. ACQIS LLC, IPR2021-00605, Paper 1 at 9−17; (3) Samsung Electronics Co., Ltd. v. ACQIS LLC, IPR2021-00606, Paper 1 at 8−17; (4) Samsung Electronics Co., Ltd. v. ACQIS LLC, IPR2021-00607, Paper 1 at 9−17; and (5) Samsung Electronics Co., Ltd. v. ACQIS LLC, IPR2021-00608, Paper 1 at 10−17. Upon consideration of Samsung’s arguments, the panel in each of the above proceedings denied Samsung’s petition under § 325(d). See, e.g., Samsung Electronics Co., Ltd. v. ACQIS LLC, IPR2021-00607, Paper 7 at 22 (PTAB Oct. 7, 2021). The panel explained that the same or substantially the same arguments previously were presented to the Office, and Samsung failed to show that the Examiner erred in entering the amendments or in IPR2021-01102 Patent RE44,739 E 11 determining that the ’882 application incorporated by reference Chu ’886. See, e.g., id. at 6−22. For the foregoing reasons, we determine that the Petition presents substantially the same arguments that previously were presented to the Office. 2. Whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims Because the first part of the Advanced Bionics framework is satisfied, we next determine whether Petitioner has demonstrated that the Office erred in a manner material to the patentability of the 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. As discussed above, Petitioner argues that the ’739 patent is not entitled to a priority date before June 17, 2011, because the ’984 patent’s parent applications did not properly incorporate by reference Chu ’886, and thus the amendments adding subject matter from Chu ’886 introduced new matter. Pet. 18−33. Petitioner does not dispute that the ’199 application incorporated by reference the ’882 application. Id. at 25−26; Ex. 1007, 5:9−13. Petitioner also does not dispute that each subsequent application in the priority chain identified each preceding application as required by 35 U.S.C. § 120, and incorporated by reference the prior applications and the ’882 application. See, e.g., Ex. 1001, codes (63), (64), 1:25−31, 5:67−6:4; Ex. 1008, codes (63), (64), 1:18−21, 5:50−54; Ex. 1013, code (64), 5:19−23. IPR2021-01102 Patent RE44,739 E 12 Petitioner argues only that the ’882 application “never incorporated by reference” Chu ’886. Pet. 28−32. Thus, under the second part of the Advanced Bionics framework, Petitioner must show that the Examiner erred in determining that the ’882 application incorporated by reference Chu ’886. a. Incorporation by reference of Chu ’886 To support its argument that the ’882 application does not incorporate by reference Chu ’886, Petitioner contends that the transmittal form filed in the ’882 application does not identify Chu ’886. Id. at 28−29. The transmittal form is reproduced below with Petitioner’s annotations. Id. at 29; Ex. 1011, 81. IPR2021-01102 Patent RE44,739 E 13 The above annotated figure shows the transmittal form filed in the ’882 application. Pet. 29; Ex. 1011, 81. Petitioner argues that nothing in the transmittal form above identifies “with detailed particularity what specific material” the ’882 application incorporates by reference. Pet. 29 (quoting Hollmer v. Harari, 681 F.3d, 1351, 1357 (Fed. Cir. 2012) (“Hollmer”); citing Ex. 1002 ¶ 71). Petitioner also asserts that “[B]ox 5 titled ‘Incorporation By Reference’ states that it is only ‘useable if Box 4b is checked[,]’ . . . but . . . Box 4b is not even checked,” and that “[e]ven if Box 4b were checked, Box 4b would have been inoperative because its use was limited ‘for continuation/divisional with [B]ox 17 completed.’” Id. at 29 n.5. Petitioner’s arguments and Dr. Bill Lin’s testimony focus on the transmittal form alone. Id. at 28−29; Ex. 1002 ¶ 71. But, in Hollmer, the Federal Circuit explained that an incorporation by reference analysis includes “the four corners of the application,” and thus is not limited to the transmittal form. Hollmer, 681 F.3d at 1358. Further, the facts in this case are distinguishable from the facts in Hollmer. Hollmer involved intervening applications that identified a referenced application with the title of the invention and the language “filed on the same day as the present application,” but the intervening applications were not “filed on the same day” as the referenced application and at least two other applications by the same inventors had the same title as that referenced application. Id. 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. IPR2021-01102 Patent RE44,739 E 14 Unlike Hollmer, the ’882 application 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. In particular, the ’882 application included a transmittal form with the following “Incorporation By Reference” box checked: Incorporation By Reference (useable if Box 4b is checked) The entire disclosure of the prior application, from which a copy of the oath or declaration is supplied under Box 4b, is considered as being part of the disclosure of the accompanying application and is hereby incorporated by reference therein. Ex. 1011, 81 (emphases added). This checked box on the transmittal form shows that the applicant intended to incorporate by reference the prior applications, in their entirety, when filing the ’882 application. Id. The applicant also clearly identified the prior applications in the ’882 application. Notably, the first sentence of the Specification of the ’882 application states that “[t]his application claims any and all benefits as provided by law of U.S. Provisional Application No. 60/083,886 filed May 1, 1998” (Chu ’886) “and of U.S. Provisional Application No. 60/092,706 filed on July 14, 1998.” Id. at 83. The Office accepted the benefit claim 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 initialing the file wrapper cover. Id. at 78. Moreover, the Cross-Reference to Related Applications Section of the ’882 application listed only these two prior applications and another concurrently-filed application. Id. at 83. A reasonably skilled artisan would have recognized that the applicant intended to incorporate the prior applications (including Chu ’886) at the time of filing the ’882 application. The incorporation by reference language IPR2021-01102 Patent RE44,739 E 15 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. A reasonably skilled artisan also would not have ignored the applicant’s incorporation by reference statement just because the applicant did not check Box 4b or because the applicant did not file a continuation or divisional application. As the Federal Circuit 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, 1331 (Fed. Cir. 2011); Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1283 (Fed. Cir. 2000)); In re Fouche, 439 F.2d 1237, 1239 (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.”). Further, the evidence of record shows that two different Examiners on three separate occasions considered the transmittal form together with the benefit claims and recognized that the applicant incorporated by reference Chu ’886, including: (1) when the applicant filed a preliminary amendment in U.S. Application No. 13/087,912 (“the ’912 application”) that added Figures 8 and 9 and corresponding disclosure from Chu ’886 as Figures 8A and 8B and corresponding disclosure in the ’912 application, in which the applicant IPR2021-01102 Patent RE44,739 E 16 directed the Examiner to the transmittal form in the ’882 application as support for the amendment (Ex. 2001, 26); (2) when the applicant filed another amendment on December 16, 2011, in the ’912 application that added Figures 10 and 16 and corresponding disclosure from Chu ’886 as Figures 8C and 24 and corresponding disclosure in the ’912 application, in which the applicant also directed the Examiner to the transmittal form in the ’882 application as support for this amendment (id. at 392); and (3) when the applicant filed a similar amendment in the ’138 application, directing the Examiner to the transmittal form in the ’882 application as support for the amendment (Ex. 1009, 363). The Examiner in each of these 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. See Ex. 1009, 446; Ex. 2001, 430. Instead, the Examiner entered the amendments and subsequently allowed the applications with the subject matter added from Chu ’886. Ex. 1009, 446; Ex. 2001, 430. The incorporation by reference statement in the transmittal form also was never objected to by any Examiner during prosecution of the ’882 application, the ’199 application (the ’777 patent), and all the reissue applications in the priority chain of the ’739 patent, as well as all the continuation applications in the priority chain of U.S. Patent No. 9,703,750 (“the ’750 patent”), as noted in Samsung Electronics Co., Ltd. v. ACQIS LLC, IPR2021-00604, Paper 7 at 18 (PTAB Aug. 9, 2021). Moreover, none of the Examiners required the applicant to change its benefit claims from IPR2021-01102 Patent RE44,739 E 17 “continuation” to “continuation-in-part” in those eleven continuation applications. For the reasons discussed above, the ’882 application identified Chu ’886 with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Accordingly, we determine that Petitioner fails to show that the Examiner erred in determining that the ’882 application (issued as Chu ’330) incorporated Chu ’886 by reference. b. Transmittal form Petitioner argues that “[e]ven if the transmittal form of [the ’882 application] included a statement that purportedly incorporated by reference [Chu ’886] . . . that statement would be inoperative because a person of ordinary skill’s analysis of what a patent incorporates is limited to the four corners of the patent itself.” Pet. 30 (emphasis added). According to Petitioner, a person of ordinary skill in the art “would not have known if a patent incorporates another document based on a statement buried in a transmittal form.” Id. 30-31 (emphasis added). Petitioner contends that “any incorporation by reference statement must have appeared in [the ’882 application] itself.” Id. at 31. We disagree. An incorporation by reference analysis includes “the four corners of the application.” Hollmer, 681 F.3d at 1358 (emphasis added). And a transmittal form is a part of an application. 37 C.F.R. § 1.77(a) (1998) (“The elements of the application, if applicable, should appear in the following order: (1) Utility Application Transmittal Form . . . .”). In fact, the Federal Circuit and other courts have considered a transmittal form in an incorporation by reference analysis. See, e.g., Harari IPR2021-01102 Patent RE44,739 E 18 v. Hollmer, 602 F.3d 1348, 1352−53 (Fed. Cir. 2010) (“Harari I”); Hollmer, 681 F.3d at 1353−54; Pregis Corp. v. Doll, 698 F. Supp. 2d 584, 598−599 (E.D. Va. 2010). Moreover, Petitioner admits that an applicant filing a continuation or divisional application could have used the USPTO transmittal form, which includes a check box for incorporating by reference a prior application. Pet. 29 n.5. c. Priority claim Petitioner argues that the statement “[t]his application claims any and all benefits as provided by law of U.S. Provisional Application No. 60/083,886 filed May 1, 1998” that appears in the ’882 application “is at best a priority claim to [Chu ’886] that is distinct from an incorporation by reference.” Pet. 31-32 (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.”)). Petitioner’s reliance on de Seversky is misplaced. In de Seversky, “the parent application . . . contain[ed] 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 the prior applications. Ex. 1011, 81. Petitioner’s argument fails to consider this incorporation by reference statement together with the benefit claims in the first sentence of the Specification that clearly identifies the applicant’s prior applications (including Chu ’886). Id. at 81, 83. 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. In IPR2021-01102 Patent RE44,739 E 19 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. d. Incorporation by reference standard Petitioner argues that “[t]he reasonable examiner standard does not apply to the analysis of [the ’739 patent’s] priority chain because these patents have issued.” Pet. 27 n.4 (citing Harari I, 602 F.3d at 1348; Hollmer, 681 F.3d at 1356). According to Petitioner, “[t]he incorporation by reference is proper only if the host document ‘identif[ies] with detailed particularity what specific material it incorporates to a person of ordinary skill’ and ‘directly lead[s] one of ordinary skill’ to the document . . . intended to be incorporated.” Id. at 27 (quoting Hollmer, 681 F.3d at 1357). We are not persuaded by Petitioner’s argument. As discussed above, Petitioner has the burden to show that the Examiner erred in determining that the ’882 application incorporated by reference Chu ’886. Under Advanced Bionics, “[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. At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics, Paper 6 at 9. But Petitioner does not provide any meaningful differences between applying the “reasonable examiner” standard and applying the “POSITA” standard to the particular facts in this proceeding under the Advanced Bionics framework. See Pet. 26-32; Reply 1-3. In any event, even applying the “POSITA” standard here, we find that Petitioner fails to show that the Examiner erred in determining that the ’882 IPR2021-01102 Patent RE44,739 E 20 application incorporated Chu ’886 by reference. As discussed above, unlike Hollmer where the incorporation language did not directly lead one of ordinary skill in the art to the referenced application because it presented several potential documents for incorporation, the ’882 application provided an incorporation by reference statement of the applicant’s prior applications and clearly identified the applicant’s prior applications (including Chu ’886) in the first sentence of the Specification. See Section II.A.2.a. 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 provisional applications (including Chu ’886) as the referenced prior applications. See Husky Injection, 838 F.3d at 1248. In short, the ’882 application identified Chu ’886 with particularity and would have directly led an ordinarily skilled artisan to the document intended to be incorporated. Hollmer, 681 F.3d at 1357−58. Accordingly, even under the “POSITA” standard, we find that Petitioner fails to show that the Examiner erred in determining that the ’882 application (issued as Chu ’330) incorporated Chu ’886 by reference. 3. Summary We determine, on this record, that substantially the same arguments previously were presented to the Office, and Petitioner does not demonstrate that the Office erred in a manner material to the patentability of challenged claims. As a result, we exercise our discretion under § 325(d) to deny the Petition in this case. IPR2021-01102 Patent RE44,739 E 21 III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny the Petition. IV. ORDER It is hereby ORDERED that the Petition is denied, and no trial is instituted. IPR2021-01102 Patent RE44,739 E 1 UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ INTEL CORPORATION, Petitioner, v. ACQIS LLC, Patent Owner. ____________ IPR2021-01102 Patent RE44,739 E _______________ Before JONI Y. CHANG, PATRICK M. BOUCHER, and ROBERT J. WEINSCHENK, Administrative Patent Judges. WEINSCHENK, Administrative Patent Judge, dissenting. I respectfully dissent from the majority’s decision denying institution of an inter partes review. I am not persuaded, on this record, that the ’882 application identifies “with detailed particularity” that it incorporates by reference Chu ’886. See Hollmer v. Harari, 681 F.3d 1351, 1357 (Fed. Cir. 2012). The ’882 application’s transmittal form states that for a “continuation/divisional,” an applicant may check Box 4b and provide a copy of an oath or declaration “from a prior application.” Ex. 1011, 81. The applicant must also complete Box 17 by providing the application number of IPR2021-01102 Patent RE44,739 E 2 the “prior application.” Id. (“with Box 17 completed”). If an applicant checks Box 4b and completes Box 17, the applicant may check Box 5 to incorporate by reference “[t]he entire disclosure of the prior application, from which a copy of the oath or declaration is supplied under Box 4b.” Id. (“useable if Box 4b is checked”). In the ’882 application, the applicant checked Box 5, but did not check Box 4b or provide a copy of an oath or declaration from the prior application that purportedly is incorporated by reference. See id. The applicant also did not identify in Box 17 the prior application that purportedly is incorporated by reference. See id. I recognize that the first page of the ’882 application’s specification claims the benefit of Chu ’886. Id. at 83. But Boxes 4b and 5 on the transmittal form are for use with a “continuation/divisional” application and only incorporate by reference “the prior application, from which a copy of the oath or declaration is supplied.” Id. at 81. The ’882 application is not a continuation or divisional of Chu ’886, and the applicant did not provide a copy of an oath or declaration from Chu ’886.1 See Ex. 1003, code (60); Ex. 1011, 81. Thus, in my view, the incorporation by reference statement in the ’882 application’s transmittal form is ambiguous and does not “directly 1 Because the ’882 application is not a continuation or divisional of Chu ’886, I question whether this particular transmittal form can be used to incorporate by reference Chu ’886. See MPEP § 201.06(c) (9th ed. rev. 10.2019 June 2020) (“Note that for applications filed prior to September 21, 2004, if applicants used a former version of the transmittal letter form provided by the USPTO, the incorporation by reference statement could only be relied upon to add inadvertently omitted material to the continuation or divisional application.”) (emphasis added); MPEP § 201.06(c) (7th ed. July 1998) (“The inclusion of this incorporation by reference . . . will permit an applicant to amend the continuing application to include any subject matter in such prior application(s).”) (emphasis added). IPR2021-01102 Patent RE44,739 E 3 lead” a person of ordinary skill in the art to Chu ’886. See Hollmer, 681 F.3d at 1358 (“[P]atent draftsmanship is an exacting art, and no less care is required in drafting an incorporation by reference statement than in any other aspect of a patent application.”). As a result, even if substantially the same argument previously was presented to the Office, I believe Petitioner shows sufficiently that the Office erred in a manner material to patentability. For that reason, I would not exercise discretion under 35 U.S.C. § 325(d) to deny the Petition.2 2 I previously joined the majority in IPR2021-01099 that denied institution under § 325(d) for similar reasons as the majority in this case. Intel Corp. v. ACQIS LLC, IPR2021-01099, Paper 9 at 6-24 (PTAB Dec. 2, 2021). I note that, in that case, Petitioner filed a request for rehearing that currently is pending. IPR2021-01102 Patent RE44,739 E 4 PETITIONER: Yung-Hoon Ha Theodoros Konstantakopoulos Christian Dorman DESMARAIS LLP yha@desmaraisllp.com tkonstantakopoulos@desmaraisllp.com cdorman@desmaraisllp.com PATENT OWNER: Mark Miller Gina Cornelio Case Collard DORSEY & WHITNEY LLP miller.mark@dorsey.com cornelio.gina@dorsey.com collard.case@dorsey.com