ACQIS LLC

Patent Trials and Appeals Board

Sep 15, 2021

IPR2021-00608 (P.T.A.B. Sep. 15, 2021)

Trials@uspto.gov Paper 8
571-272-7822 Date: September 15, 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 Institution of Inter Partes Review
35 U.S.C. § 325(d)

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I. INTRODUCTION
A. Background
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.”).
Institution of an inter partes review may not be authorized “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).
For the reasons stated below, we decline to institute an inter partes review of
the challenged claims of the ’654 patent.
B. Related Matters
The parties indicate that the ’654 patent is involved in Acqis LLC v.
Samsung Electronics Co., Ltd., No. 2:20-cv-00295 (EDTX); Acqis LLC v.
MITAC Holding Corporation, et al., No. 6:20-cv-00962 (WDTX);
Acqis LLC v. Inventec Corporation, No. 6:20-cv-00965 (WDTX); Acqis
LLC v. ASUSTek Computer Inc., No. 6:20-cv-00966 (WDTX); Acqis LLC v.
Lenovo Group Ltd., et al., No. 6:20-cv-00967 (WDTX); and Acqis LLC v.
Wistron Corporation, et al., No. 6:20-cv-00968 (WDTX). Pet. 1;
Paper 4, 1–2.
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Petitioner also concurrently challenges claims of the ’654 patent in
IPR2021-00669.
C. The ’654 Patent
The ’654 patent, titled “Data Security Method and Device for
Computer Modules,” issued on December 17, 2013, from Application No.
13/649,078 (“the ’078 application”), filed on October 10, 2012, 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”), and which is a
continuation of Application No. 13/562,210 (“the ’210 application”), filed
on July 30, 2012, which in turn is a continuation of Application No.
13/294,108 (“the ’108 application”), filed on November 10, 2011, now U.S.
Patent No. RE43,602 E (“the ’602 patent”), which in turn is a continuation
of Application No. 12/561,138 (“the ’138 application”), filed on September
16, 2009, now U.S. Patent No. RE42,984 E (“the ’984 patent”), which in
turn is a continuation of Application No. 11/545,056 (“the ’056
application”), filed on October 6, 2006, now U.S. Patent No. RE43,171 E
(“the ’171 patent”), which then in turn is a continuation of Application No.
11/056,604 (“the ’604 application”), filed on February 10, 2005, now U.S.
Patent No. RE41,092 E (“the ’092 patent”). Ex. 1001, codes (54), (45), (22),
(64), (63).
The ’654 patent generally relates to a technique for securing a
computer module in a computer system, which includes providing “a
security system for an attached computer module (‘ACM’),” wherein the
ACM is “insert[ed] into a computer module bay (CMB) within a peripheral
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console to form a functional computer.” Ex. 1001, 3:43−49. An illustration
of one embodiment of the ’654 patent’s computer system is depicted in
Figure 13, reproduced below.

Figure 13 shows a block diagram of a computer system using an
interface. Id. at 18:35−36. As shown in Figure 13, computer system 1300
includes ACM 1305 and peripheral console 1310. Id. at 18:37−42. ACM
1305 and peripheral console 1310 are interfaced through exchange interface
system (XIS) bus 1315. Id. at 18:42−44. XIS bus 1315, which is also
referred to as an interface channel, includes power bus 1316, video bus 1317
and peripheral bus (XPBus) 1318. Id. at 18:44−47.
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Peripheral controller interconnect (PCI) signals are encoded into
control bits and the control bits, rather than the control signals that they
represent, are transmitted on the interface channel. Id. at 17:20–24. At the
receiving end, the control bits representing control signals are decoded back
into PCI control signals prior to being transmitted to the intended PCI bus.
Id. at 17:24–26. The fact that control bits rather than control signals are
transmitted on the interface channel allows using a smaller number of signal
channels and a correspondingly small number of conductive lines in the
interface channel than would otherwise be possible. Id. at 17:27–31. This
relatively small number of signal channels used in the interface channel
allows using low voltage differential signal (LVDS) channels for the
interface. Id. at 17:33–35.
A. Illustrative Claim
Of the challenged claims, claims 20, 23, 26, and 35 are independent.
Claims 21 and 22 depend from claim 23; claims 24 and 25 depend from
claim 23; claims 27 and 28 depend from claim 26; and claim 36 depends
from claim 35. Claim 20 is illustrative:
20. A method of increasing external data communication speed of a
computer, comprising:
providing an integrated Central Processing Unit (CPU) and graphics
controller on a printed circuit board of a computer;
connecting a first Low Voltage Differential Signal (LVDS) channel
directly to said integrated CPU and graphics controller, the first
LVDS channel comprising two unidirectional, serial channels that
transmit data in opposite directions;
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providing a connector for the computer that connects to a console;
providing a second LVDS channel to couple to the console through
the connector, the second LVDS channel comprising two
unidirectional, serial channels that transmit data in opposite
directions; and
enabling Universal Serial Bus (USB) protocol data to be conveyed
over the second LVDS channel .
Ex. 1001, 23:36–53.
B. Prior Art Relied Upon
Petitioner relies upon the references listed below (Pet. 3–4):
Name Reference Date Exhibit No.
Chu
(“Chu ’886”)
U.S. Provisional
Application No.
60/083,886
May 1, 1998 1004
Chu
(“Chu ’330”)
U.S. Patent No.
6,345,330 B2 Feb. 5, 2002 1005
Chu
(“Chu ’777”)
U.S. Patent No.
6,643,777 B1
November 4,
2003 1017
Chu
(“Chu ’415”)
U.S. Patent No.
6,718,415 B1 April 6, 2004 1008
Huang U.S. Patent No. 8,253,750 B1 August 28, 2012 1007

C. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (Pet. 6):
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Claims Challenged 35 U.S.C. §1 References
20, 21, 23, 24, 26, 27,
35, 36 103(a) Chu ’886, Chu ’330
22, 25 103(a) Chu ’886, Chu ’330, Chu ’777
28 103(a) Chu ’886, Chu ’330, Chu ’415
20, 21, 23, 24, 26–28,
35, 36 103(a) Huang, Chu ’330
22, 25 103(a) Huang, Chu ’330, Chu ’777
II. ANALYSIS
A. 35 U.S.C. § 325(d)
Petitioner relies upon Chu ’330 in each of the five asserted grounds,
and Chu ’886 in three of the asserted grounds. Pet. 6. Petitioner contends
that “[t]he Office erred in overlooking Chu ’886 and Chu ’330.” Id. at 8. In
particular, Petitioner argues that Chu ’886 “was brought to the attention of
the Examiner in an application (US 12/561,138) [, the ’138 application,] and
every subsequent application in the ’654 Patent family when the applicant
amended the application to include subject matter that had allegedly been
incorporated from Chu ’886,” but “Chu ’886 was not properly incorporated

1 For purposes of this Decision, we assume the challenged claims have an
effective filing date prior to March 16, 2013, the effective date of the Leahy
Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011)
(“AIA”), and we apply the pre-AIA versions of 35 U.S.C. §§ 102, 103 and
112.
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by reference into the applications of the ’654 Patent family.” Id. at 7–8.
Thus, according to Petitioner, “the earliest priority date to which the claims
relying on [the] Chu ’886 disclosure are entitled is November 10, 2011.” Id.
at 8. Chu ’330 claims priority to Chu ’886 and incorporate by reference Chu
’886. Ex. 1005, code (60), 1:7–10. Accordingly, Petitioner 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 claims in the ’654 Patent.” Pet. 8.
Patent Owner counters that the USPTO has already considered and
rejected Petitioner’s argument regarding whether Chu ’886 was properly
incorporated by reference in Chu ’330. Prelim. Resp. 36−41. Thus, Patent
Owner argues that “[t]he Board should deny institution under § 325(d)”
because “the examiner previously considered and affirmed the efficacy of an
incorporation by reference in the context of a priority claim.” Id. at 37−38
(citing SMR Auto. Sys. USA, Inc. v. Magna Mirrors of Am., Inc.,
IPR2018-00931, Paper 7 at 14 (PTAB Sept. 14, 2018)).
For the reasons set forth below, we are persuaded by Patent Owner’s
arguments to exercise our discretion to deny institution of inter partes
review under 35 U.S.C. § 325(d).
Institution of an inter partes review is discretionary. The U.S.
Supreme Court has explained that, because § 314 includes no mandate to
institute review, “the agency’s decision to deny a petition is a matter
committed to the Patent Office’s discretion.” Cuozzo Speed Techs., LLC v.
Lee, 136 S. Ct. 2131, 2140 (2016); see also Harmonic Inc. v. Avid Tech.,
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Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a),
“the PTO is permitted, but never compelled, to institute an IPR
proceeding”).
Under § 325(d), in “determining whether to institute [an inter partes
review], the Director 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.” We determine whether to exercise
our discretion to deny institution under 35 U.S.C. § 325(d) based on the
framework set forth in Advanced Bionics, LLC v. Med-El
Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb.
13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part
framework in considering whether to exercise discretion to deny institution
under § 325(d): “(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 at 8. Only if the
same or substantially the same art or arguments were previously presented to
the Office do we then consider whether petitioner has demonstrated a
material error by the Office. Id. at 10. “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.
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1. Part 1: Whether the art or arguments presented in the Petition are the
same or substantially the same as those previously presented to the
Office
We first determine whether the same or substantially the same
arguments previously were presented to the Office. Advanced Bionics at 8.
As discussed above, the ’654 patent is a reissue patent of the ’777
patent (also the ’199 application), and claims priority through a chain of
reissue continuation applications. Ex. 1001, code (64) (63). In particular,
the ’654 patent is a continuation of the ’210 application, which in turn is a
continuation of the ’108 application, which in turn is a continuation of the
’138 application, which in turn is a continuation of the ’056 application,
which then in turn is a continuation of the ’604 application. Id.
Patent Owner’s Figure provides a timeline of the priority chain and
other related applications, which is reproduced below. Prelim. Resp. 6.

Patent Owner’s Figure above shows the filing dates of the ’777 patent,
the reissue applications in the priority chain of the ’654 patent, along with
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Chu ’886, Chu ’330, and U.S. Patent No. 6,216,185 (“Chu ’185”). Id. Each
reissue application in the priority chain of the ’654 patent identifies each
preceding reissue application as required by 35 U.S.C. § 120 and
incorporates the prior applications by reference. See, e.g., Ex. 1001,
1:23−30; Ex. 2004, 1:18–21 (the ’984 application); Ex. 2004, 1:18–15 (the
’694 application). Each reissue application in the ’654 patent’s priority
chain also incorporates by reference U.S. Application No. 09/149,882 (“the
’882 application”), which was issued as Chu ’330, and U.S. Application No.
09/149,548 (“the ’548 application”), which was issued as Chu ’185. See,
e.g., Ex. 1001, 15:49–54, 18:37–42; Ex. 2002, 5:19–23. Like Chu ’330, Chu
’185 also claims priority to Chu ’886. Ex. 1010, code (60), 1:7−10.
The ’138 application, now the ’984 patent, filed on September 16,
2009, is one of the intermediate applications in the priority chain of the ’654
patent. See Ex. 1001, code (63). The ’138 application was filed with a
preliminary amendment (Ex. 1015, 13, 49−74 (prosecution history of the
’138 application)), adding Figures 2b, 3, 4, and 7 and corresponding
disclosure from Chu ’185 and Figures 2, 6, 11, and 23 and the corresponding
description from Chu ’330, as Figures 9 through 16 and corresponding
disclosure in the ’138 application. See id. at 73. The applicant also filed
another amendment in the ’138 application (id. at 341, 344–377) on June 17,
2011 (“the June 17, 2011 amendment”), adding Figures 3 and 4 and
corresponding disclosure from Chu ’330 and Figures 8 and 9 and the
corresponding description from Chu ’886, as Figures 17 through 20 and
corresponding disclosure in the ’138 application. See id. at 363 (“the subject
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application is amended to add new FIG. 17 through FIG. 20, as well as
accompanying text” which “corresponds to: (a) FIG. 3 and FIG. 4 of the
‘330 patent; (b) the text of the ‘330 patent . . . ; (c) figure 8 and figure 9 of
the ‘886 provisional application; and (d) the text of the ‘886 provisional
application.”)
In its Petition, Petitioner argues Chu ’886 was not properly
incorporated by reference into the ’654 patent family, and thus, the
amendments adding the subject matter from Chu ’886 into the ’654 patent
family via the ’138 application improperly introduced new matter. Pet.
10−17. Accordingly, Petitioner contends that the earliest possible priority
date to which the claims of the ’654 patent could be entitled is November 10,
2011, the filing date of the ’108 application (the ’602 patent) when the
subject matter added from Chu ’886 into the ’138 application was first
introduced into the ’654 patent family, wherein the ’078 application, which
issued as the ’654 patent, subsequently incorporated this subject matter as a
continuation. Id. at 15.
However, Petitioner acknowledges that, during the prosecution of the
’138 application, the applicant argued that these amendments were proper
because Chu ’330 was incorporated into the ’138 application by reference,
and Chu ’886 was incorporated into Chu ’330 by reference. Pet. 11−12
(citing Ex. 1015, 20). In fact, the prosecution history of the ’138 application
shows that when the subject matter from Chu ’886 was added to the ’138
application in the June 17, 2011 amendment, for example, the applicant
specifically directed the examiner to the incorporation by reference
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statement in the transmittal form filed in the ’882 application (Chu ’330) as
support for the amendments. Ex. 1015, 363 (“See checked incorporation by
reference box in utility patent application transmittal of U.S. Application No.
09/149,882 filed on September 8, 1998”). Further, in the Remarks sections
of the amendments, 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 (the
‘‘886 provisional application’).” Id.; see also id. at 73.
As Patent Owner points out, the examiner considering the ’138
application did not object to the inclusion of the amendments as new matter
or issue a rejection under § 112. Prelim. Resp. 38−41; see also generally
Ex. 1015. Instead, the examiner entered the amendments and subsequently
allowed the ’138 application with the subject matter added from Chu ’886.
Id. at 446–448 (Notice of Allowance and Fee(s) Due), 450 (Notice of
Allowability).
For the foregoing reasons, we determine that the Petition presents the
same or substantially the same arguments that were previously presented to
the Office. See Advanced Bionics at 10. Consequently, part one of the
Advanced Bionics framework is satisfied, and we proceed to part two of
Advanced Bionics framework to determine whether the Office committed a
material error.
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2. Part 2: Whether the Office erred in a manner material to the
patentability of challenged claims
We next determine whether the petitioner has demonstrated that the
Office “erred in a manner material to the patentability of challenged claims.”
Advanced Bionics at 8. If “reasonable minds can disagree,” the Office did
not materially err. Id.
In its Petition, Petitioner takes the position that Chu ’886 was not
properly incorporated by reference into the ’654 patent family, and the
earliest priority date to which the claims relying on Chu ’886’s disclosure
are entitled is November 10, 2011, the filing date of the ’108 application
where the claimed subject matter added from Chu ’886 into the ’138
application was later included. Pet. 10−17. In particular, Petitioner argues
that: a) “essential material can be incorporated by reference only by way of a
U.S. patent or U.S. patent application publication,” wherein the subject
matter added from Chu ’886 (neither a U.S. patent nor U.S. patent
application publication) is essential (id. at 11−12); and that b) using a check
box in the application transmittal letter to incorporate Chu ’886 (which is a
provisional application) by reference was improper since the check box is
intended to be used with the filing of a continuation or divisional application
(id. at 12–13). Petitioner also contends that the ’654 patent did not properly
incorporate Chu ’330 by reference because “the ’654 [p]atent only made
reference to an application number,” which is improper under 37 C.F.R.
§ 1.57(d). Id. at 14.
We address below Petitioner’s arguments in turn.

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a. Incorporation of Essential Material by Reference
Petitioner argues that “it is well-established that 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,’” wherein “referencing of essential material through
‘nested’ referencing is prohibited.” Pet. 11−12 (quoting 37 C.F.R.
§ 1.57(c)). According to Petitioner, “[h]ere, the subject matter added from
Chu ’886 is essential to providing written description support for the
elements of the challenged claims” of the ’654 patent. Id. at 12. Further,
according to Petitioner, the MPEP has identified this sort of nested
referencing as improper. Id. (citing MPEP 608.01(p) (6th Ed. Jan. 1995)
(“essential material may not be incorporated by reference to … a US patent
or application which itself incorporates essential material by reference…”).
Petitioner’s argument is misplaced. Petitioner conflates the two
Subparts of MPEP § 608.01(p). That is, MPEP § 608.01(p) comprises
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”). As Patent Owner points out (Prelim. Resp.
43–47), MPEP § 608.01(p) “draws 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].” See
id. at 46; see also MPEP § 608.01(p) (7th Ed. July 1998) (the version of the
MPEP that was effective at the time of filing the ’199 application (also the
’777 patent), which reissued as the ’654 patent).
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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. That
is, “[n]either 35 U.S.C. 119(a) [n]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) also expressly states:
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.
Id. (emphases added). The MPEP maintains this guidance concerning
incorporation by reference for applications 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 (2004). See, e.g.,
MPEP § 608.01(p) (5th Ed. Rev. 15 Aug. 1993); MPEP § 608.01(p) (8th Ed.
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Rev. 3 Aug. 2005); MPEP § 608.01(p) (9th Ed. Rev. 11 Mar. 2014).
Therefore, we do not agree with Petitioner that 37 C.F.R. § 1.57’s
requirement for “essential material” applies to the continuation applications
in the priority chain of the ’654 patent.
Nevertheless, we are not persuaded by Petitioner’s contention that
“essential material” was improperly incorporated. Pet. 11−12. As Patent
Owner explains, the subject matter added from Chu ’866 to the ’138
application was “non-essential material” prior to the ’138 application
because none of the applications preceding the ’138 application in the
priority chain claims that subject matter. Prelim. Resp. 13−35. According
to Patent Owner, when claims were added to the ’138 application that
transformed previously non-essential material into allegedly essential
material, Patent Owner submitted the amendments to explicitly set forth the
material in the specification, in accordance with the procedure set forth in 37
C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010).
Id. at 28−33.
Whether certain disclosure is “essential” depends entirely on what the
claims recite in the particular application. That is, “essential material” is
expressly defined as material necessary to provide written description of the
claimed invention as required by § 112, ¶ 1, describe the claimed invention
as required by § 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 § 112, ¶ 6. MPEP § 608.01(p) (7th Ed. July 1998); see also
37 C.F.R. § 1.57(d). “The MPEP also explains that claim amendments
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during prosecution can transform nonessential material into essential
material.” Droplets, Inc. v. E*TRADE Bank, 887 F.3d 1309, 1319 (Fed. Cir.
2018); see also Ex parte Maziere, 27 USPQ2d 1705, 1706−07 (Bd. Pat.
App. & Inter. 1993) (holding that “[t]o the extent that present practice would
not allow incorporation by reference of ‘essential material’ in a pending
patent application, the [] subject matter was not such essential material in
parent [application] since it was not claimed therein,” and that “[t]he
applicants of [the parent] application were quite correct in not further
burdening the record of that file by including the text which was
incorporated by reference”).
Here, Petitioner does not explain why the subject matter added from
Chu ’886 is essential as to the ’777 patent and the other prior reissue
applications in the ’654 patent’s priority chain. See generally Pet. Petitioner
also does not explain how that subject matter is required to provide written
description support for the claims of those prior applications. Id. Instead, it
improperly argues that “the subject matter added from Chu ’886 is essential
to providing written description support for the elements of the challenged
claims” of the ’654 patent. Id. at 12 (citing Ex. 1003 ¶ 48). However, the
subject matter added from Chu ’866 to the ’138 application, which Petitioner
contends is essential material, is expressly provided in the specification of
the ’654 patent, not through an incorporation by reference. See Pet. 14−15
(admitting that the subject matter added from Chu ’886 into the ’138
application was later included in the ’654 patent).
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Accordingly, we are not persuaded by Petitioner’s argument that,
because the subject matter added from Chu ’886 is essential, the
incorporation by reference of Chu ’886 in prior applications in the ’654
patent’s priority chain was improper. Pet. 11−12.
b. Using a Check Box in the Application Transmittal Letter to
Incorporate
Petitioner also argues that Chu ’330 (i.e., the ‘882 application) did not
properly incorporate the subject matter of Chu ’886, a provisional
application. Pet. 12−14. According to Petitioner, the applicant improperly
used a check box in the application transmittal form submitted with the ’882
application to indicate a prior application was to be incorporated by
reference. Id. Petitioner provides an annotated figure showing a copy of the
application transmittal form submitted with the ’882 application, shown
below, to illustrate its contentions.
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Id. at 14; see also Ex. 1006, 3, 5. The annotated figure above shows a copy
of the application transmittal form submitted with the ’882 application,
wherein Petitioner highlights Box “4b” and the description in Box “5” to
illustrate its contentions. According to Petitioner, using a check box in the
application transmittal letter to incorporate Chu ’886 by reference was
improper because “this [check] box was clearly intended to be used with the
filing of a continuation or divisional application, not a non-provisional
application claiming priority to a provisional application.” Pet. 12–13
(citing MPEP 201.06(c) (7th Ed. July 1998) (“explaining, with reference to
filing continuation or divisional applications, that a statement ‘specifically
enumerat[ing] [that a] prior application or applications are “hereby
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incorporated by reference” may appear in the specification or in the
application transmittal letter’”) (alterations in original)). Further, Petitioner
contends that “[t]he applicant failed to check box 4b as required by the
incorporation by reference provision.” Id.
We are not persuaded by Petitioner’s arguments. As the U.S. Court of
Appeals for the Federal Circuit has explained in Harari, “[t]he proper
standard by which to evaluate the sufficiency of incorporation by reference
language . . . is whether the identity of the incorporated reference is clear to
a reasonable examiner in light of the documents presented.” Harari v.
Hollmer, 602 F.3d 1348, 1352 (Fed. Cir. 2010). Here, “the relevant inquiry
is whether a reasonable examiner would be so befuddled by the language of
the original disclosure, despite the explanation provided in the transmittal
and [relevant document], that he could not determine what document was
intended to be incorporated by reference.” Id. at 1353 (citing In re Fouche,
439 F.2d 1237, 1239 (CCPA 1971)).
As shown in Patent Owner’s annotated figure above, the application
transmittal form submitted with the ’882 application contains checked Box 5
(“incorporation by reference”), which states that:
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.
See Ex. 1006, 3, 5 (emphases added). 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
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filed May 1, 1998 and of U.S. Provisional Application No. 60/092,706 filed
on July 14, 1998.” Id. at 7.
We do not agree with Petitioner that a reasonable examiner would
have ignored the “incorporation by reference” statement in the application
transmittal form because Box 4b was not checked or because the applicant
was not filing a continuation or divisional application. Rather, as we pointed
out in our Decision Denying Institution in IPR2021-00605, Paper 7 at
23−24, the evidence before us shows that two different examiners on three
separate occasions considered the transmittal form, in light of the benefit
claims to the prior provisional applications (which included Chu ’886), and
recognized that the applicant incorporated by reference those prior
applications:
(1) when the applicant filed a preliminary amendment that added
Figures 8 and 9 and corresponding disclosure from Chu ’866 as Figures 8A
and 8B and corresponding disclosure in U.S. Application No. 13/087,912
(“the ’912 application”), in which the applicant directed the examiner to the
application transmittal form as support for the amendment (IPR2021-00605,
Ex. 1011, 15, 16, 26−28);
(2) when the applicant filed another amendment in the ’912
application on December 16, 2011, that added Figures 10 and 16 and
corresponding disclosure from Chu ’886 as Figures 8C and 24 and
corresponding disclosure of the ’912 application, in which the applicant
similarly directed the examiner to the application transmittal form as support
for this amendment (id. at 380–382, 392, 401–402); and
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(3) when the applicant filed a similar amendment in the ’138
application, directing the examiner to the application transmittal form
submitted in the ’882 application as support for the amendment (Ex. 1015,
363).
The examiner in each of these cases did not object to the amendments
as new matter or issue a rejection under § 112, ¶ 1, for lack of written
description support for the claims. The “incorporation by reference”
statement in the application transmittal form also was never objected to by
any examiner during prosecution of the ’882 application (Chu ’330), the
’777 patent, and all five reissue continuation applications in the priority
chain of the ’654 patent (including the ’138 application), as well as all ten
continuation applications in the priority chain of U.S. Patent No. 9,529,768
B2 (“the ’768 patent”) as we noted in our Decision Denying Institution in
IPR2021-00605, Paper 7 at 24. Moreover, none of the examiners required
the applicant to change its benefit claims from “continuation” to
“continuation-in-part” in the ’654 patent’s priority chain.
For the foregoing reasons, we are not persuaded by Petitioner’s
argument that Chu ’330 did not properly incorporate the subject matter of
Chu ’886. Pet. 12−14.
c. Incorporation by Reference to an Application Number
Petitioner further argues that the ’654 patent did not properly
incorporate Chu ’330 by reference under 37 C.F.R. § 1.57(d). Pet. 14. In
particular, “‘[e]ssential material’ may be incorporated by reference, but only
by way of an incorporation by reference to a U.S. patent or U.S. patent
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application publication.” Id. (alteration in original) (citing Ex. 1001,
5:63−67, 15:49–54, 16:42–46; 37 C.F.R. § 1.57(d)). According to
Petitioner, the ’654 patent only makes reference to an application number,
which is improper. Id. at 14.
We are not persuaded by Petitioner’s argument. As discussed above,
the ’777 patent, the ’654 patent, and the prior reissue continuation
applications in the ’654 patent’s priority chain comply with the “essential
material” requirement. Further, the subject matter added from Chu ’866 to
the ’138 application in the priority chain was “non-essential material” prior
to the ’138 application, and that subject matter was expressly provided in the
’138 application and in each of the subsequent continuation applications,
including the ’654 patent, not through an incorporation by reference. See
Pet. 14−15 (admitting that the subject matter added from Chu ’886 into the
’138 application was later included in the ’654 patent).
Moreover, Petitioner does not explain why the information set forth in
the ’654 patent does not unambiguously identify Chu ’330. The ’654 patent
expressly states that “U.S. patent application Ser. No. 09/149,882, entitled
‘A Communication Channel and Interface Devices for Bridging Computer
Interface Buses,’ by the same inventor, . . . hereby incorporated by
reference.” Ex. 1001, 15:49−54. The application number along with the
title and identification of the inventor would have been sufficient to identify
Chu ’330 to a reasonable examiner. See Harari, 602 F.3d at 1352−53.
Similar “incorporation by reference” statements were never objected
to by any examiner during prosecution of the ‘’777 patent, the ’654
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application, all of the prior reissue continuation applications in the priority
chain of the ’654 patent, as well as all ten continuation applications in the
priority chain of the ’768 patent as we pointed out in our Decision Denying
Institution in IPR2021-00605, Paper 7 at 25. Moreover, an examiner
considered the incorporation by reference statement along with the
amendments that added the subject matter from Chu ’886 to the ’138
application in the priority chain. See, e.g., Ex. 1015, 363. The examiner did
not object to the amendments as new matter or issue a rejection under § 112,
¶ 1, for lack of written description support for the claims.
For the foregoing reasons, we are not persuaded by Petitioner’s
argument that the ’654 patent did not properly incorporate Chu ’330 by
reference. Pet. 14.
d. Amendment Adding Subject Matter Incorporated by
Reference
According to Petitioner, because the new subject matter added from
Chu ’886 was not included in any of the applications in the ’654 patent
priority chain before the amendments in the ’138 application, the earliest
possible priority date for any of the ’654 patent claims relying on this subject
matter for written description support under § 112, ¶ 1, is the filing date of
the ’108 application, i.e., November 10, 2011, “the earliest possible priority
date for any of the ’654 Patent claims relying on this subject matter.” Pet.
15−17. However, the amendments to the ’138 application were proper
because, as discussed above, when claims were added to the ’138 application
that transformed previously non-essential material into allegedly essential
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material, Patent Owner submitted an amendment to explicitly set forth the
material in the specification in accordance with the procedure set forth in 37
C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010).
See Prelim. Resp. 28−33.
Petitioner has not shown sufficiently that the ’777 patent and the
applications in the ’654 patent priority chain did not properly incorporate by
reference Chu ’330 and Chu ’886, or that the examiner erred in entering the
amendments that added the subject matter from Chu ’886 to the ’138
application. As such, we are not persuaded by Petitioner’s argument that the
earliest possible priority date for the challenged claims of the ’654 patent is
November 10, 2011.
3. § 325(d) Conclusion
For the foregoing reasons, we determine that the same or substantially
the same arguments previously were presented to the Office and that
Petitioner fails 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 ’654 Patent claims. Accordingly, we exercise our
discretion not to institute inter partes review. Advanced Bionics at 8; see
also Becton, Dickinson, Paper 8, 24.
III. CONCLUSION
For the foregoing reasons, we exercise our discretion under § 325(d)
to deny institution of an inter partes review.
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IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no trial is instituted.

FOR 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