ACQIS LLC

Patent Trials and Appeals Board

Dec 2, 2021

IPR2021-01099 (P.T.A.B. Dec. 2, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Date: December 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTEL CORPORATION,
Petitioner,

v.

ACQIS LLC,
Patent Owner.
____________

IPR2021-01099
Patent 9,529,769 B2
____________

Before THU A. DANG, PATRICK M. BOUCHER, and
ROBERT J. WEINSCHENK, Administrative Patent Judges.

BOUCHER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314(a)

Intel Corporation (“Petitioner”) filed a Petition pursuant to 35 U.S.C.
§§ 311–319 to institute an inter partes review of claims 1–22 of U.S. Patent
No. 9,529,769 B2 (Ex. 1001, “the ’769 patent”). Paper 2 (“Pet.”). ACQIS
LLC (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
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Resp.”). With our authorization, Petitioner filed a Reply and Patent Owner
filed a Sur-reply. Papers 7 (“Reply”), 8 (“Sur-reply”).
We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. For
the reasons set forth below, we exercise our discretion under 35 U.S.C.
§ 325(d) and decline to institute an inter partes review.

I. BACKGROUND
A. The ’769 Patent
The ’769 patent relates to computer interfaces, specifically an
interface channel that “interfaces two computer interface buses that operate
under protocols that are different from that used by the interface channel.”
Ex. 1001, 3:24–27. Figure 6 of the ’769 patent is reproduced below.

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Figure 6 shows a block diagram of a computer system using an interface. Id.
at 12:35–37. As shown, computer system 600 includes attached computer
module (“ACM”) 605 and peripheral 610, which are interfaced through
exchange interface system (“XIS”) bus 615. Id. at 12:37–45. XIS bus 615
includes power bus 616, video bus 617, and peripheral bus (“XPBus”) 618,
which is also referred to as an interface channel. Id. at 12:45–57.

B. Illustrative Claim
Independent claim 1 is illustrative of the challenged claims and is
reproduced below.
1. A computer system, comprising:
a computer with
an integrated central processing unit and graphics
subsystem in a single chip;
wherein the graphics subsystem directly couples to a
unidirectional differential signal channel to output digital video
data; and
a connector configurable for external peripheral
communication;
a first Low Voltage Differential Signal (LVDS) channel
directly coupled to the connector, comprising two
unidirectional, differential signal pairs transmitting data in
opposite directions to convey Universal Serial Bus (USB)
protocol data for external peripheral communication, and
wherein the unidirectional different signal channel
conveys Transition Minimized Differential Signaling (TMDS)
signals as digital video data.

Ex. 1001, 37:14–31.
C. Evidence
Petitioner relies on the following references:
Chu ’330 US 6,345,330 B2 Feb. 5, 2002 Ex. 1003
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Cupps US 2003/0135771 A1 July 17, 2003 Ex. 1004

In addition, Petitioner relies on a Declaration by John D. Kubiatowicz,
Ph.D. Ex. 1002.

D. Asserted Ground of Unpatentability
Petitioner challenges claims 1–22 on the following ground. Pet. 36.
Claim(s)
Challenged
35 U.S.C. §1 References
1–22 103 Chu ’330, Cupps

E. Real Parties in Interest
In addition to itself, Petitioner identifies the following entities as real
parties in interest: Lenovo Group Ltd.; Lenovo PC HK Limited; LCFC
(HEFEI) Electronics Technology Co., Ltd.; Lenovo Information Products
(Shenzhen) Co., Ltd.; Lenovo (Beijing) Information Technology Ltd.; and
Lenovo Centro Tecnológico S. de R.L. de C.V. Pet. 7–8.
Patent Owner identifies only itself as a real party in interest. Paper 5,
2.

F. Related Matters
Both parties identify the following district court matters, each of
which involves the ’769 patent: (1) ACQIS LLC v. MITAC Holdings Corp.,
No. 6:20-cv-00962 (W.D. Tex.); (2) ACQIS LLC v. ASUSTek Computer Inc.,

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 (“AIA”), Pub. L. No. 112-29, 125 Stat. 284,
287–88 (2011), such that the pre-AIA version of 35 U.S.C. § 103 applies.
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No. 6:20-00966 (W.D. Tex.); and (3) ACQIS LLC v. Lenovo Group Ltd., No.
6:20-cv-00967 (W.D. Tex.). Pet. 1; Paper 5, 2. Both parties also identify
the following district court matters that involve patents related to the ’769
patent: (1) ACQIS LLC v. International Business Machines Corp., No. 6:09-
cv-00148 (E.D. Tex.); (2) ACQIS LLC v. International Business Machines
Corp., No. 6:11-cv-00546 (E.D. Tex.); (3) ACQIS LLC v. Alcatel-Lucent
USA Inc., No. 6:13-cv-00638 (E.D. Tex.); (4) ACQIS LLC v. EMC Corp.,
No. 6:13-cv-00639 (E.D. Tex.); (5) ACQIS LLC v. Ericsson, Inc., No. 6:13-
cv-00640 (E.D. Tex.); ACQIS LLC v. Huawei Technologies Co., Ltd., 6:13-
cv-00641 (E.D. Tex.); (6) ACQIS LLC v. EMC Corp., No. 1:14-cv-13560
(D. Mass.); (7) ACQIS LLC v. Samsung Electronics Co., Ltd., No. 2:20-cv-
00295 (E.D. Tex.); (8) ACQIS LLC v. Inventec Corp., No. 6:20-cv-00965
(W.D. Tex.); and (9) ACQIS LLC v. Wistron Corp., No. 6:20-cv-00968
(W.D. Tex.). Pet. 1–6; Paper 5, 2–3, 5–6. Patent Owner further identifies
International Business Machines Corp. v. ACQIS LLC, 4:11-cv-04896 (N.D.
Cal.) as an additional district court matter. Paper 5, 6.
Both parties identify the following inter partes reviews as involving
patents related to the ’769 patent: IPR2014-01452, IPR2014-01462,
IPR2014-01469, IPR2021-00604, IPR2021-00605, IPR2021-00606,
IPR2021-00607, IPR2021-00608, IPR2021-00666, IPR2021-00667,
IPR2021-00668, IPR2021-00669, IPR2021-00670, IPR2021-01093,
IPR2021-01102, IPR2021-01103, IPR2021-01104, IPR2021-01105,
IPR2021-01107, IPR2021-01108, IPR2021-01109, IPR2021-01110,
IPR2021-01111, IPR2021-01112, IPR2021-01113, IPR2021-01114. Pet. 6–
7; Paper 5, 3–6. Patent Owner additionally identifies IPR2021-01094 and
IPR2021-01095 as involving a patent related to the ’769 patent. Paper 5, 4.
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II. DISCRETION UNDER 35 U.S.C. § 325(d)
Petitioner relies on Chu ’330 in its only asserted challenge to claims
of the ’769 patent. Pet. 36. Petitioner argues that, while Chu ’330 “appears
on the voluminous list of references considered by the Patent Office” during
prosecution, no Examiner cited Chu ’330 against any claims of the ’769
patent or any of its related applications. Id. at 131. 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 ’769 Patent
properly incorporated by reference the materials found only in” U.S.
Provisional Patent 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 131–132.
Patent Owner counters that the Office has already considered and
rejected Petitioner’s argument regarding the incorporation by reference of
Chu ’330 and Chu ’886. Prelim. Resp. 11–31. Patent Owner argues that the
Board should exercise its discretion under 35 U.S.C. § 325(d) to deny
institution because the Examiner previously considered and affirmed the
efficacy of an incorporation by reference in the context of a priority claim.
Id. at 12 (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 an inter partes review under § 325(d).
Institution of an inter partes review is discretionary. The U.S.
Supreme Court has explained that, because § 314 includes no mandate to
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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.,
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”). Moreover, 35 U.S.C. § 325(d) states, in relevant part, that
“[i]n determining whether to institute or order a proceeding under this
chapter, chapter 30, or chapter 31, 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.”
35 U.S.C. § 325(d); see also Advanced Bionics, LLC v. MED-EL
Elektromedizinische Geräte Gmbh, IPR2019-01469, Paper 6 at 8 (PTAB
Feb. 13, 2020) (precedential); Becton, Dickinson & Co. v. B. Braun
Melsungen AG, IPR2017-01586, Paper 8 at 17−18 (PTAB Dec. 15, 2017)
(precedential as to Section III.C.5, first paragraph).
“Under § 325(d), the Board uses 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, Paper 6 at 8. If the petitioner fails
to show that the Office erred, the Director may exercise his or her discretion
not to institute inter partes review. Id.; see also Becton, Dickinson, Paper 8,
24 (exercising discretion where “Petitioner has not pointed to error by the
Examiner”).
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A. Advanced Bionics Part I:
Previous Presentation of Arguments 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’s drawing, reproduced below with color
annotations added by the Board, provides a timeline of the priority chain of
the ’769 patent (light-blue filled box) and other related applications,
including Chu ’886 (orange) and U.S. Patent Application No. 09/149,882
(“the ’882 application”), which issued as Chu ’330 (red). Prelim. Resp. 7.

The annotated version of Patent Owner’s drawing above shows the filing
dates of the applications in the priority chain of the ’769 patent and other
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related applications. Id. The ’769 patent issued from U.S. Patent
Application No. 15/055,436 (“the ’436 application”), which claims priority
to U.S. Patent Application No. 09/569,758 (“the ’758 application”) (dark
purple), filed on May 12, 2000, through a chain of continuation applications.
Ex. 1001, codes (21), (63), 1:14–39.2 The ’758 application (i.e., the initial
ancestor application) incorporated by reference the ’882 application (i.e.,
Chu ’330), which claimed priority to, and incorporated by reference, Chu
’886. Ex. 1013, 4:50–53; Ex. 1011, 78, 81, 83 (prosecution history of Chu
’330). Each subsequent application in the priority chain both 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,
1:14–39, 6:46–49; Ex. 1008, 1:12–27, 9:27–29.
U.S. Patent Application No. 13/087,912 (“the ’912 application”)
(green), filed April 15, 2011, now U.S. Patent No. 8,234,436 (“the ’436
patent”), is an intervening application, claiming the benefit of the ’758
application through several other prior applications (dark blue). Ex. 1008,
code (63). The ’912 application was filed with a preliminary amendment,
adding Figures 8 and 9 and corresponding disclosure from Chu ’886 as
Figures 8A and 8B and corresponding disclosure in the ’912 application.
Ex. 1009, 12–26 (prosecution history of the ’912 application). The applicant
also filed another amendment in the ’912 application, adding Figures 10 and

2 Although the body of the ’769 patent identifies the complete chain of
continuation applications back to May 12, 2000, Ex. 1001, 1:14–39, the face
of the ’769 patent identifies only the portion of the chain back to U.S. Patent
Application No. 11/097,695, filed on March 31, 2005, id. at code (63).
Petitioner nevertheless acknowledges that the full chain extends back to the
’758 application. Pet. 19 (drawing of patent family tree).
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16 and corresponding disclosure from Chu ’886 as Figures 8C and 24 and
corresponding disclosure in the ’912 application. Id. at 379–395.
In its Petition, Petitioner argues that the ’750 patent is not entitled to a
priority date before April 15, 2011, because the ’436 patent’s ancestor
applications did not properly incorporate by reference Chu ’886, and that the
amendments adding the subject matter from Chu ’886 thereby improperly
introduced new matter. Pet. 18–32. But during prosecution of the ’912
application (issued as the ’436 patent), the applicant argued that these
amendments were proper because the ’758 application (the initial ancestor
application) incorporated by reference the ’882 application, which in turn
incorporated Chu ’886 by reference. Ex. 1009, 26, 392. “[W]hen a patentee
argues that its claims are entitled to the priority date of an earlier filed
application, the examiner must undertake a priority analysis to determine if
the patentee meets the requirements of § 120.” In re NTP, Inc., 654 F.3d
1268, 1277 (Fed. Cir. 2011).
Indeed, the prosecution history of the ’912 application shows that,
when the subject matter from Chu ’886 was added to the ’912 application,
the applicant specifically directed the Examiner to the incorporation-by-
reference statement in the transmittal form of the ’882 application as support
for the amendments. Ex. 1009, 26, 392. In the “Remarks” section of the
amendments, the applicant also argued that “[t]he original ’758 patent
application incorporated by reference U.S. Application No. 09/149,882 (now
issued as U.S. Patent No. 6,345,330), 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,
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1998).” Id. The Examiner did not object to the inclusion of the amendments
as new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1. Nor did the
Examiner require the applicant to change the benefit claim from
“continuation” to “continuation-in-part.” Instead, the Examiner entered the
amendments and subsequently allowed the ’912 application with the subject
matter added from Chu ’886. Id. at 430 (Notice of Allowance and Fee(s)
Due).
In addition, another petitioner (Samsung) previously presented to the
Office substantially the same arguments that the amendments adding the
subject matter from Chu ’886 to an intervening application in the challenged
patent’s priority chain improperly introduced new matter and that “Chu ’330
did not properly incorporate the subject matter of Chu ’886” in the following
five IPR proceedings:
(1) Samsung Electronics Co., LTD. v. ACQIS LLC, IPR2021-00604,
Paper 1 at 9−18 (PTAB March 8, 2021) (Petition filed by Samsung);
(2) Samsung Electronics Co., LTD. v. ACQIS LLC, IPR2021-00605,
Paper 1 at 9−17 (PTAB March 8, 2021) (Petition filed by Samsung);
(3) Samsung Electronics Co., LTD. v. ACQIS LLC, IPR2021-00606,
Paper 1 at 8−17 (PTAB March 8, 2021) (Petition filed by Samsung);
(4) Samsung Electronics Co., LTD. v. ACQIS LLC, IPR2021-00607,
Paper 1 at 9−17 (PTAB March 8, 2021) (Petition filed by Samsung); and
(5) Samsung Electronics Co., LTD. v. ACQIS LLC, IPR2021-00608,
Paper 1 at 10−17 (PTAB March 8, 2021) (Petition filed by Samsung).
Upon consideration of Samsung’s arguments, the panel in each of
these five IPR proceedings denied Samsung’s petition under 35 U.S.C.
§ 325(d) because the same or substantially the same arguments previously
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were presented to the Office and Samsung failed to show that the Examiner
erred in entering the amendments or in determining that Chu ’330
incorporated by reference Chu ’886. See, e.g., IPR2021-00604, Paper 7 at
6−21 (Decision Denying Institution).
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 Pet. 18–32.

B. Advanced Bionics Part II: Office Error

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 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 ’769 patent is not
entitled to a priority date before April 15, 2011, because the ’436 patent’s
ancestor applications did not properly incorporate by reference Chu ’886,
and that the amendments adding the subject matter from Chu ’886 thereby
improperly introduced new matter. Pet. 18–32. Petitioner admits that the
’758 application (the initial ancestor application) incorporated by reference
the ’882 application. Id. at 25–26; see also Ex. 1013, 4:50–53. It is also
undisputed that each subsequent application in the priority chain both
identified each preceding application as required by 35 U.S.C. § 120 and
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incorporated by reference the prior applications and the ’882 application.
See, e.g., Ex. 1001, 1:14–39, 6:46–49; Ex. 1008, 1:12–27, 9:27–29.
Nonetheless, Petitioner argues that “[Chu ’330] never incorporated by
reference [Chu ’886].” Pet. 26–32.
In short, under Part II of the Advanced Bionics framework, Petitioner
has the burden to show that the Examiner erred in determining that Chu ’330
incorporated by reference Chu ’886. Advanced Bionics, Paper 6 at 8. We
address below each of Petitioner’s arguments in turn.

1. Incorporation by Reference Statement in a Transmittal Form
To support its argument that Chu ’330 never incorporated by
reference Chu ’886, Petitioner contends that the transmittal form filed in
Chu ’330 does not identify Chu ’886. Pet. 28–29. A portion of the
transmittal form is reproduced below with Petitioner’s annotations. Id. at 29
(reproducing and annotating a portion of Ex. 1011, 81).
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Citing Dr. Kubiatowicz’s testimony for support, Petitioner argues that
nothing in the transmittal form, a portion of which is reproduced above as
annotated by Petitioner, identifies “with detailed particularity what specific
material” Chu ’330 incorporates. Id. (quoting Hollmer v. Harari, 681 F.3d,
1351, 1357 (Fed. Cir. 2012); citing Ex. 1002 ¶ 95). Petitioner also avers that
(1) “box 5 titled ‘Incorporation by Reference’ states that it is only ‘useable if
Box 4b is checked[,]’ . . . but . . . Box 4b is not even checked”; and (2)
“[e]ven if Box 4b were checked, Box 4b would have been inoperative
because its use was limited ‘for continuation/divisional with Box 17
completed,’” and “none of the options for Box 17 includes a check mark—
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let alone that [Chu ’330] cannot be a ‘continuation/divisional’ of [Chu
’886].” Id. at 29–30 n.5.
Petitioner’s arguments and Dr. Kubiatowicz’s testimony narrowly
focus on the transmittal form alone. Id. at 28–30; Ex. 1002 ¶ 95. But the
Federal Circuit has explained that an incorporation-by-reference analysis
includes “the four corners of the application.” Hollmer, 681 F.3d at 1358.
It is instructive to review the facts in Hollmer. In that case, the
intervening applications merely identified the 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 that referenced application and at least two other applications
by the same inventors that had the same title as that referenced application.
Hollmer, 681 F.3d at 1353, 1358. Therefore, the Federal Circuit held that
the incorporation language in Hollmer did not directly lead one of ordinary
skill in the art to that referenced application, but rather presented several
potential documents for incorporation. Id. at 1358.
Unlike Hollmer, the ’882 application (issued as Chu ’330) here
provided an incorporation-by-reference statement of the applicant’s prior
applications in the transmittal form and clearly identified the applicant’s
prior applications (including Chu ’886) in the first sentence of the
Specification on filing. In particular, the ’882 application was filed with a
transmittal form with the “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.
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Ex. 1011, 81 (emphases added). This checked box on an Office transmittal
form shows that the applicant intended to incorporate by reference his prior
applications, in their entirety, when he was filing the ’882 application.
The applicant also clearly identified his prior applications in the ’882
application on filing. 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” (i.e.,
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 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 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 his prior applications (including Chu ’886) at the
time of filing the ’882 application. The incorporation-by-reference
language, together with the benefit claims in the first sentence of the
Specification of the ’882 application, 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 would not have ignored the applicant’s
incorporation-by-reference statement merely 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
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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 Systems 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)); cf. In re Fouche, 439 F.2d 1237,
1239−1240 (CCPA 1971) (“It seems amply clear that an applicant should be
permitted to incorporate the disclosure of a copending application . . . so
long as the reference application is sufficiently well identified to distinguish
it from all others.”).
The evidence before us 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 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 directed the Examiner to the transmittal form as support for the
amendment, Ex. 1009, 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 as support for this amendment,
id. at 392; and
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(3) when the applicant filed a similar amendment in U.S. Patent
Application No. 12/561,138, as part of a separate priority chain of six reissue
applications of U.S. Patent No. 6,643,777 B1 (“the ’777 patent”), directing
the Examiner to the transmittal form submitted in the ’882 application as
support for the amendment, Ex. 2003, 363, 446 (Notice of Allowance and
Fee(s) Due issued after entry of amendment adding figures and disclosure
from Chu ’886).
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. NTP, 654 at 1277. Instead, the
Examiner entered the amendments and subsequently allowed the ’912
application with the subject matter added from Chu ’886. Ex. 1009, 430
(Notice of Allowance and Fee(s) Due).
The incorporation-by-reference statement in the transmittal form also
was never objected to by any Examiner during prosecution of the ’882
application (Chu ’330), the ’758 application (initial ancestor application),
and all eleven continuation applications in the priority chain of the ’750
patent, as well as the ’777 patent and all six reissue applications in the
priority chain of the ’777 patent, as noted in the Decision Denying
Institution in IPR2021-00607, Paper 7 at 20. Moreover, none of the
Examiners required the applicant to change the benefit claims from
“continuation” to “continuation-in-part” in those continuation applications.
For the foregoing reasons, the ’882 application identified Chu ’886
with particularity and would have directly led a reasonably skilled artisan to
the document intended to be incorporated. Accordingly, we determine that
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Petitioner fails to show that the Examiner erred in determining that the ’882
application (Chu ’330) incorporated Chu ’886 by reference.
In addition, as discussed above, Petitioner admits that the ’758
application (initial ancestor application) incorporated by reference the ’882
application. Pet. 25−26; see also Ex. 1013, 4:50−53. It also is undisputed
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,
1:14–39, 6:46–49; Ex. 1008, 1:12–27, 9:27–29. As such, we also find that
Petitioner has failed to show that (1) the ’769 patent is not entitled to a
priority date before April 15, 2011, (2) the ’436 patent’s ancestor
applications did not properly incorporate by reference Chu ’886, and (3) the
amendments adding the subject matter from Chu ’886 improperly introduced
new matter. Pet. 18−32.

2. Transmittal Form is Part of the Application
Petitioner argues that “[e]ven if the transmittal form of [Chu ’330]
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 (citing Advanced Display, 212 F.3d at 1282)
(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. (emphasis added).
Petitioner contends that “any incorporation by reference statement must have
appeared in [Chu ’330] itself.” Id. (citing MPEP 608.01(p)).
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We are not persuaded by Petitioner’s arguments. The Federal Circuit
has explained that the incorporation-by-reference analysis includes “the four
corners of the application.” Hollmer, 681 F.3d at 1358 (emphasis added). A
transmittal form is a part of the application. See 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 . . . .”). Courts
have repeatedly considered application transmittals in their incorporation-
by-reference analyses. See, e.g., Harari 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) (The
court in its analysis considered the incorporation by reference of a prior
provisional application and a patent submitted in a transmittal letter.).
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. 29−30 n.5.
Therefore, we are not persuaded by Petitioner’s arguments that
(1) an incorporation-by-reference statement appearing in a transmittal form
“would be inoperative,” (2) 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,” and (3) “any incorporation by reference
statement must have appeared in [Chu ’330] itself.” Pet. 30.

3. Benefit Claims
Petitioner argues that the statement “[t]his application claims any and
all benefits as provided by law of U.S. Provisional Application No.
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60/083,886 filed May 1, 1998,” which appears in the first paragraph of
Chu ’330 “is at best a priority claim to [Chu ’886] that is distinct from an
incorporation by reference.” Pet. 31 (citing In re de Seversky, 474 F.2d 671,
674 (CCPA 1973)). Petitioner’s reliance on de Seversky is misplaced. In de
Seversky, “the parent application . . . contains no ‘incorporation-by-
reference’ language whatsoever.” de Seversky, 474 F.2d at 674. In contrast,
the applicant here filed a transmittal form in the ’882 application that
includes an incorporation-by-reference statement of his prior applications.
Ex. 1011, 81.
Petitioner fails to consider the 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).
As discussed above, the incorporation-by-reference language, together with
the benefit claims in the first sentence of the Specification of the ’882
application, would have sufficiently identified the applicant’s prior
applications (including Chu ’886) as the referenced prior applications,
distinguishing them from all other documents. 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.
Therefore, Petitioner has not shown that the Examiner erred in
determining that the ’882 application (Chu ’330) incorporated Chu ’886 by
reference or in entering the amendments that added the subject matter of
Chu ’886 in the ’912 application.

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4. Incorporation-by-Reference Standard
Petitioner argues that “[t]he reasonable Examiner standard does not
apply to the analysis of the ’769 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 1357). 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 arguments. As discussed above,
Petitioner has the burden to show that the Examiner erred in determining
that the ’882 application (issued as Chu ’330) incorporated by reference
Chu ’886. In Advanced Bionics, the Board stated that “[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.
Here, Petitioner does not explain why the Examiner erred if a
reasonable examiner would have found that the identification in the ’882
application was reasonably precise to incorporate Chu ’886 by reference.
Nor does Petitioner provide any meaningful differences between applying
the “reasonable examiner” standard and applying the “person of ordinary
skill” standard to the particular facts in this proceeding under the Advanced
Bionics framework.
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In any event, even applying the “person of ordinary skill” standard
here, 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. As discussed above in Section II.B.1., 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 here 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 on filing, thereby distinguishing
them from all other documents. Husky Injection, 838 F.3d at 1248. 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. Hollmer, 681 F.3d at 1357−58.
Accordingly, even under the “person of ordinary skill” 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.

C. Conclusion on Discretionary Denial Under § 325(d)
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 in determining that the ’882
application (issued as Chu ’330) incorporated Chu ’886 by reference or in
entering the amendments that added the subject matter from Chu ’886 in the
’912 application. Accordingly, we exercise our discretion not to institute
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inter partes review. Advanced Bionics, Paper 6 at 8; see also Becton,
Dickinson, Paper 8, 24.

III. CONCLUSION
For the foregoing reasons, we exercise our discretion under 35 U.S.C.
§ 325(d) to deny institution of an inter partes review.

IV. ORDER
In consideration of the foregoing, it is
ORDERED that the Petition is denied, and no trial is instituted.

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For PETITIONER:
Yung-Hoon Ha
Theodoros Konstantakopoulos
Christian Dorman
DESMARAIS LLP
yha@desmaraisllp.com
tkonstantakopoulos@desmaraisllp.com
cdorman@desmaraisllp.com

For PATENT OWNER:

Mark Miller
Gina Cornelio
Case Collard
DORSEY & WHITNEY LLP
miller.mark@dorsey.com
cornelio.gina@dorsey.com
collard.case@dorsey.com