ACQIS LLC

Patent Trials and Appeals Board

Dec 7, 2021

IPR2021-01109 (P.T.A.B. Dec. 7, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Date: December 7, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTEL CORPORATION,
Petitioner,
v.
ACQIS LLC,
Patent Owner.
____________

IPR2021-01109
Patent 9,529,768 B2
____________

Before THU A. DANG, JONI Y. CHANG, and SCOTT A. DANIELS,
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
Intel Corporation (“Petitioner”) filed a Petition requesting an inter
partes review (“IPR”) of claims 18, 21–24, 26–32, and 36–40 (“the
challenged claims”) of U.S. Patent No. 9,529,768 B2 (Ex. 1001, “the ’768
patent”). Paper 3 (“Pet.”), 1. ACQIS LLC (“Patent Owner”) filed a
Preliminary Response (Paper 7, “Prelim. Resp.”). Pursuant to our
authorization, Petitioner filed a Reply to Patent Owner’s Preliminary
Response (Paper 9, “Pet. Reply”) and Patent Owner filed a Sur-reply (Paper
10, “PO Sur-reply”), each directed to whether we should exercise our
discretion to deny institution pursuant to 35 U.S.C. § 314(a).
Under 35 U.S.C. § 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.” Upon consideration of
the Petition, the Preliminary Response, Petitioner’s Reply and Patent
Owner’s Sur-reply, we exercise our discretion under § 325(d) not to institute
an inter partes review of claims 18, 21–24, 26–32, and 36–40 of the ’768
patent. Accordingly, no trial is instituted.
B. Related Matters
Petitioner indicates that the ’768 patent is involved in ACQIS LLC v.
MITAC Holding Corp. et al., No. 6:20-cv-00962 (W. D. Tex. 2020);
ACQIS LLC v. ASUSTek Computer Inc., No. 6:20-cv-00966 (W. D. Tex.
2020); ACQIS LLC v. Lenovo Group Ltd., et al., No. 6:20-cv-00967 (W. D.
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Tex. 2020); ACQIS LLC v. Inventec Corp., No. 6:20-cv-00965 (W. D. Tex.
2020); ACQIS LLC v. Wistron Corp. et al., No. 6:20-cv-00968 (W. D. Tex.
2020); and ACQIS LLC v. Samsung Electronics Co., Ltd. et al., No. 2:20-cv-
00295 (E. D. Tex. 2020). Pet. 1–2.
Petitioner also concurrently challenges claims of the ’768 patent in
IPR2021-01107 and IPR2021-01108.
C. The ’768 Patent
The ’768 patent, titled “Computer System Including CPU or
Peripheral Bridge Directly Connected to a Low Voltage Differential Signal
Channel that Communicates Serial Bits of a Peripheral Component
Interconnect Bus Transaction in Opposite Directions,” issued on December
27, 2016, from Application No. 14/209,922 (“the ’922 application”), filed on
March 13, 2014, which is a continuation of Application No. 13/744,287
(“the ’287 application”), filed on January 17, 2013, now U.S. Patent No.
8,756,359 (“the ’359 patent”), which in turn is a continuation of Application
No. 13/649,084 (“the ’084 application”), filed on October 10, 2012, now
U.S. Patent No. 8,977,797 (“the ’797 patent”), which in turn is a
continuation of Application No. 13/560,924 (“the ’924 application”), filed
on July 27, 2012, now U.S. Patent No. 8,626,977 (“the ’977 patent”), which
in turn is a continuation of Application No. 13/087,912 (“the ’912
application”), filed on April 15, 2011, now U.S. Patent No. 8,234,436 (“the
’436 patent”), which in turn is a continuation of Application No. 12/504,534
(“the ’534 application”), filed on July 16, 2009, now U.S. Patent No.
8,041,873 (“the ’873 patent”), which in turn is a continuation of Application
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No. 12/077,503 (“the ’503 application”), filed on March 18, 2008, now U.S.
Patent No. 7,676,624 (“the ’624 patent”), which in turn is a continuation of
Application No. 11/166,656 (“the ’656 application”), filed on June 24, 2005,
now U.S. Patent No. 7,376,779 (“the ’779 patent”), which in turn is a
continuation of Application No. 11/097,694 (“the ’694 application”), filed
on March 31, 2005, now U.S. Patent No. 7,363,415 (“the ’3415 patent”),
which in turn is a continuation of Application No. 10/772,214 (“the ’214
application”), filed on February 3, 2004, now U.S. Patent No. 7,099,981
(“the ’981 patent”), which then in turn is a continuation of Application No.
09/569,758 (“the ’758 application”), filed on May 12, 2000, now U.S. Patent
No. 6,718,415 (“the ’8415 patent”). Ex. 1001, codes (54), (45), (22), (63).
The ’768 patent generally relates to computer interfaces, and
particularly, to “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, 3:18−22. An illustration of one embodiment
of the ’768 patent’s computer system is depicted in Figure 6, reproduced
below.
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Figure 6 shows a block diagram of a computer system using an
interface. Id. at 15:57−59. As shown in Figure 6, “computer system 600
includes attached computer module (ACM) 605 and peripheral console
610.” Id. at 15:59−65. “ACM 605 and [ ] peripheral console 610 are
interfaced through an exchange interface system (XIS) bus 615.” Id. at
15:65−67. XIS bus 615, which is also referred to as an interface channel,
includes power bus 616, video bus 617 and peripheral bus (XPBus) 618. Id.
at 15:67−16:2.
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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 5:49–53. “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 5:53–55. “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 5:56–60. “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 5:63–65.
A. Illustrative Claim
Of the challenged claims, claims 18, 22, 27, 30, 36, and 39 are
independent. Claims 21 depends from claim 18, claims 23, 24, and 26
depend from claim 22, claims 28 and 29 depend from claim 27, claims 31
and 32 depend from claim 30, claims 37 and 38 depend from claim 36, and
claim 40 depends from claim 39. Claim 18 is illustrative:
18. A computer, comprising:
a computer with
a connector configurable for coupling to a console;
an integrated central processing unit, graphics subsystem and
interface controller in a single chip;
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a first Low Voltage Differential Signal (LVDS) channel directly
coupled to the interface controller, adapted to convey encoded address
and data bits of a Peripheral Component Interconnect (PCI) bus
transaction in serial form, wherein the first LVDS channel comprises
a first plurality of unidirectional, differential signal pairs to convey
data in a first direction and a second plurality of unidirectional,
differential signal pairs to convey data in a second, opposite direction;
wherein the integrated graphics subsystem directly outputs digital
video display signals in a third differential signal channel; and
wherein the interface controller is configurable to convey the PCI bus
transaction on different numbers of differential signal pairs.
Ex. 1001, 42:42–61.
B. Prior Art Relied Upon
Petitioner relies upon the references listed below (Pet. 10):
Name Reference Date Exhibit No.
Chu
(“Chu ’330”)
U.S. Patent No.
6,345,330 B2 Feb. 5, 2002 1003
Cupps
U.S. Patent
Publication No.
2003/0135771 A1
July 17, 2003 1004

C. Asserted Grounds of Unpatentability
Petitioner asserts the following grounds of unpatentability (pet. 37).

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Claims Challenged 35 U.S.C. §1 References
18, 21–24, 26–32, and
36–40
103(a) Chu ’330, Cupps

II. ANALYSIS
35 U.S.C. § 325(d)
Petitioner relies upon Chu ’330 in the only one asserted ground.
Pet. 37. While Petitioner acknowledges that Chu ’330 “appears on the
voluminous list of references considered by the Patent Office,” Petitioner
contends that “no Examiner cited [Chu ’330] against any claims of the ’768
Patent or any of its related applications.” Id. at 131.
According to Petitioner, Chu ’330 is prior art because it “issued on
February 5, 2002.” Pet. 10. Petitioner contends that the’768 patent is not
entitled to a priority date before April 15, 2011” (Pet. 19), but rather, “the
’768 Patent is, at best, entitled to a priority date only as to the filing date of
[the ’436 patent in the priority chain, filed as the ’912 application on April
15, 2011].” Id. at 21 (citing Ex. 1008); see Ex. 1001, code (63). Petitioner
contends that “the Examiner did not determine the proper priority date of
any of the challenged claims during prosecution,” and that “even wrongly

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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assuming the Examiner made an implicit determination regarding the
priority date, such determination would have been materially erroneous.” Id.
at 131–132. In particular, Petitioner argues that the challenged claims in the
’768 patent recite an “integrated CPU-controller” and a “CPU_LVDS,” but
the ’768 patent’s purported written description support for the limitation was
not disclosed in the provisional or any of the non-provisional applications
preceding the ’436 patent. Pet. 24–26 (citing generally Exs. 1007,
1013–1018).
Patent Owner argues that the 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.”
Prelim. Resp. 11−12 (citing SMR Auto. Sys. USA, Inc. v. Magna Mirrors of
Am., Inc., IPR2018-00931, Paper 7 at 14 (PTAB Sept. 14, 2018)).
According to Patent Owner, “[t]he USPTO has already considered and
rejected Petitioner’s argument five times—twice during examination and,
critically, three times by the Board just weeks ago.” Id.
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.
The ’768 patent was issued from the ’922 application, which claims
priority to the ’758 application, filed May 12, 2000, through a chain of
continuation applications. Ex. 1001, codes (21) (63). In particular, the ’922
application is a continuation of the ’287 application, which in turn is a
continuation of the ’084 application, which in turn is a continuation of the
’924 application, which in turn is a continuation of the ’912 application,
which in turn is a continuation of the ’534 application, which in turn is a
continuation of the ’503 application, which in turn is a continuation of the
’656 application, which in turn is a continuation of the ’694 application,
which in turn is a continuation of the ’214 application, which then in turn is
a continuation of the ’758 application. Id.
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Patent Owner’s Figure provides a timeline of the priority chain for the
’768 patent, up to child patent, U.S. Patent No. 9,703,750 (“the ’750 child
patent”), which is reproduced below. Prelim. Resp. 7.

Patent Owner’s Figure above shows the filing dates of the applications
in the priority chain of the ’768 patent (and the ’750 child patent), along with
other related applications, including provisional U.S. Application No.
60/083,886 (“the ’886 provisional”), and U.S. Application No. 09/149,882
(“the ’882 application”) which was issued as Chu ’330. Prelim. Resp. 7.
Patent Owner asserts that each application in the priority chain of the ’768
patent identifies each preceding application as required by 35 U.S.C. § 120,
and incorporates the prior applications by reference. Id.; see also, e.g., Ex.
1001, 1:13−35.
The ’758 application, issued as the ’8415 patent, is the first
non-provisional application in the priority chain of the ’768 patent. See Ex.
1001, code (63). The ’758 application incorporates by reference the ’882
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application (i.e., Chu ’330). Ex. 1013, 4:50–53. Chu ’330 claims priority to
the ’886 provisional and incorporates by reference the ’886 provisional.
Ex. 1003, code (60), 1:7–10.
The ’912 application, now the ’436 patent, filed on April 15, 2011, is
one of the intermediate applications in the priority chain of the ’768 patent.
See Ex. 1001, code (63). The ’912 application was filed with a preliminary
amendment (Ex. 1009, 12−28 (prosecution history of the ’436 patent)),
adding Figures 8 and 9 and corresponding disclosure from the ’886
provisional as Figures 8A and 8B and corresponding disclosure in the ’912
application. See id. at 15, 16, 26−28. The applicant also filed another
amendment in the ’912 application (id. at 379–395, 401–402), adding
Figures 10 and 16 and corresponding disclosure from the ’886 provisional as
Figures 8C and 24 and corresponding disclosure in the ’912 application. See
id. at 382, 392, 401–402.
In its Petition, Petitioner argues the ’886 provisional was not properly
incorporated by reference into the ’768 patent family, and thus, the
amendments adding the subject matter from the ’886 provisional into the
’768 patent family via the ’912 application improperly introduced new
matter. Pet. 19−33. Accordingly, Petitioner contends that the earliest
possible priority date to which the claims of the ’768 patent could be entitled
is April 15, 2011, the filing date (the date of the preliminary amendment
“introduced” the matter) in the ’912 application issued as the ’436 patent.
Id. at 33.
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However, during the prosecution of the ’912 application (i.e., the ’436
patent), the applicant argued that these amendments were proper because the
’758 application incorporated by reference the ’882 application (Chu ’330),
and the ’882 application incorporated the ’886 provisional by reference. Ex.
1009, 26, 392. “When 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). In fact, the
prosecution history of the ’912 application shows that when the subject
matter from the ’886 provisional was added to the ’912 application, the
applicant specifically directed the Examiner to the incorporation by
reference statement in the transmittal form filed in the ’882 application (Chu
’330) as support for the amendments. Ex. 1009, 26, 392 (“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 in the ’912
application 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.” Id. The Examiner
in the ’912 application also did not require the applicant to change the
benefit claim from “continuation” to “continuation-in-part.” See generally
Ex. 1009. Nor did the Examiner require the applicant to change the benefit
claim from “continuation” to “continuation in-part.” Id. Instead, the
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Examiner entered the amendments and subsequently allowed the ’912
application with the subject matter added from the ’886 provisional. Id. at
430–432 (Notice of Allowance and Fee(s) Due), 434 (Notice of
Allowability).
In addition, another petitioner (Samsung Electronics Co., LTD.
(“Samsung”)) previously presented to the Office substantially the same
arguments that the amendments adding the subject matter from the ’886
provisional 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 [the] ’886 [provisional]” 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 the ’886 provisional. See, e.g., IPR2021-00604,
Paper 7, 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 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.
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. at 9. That is, under Part II of the Advanced Bionics
framework, Petitioner has the burden to show that the Examiner erred. Id.
As discussed above, Petitioner argues that the ’768 patent is not
entitled to a priority date before April 15, 2011, the filing date of the ’436
patent. Pet. 33. In particular, Petitioner contends that the ’886 provisional
was not properly incorporated by reference into the ’768 patent family, and
thus, the amendments adding the subject matter from the ’886 provisional
into the ’768 patent family via the ’436 patent improperly introduced new
matter. Pet. 19−33.
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Petitioner admits that the ’758 application (, i.e., the first non-
provisional application in the priority chain that issued as the ’8415 patent,)
incorporated by reference the ’882 application, i.e., Chu ’330. Id. at 26–27;
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, 1:13−35,
9:66−10:2; Ex. 1008, 1:12−27, 9:27−29. Nonetheless, Petitioner argues that
“Chu ’330 never incorporated by reference the ’886 Provisional.”
Pet. 29−33.
In particular, Petitioner argues that: a) the transmittal form filed in
Chu ’330 does not identify the ’886 provisional (Pet. 29–30); that b) any
incorporation by reference statement must have appeared in Chu ’330 itself
(id. at 31–32); that c) a priority claim to the ’886 provisional is distinct from
an incorporation by reference (id. at 32–33); and that d) the reasonable
Examiner standard does not apply to the analysis of the ’768 patent’s
priority chain because these patents have issued. Id. at 28–29, fn. 3.
Here, Petitioner has the burden to show that the Examiner erred in
determining that Chu ’330 incorporated by reference the ’886 provisional.
Advanced Bionics, Paper 6 at 8.
We address below Petitioner’s arguments in turn.

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a. The Application Transmittal Form Does Not Identify The
’886 Provisional
To support its argument that Chu ’330 never incorporated by
reference the ’886 provisional, Petitioner contends that “[t]he checked box in
the transmittal form [filed in the ’882 application (later issued as Chu ’330)]
does not identify the ’886 Provisional.” Pet. 29–30. Petitioner provides an
annotated figure showing a copy of the application transmittal form
submitted with the ’882 application, reproduced below, to illustrate its
contentions.

Id. at 30; see also Ex. 1011, 81. 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 “(useable if Box 4b is
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checked)” in Box “5 Incorporation By Reference” to illustrate its
contentions.
Petitioner argues that nothing in the transmittal form above identifies
“with detailed particularity what specific material” Chu ’330 incorporates.
Pet. 30 (quoting Hollmer v. Harari, 681 F.3d, 1351, 1357 (Fed. Cir. 2012)
(“Hollmer”). Petitioner also avers that “the 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 that “[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.’” Id. at 30–31, fn. 4.
However, Petitioner’s arguments narrowly focus on the application
transmittal form alone. Pet. 29−30. As the U.S. Court of Appeals for the
Federal Circuit (“the Federal Circuit”) has explained, the incorporation by
reference analysis includes “the four corners of the application.” Hollmer,
681 F.3d at 1358.
In Hollmer, 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 the referenced application and at least
two other applications by the same inventors that had the same title as the
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.
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Unlike Hollmer, here, the ’882 application that issued as Chu ’330
provided an incorporation by reference statement of the applicant’s prior
applications in the application transmittal form and clearly identified the
applicant’s prior applications, which included the ’886 provisional, in the
first sentence (in the “Cross Reference to Related Applications” section) of
the Specification on filing. See Ex. 1011, 83.
As shown by its prosecution history, the ’882 application was filed
with an application transmittal form with the “Incorporation By Reference”
box “5” 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.
See Ex. 1011, 79 (emphases added).
The applicant also clearly identified his prior applications in the
Specification of the ‘882 application on filing. The first sentence in the
“Cross Reference to Related Applications” section of the ’882 application,
for example, 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” (the ’886 provisional) and of U.S. Provisional Application No.
60/092,706 filed on July 14, 1998. Id. at 83. The USPTO accepted the
benefit claims to these prior applications 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.
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A reasonably skilled artisan would have recognized that the applicant
intended to incorporate his prior applications, including the ’886 provisional,
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 would have sufficiently identified the
applicant’s prior applications, including the ’886 provisional, as the
referenced prior applications, distinguishing them from all other documents
for incorporation.
A reasonably skilled artisan would not have ignored the applicant’s
incorporation by reference statement just because Box 4b on the application
transmittal form was not checked or because the applicant was not filing a
continuation or divisional application. As the Federal Circuit has explained,
“[t]he incorporation standard relies only on the reasonably skilled artisan
and his or her ability to deduce from language, however, imprecise, what a
host document aims to incorporate.” Husky Injection Molding 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, in light of the benefit
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claims to the prior applications, which included the ’886 provisional, and
recognized that the applicant incorporated by reference those prior
applications:
(1) when the applicant filed the preliminary amendment that added
Figures 8 and 9 and corresponding disclosure from the ’886 provisional as
Figures 8A and 8B and corresponding disclosure in the ’912 application in
the priority chain, in which the applicant directed the Examiner to the
application transmittal form as support for the amendment (Ex. 1009, 15, 16,
26−28);
(2) when the applicant filed another amendment on December 16,
2011, that added Figures 10 and 16 and corresponding disclosure from the
’886 provisional 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
(3) when the applicant filed a similar amendment in U.S. Application
No. 12/561,138, as part of a separate priority chain, directing the Examiner
to the application transmittal form submitted in the ’882 application as
support for the amendment. Ex. 2003, 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, and all ten continuation
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applications in the priority chain of the ’768 patent, including the ’758
application. Moreover, none of the Examiners required the applicant to
change its benefit claims from “continuation” to “continuation-in-part” in
those ten continuation applications.
For the foregoing reasons, we are not persuaded by Petitioner’s
argument that Chu ’330 did not properly incorporate the subject matter of
the ’886 provisional.
In addition, as discussed above, Petitioner admits that the ’758
application (the first non-provisional application in the priority chain issued
as the ’8415 patent), incorporated by reference the ’882 application. Pet.
26–27; see also Ex. 1013, 4:50−53. Further, it 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, 1:13−35,
9:66−10:2; Ex. 1008, 1:12−27, 9:27−29.
As such, we find that Petitioner has failed to show (1) the ’768 patent
is not entitled to a priority date before April 15, 2011, (2) the ’436 patent’s
parent applications in the’768 patent family did not properly incorporate by
reference the ’886 provisional, and (3) the amendments adding the subject
matter from the ’886 provisional improperly introduced new matter. Pet.
19−33.

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b. Incorporation By Reference Statement Must Have Appeared
In Chu ’330 Itself
Petitioner further argues that, even if the application transmittal form
of Chu ’330 included a statement that purportedly incorporated by reference
the ’886 provisional, “that statement would be inoperative because a [person
of ordinary skill in the art]’s analysis of what a patent incorporates is limited
to the four corners of the patent itself.” Pet. 31. According to Petitioner, a
person of ordinary skill in the art (“POSITA”) “would not have known if a
patent incorporates another document based on a statement buried in a
transmittal form.” Id. Accordingly, Petitioner contends that “any
incorporation by reference statement must have appeared in Chu[’]330
itself.” Id. at 31–32.
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. Here, the
application transmittal form is a part of the application, i.e., included in the
four corners 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
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application and a patent submitted in a transmittal letter.). Moreover,
Petitioner acknowledges that an applicant filing a continuation or divisional
application could have used the USPTO application transmittal form, which
includes check box “5” titled “Incorporating By Reference” for
incorporating a prior application. Pet. 30−31, fn. 4.
Therefore, we are not persuaded by Petitioner’s arguments that (1) an
incorporation by reference statement appeared in an application transmittal
form “would be inoperative,” (2) a POSITA “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.”
c. A Priority Claim to the ’886 Provisional Is Distinct from an
Incorporation by Reference
Petitioner contends that, although Chu’330 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” in the first
sentence of the Specification, this statement in Chu ’330 “is at best a priority
claim to the ’886 Provisional that is distinct from an incorporation by
reference.” Pet. 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 here. In de Seversky,
“the parent application . . . contains no ‘incorporation-by-reference’
language whatsoever.” de Seversky, 474 F.2d at 674. In contrast, the
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applicant in the ’882 application filed an application transmittal form that
includes an incorporation by reference statement of its 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 clearly identifying the applicant’s prior applications (including
the ’886 provisional), which would have sufficiently identified the ’886
provisional and the other of applicant’s prior applications as the referenced
prior applications, distinguishing them from all other documents. In short,
the ’882 application identified the ’886 provisional with particularity and
would have directly led a reasonably skilled artisan to the document
intended to be incorporated.
On this record, Petitioner has not shown that the Examiner erred in
determining that the ’882 application (Chu ’330) incorporated the ’886
provisional by reference. Accordingly, Petitioner also has not shown that
the Examiner erred in entering the amendments that added the subject matter
of the ’886 provisional, that has been incorporated by reference, in the ’912
application.
d. The Reasonable Examiner Does Not Apply to the Analysis
of the ’768 Patent’s Priority Chain
Petitioner further argues that “[t]he reasonable Examiner standard
does not apply to the analysis of the ’768 Patent’s priority chain because
these patents have issued.” Pet. 28–29, fn. 3 (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]
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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
that the patent-drafter intended to be incorporated.” Id. at 28 (quoting
Hollmer, 681 F.3d at 1357).
We are not persuaded by Petitioner’s arguments. Here, the question
is, and it is Petitioner’s burden to show, whether the Examiner erred in
determining that the Chu ’330 incorporated by reference the ’886
provisional. As the Board stated in 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.
In this case, Petitioner does not explain why the Examiner’s
determination that the ’882 application (later issued as Chu ’330)
incorporated by reference the ’886 provisional was in error if a reasonable
examiner would have found that the identification in the ’882 application
was reasonably precise to incorporate the ’886 provisional by reference.
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.
Nevertheless, even applying the POSITA standard here, we find that
Petitioner fails to show that the Examiner erred in determining that the ’882
application incorporated the ’886 provisional by reference. As discussed
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above in Section II.A.2.a, unlike Hollmer where the incorporation language
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 ’886 provisional and the
applicant’s other prior applications in the first sentence of the Specification
on filing.
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 ’886 provisional and the applicant’s other
prior provisional applications as the referenced prior applications,
distinguishing them from all other documents. Husky Injection, 838 F.3d at
1248. In short, the ’882 application identified the ’886 provisional with
particularity and would have directly led a reasonably 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 the ’886 provisional by
reference.
3. § 325(d) Conclusion
For the foregoing reasons, we determine that (a) the same or
substantially the same arguments previously were presented to the Office,
and (b) Petitioner fails to show that the Examiner erred in determining that
the ’882 application (issued as Chu ’330) incorporated by reference the ’886
provisional or in entering the amendments that added the subject matter from
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the ’886 provisional in the ’912 application. 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.
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied, and no trial is instituted.

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For PETITIONER:

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