ACQIS LLCDownload PDFPatent Trials and Appeals BoardOct 7, 2021IPR2021-00607 (P.T.A.B. Oct. 7, 2021) Copy Citation Trials@uspto.gov Paper 7 571-272-7822 Date: October 7, 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. ____________ IPR2021-00607 Patent RE45,140 E ____________ Before THU A. DANG, JONI Y. CHANG, and PATRICK M. BOUCHER, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 325(d) IPR2021-00607 Patent RE45,140 E 2 I. INTRODUCTION Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes review (“IPR”) of claims 14−38 (“the challenged claims”) of U.S. Patent No. RE45,140 E (Ex. 1001, “the ’140 patent”). Paper 1 (“Pet.”), 3. ACQIS LLC (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “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.” For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’140 patent. A. Related Matters The parties indicate that the ’140 patent is involved in Acqis LLC v. Samsung Electronics Co., Ltd., No. 2:20-cv-00295 (EDTX). Pet. 1; Paper 3, 1. The ’140 patent also is involved in IPR2021-00670. B. The ’140 Patent The ’140 patent relates to an interconnection between two physically separate units of a personal computer system. Ex. 1001, 14:5−7. The first unit, an attached computing module, contains the core computing power and environment for a computer user. Id. at 14:7−9. The second unit, a peripheral console, contains the power supply and primary input and output IPR2021-00607 Patent RE45,140 E 3 devices for the computer system. Id. at 14:9−11. The units are coupled together to form a fully functional personal computer system. Id. at 14:11−13. Figure 13 of the ’140 patent is reproduced below with annotations added by Petitioner highlighting the interconnection. Pet. 8. Annotated Figure 13 above shows a block diagram of a computer system using an interface. Id. at 18:30−40. As shown, computer system 1300 includes attached computer module (ACM) 1305 and peripheral console 1310. Id. at 18:41−42. ACM 1305 and peripheral console 1310 are interfaced through exchange interface system (XIS) bus 1315. Id. at 18:46−48. XIS bus 1315 includes power bus 1316, video bus 1317 and IPR2021-00607 Patent RE45,140 E 4 peripheral bus (XPBus) 1318, which is also referred to as an interface channel. Id. at 18:46−51. C. Illustrative Claim Of the challenged claims, claims 14, 18, 22, 26, 30, and 35 are independent. Claims 15−17 depend from claim 14; claims 19−21 depend from claim 18; claims 23−25 depend from claim 22; claims 27−29 depend from claim 26; claims 31−34 depend from claim 30; claims 36−38 depend from claim 35. Claim 14 is illustrative: 14. A method of improving performance of a computer, comprising: obtaining an integrated Central Processing Unit (CPU) with a graphics controller in a single chip; connecting a Differential Signal channel directly to the integrated CPU and graphics controller to output video data; conveying Transition Minimized Differential Signaling (TDMS) signals through the Differential Signal channel; connecting memory directly to the integrated CPU and graphics controller; providing a connector for the computer for connection to a console; and providing a first Low Voltage Differential Signal (LVDS) channel to couple to the connector, the first LVDS channel comprising two unidirectional, serial bit channels that transmit data in opposite directions. Ex. 1001, 22:44–60. IPR2021-00607 Patent RE45,140 E 5 D. Prior Art Relied Upon Petitioner relies upon the references listed below (Pet. 3−4): Name Reference Date Exhibit No. Chu (“Chu ’886”) US Provisional Application No. 60/083,886 May 1, 1998 1004 Chu (“Chu ’330”) US Patent No. 6,345,330 B2 Feb. 5, 2002 1005 Huang U.S. Patent No. 8,253,750 B1 Aug. 28, 2012 1007 E. Asserted Grounds of Unpatentability Petitioner asserts the following grounds of unpatentability (Pet. 6)1: Claims Challenged 35 U.S.C. § References 14−38 103(a) Chu ’886, Chu ’330 14, 15, 17−23, 25−31, 34−38 103(a) Huang, Chu ’330 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. IPR2021-00607 Patent RE45,140 E 6 II. ANALYSIS A. 35 U.S.C. § 325(d) Petitioner relies upon Chu ’330 in each asserted ground and Chu ’886 in one asserted ground. Pet. 6. Petitioner contends that the United States Patent and Trademark Office (“USPTO” or “Office”) “erred in overlooking Chu ’330 and Chu ’886.” Id. at 7. To support its contention, Petitioner argues that “Chu ’886 was not properly incorporated by reference into the ’140 Patent family, and the earliest priority date to which the claims relying on the Chu ’886 disclosure are entitled is November 10, 2011.” Id. at 7, 9−17. Petitioner also argues that “the 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 ’140 Patent.” Id. at 7−8. Patent Owner counters that the USPTO has already considered and rejected Petitioner’s argument regarding the incorporation by reference of Chu ’330 and Chu ’886. Prelim. Resp. 33−39. Patent Owner argues that the Board should exercise its discretion under § 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 34−35 (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). IPR2021-00607 Patent RE45,140 E 7 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., 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). “[U]nder § 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 IPR2021-00607 Patent RE45,140 E 8 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”). 1. Part I – whether the same or substantially the same arguments previously were presented to the Office We first determine whether the same or substantially the same arguments previously were presented to the Office. Advanced Bionics, Paper 6 at 8. The ’140 patent was issued from U.S. Application No. 14/109,749 (“the ’749 application”), filed on December 17, 2013. Ex. 1001, codes (21), (22). The ’140 patent is a reissue patent of U.S. Patent No. 6,643,777 (“the ’777 patent”) and claims priority through a chain of reissue continuation applications. Id. at codes (63), (64). Patent Owner’s Figure provides a timeline of the ’140 patent’s priority chain and other related applications, which is reproduced below. Prelim. Resp. 6. IPR2021-00607 Patent RE45,140 E 9 Patent Owner’s Figure above shows the filing dates of the reissue applications in the priority chain of the ’140 patent and other related applications. Each reissue application in the ’140 patent’s priority chain identifies each preceding application as required by 35 U.S.C. § 120 and incorporates the prior applications by reference. See, e.g., Ex. 1001, 1:24−31. Each reissue application in the ’140 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, which was issued as U.S. Patent No. 6,216,185 (“Chu ’185”). See, e.g., Ex. 1002, 4; Ex. 2001, 15. Chu ’330 claims priority to Chu ’886 and incorporates by reference Chu ’886. Ex. 1006, 2−3, 5, 7. U.S. Application No. 12/561,138 (“the ’138 application”), now U.S. Patent No. RE42,984 (“the ’984 patent”), filed on September 16, 2009, is an IPR2021-00607 Patent RE45,140 E 10 intermediate reissue application in the priority chain of the ’140 patent. Ex. 1001, code (63). The ’138 application was filed with a preliminary amendment, adding Figures 2b, 3, 4, and 7 and the accompanying description from Chu ’185 and Figures 2, 6, 11, and 23 and the accompanying description from Chu ’330, as Figures 9 through 16 and corresponding disclosure in the ’138 application. Ex. 1015, 2−13, 49−74 (prosecution history of the ’138 application). The applicant further amended the ’138 application on June 17, 2011, by adding Figures 3 and 4 and the accompanying description from Chu ’330 and Figures 8 and 9 and the accompanying description from Chu ’886. Id. at 344−377. In its Petition, Petitioner argues that the ’140 patent did not properly incorporate by reference Chu ’330 and Chu ’886, and the amendments adding the subject matter from Chu ’886 improperly introduced new matter. Pet. 9−17. However, Petitioner admits that, during the prosecution of the ’138 application, the applicant argued that these amendments were proper because “the ’185 patent and Chu ’330 were incorporated into the ’138 application by reference,” and “Chu ’886 was incorporated into Chu ’330 by reference.” Pet. 10−11 (citing Ex. 1015, 20, 25). Indeed, the prosecution history of the ’138 application shows that when the subject matters from Chu ’330 and Chu ’886 were added to the ’138 application, the applicant specifically directed the examiner to the incorporation by reference of Chu ’330 and Chu ’185, as well as, the incorporation by reference statement in the transmittal form filed in the ’882 application (Chu ’330), as support IPR2021-00607 Patent RE45,140 E 11 for the amendments. Ex. 1015, 73, 363. The applicant in the Remarks sections of the amendments also argued that “the ’777 patent incorporated by reference U.S. Application Nos. 09/149,548, now issued as the’185 patent, and 09/149,882, now issued as U.S. Patent No. 6,345,330 (the ’330 patent),” “which, in turn, claimed the benefit of and incorporated by reference U.S. Provisional Application No. 60/083,886 . . . (See checked incorporation by reference box in utility patent application transmittal of U.S. Application No. 09/149,882 filed on September 8, 1998).” Id. 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 35 U.S.C. § 112, ¶ 1. Prelim. Resp. 7−9; Ex. 1015. Instead, the examiner entered the amendments and subsequently allowed the ’138 application with the subject matter added from Chu ’886. Ex. 1015, 446 (Notice of Allowance and Fee(s) Due). For the foregoing reasons, we determine that the Petition presents the same or substantially the same arguments that were previously presented to the Office. Consequently, the first part of the Advanced Bionics framework is satisfied. 2. Part II – whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims Because the first part of the Advanced Bionics framework is satisfied, we next determine 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. IPR2021-00607 Patent RE45,140 E 12 In its Petition, Petitioner takes the position that “Chu ’886 was not properly incorporated by reference into the ’140 Patent family, and the earliest priority date to which the claims relying on the Chu ’886 disclosure are entitled is November 10, 2011.” Pet. 7−8, 9−17. And “the 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 ’140 Patent.” Id. at 7−8. To support its position, Petitioner advances several arguments. We address below each of those arguments in turn. First, Petitioner argues 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,’” (hereafter “the ‘essential material’ requirement”) and that “the subject matter added from Chu ’886 is essential to providing written description support for the elements of the challenged claims” of the ’140 patent. Pet. 11−12 (quoting 37 C.F.R. § 1.57(c) and citing Manual of Patent Examining Procedure (“MPEP”) § 608.01(p) (6th Ed. Jan. 1995) (emphasis added)). Petitioner’s argument is misplaced. Petitioner conflates the two Subparts of MPEP § 608.01(p)—namely, Subpart I (“Review of Applications Which are To Issue as Patents”) and Subpart II (“Review of Applications Which Are Relied on To Establish an Earlier Effective Filing Date”). As Patent Owner points out (Prelim. Resp. 42), MPEP § 608.01(p) sets forth a clear distinction between those applications that are under examination for issuance under Subpart I and those applications which are relied on for priority under Subpart II. See MPEP § 608.01(p) (7th Ed. July IPR2021-00607 Patent RE45,140 E 13 1998) (the version of the MPEP that was effective at the time of filing U.S. Application No. 09/312,199, which issued as the ’777 patent). 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) (7th Ed. July 1998) (emphasis added); see also all subsequent versions of the MPEP, which contain the same guidance. That is because “[n]either 35 U.S.C. 119(a) or 35 U.S.C. 120 places any restrictions or limitations as to how the claimed invention must be disclosed in the earlier application to comply with 35 U.S.C. 112, first paragraph.” MPEP § 608.01(p) (7th Ed. July 1998); 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) (7th Ed. July 1998) (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 IPR2021-00607 Patent RE45,140 E 14 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. Rev. 3 Aug. 2005); MPEP § 608.01(p) (9th Ed. Rev. 11 Mar. 2014). Therefore, we do not agree with Petitioner that the “essential material” requirement applies to the reissue continuation applications in the priority chain of the ’140 patent. In any event, the ’777 patent, the ’140 patent, and the prior reissue applications in the ’140 patent’s priority chain comply with the “essential material” requirement. As Patent Owner explains, the subject matter added from Chu ’886 to the ’138 application was “non-essential material” prior to the ’138 application because none of the applications preceding the ’138 application claims that subject matter. Prelim. Resp. 14−23. And “[w]hen claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 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). Prelim. Resp. 26−30. Indeed, whether certain disclosure is “essential” depends entirely on what the claims recite in the particular application, not those in the later-filed application as Petitioner alleges. “Essential material” is expressly defined as material necessary to provide written description of the claimed invention as required by 35 U.S.C. § 112, ¶ 1, describe the claimed invention as required by 35 U.S.C. § 112, ¶ 2, and describe the corresponding structure, material, IPR2021-00607 Patent RE45,140 E 15 or acts for performing a recited function in a means or step for element as required by 35 U.S.C. § 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 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 applicant[] 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” (emphasis added)). 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 ’140 patent’s priority chain, much less how that subject matter is required to provide written description support for the claims of those prior applications. 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 ’140 patent. Pet. 11−12. However, that subject matter added from Chu ’886 to the ’138 application, which Petitioner contends is essential material, is expressly disclosed in the specification of the ’140 patent, not through an incorporation by reference. IPR2021-00607 Patent RE45,140 E 16 See Pet. 14−15 (admitting that the subject matter added from Chu ’886 into the ’138 application was later included in the ’140 patent). 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 the prior applications in the ’140 patent’s priority chain was improper. Pet. 11−12. Second, Petitioner argues that Chu ’330 did not properly incorporate the subject matter of Chu ’886. Pet. 12−14. According to Petitioner, using a check box in the application transmittal letter to incorporate Chu ’886 (which is a provisional application) 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.” Id. (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 incorporated by reference’ may appear in the specification or in the application transmittal letter”)). We are not persuaded by Petitioner’s argument. 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). And “the relevant inquiry is whether a reasonable examiner would be so befuddled by the language of IPR2021-00607 Patent RE45,140 E 17 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)). Here, the ’882 application (Chu ’330) was filed with a transmittal form with the “incorporation by reference” box checked, 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. 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 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 transmittal form because Box 4b was not checked or because the applicant was not filing a continuation or division application. Rather, as we pointed out in our Decision Denying Institution in IPR2021-00604, Paper 7 at 17−18, 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 including: IPR2021-00607 Patent RE45,140 E 18 (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 U.S. Application No. 13/087,912 (“the ’912 application”), in which the applicant directed the examiner to the transmittal form as support for the amendment (IPR2021-00604, Ex. 1011, 15, 16, 26−28); (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 382, 392, 401); and (3) when the applicant filed a similar amendment in the ’138 application, directing the examiner to the 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 35 U.S.C. § 112, ¶ 1 for lack of written description support for the claims. 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 ’777 patent, and all six reissue continuation applications in the priority chain of the ’140 patent, as well as all eleven continuation applications in the priority chain of U.S. Patent No. 9,703,750 (“the ’750 patent”) as we noted in our Decision Denying Institution in IPR2021-00604, Paper 7 at 18. Moreover, none of IPR2021-00607 Patent RE45,140 E 19 the examiners required the applicant to change its benefit claims from “continuation” to “continuation-in-part” in those eleven continuation applications in the ’750 patent’s priority chain. For the foregoing reasons, we determine that Petitioner fails to show that Chu ’330 did not properly incorporate the subject matter of Chu ’886. Pet. 12−13. Third, Petitioner argues that the ’140 patent did not properly incorporate by reference Chu ’330, which in turn incorporated by reference Chu ’886. Pet. 14. According to Petitioner, “the ’140 patent only made reference to an application number” of the application issued as Chu ’330, which is improper under 37 C.F.R. § 1.57(d), which states that “‘[e]ssential material’ may be incorporated by reference, but only by way of incorporation by reference to a U.S. patent or U.S. patent application publication.” Id. (citing Ex. 1001, 5:66−6:4, 15:44−58, 16:46−50; 37 C.F.R. § 1.57(d)). We are not persuaded by Petitioner’s argument. As discussed above, the ’777 patent, the ’140 patent, and the prior reissue applications in the ’140 patent’s priority chain comply with the “essential material” requirement. The subject matter added from Chu ’886 to the ’138 application was “non-essential material” prior to the ’138 application, and that subject matter was expressly disclosed in the ’138 application and in each of the subsequent continuation applications, including the ’140 patent, not through an incorporation by reference. See Pet. 14−15 (admitting that the subject IPR2021-00607 Patent RE45,140 E 20 matter added from Chu ’886 into the ’138 application was later included in the ’140 patent). Moreover, Petitioner does not explain why the information set forth in the ’140 patent does not unambiguously identify Chu ’330. The ’140 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, 15:53−58. The application number of the application issued as Chu ’330, along with the title and the inventor’s name 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 ’140 patent, and the prior reissue application in the ’140 patent’s priority chain, as well as all eleven continuation applications in the priority chain of the ’750 patent as we pointed out in our Decision Denying Institution in IPR2021-00604, Paper 7 at 20. Moreover, an examiner considered twice the incorporation by reference statement along with the amendments that added the subject matters from Chu ’330 and Chu ’886 to the ’138 application. The examiner 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. For the foregoing reasons, we are not persuaded by Petitioner’s argument that the ’140 patent did not properly incorporate Chu ’330 by reference. Pet. 14. IPR2021-00607 Patent RE45,140 E 21 Fourth, Petitioner argues that, because the subject matter added from Chu ’886 was not included in any of the applications in the ’140 patent’s priority chain before it was added by amendment in the ’138 application and then filed with the U.S. Application No. 13/294,108 (“the ’108 application”), the earliest possible priority date for any of the ’140 patent claims relying on this subject matter for written description support under 35 U.S.C. § 112, ¶ 1, is the date of filing the ’108 application, November 10, 2011. Pet. 14−17. However, the amendments to the ’138 application were proper because, as discussed above, “[w]hen claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 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. 26−30. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’140 patent’s 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 ’140 patent is November 10, 2011. 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 IPR2021-00607 Patent RE45,140 E 22 ’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 ’140 Patent.” Accordingly, we exercise our discretion not to institute 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 § 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. IPR2021-00607 Patent RE45,140 E 23 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 Copy with citationCopy as parenthetical citation