ACQIS LLC

Patent Trials and Appeals Board

Dec 2, 2021

IPR2021-01103 (P.T.A.B. Dec. 2, 2021)

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

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

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

IPR2021-01103
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)

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I. INTRODUCTION
Intel Corporation (“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 2 (“Pet.”),
1. ACQIS LLC (“Patent Owner”) filed a Preliminary Response (Paper 6,
“Prelim. Resp.”). Pursuant to our prior authorization, Petitioner filed a
Reply to the Preliminary Response. Paper 7 (“Reply”). Patent Owner filed
a Sur-reply. Paper 8 (“Sur-reply”).
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.” 35 U.S.C. § 325(d) (2018). For the reasons
stated below, we exercise our discretion under § 325(d) not 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.
Lenovo Group Ltd., No. 6:20-cv-00967 (W.D. Tex. 2020). Pet. 1;
Paper 4, 2.
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
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peripheral console, contains the power supply and primary input and output
devices for the computer system. Id. at 14:9−11. The units are coupled
together to form a fully functional personal computer system. Id. at
14:11−13. Figure 13 of the ’140 patent is reproduced below.

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 peripheral bus (XPBus) 1318,
which is also referred to as an interface channel. Id. at 18:46−51.
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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; and 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.
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D. Prior Art Relied Upon
Petitioner relies upon the references listed below (Pet. 3−4):
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

E. Asserted Ground of Unpatentability
Petitioner asserts the following ground of unpatentability (Pet. 35)1:
Claims Challenged 35 U.S.C. § Reference(s)/Basis
14−38 103(a) Chu ’330, Cupps
II. ANALYSIS
A. Discretionary Denial Under 35 U.S.C. § 325(d)
Petitioner relies upon Chu ’330 in its sole asserted ground. Pet. 35.
Petitioner argues that while Chu ’330 appears on the voluminous list of

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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references considered by United States Patent and Trademark Office
(“USPTO” or “Office”), no Examiner cited Chu ’330 against any claims of
the ’140 patent or any of its related applications. Id. at 117. 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 ’140
patent] properly incorporated by reference the materials found only in”
U.S. provisional application No. 60/083,886 (Chu ’886). Id. Petitioner
further argues that “even wrongly assuming the Examiner made an implicit
determination regarding the priority date, such determination would have
been materially erroneous.” Id. at 118.
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. 10−31. 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 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 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
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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,
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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. Patent Owner’s Figure (reproduced below with color
annotations added) provides a timeline of the priority chain of the
’140 patent (light-blue filled box), relevant amendments, and other related
applications, including Chu ’886 (yellow) and U.S. Application No.
09/149,882 (“the ’882 application”), which was issued as Chu ’330 (red).
Prelim. Resp. 7.
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Annotated Patent Owner’s Figure above shows the filing dates of the
reissue applications in the priority chain of the ’140 patent, relevant
amendments, and other related applications. The ’140 patent was issued
from U.S. Application No. 14/109,749 (“the ’749 application”), which
claimed priority to U.S. Application No. 11/056,604 (“the ’604
application”), now U.S. Patent No. RE41,092 (“the ’092 patent”) (dark
blue), through a chain of continuation applications. Ex. 1001, codes (21),
(63). The initial parent application, the ’604 application (the ’092 patent),
was a reissue application of U.S. Patent No. 6,643,777 (“the ’777 patent”)
(dark purple), which was issued from U.S. Application No. 09/312,199
(“the ’199 application”) filed on May 14, 1999. Ex. 1013, code (64);
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Ex. 1007, codes (21), (22). Both the ’199 application and the ’604
application incorporated by reference the ’882 application (Chu ’330), which
in turn claimed priority to and incorporated by reference Chu ’886.
Ex. 1007, 5:9−13; Ex. 1013, 5:19−23; Ex. 1011, 78, 81, 83 (Prosecution
History of Chu ’330). Each subsequent reissue application in the
’140 patent’s 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, code (63), 1:24−31, 5:67−6:4;
Ex. 1008, 1:18−21, 5:50−54.
U.S. Reissue Application No. 12/561,138 (“the ’138 application”),
now U.S. Patent No. RE42,984 (“the ’984 patent”) (green), filed on
September 16, 2009, is an intervening application in the priority chain of the
’140 patent. Ex. 1001, code (63). During prosecution, the applicant
amended the ’138 application on June 17, 2011, by adding Figures 8 and 9
and the accompanying description from Chu ’886. Ex. 1009, 363
(Prosecution History of the ’984 patent).
In its Petition, Petitioner argues that the ’140 patent is not entitled to a
priority date before June 17, 2011, because the ’984 patent’s parent
applications did not properly incorporate by reference Chu ’886, and that the
amendment adding the subject matter from Chu ’886 into the ’138
application (the ’984 patent) improperly introduced new matter. Pet. 16−31.
However, during the prosecution of the ’138 application, the applicant
argued that the amendment was proper because the ’777 patent incorporated
by reference the ’882 application, which in turn claimed the benefit and
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incorporated by reference Chu ’886. Ex. 1009, 363. “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).
Indeed, the prosecution history of the ’138 application shows that,
when the subject matter from Chu ’886 was added to the ’138 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 amendment. Ex. 1009, 363. Specifically, the applicant in the
Remarks sections of the amendments also argued that “the ’777 patent
incorporated by reference U.S. Application Nos. 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” (Chu ’886) “(See checked incorporation by reference box in
utility patent application transmittal of U.S. Application No. 09/149,882
filed on September 8, 1998).” Id.
The Examiner did not object to the inclusion of the amendment as
new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1. Instead, the
examiner entered the amendment and subsequently allowed the ’138
application with the subject matter added from Chu ’886. Ex. 1009, 446
(Notice of Allowance and Fee(s) Due). As Patent Owner also points out
(Prelim. Resp. 8), each subsequent application in the ’140 patent’s priority
chain, including the ’749 application (issued as the ’140 patent), was
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amended to include the same figures and disclosure from Chu ’886 and, in
each application, the amendment was approved and entered by the
Examiner. See, e.g., Ex. 1006 (Prosecution History of the ’749 application),
145, 201−204 (Non-Final Rejection containing no new matter rejection).
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
were presented to the Office and Samsung failed to show that the Examiner
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erred in entering the amendments or in determining that Chu ’330
incorporated by reference Chu ’886. See, e.g., IPR2021-00607, Paper 7 at
6−22 (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. 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 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 ’140 patent is not
entitled to a priority date before June 17, 2011, because the ’984 patent’s
parent applications did not properly incorporate by reference Chu ’886, such
that the amendment adding the subject matter from Chu ’886 improperly
introduced new matter. Pet. 16−31. Petitioner admits that the ’199
application (issued as the ’777 patent) incorporated by reference the ’882
application, which issued as Chu ’330. Id. at 23−24; see also Ex. 1007,
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5:9−13. It also is undisputed that the ’604 application (the initial parent
application and a reissue application of the ’777 patent) incorporated by
reference the ’882 application (Ex. 1013, code (64), 5:19−23), and
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, code (63),
1:24−31, 5:67−6:4; Ex. 1008, 1:18−21, 5:50−54. Nonetheless, Petitioner
argues that “Chu ’330 never incorporated by reference the ’886 Provisional”
(Chu ’886). Pet. 23−31.
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.
a. Incorporated 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. 26−28. The transmittal form is
reproduced below with Petitioner’s annotations added. Ex. 1011, 81.
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Petitioner argues that nothing in the transmittal form above identifies
“with detailed particularity what specific material” Chu ’330 incorporates,
citing testimony of Bill Lin, Ph.D., for support. Pet. 28 (quoting Hollmer v.
Harari, 681 F.3d, 1351, 1357 (Fed. Cir. 2012) (“Hollmer”); citing Ex. 1002
¶¶ 70−72). Petitioner also avers that “the box 5 states that it is only ‘useable
if Box 4b is checked[,]’ which is not checked,” and that “[e]ven if Box 4b
were checked, Box 4b was limited ‘for continuation/divisional with Box 17
completed.’” Id. at 27−28 n.5.
However, Petitioner’s arguments and Dr. Lin’s testimony narrowly
focus on the transmittal form alone. Id. at 27−28; Ex. 1002 ¶¶ 70−72.
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As the Federal Circuit has explained, the incorporation by reference analysis
includes “the four corners of the application.” Hollmer, 681 F.3d at 1358.
In addition, 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. Id. at 1353, 1358. Therefore, the Federal Circuit held that the
incorporation language in Hollmer did not directly lead one of ordinary skill
in the art to that referenced application, but rather presented several potential
documents for incorporation. Id. at 1358.
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.
Ex. 1011, 81 (emphases added). This checked box on a USPTO transmittal
form shows that the applicant intended to incorporate by reference his prior
applications, in their entirety, when he was filing the ’882 application.
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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”
(Chu ’886) “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
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 would have sufficiently identified the applicant’s prior
applications (including Chu ’886) as the referenced prior applications,
distinguishing them from all other documents.
A reasonably skilled artisan would not have ignored the applicant’s
incorporation by reference statement just 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
standard relies only on the reasonably skilled artisan and his or her ability to
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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.”).
As we pointed out in our Decision Denying Institution in
IPR2021-00604, Paper 7 at 17−18, 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 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
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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. 1009, 363).
The Examiner in each of these cases did not object to the amendments
as new matter or issue a rejection under 35 U.S.C. § 112, ¶ 1 for lack of
written description support for the claims. NTP, 654 at 1277. Instead, the
Examiner entered the amendments and subsequently allowed the
’138 application with the subject matter added from Chu ’886. Ex. 1009,
446 (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 ’199 application (the ’777 patent), and all six
reissue 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 the
Examiners required the applicant to change its benefit claims from
“continuation” to “continuation-in-part” in those eleven continuation
applications.
For the foregoing reasons, the ’882 application identified Chu ’886
with particularity and would have directly led an ordinarily skilled artisan to
the document intended to be incorporated. Accordingly, we determine that
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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
’199 application (issued as the ’777 patent) incorporated by reference the
’882 application (issued as Chu ’330). Pet. 23−24; see also Ex. 1007,
5:9−13. It also is undisputed that the ’604 application (the initial parent
application and a reissue application of the ’777 patent) incorporated by
reference the ’882 application (Ex. 1013, code (64), 5:19−23), and
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, code (63),
1:24−31, 5:67−6:4; Ex. 1008, 1:18−21, 5:50−54. As such, we also find that
Petitioner has failed to show (1) the ’140 patent is not entitled to a priority
date before June 17, 2011, (2) the ’984 patent’s parent applications did not
properly incorporate by reference Chu ’886, and (3) the amendments adding
the subject matter from Chu ’886 in the ’138 application (issued as the ’984
patent) improperly introduced new matter. Pet. 16−31.
b. Transmittal form is part of the application
Petitioner argues that “[e]ven if the transmittal form of Chu330
included a statement that purportedly incorporated by reference the ’886
Provisional” (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. 28. According to Petitioner, a
person of ordinary skill in the art “would not have known if a patent
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incorporates another document based on a statement buried in a transmittal
form.” Id. at 28−29 (emphasis added). Petitioner contends that “any
incorporation by reference statement must have appeared in Chu330 itself.”
Id.
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. 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. 28−29 n.5.
Therefore, we are not persuaded by Petitioner’s arguments that
(1) an incorporation by reference statement appeared 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
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buried in a transmittal form,” and (3) “any incorporation by reference
statement must have appeared in Chu330 itself.” Id. at 28−29.
c. 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.
60/083,886 filed May 1, 1998” appeared in the first sentence of Chu ’330 “is
at best a priority claim to the ’886 Provisional that is distinct from an
incorporation by reference.” Pet. 29−30 (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
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). Id.
at 81, 83.
As discussed above, the incorporation by reference language together
with the benefit claims in the first sentence of the Specification of the ’882
application would have sufficiently identified the applicant’s prior
applications (including Chu ’886) as the referenced prior applications,
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distinguishing them from all other documents. In short, the ’882 application
identified Chu ’886 with particularity and would have directly led a
reasonably skilled artisan to the document intended to be incorporated.
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 ’138 application.
d. The incorporation by reference standard
Petitioner argues that “[t]he reasonable Examiner standard does not
apply to the analysis of RE140’s priority chain because these patents have
issued.” Pet. 25−26 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 that the patent-drafter
intended to be incorporated.” Id. at 25 (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
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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 in the art” (“POSITA”) standard to the particular facts in this
proceeding under the Advanced Bionics framework.
In any event, even applying the “POSITA” standard here, we find that
Petitioner fails to show that the Examiner erred in determining that the ’882
application (issued as Chu ’330) incorporated Chu ’886 by reference.
As discussed above in Section II.A.2.a, 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.
The incorporation by reference language together with the benefit
claims in the first sentence of the Specification of the ’882 application would
have sufficiently identified the applicant’s prior provisional applications
(including Chu ’886) as the referenced prior applications, distinguishing
them from all other documents. Husky Injection, 838 F.3d at 1248. In short,
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the ’882 application identified Chu ’886 with particularity and would have
directly led an ordinarily skilled artisan to the document intended to be
incorporated. Hollmer, 681 F.3d at 1357−58. Accordingly, even under the
“POSITA” standard, we find that Petitioner fails to show that the Examiner
erred in determining that the ’882 application (issued as Chu ’330)
incorporated Chu ’886 by reference.
3. 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 amendment that added the subject matter from
Chu ’886 in the ’138 application. 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.

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PETITIONER:

Yung-Hoon Ha
Christian Dorman
Theodoros Konstantakopoulos
DESMARAIS LLP
Intel-ACQIS-IPRService@desmaraisllp.com
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