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` Paper 15
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` Entered: November 28, 2022
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`v.
`ACQIS LLC,
`Patent Owner.
`____________
`
`IPR2021-01107; IPR2021-01108; IPR2021-011091
`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 Petitioner’s Request on Rehearing of
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`1 This Decision applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Decision to be filed in each proceeding. The
`parties are not authorized to use this heading style in any subsequent papers.
`
`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`
`INTRODUCTION
`I.
`Intel Corporation (“Petitioner”) filed a Petition in each of the above-
`identified proceedings, requesting an inter partes review (“IPR”) of the
`claims of U.S. Patent No. 9,529,768 B2 (Ex. 1001, “the ’768 patent”).
`Paper 12 (“Pet.”), 3. ACQIS LLC (“Patent Owner”) filed a Preliminary
`Response to each Petition (Paper 10, “Prelim. Resp.”). In each proceeding,
`Petitioner filed a Reply to the Preliminary Response (Paper 12, “Reply”),
`Patent Owner filed a Sur-reply (Paper 13, “Sur-reply”), and, upon
`consideration of the parties’ contentions and evidence, we exercised our
`discretion under 35 U.S.C. § 325(d) to deny institution. Paper 14
`(“Decision” or “Dec.”). Subsequently, Petitioner filed a Request for
`Rehearing of the Decision in each proceeding.3 Paper 15 (“Req. Reh’g”).
`As the arguments in Petitioner’s Requests for Rehearing are similar, we
`address all three above-identified Requests for Rehearing in this Decision.
`For the reasons that follow, Petitioner’s Requests for Rehearing are denied.
`
`II. STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). The party must identify
`
`
`2 For convenience, unless otherwise indicated, we cite to the record in
`IPR2021-01107.
`3 In each proceeding, Petitioner also filed a Request for Precedential Opinion
`Panel (POP) Review. Paper 16; Ex. 3001. Upon consideration, the POP
`panel denied Petitioner’s Requests for POP Review on October 17, 2022.
`Paper 17, 2.
`
`2
`
`
`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`specifically all matters we misapprehended or overlooked, and the place
`where each matter was previously addressed in a motion, an opposition, or a
`reply. Id. When reconsidering a decision on institution, we review the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of
`discretion may be determined if a decision is based on an erroneous
`interpretation of law, if a factual finding is not supported by substantial
`evidence, or if the decision represents an unreasonable judgment in weighing
`relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir.
`2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re
`Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000).
`
`III. ANALYSIS
`In its Request for Rehearing, Petitioner argues that “the Board
`misapprehended or overlooked statutes, regulations, Federal Circuit
`precedent, and facts advanced by the Petitioner, leading to errors in its
`Advanced Bionics I and II . . . analyses.”4 Req. Reh’g 1.
`As we explained in our Decision, institution of an inter partes review
`is discretionary. Dec. 9−10. In particular, Section 325(d) of 35 U.S.C.
`provides that “[i]n determining whether to institute or order a proceeding
`under this chapter, chapter 30, or chapter 31, the Director may take into
`
`
`4 Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte Gmbh,
`IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting
`forth a two-part framework for determining whether to exercise discretion to
`deny institution under § 325(d)).
`
`3
`
`
`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`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.”
`“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 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.
`
`1. Advanced Bionics Part I: Whether the art or arguments presented
`in the Petition are the same or substantially the same as those
`previously presented to the Office
`As an initial matter, Petitioner argues that the Board misapprehended
`the difference between the “‘new matter’ analysis an Examiner might
`undertake . . . , which requires a reasonable Examiner standard,” and the
`“separate ‘priority’ analysis a POSITA would undertake to determine
`whether the earlier issued parent applications provide continuous priority
`back to the original parent patent under 35 U.S.C. §120 . . . , which requires
`
`4
`
`
`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`a POSITA standard.” R’hg Req. 1. According to Petitioner, “the Board
`overlooks that a priority analysis is distinct from a new matter or § 112
`analysis.” Id. at 14−15.
`We are not persuaded by Petitioner’s argument. As noted in our
`Decision (Dec. 13), in its Petition, Petitioner argues that the ’768 patent is
`not entitled to a priority date before April 15, 2011, because the parent
`applications in the ’768 family did not properly incorporate by reference
`Chu ’8865, and that the amendments adding the subject matter from
`Chu ’886 into the ’768 patent family via the ’912 application6 improperly
`introduced new matter. Pet. 36−49. Notably, Petitioner’s priority argument
`rests on its new matter and § 112 arguments. Id. Our Decision merely
`addressed Petitioner’s arguments as set forth in its Petition. Dec. 8−27.
`Therefore, we did not overlook that a priority analysis is distinct from a new
`matter or § 112 analysis as Petitioner alleges.
`Petitioner also argues that the Advanced Bionics test does not apply
`here because “no evidence exists in the file history that the Examiner
`actually reviewed the parent applications for a priority analysis, it is
`improper to hold that the issue had been presented to the Office under
`[Advanced Bionics] when the Examiner had no obligation to consider the
`issue.” Req. Reh’g 13−14.
`
`
`5 U.S. Provisional Application No. 60/083,886 (“Chu ’886”).
`6 U.S. Application No. 13/087,912 (“the ’912 application”).
`5
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`
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`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`However, Petitioner ignores the prosecution history showing that
`Applicant in the ’912 application specifically presented the argument that its
`claims are entitled to the priority date of the earlier filed application.
`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).
`As explained in our Decision (Dec. 137), the prosecution history
`shows that, when the subject matter from Chu ’886 was added to the ’912
`application, an intermediate application in the priority chain of the ’768
`patent, Applicant specifically directed the Examiner to the incorporation by
`reference statement in the transmittal form as support for the amendments
`and argued that the ’912 application is a continuation of the ’758 parent
`application8, wherein “[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” (“Chu ’330”), “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).” Ex. 1009, 26, 392.
`
`
`7 A timeline of the priority chain of the ’768 patent and other related
`applications is provided in our Decision. Id. at 11−12.
`8 U.S. Application No. 09/569,758 (“the ’758 application”).
`6
`
`
`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`Therefore, we determined that the Petition presented the same or
`substantially the same arguments that were previously presented to the
`Office, satisfying the first part of the Advanced Bionics framework.
`Dec. 10−15. We are not persuaded by Petitioner’s argument that the
`Advanced Bionics test does not apply here.
`
`2. Advanced Bionics Part II: Whether Petitioner has demonstrated
`that the Office erred in a manner material to the patentability of the
`challenged claims
`Petitioner further argues that the Board incorrectly applied the “person
`of ordinary skill in the art” standard under Hollmer v. Harari, 681 F.3d 1351
`(Fed. Cir. 2012) (“Harari II”9) because under Harari II, “the POSITA’s
`analysis is confined to the specification—and does not include the
`transmittal.” Req. Reh’g 3, 5−10.
`Petitioner’s argument is unavailing, as Petitioner improperly conflates
`“application” with “specification.” As noted in our Decision (Dec. 23), the
`Federal Circuit in Harari II clearly explained that the incorporation by
`reference analysis includes “the four corners of the application.” Harari II,
`681 F.3d at 1358. Our rule specifically states that 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
`
`
`9 Petitioner refers to the Federal Circuit’s Hollmer v. Harari decision as
`Harari II, whereas our Decision denying institution cites to this case as
`Hollmer.
`
`7
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`
`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`application transmittals in their incorporation by reference analyses. See,
`e.g., Harari v. Hollmer, 602 F.3d 1348, 1352−53 (Fed. Cir. 2010); Harari II,
`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.). Here, it is undisputed that Applicant used a USPTO form
`that provided a check box to incorporate by reference each prior application
`in Chu ’330. See Ex. 1011, 79−82.
`Petitioner further argues that the Board overlooked or misapprehended
`the fact that the transmittal introduces ambiguities as to which application
`was meant to be incorporated by reference. Req. Reh’g 10−13. According
`to Petitioner, “the Board erred in holding that the transmittal incorporates
`every one of the cross-referenced applications in Chu[ ’]330,” because “none
`of the three applications cross-referenced in Chu[ ’]330 meets the
`transmittal’s purported incorporation of only one ‘prior application, from
`which a copy of the oath or declaration is supplied’” and “Chu[ ’]330’s
`transmittal does not sufficiently distinguish Chu[ ’]886 from the other two
`cross-referenced applications.” Id.
`We are not persuaded by Petitioner’s arguments. As noted in our
`Decision, Applicant clearly identified its prior applications (including Chu
`’886) in the first sentence of the Specification. Dec. 17−22. Notably, the
`first sentence of the Specification of 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” (Chu ’886) “and of U.S. Provisional
`8
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`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`Application No. 60/092,706 filed on July 14, 1998.” Ex. 1011, 83. The
`USPTO accepted the benefit claims to these two prior applications
`(including Chu ’886) by placing them on the file wrapper cover of Chu ’330
`and the Examiner verified them by placing his or her initials on the file
`wrapper cover. Id. at 78.
`The incorporation by reference language in each of the transmittals
`together with the benefit claims in the first sentence of the Specification of
`Chu ’330 would have sufficiently identified Applicant’s prior applications
`(including Chu ’886) as the referenced prior applications, distinguishing
`them from all other documents. Ex. 1011, 79−83. Petitioner fails to
`recognize that Applicant submitted a transmittal containing the incorporation
`by reference statement for each of the prior applications. A reasonably
`skilled artisan would have recognized that Applicant intended to incorporate
`both prior applications (including Chu ’886) at the time of filing Chu ’330.
`Although Petitioner points out that the three applications cross-
`referenced in Chu ’330 could bring ambiguity as to which application was
`meant to be incorporated by reference (R’hg Req. 11), Applicant
`distinguished the prior applications (including Chu ’886) from Chu ’18510
`by identifying Chu ’185 as an application “being filed concurrently” and
`“incorporate[d] the material therein by reference” in the second sentence of
`the Specification. See Ex, 1011, 83. In fact, Petitioner admits that Chu ’185
`
`
`10 U.S. Non-provisional Application No. 09/149,548, issued as U.S. Patent
`No. 6,216,185 (“Chu ’185”).
`
`9
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`
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`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`“was filed on the same day as Chu[ ’]330 . . . and thus is not a ‘prior
`application.’” Req. Reh’g 11. Petitioner does not explain why a person of
`ordinary skill in the art would not have distinguished the prior applications
`(including Chu ’886) from Chu ’185.
`Here, Chu ’330 identified Chu ’886 with particularity and would have
`directly led an ordinarily skilled artisan to the document intended to be
`incorporated. 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)); cf. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421
`(2007) (“A person of ordinary skill is also a person of ordinary creativity,
`not an automaton.”). Moreover, under Part II of the Advanced Bionics
`framework, “[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.” Advanced Bionics, Paper 6 at 9.
`Finally, Petitioner argues that the instant case is factually similar to
`those in Harari II. Req. Reh’g 3−5. However, as noted in our Decision
`(Dec. 18), the intervening applications in Harari II merely identified the
`referenced application with the title 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
`10
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`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`application. Harari II, 681 F.3d at 1353, 1358. Therefore, the Federal
`Circuit held that the incorporation language in Harari II 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.
`Here, unlike Harari II, Chu ’330 provided an incorporation by
`reference statement for each prior application and clearly identified the prior
`applications (including Chu ’886) in the first sentence of the Specification.
`The incorporation by reference language in each of the transmittals together
`with the benefit claims in the first sentence of the Specification would have
`sufficiently identified the prior applications (including Chu ’886) as the
`referenced applications, distinguishing them from all other documents.
`Ex. 1011, 79−83. That is, Chu ’330 identified Chu ’886 with particularity
`and would have directly led an ordinarily skilled artisan to the document
`intended to be incorporated.
`For the foregoing reasons, Petitioner fails to show that we abused our
`discretion in determining to deny its Petition under 35 U.S.C. § 325(d).
`
`3. Whether the Board violated Petitioner’s due process rights
`Petitioner argues that we relied on our denial of institution of petitions
`from another petitioner, Samsung Electronics Co., Ltd. (“Samsung”), which
`were entered after Petitioner filed its Petition, violating Petitioner’s due
`process rights. Req. Reh’g 2. In particular, according to Petitioner, after the
`Samsung petitions were denied institution, Petitioner requested supplemental
`briefing to address the errors under Advanced Bionics in the Board’s
`
`11
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`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`decisions (decisions that were not yet in existence when Petitioner filed its
`Petition), but the Board denied that request yet now relies on Samsung’s
`denial of institution decisions for its §325(d) analysis. Id. at 15 (citing Dec.
`14–15).
`However, contrary to Petitioner’s contentions, we did not rely on the
`Samsung decisions. See Dec, 14–15. Rather, as set forth in the portions of
`the Decisions cited by Petitioner, we merely noted that similar arguments
`were presented in Samsung’s petitions and that the prosecution history of a
`related patent challenged by Samsung shows that the Applicant submitted
`similar arguments regarding its priority claims and incorporation by
`reference. Id. Both Samsung’s arguments and the prosecution history of the
`related patent were available before Petitioner filed its Petition. Moreover,
`Petitioner had the opportunity to present arguments and did present
`arguments in its Reply to distinguish its Petition from our decisions denying
`Samsung’s petitions. Reply 1−2. For these reasons, we are not persuaded
`that the Board violated Petitioner’s due process rights.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner has not demonstrated that we
`abused our discretion. Consequently, Petitioner’s Requests for Rehearing
`are denied.
`
`
`12
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`
`
`IPR2021-01107; IPR2021-01108; IPR2021-01109
`Patent 9,529,768 B2
`
`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
`
`13
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`
`
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