Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: October 11, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`THROUGHPUTER, INC.,
`Patent Owner.
`
`IPR2022-00758
`Patent 10,430,242 B2
`
`
`
`
`
`
`
`
`
`Before MICHAEL R. ZECHER, JOHN A. HUDALLA, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`MEYERS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`I.
`INTRODUCTION
`
`A. Background and Summary
`Microsoft Corporation (“Petitioner”) filed a Petition requesting to
`institute an inter partes review of claims 1–23 (the “challenged claims”) of
`U.S. Patent 10,430,242 B2 (Ex. 1001, the “’242 patent”). Paper 2
`(“Petition” or “Pet.”). ThroughPuter, Inc. (“Patent Owner”) filed a
`Preliminary Response. Paper 8 (“Preliminary Response” or “Prelim.
`Resp.”). With our authorization, Petitioner filed a Reply (Paper 10) and
`Patent Owner filed a Sur-reply (Paper 11), each of which were limited to
`addressing whether we have authority to adjudicate the priority issue raised
`in the Petition and whether we should exercise our discretion to deny the
`Petition under 35 U.S.C. § 325(d).
`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.” 35 U.S.C. § 314(a) (2018). We have
`authority, acting on the designation of the Director, to determine whether to
`institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R.
`§ 42.4(a). Having considered the arguments and evidence presented by
`Petitioner and Patent Owner, we determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on at least one of the
`challenged claims of the ’242 patent. Accordingly, we do not institute an
`inter partes review of the challenged claims.
`
`Real Parties in Interest
`B.
`The parties identify themselves as the real parties in interest. Pet. 78;
`Paper 4, 2.
`
`2
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`C. Related Proceedings
`The parties identify, as matters involving or related to the ’242 patent,
`ThroughPuter, Inc. v. Microsoft Corporation, No. 2:22-cv-00344-BJR
`(W.D. Wash.), which was transferred from the U.S. District Court for the
`Eastern District of Virginia. Pet. 78; Paper 4, 2. Patent Owner indicates
`that, “[a]s of August 18, 2022, the related district court litigation has been
`stayed pending resolution of the present inter partes review proceeding.”
`Paper 9, 2.
`We also note that Petitioner has challenged other patents owned by
`Patent Owner in IPR2022-00527, IPR2022-00528, IPR2022-00574, and
`IPR2022-00757.
`
`D. The ’242 Patent
`The ’242 patent is titled “Task Switching and Inter-Task
`Communications for Coordination of Applications Executing on a Multi-
`User Parallel Processing Architecture.” Ex. 1001, code (54). The ’242
`patent describes “an extensible, multi-stage, application program load
`adaptive, parallel data processing architecture shared dynamically among a
`set of application software programs according to processing load variations
`of said programs.” Id. at 3:14–18. In particular, a processor with an array of
`processing cores hosts instances of programs where the array of cores may
`be allocated among the programs “in part based on volumes of input data
`packets at the input port buffers associated with individual programs,” and,
`based in part on this allocation, assigned “for executing specific instances of
`the programs.” Id. at 5:4–24.
`In the embodiment shown in Figure 4, reproduced below, the ’242
`patent describes connecting input packets to processing cores “according to
`
`3
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`at which core the destination app-task instance indicated for any given input
`may be executing at any given time.” Id. at 12:34–40.
`
`
`
`Figure 4 shows RX (receive) logic subsystem 400 “connecting the input
`packets from the input ports 290 to the local processing cores” in “manycore
`processor 500.” Id. at 12:42–43. In operation, “input packets arriving over
`the network input ports 290 are grouped to a set of destination application
`specific FIFO [first in first out] modules 420, whose fill levels (in part)
`drives the allocation and assignment of cores at the local manycore
`processor 500 among instances of the app-tasks hosted on that processor.”
`Id. at 12:57–62. From application-instance specific buffers 415 within FIFO
`
`4
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`modules 420, the input packets are connected through multiplexers 450 to
`specific cores in processor 500, where associated application-instances are
`executing at a given time. Id. at 12:65–13:2.
`The ’242 patent claims priority to the ’473 application through a chain
`of applications (the “2012 line”), which extends back to several provisional
`applications, the earliest of which was filed on June 8, 2012. See id. at code
`(60). In addition, the ’242 patent claims priority to a provisional application
`filed on November 4, 2011 through a different chain of applications (the
`“2011 line”) that does not include the ’473 application. See id.
`E. Illustrative Claim
`Petitioner challenges claims 1–23 of the ’242 patent. Pet. 1. Claims
`1, 7, and 15 are independent. Claim 1, reproduced below, is representative.
`1. A system for managing execution of a plurality of software
`applications on an array of processing units, the system
`comprising:
`a core fabric comprising
`the array of processing units, and
`a plurality of input data buffers, each input data buffer
`being provided for buffering input data directed to a
`respective software application of the plurality of
`software applications and being dedicated to the
`respective software application, wherein
`each buffer of the plurality of input data buffers is
`deployed in the core fabric apart from the array of
`processing units, and
`each software application of the plurality of software
`applications is provided one or more input data
`buffers of the plurality of input data buffers; and
`a controller comprising hardware logic and/or software logic
`for performing operations for repeatedly reconfiguring
`task assignment to the array of processing units, the
`
`5
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`operations comprising, for each iteration of a plurality of
`iterations,
`identifying, for each software application of at least a
`portion of the plurality of software applications, an
`amount of input data at one or more input data buffers
`of the plurality of input data buffers buffering data for
`the respective software application,
`allocating, to each software application of the portion of
`the plurality of software applications, a number of
`processing units of the array of processing units based
`at least in part on the amount of input data buffered for
`the respective software application, and
`for each software application of the portion,
`i) assigning one or more task instances of the respective
`software application for concurrent processing of
`the amount of input data to the number of
`processing units allocated to the respective software
`application by the allocating as one or more
`assigned instances, and
`ii) adjusting, based at least in part on a change in a
`count of units between the number of processing
`units allocated
`to
`the
`respective
`software
`application and a number of previously allocated
`processing units allocated to the respective software
`application during a previous iteration of the
`plurality of iterations, a relative portion of the
`amount of input data to be processed by at least one
`assigned instance of the one or more assigned
`instances;
`wherein, for one or more iterations of the plurality of
`iterations where a current number of the one or more
`processing units allocated
`to any given software
`application of the portion of the plurality of software
`applications is increased by the allocating, adjusting
`comprises relatively decreasing the portion of the amount
`of input data to be processed by at least one instance of the
`
`6
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`
`
`one or more assigned instances of the respective software
`application; and
`wherein for one or more other iterations of the plurality of
`iterations where a present number of the one or more
`processing units allocated
`to any given software
`application of the portion of the plurality of software
`applications is decreased by the allocating, adjusting
`comprises relatively increasing the portion of the amount
`of input data to be processed by at least one instance of the
`one or more assigned instances of the respective software
`application.
`Ex. 1001, 28:37–29:35.
`
`
`
`
`
`Prior Art and Asserted Grounds
`F.
`Petitioner asserts that claims 1–23 of the ’242 patent are unpatentable
`on the following grounds (Pet. 1):
`References
`Claims Challenged 35 U.S.C. §
`1–23
`102(a)(1)1 Sandstrom-12
`1–23
`103
`Sandstrom-1
`Petitioner also relies on the Declaration of Dr. Henry H. Houh
`(Ex. 1003) in support of its arguments.
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Petitioner contends
`that the post-AIA versions of 35 U.S.C. §§ 102 and 103 apply based on its
`allegation that the earliest effective filing date for the ’242 patent is after the
`effective date of the applicable AIA amendments (March 16, 2013). See
`Pet. 1, 7, 28. As discussed below, we determine that the ’242 patent is
`entitled to a priority date that pre-dates the AIA amendments. Thus,
`contrary to Petitioner’s articulation of the grounds, the pre-AIA versions of
`35 U.S.C. §§ 102 and 103 apply to the ’242 patent.
`2 US 2014/0149993 A1, published May 29, 2014 (Ex. 1004, “Sandstrom-1”).
`
`7
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`II. ANALYSIS
`A. Legal Standards
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (2012) (requiring inter partes
`review petitions to identify “with particularity . . . the evidence that supports
`the grounds for the challenge to each claim”)). Except in limited
`circumstances not present here, this burden of persuasion does not shift to
`the patent owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter
`partes review).
`B. Anticipation and Obviousness Based on Sandstrom-1
`Sandstrom-1 is a pre-grant publication of U.S. Patent Application No.
`13/684,473 (“the ’473 application”), filed on November 23, 2012, and
`published on May 29, 2014. See Ex. 1004, codes (21), (22), (43). Petitioner
`contends that Sandstrom-1 qualifies as prior art under post-AIA 35 U.S.C.
`§ 102(a)(1) based on its publication date. Pet. 1, 28. Petitioner’s contention
`hinges on its assertion that the earliest possible priority date for the ’242
`patent is February 16, 2016. Id. at 28. Specifically, Petitioner asserts that
`there was a break in the priority chain of the 2012 line for failing to comply
`with the governing priority claim provisions, and that there is a lack of
`written description support for the challenged claims of the ’242 patent in
`the 2011 line. See Pet. 6–25. We determine that Petitioner has not
`demonstrated a reasonable likelihood of prevailing on its asserted grounds
`for the reasons discussed below.
`
`8
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`1. Alleged Defective Priority Chain of the 2012 Line
`a) The ’242 Patent Priority Claims
`In the 2012 line, the ’242 patent claims priority to U.S. Patent
`Application No. 16/145,632 (the “’632 application”), which was filed on
`September 28, 2018 and issued as U.S. Patent No. 10,310,901 B2. Ex. 1001,
`code (60). The ’632 application claims priority to U.S. Patent Application
`No. 16/014,674 (the “’674 application”), which was filed on June 21, 2018
`and issued as U.S. Patent No. 10,133,600 B2. Id. The ’674 application
`claims priority to U.S. Patent Application No. 15/933,724 (the “’724
`application”), which was filed on March 23, 2018 and issued as U.S. Patent
`No. 10,061,615 B2. Id. The ’724 application claims priority to U.S. Patent
`Application No. 15/273,731 (the “’731 application”), which was filed on
`September 23, 2016 and issued as U.S. Patent No. 10,514,953 B2 (the “’953
`patent”). Id.; Ex. 1008, 34.3
`The ’731 application, the prosecution history of which is discussed
`further below, claims priority to U.S. Patent Application No. 15/183,860 (the
`“’860 application”), which was filed on June 16, 2016 and issued as U.S.
`Patent No. 9,465,667 B1 (Ex. 1001, code (60)), a patent that was later
`reissued as U.S. Patent No. RE47,945 (the “RE’945 patent”) (see Ex. 1008,
`3). The ’860 application claims priority to U.S. Patent Application No.
`15/042,159 (the “’159 application”), which was filed on February 12, 2016
`and issued as U.S. Patent No. 9,400,694 B2 (Ex. 1001, code (60)), a patent
`that was later reissued as U.S. Patent No. RE47,677 (the “RE’677 patent”)
`
`
`3 All references to the page numbers in the prosecution history of the ’731
`application refer to the page numbers inserted by Petitioner in the bottom,
`middle portion of each page in Exhibit 1008.
`
`9
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`(see Ex. 1008, 3). The ’159 application claims priority to U.S. Patent
`Application No. 14/261,384 (the “’384 application”), which was filed on
`April 24, 2014 and issued as U.S. Patent No. 9,262,204 B2. Ex. 1001, code
`(60). The ’384 application claims priority to the ’473 application, which
`was filed on November 23, 2012 and issued as U.S. Patent No. 8,789,065
`B2. Id. The ’473 application claims priority to several provisional
`applications filed in 2012. See id.
`b) The Parties’ Contentions
`Petitioner contends that “[t]he ’242 patent is not entitled to the priority
`it proclaims because Patent Owner truncated the ancestral line in each of two
`patents within the priority chain,” and that the respective reissues of these
`patents did not remedy the defective priority chain of the 2012 line with
`respect to the ’242 patent. Pet. 6–7. For ease of analysis of Petitioner’s
`contentions, we reproduce below Petitioner’s chart showing the 2012 line of
`applications. Id. at 10.
`
`10
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`With reference to Petitioner’s chart above showing the 2012 line of
`applications, Petitioner argues that the ’159 and ’860 applications included
`truncated priority claims because the ’159 application only claims priority to
`the immediately preceding ’384 application, and the ’860 application only
`claims priority to the immediately preceding ’159 application. Id. at 9.
`
`
`
`11
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`Accordingly, Petitioner argues that “the ’159 application is the earliest
`ancestor to which the ’242 patent is entitled to priority” in the 2012 line. Id.
`at 13. Petitioner asserts that, during prosecution of the ’731 application,
`which followed the ’860 application in the 2012 line, “the Office confirmed
`that the ’860 application’s priority right is limited to the ’159 application’s
`filing date.” Id. at 16.
`Petitioner acknowledges, however, that during prosecution of the ’731
`patent “Patent Owner filed two new reissue applications—one for the ’694
`patent derived from the ’159 application and another for the ’667 patent
`derived from the ’860 application—each seeking to extend its earlier limited
`priority claim back to the root of the 2012 Line.” Id. at 9–10. Petitioner also
`notes that, after issuance of the reissue applications as the RE’677 and
`RE’945 patents, “Patent Owner renewed its previously denied petition to
`update the truncated priority claim of the offspring ’731 application” and the
`Office granted this renewed petition. Id. at 17 (citing Ex. 1008, 1–4, 25–27).
`But Petitioner points out that “[t]he RE’677 and RE’945 patents are not
`identified in the ’242 patent’s priority claim,” as illustrated in the chart
`reproduced above for the 2012 line. Id. at 10.
`Further, Petitioner argues that, even if Patent Owner had attempted to
`claim priority through the reissue application that issued as the RE’945
`patent (the “’761 reissue application”), the ’242 patent could not benefit
`from a priority date earlier than that of the filing date of the ’761 reissue
`application, because “[t]he Office treats a regular continuation application
`claiming priority to a reissue application as a ‘Bauman type continuation
`application’ entitled to a priority date no earlier than the filing date of the
`parent reissue application.” Id. at 19 (citing In re Bauman, 683 F.2d 405
`
`12
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`(CCPA 1982)). If, on the other hand, Patent Owner had attempted to file
`continuation reissue applications to achieve an earlier effective filing date
`than that allowed for in Bauman type continuation applications, Petitioner
`argues Patent Owner would have fared no better. See id at 21–23.
`Specifically, Petitioner argues that the claims of the ’242 patent are broader
`than those of the patent that issued from the ’860 application, and so any
`continuation reissue application to obtain the ’242 patent claims would have
`amounted to an improper broadening reissue. See id. at 21–22.
`Patent Owner contends that the Board “does not have the authority to
`reconsider procedural questions pertaining to priority claims or certificates
`of corrections as part of inter partes review.” Prelim. Resp. 2. To support
`this argument, Patent Owner points to Early Warning Services, LLC v.
`Grecia, IPR2020-00763, Paper 10 (PTAB Oct. 1, 2020) (Decision on
`Institution), as an instructive case in which “the petitioner challenged a
`downstream application’s priority claim, arguing that an alleged ADS
`[application data sheet] defect in the upstream application severed the patent
`family’s priority chain.” Prelim. Resp. 3. Patent Owner asserts that, in
`Early Warning, “[t]he Board explained that ‘[i]n effect, Petitioner is asking
`us to review the propriety of the granting by the Patent Office of [a] Request
`for Certificate of Correction,’ noting that the petitioner did not ‘indicate the
`source of any authority for such review.’” Id. (quoting IPR2020-00763,
`Paper 10, at 21–22). Patent Owner argues that, “as was the case in Early
`Warning, Petitioner is asking the Board to reconsider the propriety of a
`USPTO Decision . . . allowing Patent Owner, in the case of [the ’731
`application], to claim priority to the root disclosures of the 2012 Line.” Id.
`at 4. The Board should decline to do so, Patent Owner argues, because
`
`13
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`“decisions on priority claims are the province of the Petitions Branch and
`Corrections Branch, not the Board.” Id. According to Patent Owner,
`“[e]ven if this question of pure examinational procedure could be reached
`here, and it cannot, the [P]etition would fail under 35 U.S.C. § 325(d) as not
`only was it previously and explicitly considered in prosecution, indeed, the
`matter was addressed at the direction of the USPTO.” Id. at 1.
`In reply, Petitioner disagrees with Patent Owner’s “attempt[] to
`rebrand this case as an unauthorized review of a decision by the Office of
`Petitions.” Reply 1. “Petitioner does not dispute that the Office of Petitions
`appropriately allowed Patent Owner to revise its priority claim in the
`intermediate ’731 application.” Id. Petitioner asserts that it is requesting
`“the Board to decide a different issue—the impact of the ’860 application’s
`truncated priority claim on the priority benefit sought by the ’242 patent.”
`Id. at 2. In particular, Petitioner argues that, in the ’731 application, the
`Office of Petitions did not review “the legal impact of Patent Owner’s
`choice to pursue a priority claim correction via reissue of the patent that
`matured from the ’860 application without integrating that reissue into the
`2012 Line.” Id. at 3. Rather, Petitioner argues, the Office of Petition’s
`“focus was solely on procedure.” Id. To support this argument, Petitioner
`points to language in the relevant decision from the Office of Petitions
`stating that “the formal requirements for claiming domestic benefit . . .
`have been met,” but that “[t]his acceptance should not be construed as
`meaning that this application is entitled to the benefit of the prior-filed
`application(s).” Id. at 2–3 (citing Ex. 1008, 4).
`In its sur-reply, Patent Owner argues that Petitioner’s position that the
`Office of Petitions “did not address ‘legal issues’” “requires one to accept
`
`14
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`that the USPTO guided [Patent Owner] to follow a specific course to amend
`its ADSs via reissue without regard to whether that course was legally
`appropriate.” Sur-reply 4. Patent Owner asserts that “[s]uch an argument is
`both incredible and inconsistent with the prosecution history.” Id. Further,
`regarding the language in the relevant decision from the Office of Petitions
`that the ’731 application was not necessarily “entitled to the benefit of the
`prior-filed application(s)” (Ex. 1008, 4), Patent Owner argues this “merely
`refers to the practical reality that examiners must determine whether
`particular claim language is supported by earlier applications,” and that
`“[w]ritten descriptive support is not at issue here.” Sur-reply 3.
`c) Analysis
`The ’731 application was filed on September 23, 2016, with a
`preliminary amendment that included a statement in the Specification
`referencing all the relevant applications in the priority chain of the 2012 line,
`including the ’473 application. See Ex. 1008, 815–16. The Application
`Data Sheet submitted with the ’731 application, however, only referenced
`the ’860 application in the relevant priority claim section. See id. at 757.
`The applicant filed a first corrected ADS on January 6, 2017, to include the
`other non-provisional applications in the 2012 line. See id. at 735–37. The
`applicant further filed a second corrected ADS on March 19, 2018, along
`with a Request for Corrected Official Filing Receipt, to correct the
`respective relationships of the non-provisional applications as identified in
`the first corrected ADS, as well as to include priority claims to the
`provisional applications in the 2012 line. See id. at 706–07, 714.
`In a Response to Request for Corrected Filing Receipt mailed on
`March 21, 2018, the Office stated that “[t]he priority or continuity claim has
`
`15
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`not been entered because it was not filed during the required time period,”
`and indicated that a “petition to accept an unintentionally delayed claim for
`priority” may be appropriate. Id. at 693. The applicant subsequently filed a
`Petition to Accept an Unintentionally Delayed Domestic Benefit Claim
`Under 37 C.F.R. § 1.78(c)(e) on May 4, 2018. Id. at 692–94. The Office
`dismissed the petition in a decision mailed on June 15, 2018, because “it
`appears that [U.S. Patent] Application Nos. 14/261,384; 15/042,159;
`15/183,860 do not each reference a claim of benefit to” the provisional
`applications in the 2012 line, and because “[U.S. Patent] Application No.
`15/183,[8]60 does not include claims of benefit to any applications other
`than [U.S. Patent] Application No. 15/042,159.” Id. at 659. The Office
`stated that, in order for an application to claim the benefit of a chain of
`applications, “every intermediate application must also make a reference to
`the first (earliest) application and every application after the first application
`and before such intermediate application.” Id. (citing Droplets, Inc. v.
`E*TRADE Bank, 887 F.3d 1309 (Fed. Cir. 2018)). The Office then advised
`the applicant to file a petition and certificate of correction relating to the
`’384 application’s priority defects, and to file reissue applications for the
`priority defects in the ’159 and ’860 applications. Id.
`On June 15, 2020, after issuance of the ’731 application, the applicant
`filed a Renewed Petition to Accept an Unintentionally Delayed Domestic
`Benefit Claim Under 37 C.F.R. § 1.78(c)(e) along with a Request for
`Certification of Correction. Id. at 25–29. In the Renewed Petition, the
`applicant averred that a petition was granted and a certificate of correction
`was mailed to correct the priority defects of the ’384 application, and that
`the RE’677 and RE’945 patents were issued to correct the priority defects of
`
`16
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`the ’159 and ’860 applications, respectively. Id. at 26–27. In a decision
`mailed on January 26, 2021 (the “January 2021 Decision”), the Office
`granted the Renewed Petition, stating that “[a] review of the record reveals
`that in accordance with the requirements as detailed in the decision mailed
`June 15, 2018, the reference as set forth in the [second corrected ADS] filed
`March 19, 2018 complies with 35 U.S.C. §§ 120 and 119(e) and 37 [C.F.R.]
`§§ 1.78(d)(2) and 1.78(a)(3).” Id. at 4. The Office further noted that “[a]
`certificate of correction noting the benefit claims of the prior applications
`was issued September 29, 2020,” and so “no further action is necessary.” Id.
`Accordingly, by the time it mailed the January 2021 Decision, the
`Office was satisfied that the ’731 application, which had issued as the ’953
`patent, properly claimed priority to the preceding applications in the 2012
`line, and that all intermediate applications also included proper priority
`claims. It thus follows that, absent any defects in the priority claims of the
`subsequent applications, including the application that issued as the ’242
`patent, the remedial steps taken by the applicant and approved by the Office
`during prosecution and post-issuance of the ’953 patent also render proper
`the priority claims of the subsequent applications. Petitioner has not
`persuasively pointed us to any additional defects not addressed previously
`by the Office in the priority chain of the ’242 patent in the 2012 line. Nor
`has Petitioner identified legal authority for the Board to revisit the January
`2021 Decision’s finding that the priority claims of the ’731 application met
`the relevant statutory and regulatory criteria. See Ex. 1008, 4 (“[T]he
`reference as set forth in the [second corrected ADS] filed March 19, 2018
`complies with 35 U.S.C. §§ 120 and 119(e) and 37 [C.F.R.] §§ 1.78(d)(2)
`and 1.78(a)(3).”).
`
`17
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`
`We also do not agree with Petitioner’s characterization that it “accepts
`the earlier [January 2021] Decision to grant a delayed revision of the ’731
`application’s priority claim and asks the Board to decide a different issue—
`the impact of the ’860 application’s truncated priority claim on the priority
`benefit sought by the ’242 patent.” Reply 2. Here, Petitioner attempts to
`have it both ways—concede the Office approved the priority claims of the
`’731 application, yet still argue that the priority chain of the ’242 patent is
`defective based on priority claims in the ’860 application, even though the
`correction of the priority claims of the ’860 application was partly the basis
`for the January 2021 Decision on the priority claims of the ’731 application.
`Petitioner attempts to resolve this inconsistency by arguing for a
`distinction between (1) the alleged procedural nature of the January 2021
`Decision, and (2) what Petitioner now considers a legal adjudication of the
`merits of the priority claims made in the ’242 patent. See Reply, 2–4. This
`argument rests on what appears to be boilerplate language in the January
`2021 Decision, which we reproduce below:
`Petitioner is advised that this decision grants the petition to
`accept the unintentionally delayed domestic benefit claim to the
`prior filed application(s) because the petition requirements of 37
`[C.F.R.] 1.78(c) and (e) and the formal requirements for claiming
`domestic benefit (see MPEP [Manual of Patent Examining
`Procedure] 211.01 et. seq.) have been met. This acceptance
`should not be construed as meaning that this application is
`entitled to the benefit of the prior-filed application(s). Whether
`a claimed invention in a nonprovisional application is entitled to
`the benefit of a prior-filed application on the basis of the
`disclosure thereof is determined during examination if it
`becomes necessary to do so (e.g., intervening reference and
`interference proceeding). See MPEP 211.05.
`Ex. 1008, 4. This language indicates only that no decision has been made as
`to whether the disclosures of the prior applications in the 2012 line provide
`
`18
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`written description support for the ’731 application. To the extent Petitioner
`suggests this language leaves open some other legal basis on which to
`challenge the priority chain of the ’731 application and its progeny (see
`Reply 3 (asserting that Patent Owner’s position on the scope of the January
`2021 Decision requires “that the Office of Petitions approved every aspect of
`priority in the 2012 Line besides written description”)), we see no such
`basis.
`We disagree with Petitioner that the January 2021 Decision “reveals
`that the Office of Petitions did not review the crux of the Petition, namely,
`the legal impact of Patent Owner’s choice to pursue a priority claim
`correction via reissue of the patent that matured from the ’860 application
`without integrating that reissue into the 2012 Line.” Reply 3. The issuance
`of the RE’945 patent was part and parcel of granting the Renewed Petition in
`the ’731 application: “The renewed petition has been submitted with the
`required statement of unintentional delay and an explanation that the reissue
`application based on 15/183,860 (Application No. 16047761[)] issued as RE
`47945 on 4/14/2020. A decision in the instant matter could not be granted
`until that reissue application matured into a patent.” Ex. 1008, 4. As such,
`the Office of Petitions was in a position to consider and analyze the entire
`priority chain of the ’731 application. Based on its review, the Office of
`Petitions advised the applicant to file the ’761 reissue application, but did
`not require a specific priority claim to the ’761 reissue application in the
`
`19
`
`

`

`IPR2022-00758
`Patent 10,430,242 B2
`
`’731 application or the ’953 patent that issued therefrom to meet the
`requirements of any governing provisions.4 See id. at 2–4, 658–659.
`In essence, Petitioner presents us with the same issue that was before
`the Office of Petitions: whether the ’731 application, or the ’953 patent that
`issued therefrom, and by extension the applications claiming priority thereto,
`including the application that issued as the ’242 patent, must claim priority
`to the ’761 reissue application filed to correct the priority claim defect in the
`’860 application.5 Accordingly, as in Early Warning, Petitioner is asking us,
`in effect, to review the propriety of a prior decision of the Office for which
`we have no authority, and we decline to do so. See IPR2020-00763, Paper
`10, at 21–22. The Office of Petitions did not see fit to require a reference to
`the ’761 reissue application in the ’953 patent, which would therefore also
`have been required in subsequent applications in the priority chain (see
`Droplets, Inc. v. E*TRADE Bank, 887 F.3d at 1317 (“[T]he ‘specific
`reference’ requirement in [35 U.S.C.] § 120 ‘mandates each [intermediate]
`application in the chain of priority to refer to the prior applications.’”)
`(quoting Medtronic CoreValve, LLC v. Edwards Lifesciences Corp., 741
`F.3d 1359, 1363 (Fed. Cir. 2014))), and we decline to second-guess that
`decision.
`Although Petitioner cites several Board decisions in inter partes
`reviews where panels addressed priority claim issues, those cases are
`
`
`4 The Certificate of Correction to the ’953 patent, which corrected the
`“section entitled ‘Related U.S. Application Data’ at (60),” indicates that the
`’953 patent is a “Continuation of [