Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`Apple Inc.
`
`Petitioner
`
`v.
`
`E-Watch, Inc.
`
`Patent Owner
`
`
`
`_____________________
`
`Case IPR2015-00411
`Patent 7,365,871
`_____________________
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`
`

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`TABLE OF CONTENTS
`
`Page
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R.
`§ 42.104(A) ..................................................................................................... 6
`III. OVERVIEW OF THE ‘871 PATENT ........................................................... 6
`IV.
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(B) ..................................................................................................... 6
`A.
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes
`Review Is Requested ............................................................................ 6
`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific Grounds
`On Which The Challenge To The Claims Is Based ............................. 7
`37 C.F.R. § 42.104(b)(3): Claim Construction .................................... 7
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable ......................................................................................... 9
`37 C.F.R. § 42.104(b)(5): Supporting Evidence .................................. 9
`E.
`THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST
`ONE CLAIM OF THE ‘871 PATENT IS UNPATENTABLE ..................... 9
`A.
`Claims 1-15 Are Anticipated By WO 1999/035818 ............................ 9
`1.
`The Effective Filing Date For The ‘871 Patent Is January
`3, 2003 ...................................................................................... 10
`‘073 Prosecution History ......................................................... 11
`The Public Record Demonstrates Deliberate
`Abandonment of the ‘073 Application. ................................... 14
`No Record Evidence of “Unintentional” Delay ....................... 17
`The PTO “Assumed” Unintentional Delay -- It Did Not
`Decide The Merits Of The Issue. ............................................. 19
`The Effective Filing Date Of The ‘871 Patent Is January
`3, 2003. ..................................................................................... 20
`The ‘818 Publication Has The Same Disclosure As The ‘871
`Patent, Rendering Claims 1-15 Of The ‘871 Patent Anticipated ....... 21
`1.
`Independent claim 1 is disclosed by the ‘818 publication ....... 22
`
`B.
`
`C.
`D.
`
`B.
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`V.
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`2.
`3.
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`4.
`5.
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`6.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`2.
`3.
`4.
`5.
`
`C.
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`
`
`Independent claim 6 is disclosed by the ‘818 publication ....... 29
`Independent claim 9 is disclosed by the ‘818 publication ....... 34
`Independent claim 12 is disclosed by the ‘818 publication ..... 41
`Dependent claims 2-5, 7, 8, 10, 11, and 13-15 are
`disclosed by the ‘818 publication ............................................ 44
`Summary -- Claims 1-15 Of The ‘871 Patent Are Invalid As
`Anticipated By The ‘818 publication ................................................. 48
`D. Different Bases of Unpatentability in Petitioner’s Three
`Petitions Regarding the ‘871 Patent are Independent, Distinct
`and not Redundant .............................................................................. 49
`VI. MANDATORY NOTICES PURSUANT TO 37 C.F.R. § 42.8(A)(1) ........ 51
`A.
`C.F.R. § 42.8(b)(a): Real Party-In-Interest ........................................ 51
`B.
`C.F.R. § 42.8(b)(2): Related Matters ................................................. 51
`C.
`C.F.R. § 42.8(b)(3) and (4): Lead and Back-up Counsel and
`Service Information ............................................................................ 52
`VII. CONCLUSION ............................................................................................. 52
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`TABLE OF AUTHORITIES
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`Page
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`CASES
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`E-Watch, Inc. and E-Watch Corporation v. Apple Inc.,
`U.S. District Court for the Eastern District of Texas, Civil Action
`No. 2:13-CV-1061 .............................................................................................. 51
`
`In re Am. Acad. Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir., 2004) ........................................................................... 7
`
`In re Application G,
`11 USPQ2d 1378 (Comm’r, 1989) ..................................................................... 15
`
`In re Maldague,
`10 USPQ2d 1477 (Comm’r 1988) ...................................................................... 15
`
`Lawman Armor Corp. v. Simon,
`2005 U.S. Dist. Lexis 10843 (E.D. Mich., March 29, 2005) .............................. 14
`
`Lumenyte Int’l Corp. v. Cable Lite Corp.,
`Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS 16400, 1996 WL
`383927 (Fed. Cir. July 9, 1996)(unpublished) .................................................... 14
`
`STATUTES
`
`35 U.S.C. 102(b) ........................................................................................................ 9
`
`35 U.S.C. § 102 ...................................................................................................... 7, 9
`
`35 U.S.C. § 102(b) ................................................................................................. 5, 7
`
`35 U.S.C. § 120 .................................................................................................. 10, 12
`
`35 U.S.C. § 133 ........................................................................................................ 11
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`OTHER AUTHORITIES
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`35 C.F.R. § 42.1(b) .................................................................................................. 50
`
`37 C.F.R. § 1.68 ......................................................................................................... 9
`
`37 C.F.R. § 1.137(b) .........................................................................................passim
`
`37 C.F.R. § 1.137(c) ................................................................................................. 13
`
`37 C.F.R. § 1.737(b) ................................................................................................ 21
`
`37 C.F.R. § 41.100(b) ................................................................................................ 7
`
`37 C.F.R. § 42.8(a)(1) .............................................................................................. 51
`
`37 C.F.R. § 42.8(b) .................................................................................................. 51
`
`37 C.F.R. § 42.10(b) ................................................................................................ 52
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`37 C.F.R. § 42.104(a) ................................................................................................. 6
`
`37 C.F.R. § 42.104(b) ................................................................................................ 6
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`37 C.F.R. § 42.104(b)(1) ............................................................................................ 6
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`37 C.F.R. § 42.104(b)(2) ............................................................................................ 7
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`37 C.F.R. § 42.104(b)(3) ............................................................................................ 7
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`37 C.F.R. § 42.104(b)(4) ............................................................................................ 9
`
`37 C.F.R. § 42.104(b)(5) ............................................................................................ 9
`
`37 CFR 1.137(b) ...................................................................................................... 14
`
`37 CFR 11.18 ........................................................................................................... 14
`
`IPR2014-00439, Paper 16, pp. 5-8 ............................................................................. 5
`
`MPEP 711.03(c)(II)(C) ............................................................................................ 13
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`MPEP 711.03(c)(II)(C)(1) ....................................................................................... 15
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`MPEP § 2111 ............................................................................................................. 7
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`
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`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`EXHIBIT LIST
`
`U.S. Patent No. 7,365,871 (“the ‘871 patent”)
`WO 1999/035818 (“the ‘818 publication”)
`File History for Application Serial No. 09/006,073
`File History for Application Serial No. 09/780,381
`Declaration of Steven Sasson (“Sasson Dec.”)
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`INTRODUCTION
`
`
`I.
`
`The ‘871 patent (Ex. 1001) is currently being asserted against Apple by its
`
`alleged assignee, e-Watch, Inc. (“e-Watch”), in a patent infringement lawsuit (See
`
`also, e-Watch, Inc. v. Apple Inc. 2:13-cv-1061 (E.D. Tx.)) to recover alleged
`
`damages for camera cell phones -- products well known in the art before the filing
`
`date of the ‘871 patent. E-Watch has filed separate related lawsuits concerning the
`
`same patent against a variety of manufacturers of camera cell phones including,
`
`Kyocera, Samsung, HTC Corp., LG Electronics, ZTE Corp., Sony, Sharp, Nokia,
`
`Huawei Technologies, Inc. and Blackberry Limited. See also, Case Nos. 2:13-cv-
`
`1062-1064, 1069-1078.
`
`The ‘871 patent is allegedly related to a family of patent applications filed
`
`by Mr. Monroe. The relevant portion of the family includes at least:
`
` U.S. Application No. 09/006,073 (“the ‘073 application” -
`
`abandoned), filed January 12, 1998;
`
` PCT/US99/00664 (published in 1999 as WO1999/035818 (“the ‘818
`
`publication”)), claimed benefit of the ’073 application;
`
` U.S. Application No. 09/790,381 (“the ‘381 application” -
`
`abandoned), claimed priority as a divisional to the ’073 application;
`
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`

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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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` U.S. Application No. 10/366,470 (“the ‘470 application”) issued as
`
`the ‘871 patent and improperly claimed priority as a divisional to the
`
`’073 application.
`
`This is illustrated in Figure A below.
`
`
`
`FIGURE A
`
`The sole basis for the ‘871 patent priority claim to the ‘073 application is an
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`improper petition for revival under 37 C.F.R. § 1.137(b) of the deliberately
`
`abandoned ‘073 application. The deliberate, i.e., intentional abandonment, is
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`shown through the public record1 of the ’073, ’381, and ’470 applications for two
`
`
`1 The public record is clarified and amplified by deposition testimony of the
`
`prosecuting attorneys, Mr. Robert Curfiss and Mr. Richard Ruble, which was
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`obtained pursuant to subpoena in the matter of e-Watch et al. v. Apple, 2:13-cv-
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`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`reasons. First, it was not until 22 months after the ’073 application abandonment
`
`and after a mistake was made by the prosecuting attorneys in the ’381 child
`
`application, which caused them to lose its filing date and priority claim, did the
`
`abandonment of the ’073 parent application suddenly become “unintentional.”
`
`Second, there is absolutely no evidence that shows the prosecuting attorneys
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`performed the required due diligence needed to claim unintentional abandonment
`
`of the ’073 application in the §137 petition – rather only evidence to the contrary
`
`exists.
`
`
`(continued…)
`
`
`1061 (E.D. Tex. 2013). However, that testimony is currently marked confidential,
`
`and counsel for e-Watch has refused to provide consent for Petitioner to use the
`
`deposition transcripts for Mr. Curfiss and Mr. Ruble in the instant Petition. In
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`particular, counsel for Petitioner requested e-Watch’s consent in an e-mail dated
`
`November 5, 2014 to file redacted transcripts of the Curfiss and Ruble depositions
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`under seal in connection with the instant Petition. Counsel for e-Watch replied on
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`November 14, 2014 that e-Watch would not consent and that the applicable
`
`protective order precluded such use. Counsel for Petitioner replied on November
`
`17, 2014, explaining that the protective order would, in fact, permit such use with
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`e-Watch’s consent. Counsel for e-Watch then replied on November 18, 2014 that
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`e-Watch would not consent.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`The basic timeline of events in the prosecution is as follows:
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`1. On February 21, 2001, the Patent Owner filed a three-month extension
`
`of time in the ‘073 application, but without a substantive reply to the
`
`final Office action of August 29, 2000.
`
`2. On February 21, 2001, the Patent Owner also filed the ‘381 divisional
`
`application in lieu of continuing prosecution of the ‘073 application.
`
`3. The Patent Owner was informed, based on a filing error, the ‘381
`
`divisional application would receive a filing date of April 11, 2002, so
`
`that it no longer was co-pending with the ‘073 application and could
`
`not claim priority. The ‘381 application went abandoned for failure to
`
`file a response to the October 3, 2002 Office action.
`
`4. On January 3, 2003, “coincidentally” the three-month due date for the
`
`Office action in the ‘381 application, the Patent Owner filed the §137
`
`Petition to revive the ‘073 application 22-months after it was
`
`abandoned so that the concurrently filed ‘470 application could claim
`
`priority to the ‘073 application the Patent Owner claimed was
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`“unintentionally” abandoned.
`
`Based on these facts, the abandonment of the ’073 application should have
`
`been ruled intentional by the USPTO, and the ’073 application should have
`
`remained abandoned. If abandoned, the ’073 application and ’470 application
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`could never be co-pending, such that the ’470 application could not have properly
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`claimed priority to the ’073 application. As such, the ‘871 patent is not entitled to
`
`the 1998 effective filing date of the ‘073 application and, if anything, can claim no
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`more than its date of filing, i.e., January 3, 2003.
`
`Finally, as shown in Figure A above and most important to the invalidity of
`
`the ‘871 patent claims, the ’664 PCT application was filed claiming priority back
`
`to the ‘073 Application. The ’664 PCT application published in 1999 as
`
`WO1999/035818 (“the ‘818 publication”). The ‘818 publication has a substantially
`
`identical specification as the ‘871 patent, i.e., it includes all the limitations of the
`
`claims 1-15. Because the ‘818 application was published more than one year prior
`
`(i.e., 1999) to the earliest effective filing date of the ‘871 patent (i.e., 2003), and
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`disclosed all the claimed subject matter of the ‘871 patent, all the claims of the
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`‘871 patent are invalid under 35 U.S.C. § 102(b) either explicitly or inherently.
`
`Petitioner respectfully submits that the Board has the authority to evaluate
`
`evidence and render decisions on factual and legal issues involving priority claims
`
`and the status of a reference as prior art in instituting the instant Petition. See, e.g.,
`
`IPR2014-00439, Paper 16, pp. 5-8 (where the Board rendered a decision on the
`
`insufficiency of an inventor affidavit as to diligence in reduction to practice during
`
`prosecution (which impacted the alleged invention date) and made an associated
`
`determination as to the availability of a reference as prior art).
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`-5-
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`II. GROUNDS FOR STANDING PURSUANT TO 37 C.F.R. § 42.104(a)
`Petitioner Apple certifies that the ‘871 patent is available for inter partes
`
`review and that Petitioner is not barred or estopped from requesting inter partes
`
`review challenging the patent claims on the grounds identified herein.
`
`III. OVERVIEW OF THE ‘871 PATENT
`The ‘871 patent contains approximately 14 columns of specification in
`
`which figures 1-9 are described and in which various embodiments are described
`
`that provide:
`
`“an image capture, compression and transmission system that is
`specifically designed to permit reliable visual image transmission over
`land line or wireless communications using commercially available
`techniques. Embodiments
`incorporate a
`facsimile
`transmission
`camera and signal converter into an integrated unit wherein the
`converted signal may be transmitted on a real time basis or may be
`stored in memory for later recall and transmission.” Ex. 1001, 1:25-
`32.2
`
`As issued, the ‘871 patent has 15 claims.
`
`IV.
`
`IDENTIFICATION OF CHALLENGE PURSUANT TO 37 C.F.R.
`§ 42.104(b)
`A.
`
`37 C.F.R. § 42.104(b)(1): Claims For Which Inter Partes Review Is
`Requested
`Inter partes review is requested for claims 1-15 of the ‘871 patent.
`
`
`2 In this Petition, all emphasis is added unless otherwise indicated.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`B.
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`37 C.F.R. § 42.104(b)(2): The Prior Art And Specific Grounds On
`Which The Challenge To The Claims Is Based
`
`Inter partes review is requested in view of the following prior art reference:
`
` WO 1999/035818 (Ex. 1002, “the ‘818 publication”).
`
`The specific statutory grounds under which 35 U.S.C. § 102 on which the
`
`challenge to the claims are based and the references relied upon for each ground
`
`are as follows:
`
`
`
`Claims 1-15 are anticipated under 35 U.S.C. § 102(b) by WO
`
`1999/035818.
`
`37 C.F.R. § 42.104(b)(3): Claim Construction
`
`C.
`Pursuant to 37 C.F.R. § 41.100(b), solely for the purposes of this review,
`
`Petitioner construes the claim language such that the claims are given their
`
`broadest reasonable interpretation in light of the disclosure of the ‘871 patent.
`
`Petitioner submits that, for the purposes of this review, each claim should be
`
`construed in accordance with its plain and ordinary meaning under the required
`
`broadest reasonable interpretation, which for the avoidance of doubt for one term is
`
`presented below. Because the standard for claim construction at the Patent Office
`
`is different than that used during a litigation in a United States District Court (See
`
`also, In re Am. Acad. Sci. Tech. Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir., 2004);
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`MPEP § 2111, Petitioner expressly reserves the right to assert a different claim
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`construction in litigation for any term of the ‘871 patent as appropriate in any such
`
`proceeding.)
`
`Framing an image: This term appears in different variations: “an image
`
`framed by the camera” (claim 1); “framing [the/an] image to be captured” (claims
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`2 and 12); “visually framing a visual image to be captured” (claim 6); “framing the
`
`visual image” (claim 7). The ‘871 patent does not explicitly describe these terms in
`
`the context of the claimed language. The specification provides the following
`
`references that describe a frame: “an image capture and transmission system
`
`captures either one or more single frame analog images or digital images or image
`
`data or visual data or visual images….” Ex.1001, ‘871 patent, 4:58-61. “The
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`display unit 96 … provides … a visual read-out of the status of the collection and
`
`transmission of a selected frame.” Id. at 8:39-42. “[T]he processor accesses the
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`RAM and manipulates the data representing each frame image.… [T]he processor
`
`executes a code for performing a bi-level compression of the data and the signal
`
`representing the frame data is output….” Id. at 10:9-19.
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`Based on the above, the proposed BRI construction for this term is
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`“obtaining data representing an image as shown on a display.”
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`D.
`
`37 C.F.R. § 42.104(b)(4): How The Construed Claims Are
`Unpatentable
`
`A detailed explanation of how claims 1-15 are unpatentable, including the
`
`identification of how each claim element is found in the prior art, is set forth below
`
`at Section V.
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`37 C.F.R. § 42.104(b)(5): Supporting Evidence
`
`E.
`An Appendix of Exhibits supporting this petition is attached. Included at Ex.
`
`1005 is a Declaration of Steven Sasson (“Sasson Decl.”), an expert with over 35
`
`years of experience in this technology space, under 37 C.F.R. § 1.68 further
`
`supporting the petition. In addition, the relevance of the evidence to the challenged
`
`claims, including an identification of the specific portions of the evidence
`
`supporting the challenge, is included in Section V.
`
`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ‘871 PATENT IS UNPATENTABLE
`A. Claims 1-15 Are Anticipated By WO 1999/035818
`Claims 1-15 are anticipated, either explicitly or inherently, under 35 U.S.C.
`
`§ 102 by the disclosure of the ‘818 publication. See, Ex. 1002. The ‘818
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`publication was published on July 15, 1999 -- more than one year prior to the
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`earliest effective filing date for the ‘871 patent, January 3, 2003. The ‘818
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`publication also has substantially the same disclosure as the ‘871 patent. Ex. 1005,
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`Sasson Decl., ¶ 19. The ‘818 publication anticipates all the claims (1-15) of the
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`‘871 patent under 35 U.S.C. 102(b) either explicitly or inherently.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`1.
`
`The Effective Filing Date For The ‘871 Patent Is January 3,
`2003
`The earliest effective date for the ‘871 patent is January 3, 20033 because the
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`claim for priority in the ‘470 application (which matured into the ‘871 patent),
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`back to the filing date of the ‘073 application (January 12, 1998), is defective. The
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`basis for the priority claim in the ‘470 application is co-pendency with the ‘073
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`application.4 However, because the ‘073 application was purposefully abandoned
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`on March 1, 2001 -- twenty-two (22) months prior to the January 3, 2003 filing
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`date for the ‘470 application –the ‘073 application should not have been revived as
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`“unintentionally” abandoned to provide co-pendency with the ‘470 application.
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`Since there was no proper basis for co-pendency between the ‘073 and ‘470
`
`applications, the ‘470 application is not entitled to the benefit of the January 12,
`
`1998 priority date of the ‘073 application. The legally correct effective date for the
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`‘470 application is January 3, 2003.
`
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`3 The ‘470 application was filed January 3, 2003.
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`4 Under 35 U.S.C. § 120, “An application for patent for an invention
`
`disclosed… in an application previously filed in the United States… shall have the
`
`same effect… as though filed on the date of the prior application, if filed before the
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`patenting or abandonment of… the first application…” This temporal overlap of
`
`two applications pending before the PTO is referred herein as co-pendency.
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`‘073 Prosecution History
`
`2.
`The prosecution history of the ‘073 application begins with its initial filing
`
`on January 12, 1998. The initial application contained 266 claims. Ex. 1003, p. EW
`
`005 (“Patent Application Transmittal Letter”). On December 7, 1999, the PTO
`
`mailed an office action requiring a restriction to one of nine groups of claims. Id.,
`
`p. EW 299-302. The Applicant elected Group I (claims 1-28, 181 and 190). Id., p.
`
`EW 304. Those claims were rejected. Id., pp. EW 307-317. After an amendment in
`
`which claims 5-8, 181 and 190 were canceled (Id. at EW 524-527), all of the then
`
`pending claims were subject to a final office action mailed August 29, 2000. Id., p.
`
`EW 529-530.
`
`From August 29, 2000, the six (6) month statutory period for response to the
`
`final office action would have ended Wednesday, February 28, 2001.5 On February
`
`21, 2001 -- one week prior to running of the statutory bar -- the applicant filed a
`
`three month extension of time (“EOT”). Ex. 1003, p. EW 593. That EOT was not
`
`accompanied by any amendment or other substantive response. On April 10, 2001,
`
`the PTO mailed a notice of abandonment (“NOA”) of the ‘073 application to the
`
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`5 See, 35 U.S.C. § 133; “Upon failure of the applicant to prosecute the
`
`application within six months after any action therein,… the application shall be
`
`regarded as abandoned by the parties thereto.”
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`Applicant. Id., p. EW 595. The NOA recited the fact that the Applicant failed “to
`
`timely file a proper reply to the Office letter mailed on 29 August 2000.” Id.
`
`On the same day that the EOT in the ‘073 application was filed -- February
`
`21, 2001 -- a separate application serial number 09/790,381 (“the ‘381
`
`application”), was filed at the PTO. Ex. 1004 (“Utility Patent Application
`
`Transmittal,” see, barcoded date stamp). This application claimed priority as a
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`divisional of the ‘073 application. Id. This application included 42 claims, which
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`were an exact copy of the unelected Group III claims of the ‘073 application. Id.
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`Notwithstanding its February 21, 2001 date stamp, the ‘381 application was
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`not complete as filed. See, Ex. 1004, Notice of Incomplete Nonprovisional
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`Application, mailed January 28, 2002. On March 26, 2002, the Applicant provided
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`the missing parts of the incomplete application. Ex. 1004, Response to Notice of
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`Incomplete Nonprovisional Application, filed March 26, 2002. Thereafter, the PTO
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`recorded the filing date of the ‘381 application as April 11, 2002. See, e.g., Ex.
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`1004, Office Action mailed October 3, 2003. However, because the ‘381
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`application received a filing date of April 11, 2002, it was not co-pending with the
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`‘073 application. Under 35 U.S.C. § 120, the claim for priority in the ‘381
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`application back to ‘073 application filing date of January 12, 1993 became
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`ineffective. The Applicant subsequently permitted the ‘381 application to go
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`abandoned.
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`
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`-12-
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`

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`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`After the PTO determined that the ‘381 application had a filing date of
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`April 11, 2002, and was not co-pending with the ‘073 application, Applicant
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`improperly returned to prosecuting the previously deliberately and intentionally
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`abandoned ‘073 application. On January 3, 2003, Applicant filed a petition to
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`revive the ‘073 application based on unintentional abandonment under 37 C.F.R.
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`§ 1.137(b). Ex. 1002, p. EW 598-599.6 This petition contains the form statement
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`that “The entire delay in filing the required reply from the due date for the required
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`reply until the filing of the grantable petition under 37 C.F.R. § 1.137(b) was
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`unintentional.” Id., EW 599, ¶ 4. This statement was signed by Richard Ruble
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`(Reg. No. 45,720). Id.
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`The PTO subsequently granted the petition. Ex. 1002, p. EW 603. However,
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`in so doing, the PTO explained: “It is not apparent whether the person signing the
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`statement of unintentional delay was in a position to have firsthand or direct
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`knowledge of the facts and circumstances of the delay at issue.” Id. The PTO
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`assumed that both a proper inquiry had been made and that the proper standard had
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`been met.7 The record evidence now shows that both assumptions were incorrect.
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`6 This petition was accompanied by a continuing application as required by
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`37 C.F.R. § 1.137(c). That application was assigned Serial No. 10/336,470 -- the
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`‘470 application eventually matured into the ‘871 patent.
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`7 See MPEP 711.03(c)(II)(C):
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`
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`-13-
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`

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`
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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
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`3.
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`The Public Record Demonstrates Deliberate Abandonment
`of the ‘073 Application.
`
`The law is clear that “the failure of a patent applicant, acting through his or
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`her representative, to file a required response to a patent office action is a
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`deliberate decision to allow an application to become abandoned, and is not
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`subject to revival under 37 C.F.R. § 1.137(b).” Lawman Armor Corp. v. Simon,
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`2005 U.S. Dist. Lexis 10843, *15 (E.D. Mich., March 29, 2005). A “change in
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`circumstances that occurred subsequent to the abandonment of an application does
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`not render ‘unintentional’ the delay resulting from a previous deliberate decision to
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`permit an application to be abandoned. These matters simply confuse the question
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`of whether there was a deliberate decision not to continue the prosecution of an
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`(continued…)
`
`
`
`[T]he Office relies upon the applicant’s duty of candor and
`good faith…without requiring further information in the vast majority
`of petitions…because the applicant is obligated under 37 CFR 11.18
`to inquire into the underlying facts and circumstances when a
`practitioner provides this statement to the Office…[P]roviding an
`inappropriate statement in a petition under 37 CFR 1.137(b)…may
`have an adverse effect when attempting to enforce any patent resulting
`from the application. See Lumenyte Int’l Corp. v. Cable Lite Corp.,
`Nos. 96-1011, 96-1077, 1996 U.S. App. LEXIS 16400, 1996 WL
`383927
`(Fed. Cir.
`July 9, 1996)(unpublished)(patents held
`unenforceable due to a finding of inequitable conduct in submitting an
`inappropriate statement that the abandonment was unintentional).
`
`
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`-14-
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`

`
`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
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`application with why there was a deliberate decision not to continue the
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`prosecution of an application.” MPEP 711.03(c)(II)(C)(1). “An intentional act is
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`not rendered unintentional when an applicant reviewing the same facts changes his
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`mind as to the appropriate course of action to pursue.” In re Maldague, 10
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`USPQ2d 1477 (Comm’r 1988). See also, In re Application G, 11 USPQ2d 1378
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`(Comm’r, 1989) (where applicant deliberately chooses not to file a response to an
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`office action, that course of conduct cannot amount to unintentional abandonment
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`under § 1.137(b)).
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`There is no dispute concerning the public record facts. They show that the
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`‘073 application was subject to a final office action rejection mailed August 29,
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`2000, nor that a three (3) month EOT was filed on February 21, 2001. That 3
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`month EOT was not accompanied by a proper response to the final office action.
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`On that same day -- February 21, 2001 -- the ‘381 application (claiming priority
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`back to the ‘073 application and copying claims therefrom) was filed. Thereafter, a
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`PTO notice of abandonment of the ‘073 application was mailed on April 10, 2001.
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`No further action was taken in the ‘073 application until the ’381 application
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`failed, and the petition to revive was filed on January 3, 2003.
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`The Petitioner submits that the deposition testimony in related litigation of
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`Mr. Robert Curfiss, an attorney of record for the ‘073 application according to
`
`
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`-15-
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`

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`Petition for Inter Partes Review of U.S. Pat. No. 7,365,871
`
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`USPTO records,8 is consistent with these deliberate acts regarding abandonment of
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`the parent ‘073 application and use of the divisional ’381 application to continue
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`prosecution described above, and it is the intention of the Petitioner to make the
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`corresponding transcript of Mr. Curfiss’s testimony (which has been designated as
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`confidential by eWatch’s counsel) available for the Board’s consideration through
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`discovery in the trial before the PTAB associated with this petition.9 Mr. Curfiss
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`was a well seasoned attorney, having been registered since 1973 (Registration No.
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`26540) according to USPTO records. He no doubt knew the consequences of
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`failing to substantively respond to an office action for a (parent) patent application
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`and how to preserve a client’s rights in the associated invention by filing a
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`continuation or divisional patent application during pendency of the parent
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`application.
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`8 Mr. Curfiss signed the Submission of Missing Parts dated July 8, 1998, for
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`the ‘073 application, which forwarded the Declaration of Patent Application of the
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`inventor and which li